Awakening the Lion in the Jungle

Posted on May 31, 2019

Awakening the Lion in the Jungle

“Your mandate is to find a way, and to do everything possible, to enable the children of Solomon Linda, the composer of a song called MBUBE, which later evolved into the international hit song THE LION SLEEPS TONIGHT, to derive some financial benefit from the considerable revenues generated by the popularity of THE LION SLEEPS TONIGHT. You should recommend any reasonable course of action which you can conceive and we are willing to finance it even if it means conducting litigation abroad.” This instruction came from representatives of Gallo (Africa) Limited, the South African record company. With that they delivered a pile of documents standing the best part of a metre high and left me to peruse them. This appeared to be an interesting and stimulating challenge and perhaps the opportunity of a lifetime. It was the year 2000.”

The above paragraph is the opening paragraph of an article that I wrote and was published under the title “Stalking the Sleeping Lion” in De Rebus of July 2006. It gave an account of the renowned court case before the Pretoria High Court involving the metamorphosis of a Zulu song called “Mbube” into one of the most famous and successful popular song ever, called “The Lion Sleeps Tonight”, and the legal consequences that followed. It was a classic rags to riches tale with a fairy tale ending where everyone lives happily ever after.

Unfortunately, the bubble burst sometime after the settlement that concluded the case and the story turned somewhat sour. This has all been brought to a focus in an actuality movie called “The Lions Share” which was released on their network by Netflix in May 2019. The film, in effect, has woken The Lion once again, this time in the jungle of the contemporary media where the truth can, and does, easily become the prey. The focus of the film is blurred and it necessitates a retelling of the story in which the facts of the case are told as they are. This will be done by means of a reworking of “Stalking the Sleeping Lion” that takes account of subsequent events. I continue my story.

I ploughed through the mountain of paper and steadily a pattern and coherent story emerged. The route map through the bewildering landscape turned out to be an article entitled “In the Jungle” written by the author and journalist Rian Malan and published in the 25 May 2000 edition of the magazine “Rolling Stone”, the authorative mouthpiece of the international entertainment industry. In his well-researched and revealing article Rian Malan told a sad story which smacked of the abuse of simple poor black people by music industry moguls in relentless pursuit of riches. The upshot of the story was that despite the success of derivatives of his song MBUBE, Solomon Linda had died a pauper and his descendants had been doomed to live in abject poverty in Soweto. Meanwhile, the song had bestowed bounteous riches on those who had commandeered it. The interesting and stimulating legal challenge was supplemented, if not overshadowed, by a truly righteous cause.

The publication of Malan’s article caused a considerable outcry in South Africa and set in motion the train of events described below.

The History

Solomon Linda was an uneducated Zulu tribesman who was a gifted composer and  performer of music. One of the songs that he composed was called MBUBE. The name of the song means “lion” in Zulu. He migrated to Johannesburg and took up a job as the cleaner in a storeroom at Gallo Records. By night, he performed at the local shebeens and gathering places together with a group called “The Evening Birds”. In the late nineteen thirties Gallo made his song MBUBE as performed by The Evening Birds into a record. One of the takes of the recording contained a spontaneous improvisation. Linda came up with a haunting skein of notes that was to inspire a song that comprised a melody that went on to become world famous. The record was released into the local market place and it sold well.

In the early 1950s Gallo, which had a relationship with Decca Records in the United States of America, forwarded a collection of their records to Decca with the hope that Decca would be interested in releasing some of them internationally. None of the material was, however, attractive to Decca but they passed it on to Pete Seeger, a well-known folk singer of the time. Pete Seeger listened to the material and found MBUBE to his liking. He decided to make his own recording of the song. Having no sheet music to work from, he transcribed the song from Solomon Linda’s record. He heard the Zulu word “uyibube”, meaning “He’s a lion”, as it was chanted by the Evening Birds, as “WIMOWEH” and called his song by that name, which was also the core of the vocal rendition of the song. WIMOWEH was released in the United States of America in the mid-1950s and it became a hit. It was thereafter recorded by various other people.

In the early 1960s a successful pop group in the United States, “The Tokens” decided that they wished to record the song but they wanted to update it to conform with the requirements of contemporary pop music. The song was rearranged and the lyricists George Weiss, Hugo Peretti and Luigi Creatore were brought in to give the song English lyrics. Thus was THE LION SLEEPS TONIGHT born. It was an immediate number one hit and it then proceeded to have an evergreen life over the next 40 years revisiting the hit parade on several occasions as new versions of it were made. It was also taken up into several movies but perhaps its crowning glory came when in the mid-1990s it was incorporated into the Walt Disney animated movie and stage musical THE LION KING. The song is said have made many millions of US Dollars over the years. If its South African origins were ever recognised, they were long forgotten and the song was regarded as part of American pop culture with the credit going to Weiss, Peretti and Creatore.

Contemporaneously with the song migrating to the United States, Solomon Linda entered into an assignment of his copyright in MBUBE with Gallo Africa. This was in 1952 and the consideration payable to Solomon Linda in the Deed of Assignment was 10 Shillings. Gallo then registered the United States copyright in the song in its own name. When Pete Seeger recorded WIMOWEH, the copyright in that song became the property of an American company called Folkways, a music publisher. Although WIMOWEH incorporated the melody of MBUBE, it was an original work in its own right and enjoyed a separate copyright. In 1962, Solomon Linda died leaving his wife Regina as his sole heir in terms of the South African law of intestate succession at that time. The marriage between Solomon and Regina produced four daughters but the daughters did not inherit at that time. In 1982, the MBUBE copyright in the United States of America came up for renewal into its second 27-year term. Under United States copyright law, the right to renew the copyright in a work into its second term vested in the author or his heirs. Folkways secured an assignment of whatever rights of copyright Regina held in MBUBE from her. They then registered MBUBE in its renewal term in their own name. Regina died in 1990 leaving a will (drafted by Folkways’ South African lawyer) in which she left all her assets to her four daughters. Soon thereafter, in 1992, Folkways secured yet a further assignment in its favour from the four daughters of whatever rights they might have held, or might in the future come to hold, under the copyright in MBUBE. One of these daughters was to die of AIDS before the events described below took place. No effort was spared by Folkways in ensuring that Solomon Linda and all his decedents divested themselves of any possible vestiges of the copyright in MBUBE that they might have held or might someday hold.

It should be mentioned that in the early nineteen nineties Folkways was locked in battle with a company called Abilene Music (which was the vehicle of Weiss, Peretti and Creatore for managing the copyright in THE LION SLEEPS TONIGHT). Folkways contended that by virtue of their ownership of the copyright in WIMOWEH, they also owned the copyright in the later derivative, THE LION SLEEPS TONIGHT. Abilene came out on top in that contest and became, at least as far as United States was concerned, the unequivocal owner of the copyright in THE LION SLEEPS TONIGHT. This was a logical decision because, although it comprised elements of WIMOWEH, THE LION SLEEPS TONIGHT was a separate and distinct work for copyright purposes, containing original material such as the lyrics, and it enjoyed its own copyright. An interesting and surprising element of the outcome of this litigation was that for some reason, which was not readily apparent, a ruling was made that 10% of the performing rights in respect of THE LION SLEEPS TONIGHT should be paid by Abilene to the heirs of Solomon Linda.

It must be appreciated that at that time there were three separate and distinct copyright works, viz. MBUBE, WIMOWEH and THE LION SLEEPS TONIGHT. Abilene owned the copyright in the last mentioned work, while Folkways owned the copyright in the other two works. Because MBUBE was in fact comprised in each of the other two works, any use of the other two works in theory also amounted to use of MBUBE. Anyone who wished to use either WIMOWEH or THE LION SLEEPS TONIGHT required the permission of the copyright owner of these works and in addition the permission of the MBUBE copyright owner.

Analysis of the History

The mountain of documents holding the key to a possible claim by the Linda heirs handed over to me comprised all sorts of items including a plethora of agreements between Gallo Africa and Folkways relating to MBUBE and WIMOWEH. These documents were confusing and often contradictory but their general impact was to give rights to MBUBE and WIMOWEH to Gallo in African countries, and to confer these rights on Folkways throughout the rest of the world. Cross licences were entered into to ensure that both parties benefited to some extent in the worldwide exploitation of these two songs. There were no agreements in the bundle submitted to me relating to THE LION SLEEPS TONIGHT. It was out of the orbit of both Gallo and Folkways..

Apart from the obscure 10% royalty edict in favour of the Linda heirs (which was never implemented and which did not actually grant any enforceable rights in favour of the heirs), an analysis of all the material furnished by Gallo did not bring to light any cause or claim which the heirs of Solomon Linda, or Gallo Africa for that matter, could pursue to obtain any monies from the exploitation of THE LION SLEEPS TONIGHT. Gallo’s quest seemed a hopeless case and a reason for despair. The situation was, of course aggravated by the assignments of copyright that Regina and her daughters had executed in favour of Folkways. Hope, however, came from another completely remote source.

In 1989 I was awarded the degree of Doctor of Laws (LLD) at Stellenbosch University. The title of my doctoral thesis was “The Application of the Copyright Act, 1978, to Works Made Prior to 1979”. In researching and writing my doctoral thesis I gave consideration to the British Copyright Act of 1911, known as the “Imperial Copyright Act” because the British Government of the day made it law throughout Britain’s possessions and territories in its Empire, which at the time included South Africa as well as countries like Australia, New Zealand, Canada, India etc. This act had a curious provision to the effect that where the author or composer of a copyright work assigned or transferred his copyright to another during his lifetime, that copyright reverted to his heirs 25 years after his death. This returning copyright was known as the “reversionary interest”. The existence of this historic reversionary interest was virtually unknown anywhere in the world in the modern era. I subsequently learned that it had been introduced into British law in the late eighteen hundreds to cater for the interests of the family of Charles Dickens. During his lifetime, Dickens had assigned away all his copyrights to publishers and he had not left the wherewithal to his family to enable them to cope with daily living. All the income from the sale of his books was going to his publishers. The relevant provision of the British copyright law was introduced in order to redeem the plight of the Dickens family. It became known as the “Dickens Clause”. It brought welcome relief to his family as they were placed in a position to receive royalties from the exploitation of his works. It seemed to me that the plight of the Linda family was similar to that of the Dickens family all those years ago.

The 1911 British Copyright Act was incorporated lock stock and barrel into South African copyright law in the Act of 1916. Although the 1916 Act had been subsequently been repealed in South Africa, the Dickens Clause had partially survived and continued to apply in South Africa in respect of works made during the period 1916 to 1965. The crucial question was whether it could be invoked to create cause of action for the Linda heirs in the present matter and could provide the key to unlock a flow of income to them from the exploitation of THE LION SLEEPS TONIGHT.

Application of the Reversionary Interest

MBUBE was composed by Solomon Linda in the nineteen thirties. Linda assigned his copyright to Gallo in 1952. Both these events occurred during Linda’s lifetime and during the window when the Dickens Clause continued to be in operation in South Africa. The Linda family were thus in exactly in the same position as the Dickens family had been. This meant that upon his death in 1962, Solomon Linda’s Estate acquired the reversionary interest in MBUBE. In other words they there and then acquired the right to receive ownership of the copyright 25 years later. However, the actual reverted copyright would only vest in his estate after the elapse of 25 years, namely in 1987. Although the chickens were flying in 1962 already, they would only come home to roost in 1987.

I was elated at this discovery. However, there appeared to be a problem. At first blush, it seemed that there was a fatal obstacle in applying the Dickens Clause to the Linda situation. This was due to the fact that, firstly Regina in 1983, and thereafter the daughters in 1992, had divested themselves on their rights under the copyright in MBUBE by virtue of the assignments that they had entered into in favour of Folkways. It seemed as though this line of reasoning had lead into a cul-de-sac. The moment the copyright in MBUBE vested in the family by virtue of the reversionary interest, the aforementioned assignments lying in wait would be activated and the copyright would pass without any further ado to Folkways. However, solace came from a detailed analysis of the Dickens Clause. The section provided that the reversionary interest devolved upon the Executor as an asset of the author’s Estate, and not directly on the family. The Executor had the power to deal with the reversionary interest in the same way as he could deal with any asset in an Estate. He could pass the reversionary interest to one or more of the heirs if he deemed it appropriate, or he could transfer it to a third party and pass to the heirs the monetary value realised by such transfer. It was necessary, no matter to whom the Executor transferred the reversionary interest, that he should enter into a written Deed of Assignment effecting transfer of the rights. The heirs of the author only became the owner of the reversionary interest if and when such interest was assigned to them in writing by the Executor. This had not happened in the present instance. Accordingly, when Regina in 1983, and the daughters in 1992, entered into assignments of copyright in MBUBE, neither the reversionary interest nor the copyright vested in them and they therefore did not have the power to transfer these rights to Folkways. In other words, the assignments were of no practical force or effect. This would remain the case for as long as the family never acquired the copyright. It would be fatal to their interests if they should ever become the copyright owners. The moment that they became owners of the copyright the assignments of copyright in favour of Folkways would be activated and the copyright would then, as it were, immediately fly out the window and become vested in Folkways.

On a proper construction the of the matter the copyright in MBUBE vested in the Executor of Solomon Linda’s Estate in 1987 and would remain in his hands until such time that he assigned it to another party, which in no circumstances should be any of the daughters. Further research showed that, like South Africa, other countries that were formerly part of the British Empire had also preserved the reversionary interest created by the Dickens Clause of the 1911 Imperial Copyright Act, up to the present time. As a result, what the Executor held was not only the reverted copyright in South Africa but also the reverted copyright in all countries that were former British possessions, as well as in Britain itself. Indeed a large and valuable chicken had come home to roost with the Executor in 1987!

The way forward was clear. The Executor in the Estate of the late Solomon Linda could enforce the copyright in MBUBE in South Africa and in any country which was formally part of the British Empire, including the United Kingdom itself. He would be in a position to make a claim of copyright infringement against anyone performing any acts in relation to THE LION SLEEPS TONIGHT falling within the scope of the copyright in MBUBE which was embodied in THE LION SLEEPS TONIGHT

Gallo to the Rescue

I reported the results of my research and deliberations to Gallo in a formal written opinion. A period of some two years then passed without any reaction from them. In the meantime, Rian Malan and Hanro Friederich, an attorney assisting the Linda family, were following up various options aimed at deriving remuneration from the use of THE LION SLEEPS TONIGHT. Their hopes were based on equitable arguments and what they knew of the contractual arrangements that had been entered into by Gallo and others. I knew from my investigations that they were going down blind alleys but client privilege and confidentiality prevented me from intervening in any way. Eventually Gallo sprang into action and formed an alliance with Malan, Friederich and the family to take the matter further. They arranged a meeting of all the parties with me. It was decided that everything possible to establish the family’s claim to the copyright in MBUBE should be done, no matter what the cost might be. My fees and the costs generally would be borne by Gallo.

The common view was that the best and most effective way of getting recognition of the Linda Estate’s rights would be to conduct a test court case. My untried and untested theory of relying on the reversionary interest had to be accepted by an authoritative court. The primary purpose of the court case was to establish the Linda Estate’s right to obtain remuneration from the use of THE LION SLEEPS TONIGHT by claiming that use of this song without their licence, as the owner of the underlying work MBUBE, constituted and infringement of their copyright. My own experience had been the test cases could be very effective. The rationale of a test case is that it must establish a principle and make it generally known. The best way of achieving these objectives is to make the case as high profile as possible. Exacting payment of damages for past infringements was the long-term objective, but the immediate objective was to get a court to pronounce on the validity of the legal theory on which a claim for damages would be based. Once the principle was established, recovery of damages from users of THE LION SLEEPS TONIGHT would logically follow as a matter of course and it might not even be necessary to litigate in order to attain the objective of exacting payment of damages.

The question arose during our discussions whether an attempt should be made to set aside the 1952 assignment agreement. Perhaps it could be argued that Solomon Linda had been misled into signing it or that he had not personally executed it. I immediately quashed this notion by pointing out that we were entirely reliant on that agreement to trigger the operation of the reversionary interest. The last thing that we wanted to do was to set it aside and deprive ourselves of the whole basis of the cause of action that had been developed.

Formulating the Case

The envisaged court case now had a cause of action and a plaintiff, namely the Executor of the Linda Estate, the copyright owner, had been identified. What was next required was a suitable defendant. Abilene Music, the licensor and claimed copyright owner of THE LION SLEEPS TONIGHT, the obvious candidate, was located in the United States of America and as far as could be ascertained did not conduct any business outside that country. Since the Executor’s rights were confined to countries which were formerly members of the British Empire, and did not extend to the United States of America, there appeared to be no basis on which any suitable court could have jurisdiction against Abilene Music. Another defendant had to be sought. The choice of defendant fell upon a licensee which was operating within the jurisdiction of the court of an appropriate country and against which that court could exercise jurisdiction.

After considering various possibilities, the choice fell on Walt Disney. Disney had released the movie THE LION KING throughout the world and moreover the stage show THE LION KING was playing in London. Disney appeared to be an ideal target because it was a very high profile user of THE LION SLEEPS TONIGHT. Moreover, by virtue of its pre-eminent position in the entertainment industry it would be in a good position to bring pressure on Abilene to meet the Executor’s demands. It was surmised that Disney obtained a licence from Abilene to incorporate THE LION SLEEPS TONIGHT in the musical THE LION KING and that Abilene had probably given an indemnity to Disney in terms of that licence. This in effect made Disney a surrogate defendant for Abilene Music. Gallo and all the other parties agreed that Disney was an excellent choice and that the British court would be the ideal forum for the test case. I was instructed by Gallo to go ahead and implement the plan to sue Disney in London for copyright infringement. I proceeded to do so. I canvassed the proposed litigation with specialist British copyright solicitors, who concurred with the feasibility of our proposed case and I set the wheels in motion.

First, an Executor had to be appointed for Solomon Linda’s estate, some 42 years after his death. The Executor would be tasked with having to deal with an asset in Solomon Linda’s estate that was unknown at the time of his death, but had now come to light. An approach was made to the Master of the High Court in Pretoria and the whole issue was canvassed with him. After a long investigation into how the current law dealt with the estates of persons of African ethnicity who died in 1962, it was determined that the authority to appoint an Executor in the Linda Estate lay with the Magistrate of Johannesburg. The Magistrate’s records of this nature going back some forty years reposed in the State Archives. After meticulous and ardent search, the file winding up Solomon Linda’s estate in 1962 was located and re-opened. It revealed that the sum total of his worldly goods, being the sum of R145.00, had been transferred to his wife, Regina. The Johannesburg Magistrate appointed Stephanus Griesel, a Chartered Accountant, as the Executor in the re-opened Estate.

A strong emotional reaction had been evoked by the plight of the Linda heirs. This was viewed against the background of the success of the song. We reasoned that a claim brought by the Executor against Disney would arouse widespread public sympathy and solidarity and that this would place pressure on Disney to resolve the matter expeditiously rather than have to endure long drawn out litigation. With this in mind the strategy was developed that as much worldwide publicity as possible should be generated for the case. Indeed, the strategy was to conduct a “propaganda” campaign as much as a legal case against Disney. It would be a two-pronged attack.

After the executor had been appointed and the preparations for launching proceedings in London had been brought to a head, a meeting was held with Gallo to get the final go ahead to launch the case. Gallo, however, did a complete turnaround and advised that it was no longer willing to support the proposed litigation because its sister company in the Johnnic Group, namely Nu Metro Home Entertainment (Pty) Ltd, was the South African licensee of Disney in respect of the movie THE LION KING. This announcement came as a devastating bombshell for Hanro Friederich, Rian Malan and me. Without Gallo’s financial backing the case was a non-starter.

Launching the Litigation

The project appeared to have reached a dead end with Gallo’s decision. However, by now the project had been going for three years already and the worthy cause had gathered such momentum that in my view there was no turning back. Too much emotional and intellectual energy had been invested in it too simply walk away and abandon the project. Hanro Friederich and I decided that we would go ahead anyway. This meant that alternative funding for the project would have to be obtained. With the tenuous position regarding the funding of the project, it was decided that it would be foolhardy to launch the litigation in the United Kingdom as had been originally envisaged because the costs would be far too high in comparison with what equivalent litigation in South Africa would cost. It was therefore decided that the case must be brought in South Africa. But then a further problem cropped up, namely that Disney Enterprises Inc, the company which owned the copyright in THE LION KING production and indeed all Disney’s intellectual property, did not have a presence in South Africa. The South African court would therefore have no jurisdiction against it. This obstacle could however, circumvented. It was realised that Disney owned very valuable property in South Africa, namely in excess of 200 registered trade marks, including such marks as MICKEY MOUSE, DONALD DUCK etc. Moreover, it had registered the copyright in the movie THE LION KING in South Africa. These items of intellectual property constituted property that could be attached in order to found jurisdiction against Disney Enterprises Inc before the South African court.

Once the decision had been taken to sue Disney in South Africa, it was necessary for the strategy to change. The initial thought was to bring an application for an interdict restraining Disney from exploiting THE LION SLEEPS TONIGHT in the LION KING movie in South Africa. While damages could not be claimed in application proceedings, the advantage of this form of proceeding was that all the evidence would be adduced by means of affidavits. This means that the proceedings would be quicker and far less costly than bringing the matter to a trial in action proceedings. A successful application would achieve the objective of getting the court to rule on the validity of the cause of action based on the reversionary interest.

However, we then realised that attachment to found jurisdiction against a foreign litigant was only possible where the relief sought was a monetary payment. This meant that we had to bring an action for damages against Disney, i.e. to recover the money not earned by the Estate due to non-payment of the royalties that ought to have been forthcoming for the use of the song. But, the damages claimable against Disney in South Africa would be a minimal amount. They would boil down to no more than the royalties that would have been payable by Disney for showing the animated movie comprising the song THE LION SLEEPS TONIGHT (and approximately twenty other songs) in South Africa and for publicly performing the sound track version of the song over the radio and elsewhere. Disney was, of course, not responsible for any other manner of use of the song in South Africa. At a generous estimate we reckoned that these damages would at most be around R20 000. We felt that this amount would be trifling to Disney and that a figure for damages that would at least cause them to sit up and take notice should be claimed. At a thumb suck we settled on the round figure of USD 1 million, which converted roughly to R16 million. Obviously, this grossly trumped up figure would never be awarded by the South African court in this particular case in a million years, but it sounded good. This amount was inserted in the damages claim.

In order to acquaint myself with the daughters and their living circumstances, I visited them at their house in Soweto. Hanro accompanied me. The daughters trusted him but they had a lively mistrust of lawyers in general because the felt that they had been betrayed by the lawyers with whom they had dealt in the past. They had believed that a Johannesburg lawyer was previously helping them but it had turned out that he was being paid by Folkways and was in fact looking after their interests. I explained as best I could where I fitted into the picture and how we were going about pursuing the present matter on behalf of their father’s estate, which would ultimately be to their benefit. I believed that I had at least to some extent gained their confidence. I had subsequent contact with Elizabeth, the most articulate of the daughters. At the conclusion of the case, she and I appeared together on a SABC television chat show at which the case and its outcome were discussed in some detail. Throughout the case Hanro maintained contact with the daughters as he was representing their interests. He gave them feedback on what was happening.

In June 2004 an ex parte application (i.e. a proceeding in which there is only one party, namely the applicant, in this case the Executor) in the name of the Executor was brought before the Transvaal Provincial Division of the High Court of South Africa. In this application the Executor’s copyright infringement cause of action against Disney Enterprises Inc was outlined and an order attaching Disney’s registered trade marks and the copyright in THE LION KING in order to found the court’s jurisdiction against Disney in the action to be instituted against it was sought. This application was granted and an action was duly instituted.

At the same time, Disney’s South African licenses were joined as co-defendants with Disney. The news of the attachment and of the institution of the proceedings spread around the world in an instant and it attracted considerable interest and comment. In particular, the fact that MICKEY MOUSE, DONALD DUCK and their friends had been “taken hostage” in South Africa by means of the attachment caught the public’s imagination. Indeed, one of the reasons why Disney was attractive as a target was its susceptibility to publicity and its likely aversion to bad publicity. This factor, in our estimation, would cause it to put pressure on Abilene and would motivate it to make the litigation go away. The flames of the adverse publicity fire for Disney were fanned to the utmost all around the world with this objective in mind. It was all along felt that the best outcome for the litigation would be for the case to be settled in a manner that conceded the validity of our copyright infringement claim. This was the prize. The costs of pursuing the litigation all the way to a trial were daunting particularly in the light of our parlous financial position. We gambled that the case would not go the full distance.

It should be mentioned that at the stage when the litigation was launched we had no funding whatsoever for it. We engaged senior and junior counsel, Cedric Puckrin SC and Reinard Michau, the leading intellectual property advocates, to act on behalf of the Executor on a contingency basis. This meant in terms of the Bar Council rules that they would act pro bono but would be entitled to charge double their normal fees if the matter was successful and those costs could be covered. A formal agreement to this effect as required by the Bar Council was entered into with them. Hanro Friederich had his own financial arrangements with the family. I was prepared to defer charging for my services according to standard rates unless and until sufficient funds had become available to pay them. This meant that I could have ended up acting pro bono. We were all prepared to act in this manner because we felt considerable empathy for the family and were moved by the justness of our cause.

The main thrust of the Executor’s case against the defendants was that Disney’s local South African licensees had commercially exploited the song, or the film THE LION KING comprising the song, in South Africa without the authority of the copyright owner of MBUBE, and had thus infringed copyright. It was claimed that Disney had caused its South African licensees’ actions in that respect and therefore was a contributory copyright infringer. Interdicts restraining further unauthorised use of THE LION SLEEPS TONIGHT, damages, as well as various other forms of ancillary relief were sought against the defendants. Of course, relief could only be claimed in respect of the defendant’s activities in South Africa. Uses of the song outside South Africa were beyond the ambit of the South African court. Damages in respect of those activities would have to be claimed in the countries where they took place, in separate actions.

Meanwhile concerted efforts were made to find alternative financiers or sponsors for the litigation. These efforts proved to be successful. It came about when we eventually approached the Department of Arts and Culture and they agreed to fund the litigation up to a certain amount. We thought that the amount would be sufficient to cover the legal costs of the envisaged action, particularly if it was settled, as we hoped would be the case. We did not, however, foresee the counter attack that Disney was about to launch. It catapulted the costs over the projected amount. By this time Hanro Friederich and I stood completely alone. Gallo had deserted us and Rian Malan had faded into the background. We were relieved that we had at least secured some measure of financial support in our perhaps somewhat quixotic quest against the mighty Disney Empire.

The Disney Empire Strikes Back

Disney responded to the institution of the action both swiftly and severely. Within a matter of weeks they brought an urgent application to the court to set aside the attachment of its intellectual property. In addition, steps were taken to bring pressure to bear against me personally, inter alia, by seeking a costs order against my firm, Spoor & Fisher, ex bonis propriis. This would entail payment of Disney’s costs out of our own personal pockets – a form of penalty imposed by the court to show its displeasure at the conduct of an attorney. They also orchestrated my dismissal as the attorney of the Motion Picture Association of America, a prestigious position that I had held for two decades.

The application was brought on several grounds. It was claimed that the Executor had not properly been appointed and therefore had no locus standi or power to institute the litigation against them. Disney further claimed that material information pertinent to the Executor’s claim had not been brought to the attention of the court in the papers seeking the attachment of the marks. More particularly, it was argued that the assignments by Regina and the Linda daughters, respectively, were not disclosed to the court and this was a serious omission on the part of the Executor. On the substantive law, it was claimed that, by virtue of the fact that their subsidiary companies (and not themselves) had done no more than grant licences to South African agents to exploit the film THE LION KING in South Africa, they had not contributed to any infringement of the copyright in South Africa. After a fiercely contested hearing, the court dismissed Disney’s application, finding that the Executor had made out a prima facie case against Disney, in other words a case that was accepted to be correct unless proven otherwise. The court refuted each of the grounds on which Disney had based its case. No award of costs was made in the application on the basis that the matter was proceeding to trial in due course and the costs issue could be properly decided in such trial. The court did, however, specifically order that no costs should be payable by Spoor & Fisher as it was satisfied that there was no basis or grounds for seeking such an order.

The court’s decision in the application endorsed the Executor’s case against Disney and dealt with all the significant legal issues, deciding them on a prima facie basis in favour of the Executor. It is significant that Disney was not able to challenge the applicability and the operation of Dickens Clause as conferring a reverted copyright upon the Executor as an asset in the Estate of the late Solomon Linda. The court’s decision had the effect that our original objective had been achieved. Our cause of action based on the Dickens Clause had been approved by the court. Our job was done! The down side was that it had used up a large portion of the funding that had been provided by the Department of Arts and Culture and the trial, which would be the main money-spinner, was yet to come.

The publicity given to the case extended worldwide and offers were received from lawyers in other countries such as the United Kingdom, Canada, Hong Kong and France to bring corresponding cases on a contingency basis in their countries. It was intimated to Disney that further cases in foreign jurisdictions were in the offing.

Finalising the Action

Subsequent to the dismissal of the application to set aside the attachment, the damages action continued. It was set down for trial on 21 February 2006. Disney based their defence on essentially the same grounds as had been advanced in its application to set aside the attachment. Certain further defences, mainly of a legal technical nature, were, however, also advanced. These included a concerted challenge to the originality of MBUBE as a copyright work. Disney contended that it was not in reality composed by Solomon Linda, but rather was a traditional song picked up by him. It was in the public domain and was free for use by all. This claim was a cause for concern. If established, it would have been fatal to the Executor’s case and would have been the death knell of ever being able to claim any remuneration for the direct or indirect use of MBUBE. The family’s bird that had come home to roost would have turned out to be a dead duck!

Shortly before the trial date, settlement negotiations took place between the parties. These negotiations also involved Abilene Music. This company was drawn into the settlement negotiations by virtue of its position as the licensor, directly or indirectly, of all the defendants. It had given Disney an indemnity when granting the licence to use THE LION SLEEPS TONIGHT. Disney called up this indemnity and required Abilene to make good its undertakings to reimburse it for any losses incurred due to blemishes in the licence. This emphasised the point that Abilene Music was in fact the true defendant in the proceedings, although it was not before the court.

The negotiations gave rise to a settlement agreement that met all the objectives of the Executor in launching the case. Abilene undertook to pay to the Executor a lump sum amount of money by way of compensation for past uses of THE LION SLEEPS TONIGHT. Furthermore, it undertook to pay royalties to the estate in respect of all future uses of the song, on a worldwide basis, for the next ten years. This was a very beneficial deal for the Estate. Damages for South Africa only had been claimed in the case. The Estate owned the copyright only for the British countries. It had no rights for the rest of the world, including the USA. Moreover, the term of the South African copyright in MBUBE (Solomon Linda’s lifetime plus fifty years) was due to expire in 2012, five years hence. The Estate was being given royalties for five years beyond the expiration of its rights. The royalties due to the Estate would be calculated on a percentage of all receipts from uses of THE LION SLEEPS TONIGHT that accrued to Abilene, as the copyright owner. It should be mentioned that Abilene was licensing under their own copyright in THE LION SLEEPS TONIGHT and only a relatively small portion of the royalties that they received could be attributed to the underlying work, MBUBE. Their song, THE LION SLEEPS TONIGHT, was making the money, not MBUBE.

Disney and Abilene would publicly acknowledge that THE LION SLEEPS TONIGHT was derived from MBUBE. Solomon Linda would henceforth be designated as a co-composer of THE LION SLEEPS TONIGHT. It would be recognized that THE LION SLEEPS TONIGHT was in essence a South African song. This was important to the Department of Arts and Culture. The settlement further provided that the Executor would withdraw the litigation and all further claims on behalf of the Estate against Abilene or any of its licensees would be waived. A trust must be appointed by the Executor to administer the funds which would flow to the heirs arising out of the settlement. The details of the payments to the Estate were to be strictly confidential. Any breach of this obligation could lead to the agreement being cancelled and all the payments being forfeited. I believe that Disney insisted on this provision as it did not want to create a precedent of being seen to pay large amounts to simply anyone who might in future be tempted to come forward with a spurious claim against them.

The effect of the settlement was to confirm the prima facie findings of the court in its judgment in the application to set aside the attachment, and in this sense the court’s decision in that application was made final. Importantly, it avoided the possibility that the trial court could find that MBUBE was a traditional work and was not the subject of copyright.

The legal team was delighted with this settlement and had no hesitation in recommending that it should be accepted. In reality, the Executor had no choice. It was a no brainer. The funds advanced by the Department of Arts and Culture had run out and no further funding for the trial was on hand. It would cost vast sums of money to take the case through to its final conclusion. If the case were to be unsuccessful, the Estate would have to pay the Defendants legal costs, in addition to its own further costs. Even if the case were to be successful there was always the prospect of an appeal which would have incurred further substantial cost liabilities. There was simply no money available for any of this. We were chasing damages in the amount of around R20 000 and it would have made no sense to spend many multiples of this sum (that we did not have) in realising this goal.

Although they were not actually involved in the litigation, not having been parties to the proceedings, the settlement was discussed with the daughters and explained to them, inter alia by Rian Malan. They agreed to it and each of the daughters signed the settlement agreement, which clearly set out the terms of the settlement, including the financial arrangements and the sums of money involved.

Consequences of the Settlement

The settlement acknowledged that THE LION SLEEPS TONIGHT has a South African origin and is thus an element of South African culture. Furthermore, it demonstrated that the reversionary interest in copyright is available to the heirs of South African authors who created their works during the period 1916 to 1965. Indeed, it showed a similar availability to the heirs of authors who created works in any country in which the 1911 Imperial Copyright Act was in force if the works in question were made during the currency of that legislation. The family of Bob Marley who had been a native of the West Indies, a former British territory, consulted me in this respect. Israeli lawyers also consulted me because the Imperial Copyright Act had operated in that country as well.

In particular, the settlement demonstrated what steps could be taken by the heirs of South African authors whose works had been appropriated by others and whose heirs have perhaps not been paid proper compensation, so that a commercial wrong could be redressed. This facility is of particular importance to the heirs of those South African authors who suffered legal and economic disabilities under the Apartheid system.  The Department of Trade and Industry is currently promoting a Bill to amend the Copyright Act to introduce a provision that will limit the effect of any assignment of copyright to a period of twenty-five years. This harks back to the Dickens Clause and to this court case.

From the point of view of the Executor, the settlement was a very satisfactory result. By relying on a right derived under South African copyright law, the Executor was able by means of a single court case to bring about a worldwide recognition of the rights of the Estate and to achieve a flow of money to the heirs arising from the exploitation of THE LION SLEEPS TONIGHT throughout the world. This had been secured from a company that was not even a party to the litigation. It had taken all of six years. After a lengthy period of being stealthily stalked, the sleeping lion awoke with a start.

On a practical level, immediately after the signature of the settlement agreement the lump sum payment from Abilene was made to the Executor. He set about winding up the Estate in the standard manner. He paid the debts owed by the Estate. These included the counsels’ fees (which had become payable by virtue of the contingency agreement), a large sum of money to the Fiscus in Estate Duty, and the fees and disbursements for the administration of the deceased Estate. A small portion of Spoor & Fishers fees that had not been covered by the funding from the Department of Arts and Culture was also paid. At this stage, the matter was approached on a standard business basis. A very favourable financial outcome to the case had been achieved. The Estate had received a sufficient injection of funds for it to afford dealing with the matter in this way and still have a substantial residue to disburse to the heirs. This amount would also be supplemented by a flow of meaningful royalties for the next ten years.

The Trust was duly formed as required by the settlement agreement. It was also necessary from the point of avoiding the heirs becoming the copyright owners, which would have had the dire consequences described earlier. Some other entity was required to become the copyright owner. The Trust was well suited for this purpose. Furthermore, the daughters, as persons unfamiliar with financial management and international money transactions involving exchange control, were ill equipped to manage the finances of the royalty receipts and distribution. The Trust could perform this function on behalf of its beneficiaries, the family.

I wanted to put distance between myself and Spoor & Fisher, on the one hand, and the Trust, on the other hand in order to obviate any suggestion that the firm had acted in the case in order to place itself in position to control the flow of money. Both the firm and I are intellectual property specialists and were not in the business of administering trusts.

Consequently, I chose and approached certain appropriate individuals to act as Trustees. I selected Hanro Friederich, who as the family lawyer had made the whole journey, Nick Motsatse, the CEO of the South African Music Rights Organisation which administered royalty collections on behalf of composers, and an individual who was a leading figure in the Record Industry, on account of their various expertises. I also approached Rian Malan to get him to act as a Trustee in view of his involvement in the matter and with the daughters, but he declined. The record industry man resigned after a short while. It had become apparent that the management of the Trust required financial expertise. I accordingly approached Glen Dean (no relation), the financial manager of Spoor & Fisher, to become a Trustee purely in a personal capacity and not as a representative of the firm. He accepted the position. This team managed the Trust for several years, acting on a non-remunerative basis. Nick Motsatse resigned after a while and, at the daughters’ insistence, was replaced by Themba Dlada, a relative of the family.

All the Trustees that I recruited complained that performing their function was a demanding experience and they sooner or later found it to be too much, causing them to resign. Ultimately, the Trust was left in the control of Themba Dlada and people whom he recruited.

The Executor formally assigned the copyright in MBUBE to the Trust and the Trust set about performing its primary function of administering the flow of royalties. The residue of the assets of the Trust, which was a substantial amount, was distributed to the heirs.

The daughters became disenchanted about the amount of the money they were receiving. Unfortunately, they had been led to believe by others that they would be receiving a vast deluge of millions of Rands. This was a mistaken belief, perhaps influenced by the trumped up amount of damages stated in the papers in the court case. They would be receiving a large amount of money, but nothing like to the extent that they were expecting.

A factor that to my knowledge has not been investigated is whether Abilene has meticulously carried out their obligations of transferring the requisite share of the monies that they receive from the use of THE LION SLEEPS TONIGHT to the Trust. The amount that they should be transferring is peculiarly within their own knowledge. According to the Netflix movie, each of the daughters has received in the region of R3.5 million.

The Future

The settlement agreement has run its course. No further royalties are expected to flow in terms of it. The South African MBUBE copyright and the copyright in most other former British Countries expired seven years ago. The song has been in the public domain for this period. The daughters must accept this position. It is the law. Copyright has a limited lifespan.

In principle all is not, however, necessarily lost. The settlement only dealt with the Trust’s claim of copyright against Abilene and its licensees, including Disney. Many others have used THE LION SLEEPS TONIGHT and WIMOWEH, including Folkways, over the years without being licensed by Abilene or paying royalties to the Linda heirs. Actions for copyright infringement perpetrated during the life of the copyright could be pursued against them. Furthermore, in certain ”British” countries, including the UK, Australia, New Zealand and Canada, the term of copyright in musical works has been extended to seventy years beyond the composer’s death. Ongoing copyright infringement claims can be brought in these countries until 2032. Charles Dickens has left the family a valuable legacy. However, pursuing any such claims will require expenditure of large sums of money. Few professionals are likely to extend charity to individuals who have been the recipients of millions. Here is an opportunity for philanthropists who believe that individuals ought to be able to benefit from litigation without paying for it.

Prof Owen Dean

Note on accreditation: The above article contains text that was first published in the July 2006 issue of De Rebus in an article entitled “Stalking the Sleeping Lion”, authored by Prof Owen Dean. Permission to republish the contents of the original article on the IPStell blog has been granted by De Rebus.

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