Copyright Infringement Claim in South Africa In Respect Of The Musical Work "The Lion Sleeps Tonight".

Originally published June 30, 2004

The executor of the estate of the late Solomon Linda has brought a claim of copyright infringement based on the reversionary interest in the musical work entitled "Mbube" from which the well known hit song "The Lion Sleeps Tonight", has allegedly being derived. The case has been brought, inter alia, against Disney Enterprises Inc, for having the contentious song in the soundtrack of the movie "The Lion King" and exploiting that movie commercially in South Africa through its group of companies ("Disney") without the authority of the copyright owner in Mbube. In order to found and confirm the jurisdiction of the High Court of South Africa to adjudicate upon the claim brought against an American corporation which does not have a place of business in South Africa, the court has ordered the attachment of some 200 registered trade marks owned by Disney Enterprises Inc in South Africa as well as the South African copyright in the movie "The Lion King".

During the late 1930's, at which time the British Imperial Copyright Act of 1911 was in force in South Africa, Solomon Linda, a South African citizen, created a musical work entitled "Mbube" (the Zulu word for "lion"). In the early 1950's Solomon Linda assigned the worldwide copyright in "Mbube" to Gallo (Africa) Limited, a South African company, for a consideration of ten shillings. Gallo sought to exploit the work in the United States of America but it was soon adapted or reproduced in the form of another work entitled "Wimoweh", written by the folk singer Pete Seeger. "Wimoweh" was later transformed into a work entitled "The Lion Sleeps Tonight" the authorship of which is attributed to George Weiss, Hugo Peretti and Luigi Creatore. It is alleged that "Wimoweh" is a reproduction or adaptation of a substantial part of "Mbube" and that "The Lion Sleeps Tonight" is a reproduction or adaptation of a substantial part of "Wimoweh" and/or "Mbube".

In the early 1990's litigation was conducted in the United States of America in regard to the allegation that the song "The Lion Sleeps Tonight" infringed the copyright in the song "Wimoweh". This litigation gave rise to a direction by the Tribunal that a small royalty on the exploitation of the song "The Lion Sleeps Tonight" should be paid the heirs of Solomon Linda by virtue of the derivation of "The Lion Sleeps Tonight" from "Mbube".

Solomon Linda died in 1962, at which time the British Imperial Copyright Act of 1911 was still in force in South Africa. Subsequent South African Copyright Acts dating from 1965 and 1978 preserved the subsistence, ownership and duration of copyright arising out of the 1911 British Imperial Copyright Act. The proviso to Section 5(2) of the Imperial Copyright Act stated that where the author of a work was the first owner of the copyright therein and that copyright was assigned, no assignment made during the currency of the Act would be operative to vest in the assignee any rights under the copyright in the work beyond a period of 25 years after the death of the author, and that, at the expiration of the 25 year period, the copyright in the work for the remaining period of its term (i.e. a further 25 years) would revert to the author's legal personal representative or executor as part of his estate; any agreement entered into by the author as to the disposition of such reversionary interest would be null and void.

It is contended by the executor of the estate of Solomon Linda, one Stephanus Griesel, that in terms of the aforegoing provision the copyright in "Mbube" devolved on him in 1987, (i.e. 25 years after the death of Linda) and that such reversionary interest fell to be administered by him as an asset in the estate of Solomon Linda. When Solomon Linda died in 1962 he was intestate and his only known asset was a bank account in the amount of R148.00 (GBP74) and this asset was distributed amongst his heirs. The existence of the reversionary interest was not known at the time and was therefore not distributed to the heirs. Its existence only came to light in 2003, whereupon the estate was reopened and an executor was freshly appointed to deal with the reverted copyright in "Mbube". It is contended that the copyright in question extends to all countries of the British Empire and the Commonwealth in which the British Imperial Copyright Act had currency in the late 1930's.

On the premise that the song "The Lion Sleeps Tonight" is a reproduction of a substantial part of the musical work "Mbube", the executor contends that subsequent to 1987 all uses of the song "The Lion Sleeps Tonight" required to be authorised by him, and were not. At this stage the executor has not yet passed on the reverted copyright in "Mbube" to Solomon Linda's heirs. Any licences granted under the copyright in "Mbube" prior to 1987 by any owner of the copyright for the time being no longer have any force because no owner of the copyright, or any person claiming from such owner, enjoyed rights which extended beyond the term of 25 years after the death of Solomon Linda.

Disney incorporated the song "The Lion Sleeps Tonight" in the movie (and stage show) "The Lion King" and this was done after 1987. The reproduction of this song, and therefore of a substantial part of "Mbube", in the film was done without the executor's authority. Accordingly, the movie "The Lion King" is an infringing copy of "Mbube" and all dealings by Disney in that film, or by persons deriving title to the film from Disney, constituted infringement of the copyright in "Mbube".

As a precursor to instituting an action in South Africa against Disney Enterprises Inc and its South African licensees under the copyright in the film "The Lion King", the executor has attached a large number of Disney's trade marks and the copyright in the film "The Lion King" in South Africa. The trade marks include DISNEY, DONALD DUCK, MICKEY MOUSE and the names of other well known Disney character. The order granted by the court attaching these items of property required the executor to institute the copyright infringement action against Disney Enterprises Inc within a period of one month. A draft of the Particulars of Claim to be used in this action was annexed to the executor's court application for the attachment order. The proceedings have been instituted and are currently pending. Further details regarding this litigation can be obtained from the website of Spoor & Fisher, the executor's attorneys, at www.spoor.com.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

Mr Owen Dean

Spoor & Fisher

Spoor and Fisher House

1 Lakeview Crescent, off Kwikkie Crescent

Centurion

Pretoria

SOUTH AFRICA

Tel: [phone]

Fax: [phone]

E-mail: [e-mail]

URL: www.spoor.co.za

(c) Mondaq Ltd, 2004 - Tel. [phone] - http://www.mondaq.com