THE SUPREME COURT OF APPEAL
REPUBLIC OF SOUTH AFRICA

JUDGMENT

Case No:   268/2008 & 269/2008

DAVID FELDMAN N.O.                                                                     Appellant

and

EMI MUSIC SA (PTY) LTD / EMI MUSIC PUBLISHING
SA (PTY) LTD                                                                                Respondent

Neutral citation:
Feldman v EMI Music (268/2008) [2009] ZASCA 75 (1
June 2009)

Coram:
Farlam, Brand, Maya, Mhlantla JJA and Hurt AJA

Heard:
22 May 2009
Delivered:
1 June 2009

Summary:
Co-author of work of joint authorship not entitled to sue
for all damages resulting from infringement without joining
other co-authors or making out a case for such
entitlement.

___________________________________________________________

ORDER

On appeal from:
Witwatersrand Local Division (Jajbhay J sitting as court of
first instance.)

The appeal against the upholding of the first exception is dismissed.
Save as set out in paragraph 1, the appeal succeeds.
The respondent is ordered to pay the appellant’s costs of appeal, such
costs to include the costs of two counsel.
The order of the court below is altered to read:
'(a)
The first exception is upheld.
(b)
Paragraphs 3 to 12 of the particulars of claim are struck out.
(c)
The plaintiff is given leave to amend the particulars of claim by notice
of amendment delivered within 21 days of the date of this order.
(d)
Save as ordered in paragraph (a), the exceptions are dismissed.
(e)
The plaintiff is ordered to pay the costs of the exceptions.'
The period of 21 days in para 4 (c) is to run from the date of the
delivery of this judgment.

JUDGMENT

HURT AJA (Farlam, Brand, Maya and Mhlantla JJA concurring):

[1] The appellant, who is the executor in the deceased estate of the well-
known singer, Brenda Fassie, instituted two actions in the Witwatersrand
Local Division of the High Court, claiming relief based on copyright. The
defendant in the first action (and the respondent in the first of the appeals) is
EMI Music Publishing (Pty) Ltd ('EMI Publishing') and, in the second, EMI
Music (Pty) Ltd ('EMI Music'). The respondents delivered notices to cure
vagueness and embarrassment in terms of Rule 23(1) of the Uniform Rules of
Court and, no response to these notices having been received from the
appellant, notices of exception were duly delivered. The cases were dealt with
as one by Jajbhay J for the purposes of deciding them. The learned judge

upheld the exceptions with costs and gave the appellant leave to amend the
particulars of claim within 21 days. This appeal comes before us with the
leave of the court below.

The Infringement Claims ('The First Exception').
[2] The particulars of claim in each matter commenced with a claim for
damages based on copyright infringement. The appellant claimed to have
joint ownership of the copyright in 157 works listed in an annexure to the
summons. With four exceptions1 the works listed (being music and lyrics for
so-called 'pop songs') are works in which the late Ms Fassie collaborated with
others to compose them. They are accordingly works of 'joint authorship' as
defined in s1 of the Copyright Act 98 of 1978 ('the Act'). Having made the
necessary averments to establish that the works are entitled to copyright
protection, the particulars of claim in the EMI Publishing action proceed as
follows:-
'4.
From and subsequent to 1980, the Defendant continuously, until the present
time, without the licence of the Plaintiff or any of the persons referred to in
paragraph 3.1.1.1 above (sc the joint authors), and whilst the exclusive right
to do so vested in the Plaintiff and the said persons:

[reproduced, published and made adaptations of the works and purported to
grant licences to third parties to perform similar acts]2
5.
In the premises, the defendant, during the said period, infringed the copyright
in respect of the said works, referred to in paragraph 3 above.
6.
The defendant at all relevant times bore knowledge of the fact that such
conduct constituted an infringement as aforesaid.
7.
The Defendant received royalties for performing the acts set out in paragraph
4 supra.
8.
The damages suffered by the Plaintiff constitute the reasonable royalty that
would have been payable by a licensee in respect of the work.
9.
The plaintiff has no knowledge of the extent of the royalties the Defendant
received as aforestated.

1 In which Ms Fassie was stated to be the sole composer/author of the music and lyrics.
2 This is a précis of the detailed allegations of conduct which constituted copyright
infringement.

10.
In order to determine the amount of a reasonable royalty, having regard to the
provisions of section 24(1B) of the Copyright Act, the Plaintiff will seek an
order directing that an enquiry be held.'

[3] The relief sought in respect of the infringement claim is an order for
damages equivalent to the royalties which would reasonably have been
payable by a licensee of the copyright and an enquiry aimed at establishing
the amount of such royalties. There is a further prayer for what are sometimes
referred to as 'punitive damages' based on the provisions of s 24 (3) of the
Act.3

[4] The particulars in the EMI Music action are almost identical to those set
out above, save that the date of inception of the alleged acts of infringement
in paragraph 4 is 1993, the words 'and/or fees' appear after the word
'royalties' in paragraph 7 and the words 'and that the defendant be ordered to
pay to the Plaintiff the amount found to be due pursuant thereto' appear after
the words 'an inquiry to be held' at the end of paragraph 10. These variations
are not material to the issues raised by the first exception in either action.

[5] The notices of exception taken to the claims based on infringement,
after recounting the nature of the copyright relied upon by the appellant, state
that:
'4.
The claims pursued by the plaintiff in this action are claims founded upon
copyright ownership.
5.
The plaintiff has not indicated that any of the joint authors listed in Annexure
A to the particulars has ceded or otherwise made over their copyright to
Fassie. It is accordingly unclear on what basis the plaintiff has the requisite
locus standi to sue on his own.

3 'Where in an action under this section an infringement of copyright is proved or admitted,
and the court having regard, in addition to all other material considerations, to

(a)
the flagrancy of the infringement; and
(b)
any benefit shown to have accrued to the defendant by reason of the
infringement,
Is satisfied that effective relief would not otherwise be available to the plaintiff, the court shall
in assessing damages for infringement have power to award such additional damages as the
court may deem fit.

6.
The particulars are accordingly vague and embarrassing, alternatively lack
averments necessary to sustain the cause of action, and the defendant is
accordingly unable to plead thereto.'
This will be referred to as 'the first exception'.

[6] Before dealing with the parties' respective contentions, it will be
convenient to refer briefly to the law concerning joint authorship of works
protectable by copyright. Section 21(1)(a) of the Act states that:
'Subject to the provisions of this section, the ownership of any copyright conferred by
section 3 or 4 on any work shall vest in the author or, in the case of a work of joint
authorship, in the co-authors of the work.'
Section 3 of the Act confers copyright on, inter alia, any literary or musical
work of which the author or any one of the joint authors is a South African
citizen or is domiciled or resident in the Republic at the time that the work is
composed. It is not in dispute that the late Ms Fassie and her co-authors in
this case qualify under the section. Although subsections 22(1) and 22(5)
equate copyright to movable property for the purpose of dealing with
transmission of the rights by way of 'assignment, testamentary disposition or
operation of law', there are features of co-ownership of copyright which differ
from co-ownership of movables. Thus, for instance, one co-owner of copyright
does not have the right, without the consent of the other(s), to exploit the
rights comprising his copyright.4 As to the proportions in which individual co-
authors are entitled to share in the proceeds of the copyright, much will
depend, in each instance, on the basis on which the co-authors have agreed
to collaborate to produce the work. It is clear from the definition of a 'work of
joint authorship',5 however, that in the absence of agreement between the co-
authors, the share of each will be an undivided one. In this regard Copinger
and Skone James6 suggest that the circumstances surrounding the creation
of the work will generally be relevant to a decision as to the respective share
for which each co-author qualifies. In the absence of clear contrary indications

4 O H Dean Handbook of South African Copyright Law p1-30A; K Garnett, G Davies, G
Harbottle Copinger and Skone James on Copyright 15 ed p 288.
5 'work of joint authorship means a work produced by the collaboration of two or more
authors in which the contribution of each author is not separable from the contribution of the
other author or authors'.
6 Op cit pp 287 to 288.

as to the parties' intention, it is suggested, the co-authors will each be taken to
hold an equal, undivided share as 'tenants in common'. It seems that this is
the position under the Act, but it is not necessary for the purposes of this
judgment to investigate this aspect further. What is clear, and what was not in
dispute in argument before us, is that one co-author cannot ordinarily claim
the whole proceeds of any exploitation of a work of joint authorship. It must
follow that, in invoking the provisions of section 24(1A) of the Act as a basis
for quantifying his or her claim for damages, a co-author suing individually for
damages for infringement or their surrogate under the section will be
restricted to the portion of the 'reasonable royalty' to which he or she would
have been entitled if the work had been duly licensed.

[7] The debate about the first exception in the court below appears to have
focused on a contention that the infringement claims were excipiable because
the appellant had not joined the joint authors in the action. Jajbhay J referred
to various authorities to the effect that a joint owner should join his co-
owner(s) in litigation concerning the joint property. As authority for the
proposition that non-joinder may be raised as a matter for exception, the
learned judge referred to Collin v Toffie 1944 AD 456, and Smith v Conelect
1987 (3) 689 (W). Apart from noting that Tindall JA in Collin stated that a point
of non-joinder may be taken on exception, but only if it is expressly referred to
in the exception,7 it is not necessary to consider whether the decision by
Jajbhay J of the first exception on the basis of joinder was correct in law. An
excipient is obliged to confine his complaint to the stated grounds of his
exception. As in Collin, the exceptions here contain no mention of non-joinder.
They accordingly fell to be decided on the grounds taken, namely that the
particulars did not contain averments which founded the claim for relief. Nor,
in arguing the appeals, did counsel for either party present argument based
on the ground of non-joinder.

[8] Mr Gautschi, who appeared with Mr Smit  for the appellant, submitted
that, on a fair reading of the particulars of claim, it was implicit that the plaintiff

7 p 467.

was only claiming his pro rata share of the 'reasonable royalty' contemplated
in section 24(1A). I think that such an interpretation of the particulars would
involve more than just a 'fair reading' of the claims – it would involve
interpolating presumptions and a measure of speculation into the particulars.
On the basis set out in para 7, a plaintiff will not be entitled to the whole of the
'reasonable royalty' accruing from a work of co-authorship unless, at the time
of the creation of the work, there was an agreement between the co-authors
that the plaintiff was to be entitled to all the fruits of the work or, of course,
unless the plaintiff had taken cession of the rights of his co-author(s). The
matter is complicated in a case such as this where a substantial number of
the works are alleged to be the product of more than two authors. The short
answer to the question raised by the exception is simply that the averments in
the particulars of claim, read fairly, are silent as to the basis upon which the
plaintiff contends that he is entitled to the 'damages' which he claims. As to
the claim for 'punitive damages', I consider that such damages would
ultimately have to be assessed as a lump sum figure which would have to be
shared pro rata by the co-authors. The defendant in this situation would be
exposed to substantial prejudice if he were to be ordered to pay the plaintiff
the total amount of such damages but still remain exposed to a similar claim
by one or more of the other co-authors. The absence of averments relating to
the plaintiffs share of the copyright accordingly has the effect of rendering the
claim for 'punitive damages' excipiable as well, on the basis submitted in the
exceptions..

The Exceptions Based on Vagueness ('The Second Exception').
[9] Each defendant relied upon an exception based on the contention that
the claim for damages was vague and embarrassing for want of particularity
as to the royalties allegedly received by the defendants from the acts of
infringement. (These will hereinafter be referred to as 'the second exception'
in each case.) Jajbhay J upheld these exceptions. In response to the
submission on behalf of the plaintiff that s 24(1B) of the Act expressly
provides for an enquiry as to what would be a reasonable royalty 'for the
purposes of determining the amount of damages', the learned judge said:

'Section 24 (1B) of the Copyright Act contemplates and permits an enquiry into the
quantum of damages only, and not into the existence of an act of infringement. Proof
of infringement of copyright, in respect of which the plaintiff bears the onus, is a pre-
requisite to any entitlement to invoke the enquiry provisions of section 24 (1B). It is at
the level of proof of infringement that the plaintiff's particulars fail. Consequently, the
provisions of section 24(1B) offer no assistance to the plaintiff against this exception.'
There was no basis, in the circumstances of these cases, to assess the
appellant's prospects of proving what is alleged. The appellant alleged that
the respondent, in each action, received royalties from the acts of
infringement and that he has no knowledge of their extent. Section 24(1B)
was obviously inserted into the Act to cover just such a contingency. I may
say that Mr Liebowitz, for the respondents, wisely did not press his
contentions in this regard with any discernible degree of enthusiasm. The
appeal against the upholding of the second exception in each case must
therefore succeed.

Mutually Contradictory Averments ('The Third Exception').
[10] The third basis upon which the exception was framed in each case was
the mutually contradictory allegations concerning the current ownership of the
copyright. In the EMI Music matter, after setting out, in paras 1 to 12, the
claim based on infringement, the particulars contain a second claim, not
pleaded in the alternative, in which the appellant relies on the conclusion by
Ms Fassie of a number of so-called 'performance agreements'. The claim is
that EMI Music failed in its obligations, in terms of these agreements, to
render regular, accurate and proper accounts of what it had received and
what was due to Ms Fassie and her estate. The notice of exception alleged
that the appellant's claim, in para 3 of the particulars, to ownership of the
copyright and the allegation in para 12 that there were no licensees of the
works was inconsistent with the contention that Ms Fassie had entered into
what were effectively assignments and/or licensing agreements. This
exception was upheld by the court below but abandoned by EMI Music shortly
before the appeal was argued. In the EMI Publishing action the claim for
contractual royalties was specifically pleaded in the alternative to the

infringement claim. Jajbhay J held that the particulars were vague and
embarrassing and that EMI Publishing was prejudiced thereby
'more particularly in that the defendant is unable to know whether to come to court to
meet a case based on ownership of copyright vesting in the plaintiff, or to meet a
case based on ownership of copyright vesting in the defendant, and a consequent
claim for royalties and a statement and debatement of account. These two claims are
mutually destructive of one another . . .'.

[11] It is not necessary to refer to authority for the proposition that a plaintiff
is entitled to rely on mutually contradictory averments in his particulars of
claim, provided that it is clear from the manner of pleading them that he is
only relying on the one in the event that the other is not sustainable. In this
instance one might well have expected that the claim based on contract would
be relied on as the main claim and that the claim for damages would be
pleaded in the alternative, eg in the event of the claim on contract failing. But
the circumstance that the contractual claim is pleaded in the alternative to that
for infringement damages does not detract from the fact that it is clear to the
reader of the particulars that the claims are relied upon in the alternative. That
the defendant will be required to come to court to meet one of two alternative
claims is certainly no basis for a finding that the defendant is embarrassed or
prejudiced. This exception should accordingly have been dismissed.

[12] In the result the appeals succeed only insofar as the second and third
exceptions are concerned. Mr Leibowitz submitted that since both parties had
had a measure of success in the appeal, there should be no order as to the
costs in this court. However, it was necessary for the appellant to come to this
court to have the second and third exceptions set aside and on that basis the
appellant should have the indemnity of a costs order.

[13] In each case, the following order is made:
1.
The appeal against the upholding of the first exception is dismissed.
2.
Save as is set out in paragraph 1, the appeal succeeds.
3.
The respondent is ordered to pay the appellant’s costs of appeal, such
costs to include the costs of two counsel.

4.
The order of the court below is altered to read:
(a)
The first exception is upheld.
(b)
Paragraphs 3 to 12 of the particulars of claim are struck out.
(c)
The plaintiff is given leave to amend the particulars of claim by notice
of amendment delivered within 21 days of the date of this order.
(d)
Save as ordered in paragraph (a), the exceptions are dismissed.
(e)
The plaintiff is ordered to pay the costs of the exceptions.
5.
The period of 21 days in para 4(c) is to run from the date of delivery of
this judgment.

____________________________
NV HURT

ACTING JUDGE OF APPEAL

Appearances:

For Appellant:
JR Gautschi   SC

M Smit

Instructed by:

Feldman & Nance Kivell Johannesburg

Lovius Block Bloemfontein

For Respondent:
David Leibowitz

Instructed by:

Rosin Wright Rosengarten Johannesburg

Claude Reid Inc Bloemfontein
THE SUPREME COURT OF APPEAL
REPUBLIC OF SOUTH AFRICA

MEDIA SUMMARY – JUDGMENT DELIVERED IN THE SUPREME COURT OF APPEAL

1 June 2009

STATUS:
Immediate

D Feldman N.O. v EMI Music SA (Pty) Ltd / EMI Music Publishing SA (Pty)
Ltd (268 & 269/2008)[2009] ZASCA 75 (1 June 2009)

Please note that the media summary is intended for the benefit of the media and does
not form part of the judgment of the Supreme Court of Appeal

The SCA today dismissed an appeal by the executor of the estate of the late Brenda
Fassie against a decision by the Johannesburg High Court in which an exception to a
claim for damages for infringement of musical and literary works of which Ms Fassie
was a joint author was upheld. The SCA held that the claims were correctly found to
be lacking in an essential averment as to their proportions in which Ms Fassie and her
co-authors were entitled to share in the relevant copyrights.