Don’t forget your co-authors when claiming copyright infringement
8/06/2009

When a copyright is infringed, individual co-authors of the work shouldn’t expect to receive the full amount of damages awarded. To claim the full amount, all the co-authors must be joined as parties to the litigation.

This was the implication of a judgement in the Supreme Court of Appeal on 1 June 2009. In David Feldman NO v EMI Music SA (Pty) Ltd/EMI Music Publishing SA (Pty) Ltd, the SCA ruled that failure of a plaintiff to join the co-authors of a work, or to make out a case as to why it is entitled to sue without doing so, will mean that the plaintiff will not be able to claim all the damages flowing from copyright infringement.

David Feldman, in his official capacity as executor of pop singer Brenda Fassie’s estate, brought applications in the Johannesburg High Court seeking relief based on copyright infringement. He claimed to have joint ownership in the copyright of 157 works, all but four of which Fassie had composed in collaboration with others. These works were thus works of co-authorship.

He alleged that the respondents had, since the 1980s, performed acts in respect of these works which fell within the exclusive entitlement of the copyright owner (the author) and were guilty of copyright infringement. He therefore claimed damages equal to the royalties which would reasonably have been payable by a licensee, as well as so-called “punitive” damages.

The respondents excepted to this claim on the basis that Feldman had failed to indicate that the co-authors had assigned their copyright to Fassie and that he did not have standing to bring the matter on his own. The High Court agreed with the respondents and Feldman, accordingly, appealed.

The Supreme Court of Appeal highlighted a few relevant points of law regarding co-authorship of works protectable by copyright:

• in the case of co-authorship of a work, ownership in that work vests in the co-authors;
• a co-author of copyright does not have the right, without the others’ consent, to exploit the entitlements flowing from his copyright;
• a co-author cannot ordinarily claim the whole proceeds of any exploitation of a co-ownership; and similarly,
• a co-author who sues, as an individual, for damages arising from infringement of copyright will be restricted to the portion of the “reasonable” royalty to which he would have been entitled had the work been licensed properly.

From the above principles one can glean the Supreme Court of Appeal’s approach: Feldman’s appeal had to fail because his claim lacked essential information regarding the proportions in which the co-authors were entitled to share the fruits of the copyright. Since the co-authors of Fassie’s works were not joined as parties to the proceedings, Feldman was not entitled to approach the court for the relief he sought. He had no locus standi. At most he might have succeeded in a claim for only the reasonable royalty he would have received had the works been subject to a proper licence agreement.

So with the warning bells ringing, what does this judgement mean for co-authors of works wanting to sue for damages on the basis of copyright infringement?

If a co-author intends suing individually, the other co-authors of the works must assign their copyright to the prospective litigant. If he fails to join co-authors as parties to the litigation, an author will bear the burden of showing that he is indeed entitled to approach the court for relief on his own. Alternatively, he would have to claim only the amount representing the reasonable royalty he would have been entitled to if a licence agreement had been in place.

Nicole Smit
Candidate Attorney
Nicole-s@adamsadams.co.za

Kelly Thompson
Partner
Kelly@adamsadams.co.za