Copyright in Cinematographic Films
Legal / Legislative Issues
Cinematograph films are a species of work eligible for copyright under the Copyright Act, 1978, as amended. A cinematograph film enjoys copyright in South Africa if the author (i.e. the person or company who made the arrangements necessary for making the film) is a so-called "qualified person" (i.e. a subject of South Africa or a Berne Convention country) or, if published, first publication took place in South Africa or in a Berne Convention country. As a further alternative, a cinematograph film enjoys copyright in South Africa if it was made in South Africa. The term of copyright enjoyed by cinematograph films is a period of fifty years from the end of the year in which the film is first made available to the public with the consent of the copyright owner, or failing it being made so available within fifty years from the making of the film, the term expires fifty years from the end of the year in which the work was made.
The activities falling within the scope of the copyright in a cinematograph film are the following:
- reproducing the film in any manner or form, including making a still photograph therefrom;
- causing the film, in so far as it consists of images, to be seen in public, or, in so far as it consists of sounds, to be heard in public;
- broadcasting the film;
- causing the film to be transmitted in a diffusion service, unless such service transmits a lawful television broadcast, including the film, and is operated by the original broadcaster;
- making an adaptation of the film;
- doing, in relation to an adaptation of the films, any of the acts specified in relation to the film in paragraphs (a) to (d) inclusive;
- letting, or offering or exposing for hire by way of trade, directly or indirectly, a copy of the film."
Infringement of copyright takes place when any of the aforementioned activities are performed without the authority of the copyright owner in respect of the film or any substantial part of the film.
In addition to the aforegoing, the copyright in a cinematograph film is infringed if anyone without the authority of the copyright owner does the following in relation to a copy of the film in the knowledge that such copy is an infringing copy:
- imports it into the Republic for a purpose other than for his private and domestic use;
- sells, lets, or way of trade offers or exposes it for sale or hire in the Republic;
- distributes it in the Republic for the purposes of trade, or for any other purpose to such an extent that the owner of the copyright in question is prejudicially affected; or
Copyright infringement gives rise to a claim under the civil law or an interdict restraining the offending activity, damages (which can take the form of a notional royalty), delivery up of infringing copies or articles used or intended to be used for making same, costs of suit as well as various other forms of ancillary relief. So called "Anton Pillar" orders authorising surprise inspections of premises with a view of safeguarding evidence and infringing copies can be obtained without notice to an infringer. Copyright infringement can give rise to a criminal offence in certain circumstances. Criminal copyright infringement occurs when a person, without the authority of the copyright owner does the following in relation to an article which he knows to be an infringing copy of the work:
- Makes it for sale or hire;
- Sells it or lets it for hire or by way of trade offers or exposes it for sale or hire;
- By way of trade exhibits it in public;
- Imports it into the Republic otherwise than for his private or domestic use;
- Distributes it for purposes of trade;
- Distributes it for any other purposes to such an extent that the owner of the copyright is prejudicially affected.
It is also a criminal offence for a person to have in his possession a plate or master for making infringing copies knowing that it is to be used for making such copies. The penalties for criminal copyright infringement are severe. In the case of a first conviction a fine of up to R5 000,00 or imprisonment for a period of up to three years or both can be imposed for each infringing article.In the case of a second or further offence the fine can be up to R10 000,00 and the prison sentence can be up to five years for each article.
An "infringing copy" as referred to above both in the context of civil copyright infringement and criminal copyright infringement is an article the making of which constituted an infringement of copyright, or in the case of an imported article, would have constituted an infringement of copyright if the article had hypothetically been made in South Africa by the actual person who made it abroad. This definition of "infringing copy" makes it possible for trading in parallel imports to be an infringement of copyright in certain circumstances.
In civil copyright infringement proceedings the Copyright Act makes provision for so-called "additional" or "penal" damages to be payable over and above the actual damages suffered by the plaintiff, in certain circumstances. These circumstances are when, by virtue of the flagrancy of the infringement and any benefit which has been shown to accrue to the defendant on account of the infringement, the court is satisfied that effective relief is not available to the plaintiff merely by his relying upon the normal remedies.
South African civil procedure allows for an interdict and delivery up of infringing copies to be obtained by means of the copyright holder bringing an application to court. In application proceedings all evidence is adduced by way of affidavit although the court has the power to refer specific issues or the case as a whole to oral evidence. Damages for copyright infringement can only be obtained in an action which entails evidence being adduced by means of appearances of witnesses who give oral evidence. The same situation obtains in criminal prosecutions. An applicant or plaintiff in civil proceedings, and the State in criminal proceedings, bear the onus from the outset of proving subsistence of, and title to, copyright in the subject films in addition to proving the unlawful activity. Proof of copyright entails establishing by means of admissible evidence the authorship of the film, the national status of the author, the date of first publication or first release of the film anywhere in the world and the place of such first publication. In addition, if the copyright holder is not the author, a full chain of title commencing with the author and culminating in the current copyright holder must be provided. This entails producing copies of assignment agreements and licence agreements upon which the copyright holder relies. In accordance with the law of evidence these documents and the facts relating to proof of copyright must be handed up by witnesses who have personal knowledge of them and, in the case of documents, their execution.
Many of the evidential burdens in connection with the proof of copyright infringement can be overcome by registering the copyright in a cinematograph film under the Registration of Copyright and Cinematograph Films Act, 1977. This Act makes provision for a voluntary system of registration of copyright in cinematograph films with a view to facilitating proof of subsistence of, and title to, copyright in a film. Once a film has been registered the copyright in that film can be proved in civil law and criminal court proceedings merely by adducing a certificate issued by the Registrar or Copyright. This certificate constitutes prima facie proof of the facts in relation to the film stated in the Register of Copyright. These facts include all the essential facts relating to proof of subsistence of, and title to, copyright in that film as well as means of identifying the film in question.
The current copyright owner is entitled to register the copyright in his film. In the event that exclusive and other licences has been granted under the copyright in the film a separate application can be made to record such a licence. Copies of all relevant assignments of copyright or licence agreements relating to copyright must be lodged in support of an application for registration.
Unlike in the case of court proceedings hearsay evidence can be included in an application to register copyright in a film. Once an application for registration has been scrutinised by the Registrar and he accepts it, the application is advertised in the Patent Journal in order to afford interested persons an opportunity of objecting to the registration. If there is no objection, or if an objection is overruled, the film is registered.
Apart from the evidential benefits relating to proof of copyright, registration of copyright in a film provides additional advantages. They are :
- in the case of litigation in relation to a registered film there is a presumption that any person has knowledge of all the facts stated in the Register of Copyright. This presumption is irrebuttable and amounts to a registration providing constructive knowledge of the circumstances of the copyright in the film.
- in copyright infringement litigation in the case of a registered film it is presumed, subject to proof to the contrary, that any alleged infringing activity in relation to the film was performed without the authority of the copyright holder.
- registration of a film has a strong deterrent value as experience has shown that video pirates concentrate their efforts on unregistered films.
Copyright infringement in cinematograph films has been successfully pursued before the South African courts both in civil and criminal cases. In the civil field parallel importation has been held to be an infringement of copyright, Anton Pillar orders have frequently been obtained as have injunctions and delivery up of infringing copies and masters. Damages claims have been settled out of court and it has not to date been necessary to have the court adjudicate a damages claim. Large numbers of criminal convictions have been obtained pursuant to criminal prosecutions but on the whole, despite the fact that the law makes provision for heavy sentences to be imposed, the courts have tended to impose relatively light penalties on infringers.
SPOOR & FISHER