Mickey Mouse and friends lose bid for freedom in Lion King Case

The High Court of South Africa has rejected an application by Disney Enterprises Inc to free 240 trademarks, including DISNEY, DONALD DUCK and MICKEY MOUSE, and the copyright in the film The Lion King from attachment to a copyright infringement claim against the company.

The claim was filed by Stephanus Griesel, executor of the estate of Solomon Linda. Linda wrote the song "Mbube", on which the song "The Lion Sleeps Tonight", later used in The Lion King, was based. The trademarks were attached to the claim in order to assert the court's jurisdiction over Disney Enterprises, which does not have a South African business premises.

Disney Enterprises disputed the attachment on several grounds, including that Griesel failed to disclose to the court that (i) The Lion King was made by another company within the Disney Group and not Disney Enterprises, and (ii) Linda's widow assigned all her rights to the copyright in "Mbube" to US company Folkways in 1983. Disney Enterprises also claimed that as it did not make The Lion King, it had not been party to any infringement of "Mbube".

The court denied Disney Enterprises' claims. It held that Griesel had a prima facie claim of copyright infringement against Disney Enterprises by virtue of the inclusion of "The Lion Sleeps Tonight" in The Lion King, and the exploitation of the film in South Africa. The court held that Disney Enterprises had misconstrued the nature of Griesel's infringement claim. It was not based on the premise that Disney Enterprises had made The Lion King, but rather that it caused reproductions of the film to be made and distributed in South Africa by a licensee. The court held that this was a valid cause of action provided that the facts to be evidenced at trial supported Griesel's contentions.

The non-disclosure of Linda's widow's assignment of her rights in "Mbube" was also deemed to be irrelevant by the court. It accepted Griesel's argument that the widow did not hold any copyright in "Mbube" at the time that the assignment occurred, and could not hold any such copyright unless it was transferred to her by the executor, which it was not.

It is significant that the application to set aside the attachment did not rely in any way on the main substantive issues in the copyright infringement claim. Therefore, it is probably fair to assume that Disney Enterprises accepts the fundamental points upon which Griesel's claim is based. The trademarks and copyright in The Lion King will now remain attached to the infringement claim pending final resolution of the action.

Owen Henry Dean, Spoor & Fisher, Pretoria