Golden Oldies? South African High Court Looks At What Is “Traditional”

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By Prof. Owen Dean

Summary: The question of the use of material in the public domain for the inspiration of new works has been complicated in South Africa by legislation which purports to grant retrospective perpetual protection to so-called “traditional works”. A case pending in the South African High Court highlights the question of what is “traditional” and raises the question of to whom music companies will have to look in the future to obtain permission to use anything that has a traditional flavour. Prof. Owen Dean asks: Could this be a disincentive to use traditional material belonging in the public domain and thus slow cultural expression?

Gallo Music and Sting Music have locked horns in the South Gauteng Division of the High Court over copyright in certain songs named Thula Baba, Unomathemba and Siliwelile. Gallo claims that it owns the copyright in these songs and that Sting therefore required their authority to include them in the stage musical Umoja and that it is entitled to claim royalties arising out of the inclusion of these songs in the musical. Sting, on the other hand, claims that the songs are traditional and therefore in the public domain with the result that they are free for use by everyone, including itself.

Of course, as has been frequently aired in the past on this blog, once the Intellectual Property Laws Amendment Act (otherwise known as the “Traditional Knowledge Act”) comes into operation, the community, or communities (whatever they may be) from which these songs originated will be able to claim royalties for their use, over and above anything that Gallo may be able to claim. Accordingly, the claim that they are in the public domain may be a short lived illusion and Sting, like everyone else who wishes to use any work which can vaguely be categorised as being traditional, will have to pay the piper.

Gone will be the days of utilising material in the public domain, at least as far as so-called “traditional works” are concerned, for nothing. One may use the works of Beethoven, Mozart and the like with impunity (unless perhaps they too can be categorised as traditional) but not tribal works because they are sacrosanct.

Be it as it may, the court happily does not have to cope with this complication at the present time. What is in issue is whether the songs are truly traditional, or whether they are the original works of authors who have transferred their rights to Gallo.

The answer to the above question may depend largely on the facts of the matter but it is important that the principle involved should be understood. At the present time songs which are truly traditional works are indeed in the public domain. However, it is possible for a composer to take a traditional song and adapt it or transform it into a new version, whereupon an original copyright is created as a derivative of the traditional work. Provided the composer of the derivative work expends sufficient talent and work in creating the derivative work, copyright subsists in it and he/she is the owner of that copyright. In the event that someone copies his or her derivative version, that copyright is infringed. The fact that source version of the derivative work may be in the public domain is irrelevant.

On the other hand, however, in the event that the third party copies the source material, i.e., the traditional version of the song, then the copyright in the derivative version is not infringed even though there may be substantial similarity between the third party’s version and the derivative version. In other words, while the maker of the derivative work can have an independent copyright in his new version, that does not give him rights in the traditional version which remains in the public domain and can be used by all (at least for the time being in the case of traditional work).

Interestingly, Gallo was involved in litigation in Belgium in a very similar matter a few years ago. That litigation also involved the song Thula Baba and in addition the songs Jikel-Emaweni and Quonguothwane (Click Song). The evidence in that matter showed that all of the songs on which Gallo relied were derivative versions of traditional songs and that the infringer (Helmut Lotti, the well-known singer) had copied the derivative versions and not the traditional versions. Accordingly, the Belgium court held that copyright infringement had taken place. The factual findings regarding the subsistence of copyright in the derivative versions and which versions had been copied by Lotti were made by a panel of expert musicologists, including an eminent South African expert.

In other words, the essence of the present matter appears to be: which versions of the relevant songs were copied by Sting? If the derivative versions in which copyright is owned by Gallo, were copied, then Gallo appears to have a sound case. On the other hand, if the facts show that Sting went back to the initial traditional versions of the songs and used these versions as their source material, then it would seem that there has been no copyright infringement.

This case highlights the kind of issues which are likely to arise in the future once the communities favoured by the so-called Traditional Knowledge Act get going and start claiming their dues for the use of traditional music and other works. In these circumstances, Sting will be caught between a rock and a hard place and the use of “traditional” songs in musicals is likely to face copyright infringement claims from a variety of sources, from both the Gallos of this world and the communities (probably a plurality of them, each advancing their own cause) which claim to have originated the songs. Let the games begin!

[Note: this article first appeared on Prof. Dean’s blog, here.]

Owen Dean was appointed as a Professor at the Law Faculty of Stellenbosch University as of 2011, where he is the incumbent of the Anton Mostert Chair of Intellectual Property Law.

He is a consultant and former senior partner at Spoor and Fisher, intellectual property attorneys, with specialisation in trademark and copyright law with a special emphasis on litigation and opinion work.. He holds a B.A (Law), LL.B and LL.D from the University of Stellenbosch in, respectively, 1964, 1966 and 1989, and was admitted to practice as an attorney in South Africa in 1974, also admitted as an attorney in Namibia and Botswana.

Dean served on the Government’s Advisory Committee on Intellectual Property Law for 20 years, including as Chairman of the Copyright Sub-Committee. He is a Past President of the South African Institute of Intellectual Property Law. He conceived, and chaired the Drafting Committee of, the Counterfeit Goods Act, and as well conceived and drafted Section 15A of the Merchandise Marks Act (ambush marketing).

He is author of the “Handbook of South African Copyright Law”, and numerous other publications, serving on editorial boards and publishing in a very wide range of intellectual property publications, and is frequent speaker at events.

Dean also holds appointments to the Panel of Adjudicators for South African Domain Name Disputes, WIPO Panel of Arbitrators for Domain Name Disputes, Stellenbosch University Business School Panel of Mediators and IP Panel of Arbitration Federation of South Africa (AFSA).

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  1. J theron says

    To Prof Owen Dean.
    Dear Prof Dean”
    I am sorry that your article “Golden Oldies? South African High Court looks at what is traditional” – 29th May 2012, was not brought to my attention earlier.

    Not only did I find it extremely interesting but I would also like to thank you for putting this matter into perspective so that the public at large and the media can understand the issues at hand.

    I do have to add, UMOJA is not using traditional material to slow cultural expression or not pay anyone who’s songs it is using. UMOJA tells the History of South African music and these songs are part of that story.

    We are not in court fighting about songs like Paradise Road and Meadowlands which do belong to Gallo and were in UMOJA and for which Gallo was paid when we used them. We are fighting about songs that for years Gallo has collected money on, traditional songs as you state in your article, like Tula Baba and Unomathemba.

    UMOJA could never have used Gallo’s versions of Tula Baba as no-one prior to Sting taking Gallo to court could source a copy of Bertha Egnos’s 1963 recording of Eve Madisons version of Tula Baba. It simply is and was not available anywhere. This is the version of Tula Baba Gallo claim their original copyright in.

    The two latter versions from the Dingaka movie from 1964 are both a far cry of the UMOJA version of Tula Baba and the same can be said for their availability which we spent ages trying to track down before getting a copy from the SABC Bloemfontein library on LP. This we only got just before the court case started in 2012.

    The second song “Unomathemba” has recordings available as far back as 1956. Joseph Tshabalala first recorded his version with Gallo in 1973. Some of the versions preceding his sound more like he is infringing on their copyright. Again Umoja’s version of this song is totally different to Gallo’s.

    The third song in question is “Siliwelile” which is derived from an old church hymn “Bawelile”. Both Gospel Celebration and UMOJA’s versions have derivatives from the various versions of this very well known song which has been sung in churches every Sunday around the country for decades. The two versions of Siliwelile are different but both have similarities from the various versions of the father song “Bawelile”.

    UMOJA started in 1999 and Joyous Celebration recorded their version in the same year. I think this speaks for itself. The question is who performed it first?

    Sting music has never and never will be caught between a rock and a hard place as we will once these songs pass on to their correct owners pay the money to the rightfull copyright holders, once these songs are allocated through the Traditional Knowledge Act.

    It must be noted that it is Sting who is taking Gallo to court and not Gallo suing Sting. Gallo were and are claiming a Grand right over UMOJA. They are claiming that UMOJA must pay them 8 % of the box office taking where ever UMOJA performs locally and internationally. Sting brought an application to prevent Gallo from claiming these false claims which was and is putting UMOJA out of work as no theatre or Promoter could afford to pay the 8 % they were claiming.

    What is now left of this mammoth false claim Gallo put out 6 years ago are now these 3 songs. Gallo have no songs of their own copyright in UMOJA and are now trying to lay claim to these UMOJA versions of these 3 traditional songs.

    In all fairness if the reader wants to decide for themselves as you put it “on the other hand if the facts show that Sting went back to the initial traditional versions of the songs and used these versions as their source material, then it would seem that there has been no copyright infringement” they should listen to UMOJA’s version of the 3 songs and the 2 Gallo versions and the 1 Sony version, and decide for themselves.

    Prof. Dean I am sure you are aware of these claims Gallo have made as you acted for Gallo againt Sting in one of the matters in the two cases between Gallo and Sting that have already been heard and finalized in court. Even after all the false accusations and claims Gallo made against Sting Music, Sting won both these cases with costs, one in the Pretoria high court in Jan 2011 and the other in the appellant court in October 2010. Both these cases stemmed out of this current court case and were cases Gallo brought against Sting after Sting launched its application against Gallo.

    If Sting were guilty of what we have been accused of by Gallo and this is using their music and not paying a royalty why are Gallo not suing Sting and why is this case NOT about songs in which Gallo do hold copyright like Paradise Road.

    The games have begun and in addition to this current case being heard there are still two more that have been launched by Sting against Gallo.
    Joe Theron
    Director Sting Music and Producer of UMOJA


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