Bress Designs (Pty) Ltd v G Y Lounge suite Manufacturers (Pty) Ltd and another 1991 (2) SA 455 (W) | Tobias Schonwetter | January 12, 2016

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Bress Designs (Pty) Ltd v G Y Lounge suite Manufacturers (Pty) Ltd and another 1991 (2) SA 455 (W)

BRESS DESIGNS (PTY) LTD v G Y LOUNGE SUITE MANUFACTURERS (PTY) LTD AND ANOTHER

1991 (2) SA 455 (W)  

Citation 

1991 (2) SA 455 (W) 

Court

Witwatersrand Local Division 

Judge

van Dijkhorst J 

Heard

March 7, 1990; March 8, 1990; March 9, 1990 

Judgment

March 29, 1990 

Annotations

Link to Case Annotations 

 Judgment

Van Dijkhorst J:

The applicant claims confirmation of a rule nisi granting it a temporary interdict (pending the outcome of an action to be instituted for a final interdict) against the first and second respondents restraining them from:

   (a)   infringing applicant's alleged copyright in a 'Fendi' lounge suite by reproduction or sale;

   (b)   passing off their 'Pisa' lounge suite as emanating from or as being connected to the applicant;

   (c)   competing unlawfully with the applicant by copying the latter's Fendi lounge suite and selling such copy to the public in competition with the applicant.

  Some ancillary relief is also claimed.

   The applicant and first respondent are furniture designers, manufacturers and suppliers and the second respondent is a furniture retailer. All conduct their businesses in greater Johannesburg. The second respondent did not oppose the application and no order for costs is sought against it.

    For approximately four years the applicant has been manufacturing, marketing and selling lounge suites under the name Fendi. The applicant claims copyright in terms of the Copyright Act 98 of 1978 in this suite on the basis of the following facts set out in the founding affidavit of Mr Bress, its managing director. Towards the end of 1985 Bress decided to create a new model lounge suite which would be called the Fendi. He had seen a picture of a three-seater sofa which was being manufactured in the United States of America by Preview Furniture Corporation (Preview) and which had at no time been manufactured or distributed in the Republic of South Africa. A photograph of the Preview sofa annexed to the papers shows that it is of a distinctive and unusual design, its predominant distinctive feature being the 'M' shape thereof. Presumably the frame of that sofa is made of hardwood. Instructed by Bress, a qualified furniture frame-maker in the employ of the applicant proceeded making a full size two-seater prototype model of the lounge suite in wood. He had to make approximately four models to ultimately achieve an acceptable one. Once they were satisfied with the wooden prototype, a metal frame was produced by using the wooden frame. They had decided that metal would have to be used as they did not have access to the hardwoods used in the United States of America. The metal frame was, however, not a 'carbon copy' of the wooden frame. The metal frame was produced by an engineering company on the instructions of the applicant. The applicant pop-rivetted plywood to the metal frame in order to receive the attached leather or fabric covering. Elastic webbing was used on both the seat and arms of the sofa frame. The webbing creates the springing mechanism for support and comfort. A specific density and thickness of foam in the covering, a specific type of stitching for the fabric and a specific angle of rake (being the angle between the seat and the back of the sofa) were used. The preparation of the patterns which are used to cut the fabric for covering the sofa was a lengthy process and, after much trial and error over a period of approximately six weeks, the applicant eventually achieved patterns that were found acceptable. These were drawn on to cardboard templates and then the patterns were cut by a cutter in the employ of the applicant according to the drawing. In the cutting process no real skill is involved. Once the material was cut and stitched it was filled with foam and polyester and, according to Bress, much skill is required to determine the density and thickness of the foam and polyester, which determines the aesthetic contours and lines of the sofa. Thereafter the fabric cover was attached to the plywood frame by means of staples. A completed two-seater sofa was thus created. The other items of the lounge suite comprised a three-seater sofa and a chair which are basically a larger and a smaller version of the original two-seater sofa, having the same aesthetic appearance.

   Bress states that, although the idea and basic shape of the items of the Fendi suite originated from the Preview photograph, much skill, effort and labour was employed by the applicant's employees in creating the suite over a period of approximately three months.

   He enumerates certain differences between the Preview photograph and the Fendi couch, but in my view the only difference of substance is that the one has a wooden and the other a metal frame. As the frame is covered by fabric, this is not discernible by inspection of the exterior.

   The Fendi was created by the employees of the applicant within the course and scope of their employment and who were citizens of the Republic of South Africa and here domiciled.

   Bress further states that the Fendi lounge suite, because of its distinctive shape, is primarily a decorative item used to decorate modern and upmarket homes and offices and that the Fendi lounge suites which have been manufactured by the applicant have been primarily used for this purpose.

   On the basis which I have set out the applicant claims that the Fendi lounge suite is an 'original' work within the meaning of the Copyright Act 98 of 1987 because skill, effort and labour was expended on the product and because it has a distinctive shape and is primarily a decorative item used to decorate modern and upmarket homes and offices. It is alleged that the original wooden prototype frame as well as the first finished two-seater sofa and all other items comprising the Fendi lounge suite created thereafter all constitute works of 'artistic  craftsmanship' and thus 'artistic works' within the meaning of s 1 of the Act. The applicant does not allege in its papers that the wooden prototype frame and the Fendi lounge suite are 'works of craftmanship of a technical nature' as defined in clause 1(c) of the definition of 'artistic work' in the Act. Counsel for the applicant, however, argued that, on the facts set out, a case could be made out on that basis as well.

   The first respondent denies that the applicant is the owner of copyright in the Fendi. It points out that there is nothing distinctive in the 'M' design. In 1984 Componer (Pty) Ltd (Componer) registered a settee with an 'M' design in terms of the Designs Act 1967. Componer has manufactured and sold its suite since 1984.

  I inspected the 'M'-shaped Componer sofa and compared it with the Fendi. The distinctive feature of both is the 'M' shape, but there the similarity ends. There is no possibility that the one can be mistaken for the other. Neither can it be said that the one is a copy of the other, except for the shape of the frame, and even there the angles are more oblique in the Componer than in the Fendi. 

   The first respondent's case is that every lounge suite has some measure of aesthetic appearance which attracts custom. In this instance it is not the Fendi which is distinctive or novel, but the 'M' shape design around which the Fendi is built catches the public eye. This 'M' shape design is not exclusive to the applicant or associated in the mind of the public with the Fendi. The first respondent is supported by affidavits by two retail furniture dealers who allege that the Fendi was not the first 'M'-shaped suite sold in the market-place. 'M'-framed suites are manufactured both locally and imported from overseas and are sold in the Republic. The distinctive feature of the 'M'-shaped suite is its shape or configuration and this shape is not associated with the applicant's name as it is not exclusive to the applicant. The average person buys a lounge suite primarily for utilitarian purposes to provide seating for himself, his invitees and his family. Thereafter he will consider the merits and demerits of the aesthetic appearance of any suite and relate this to his own personal taste. The prime characteristic of a lounge suite is that it provides a useful purpose, namely to provide seating. Both state that the copying of suites by furniture manufacturers from one another is commonplace in the industry.

   The first respondent further states that there is nothing novel in constructing the frame of a suite in metal. It produced its first metal-framed suites in 1980 and the Componer couch also has a steel frame. The use of steel as opposed to wood to construct the frame is the only practical and economic way to produce an 'M' frame in South Africa. It is standard practice to prepare the frame for the application of the leather or fabric covering by attaching plywood or chipboard thereto by means of pop-rivets so that the covering can be secured to the frame. There is nothing novel in using elastic webbing on the seat, arms or backs of the frame for softness. The first respondent has done this since 1980. There is nothing unique about the density and thickness of the foam as that is purchased in any thickness according to standard densities. Neither are the methods of stitching leather novel or unique and, in any event, the type of stitching used is inconsequential in the context of the suite as a whole. By and large, most suites have the same or similar angles of rake. This pertains to what the market-place conceives to be the correct angle of comfort. The drawing of patterns onto cardboard templates is a universal and standard practice in the industry. The first respondent does not accept that the preparation of patterns which are used to cut the fabric for covering the sofa involves a lengthy period. It would be approximately one day. The first respondent points out that, in any event, the fabric pattern is not the distinctive or novel feature.

   The first respondent alleges that the Fendi is made by an industrial process. It is made in the applicant's factory by workmen employed by it and the frame is subcontracted and is reproduced in standard form. The first respondent alleges that, even if the applicant has copyright in the Fendi, which is denied, the applicant has made three-dimensional reproductions of the Fendi available in the Republic and qualifies for the exemption of s 15(3A)(a) of the Copyright Act.

   I turn now to the alleged unlawful conduct. The applicant was formed and commenced business approximately ten years ago. One of its co-directors had been employed by the first respondent as a sales manager and when the applicant commenced competing with the first respondent in the design, manufacture and marketing of upholstered furniture in the same market, there was much animosity between that director and Mr Yoshlowitz, managing director of the first respondent. After some time a truce seems to have been effected, which lasted till approximately June 1989 when the applicant started losing valuable staff to the first respondent. A complaint by the applicant to the Furniture Manufacturers Association led to mediation and it was agreed that neither the applicant nor the first respondent would in future solicit the staff of the other. This agreement was broken on 23 August 1989 when Yoshlowitz solicited Mr Hassan, administrative manager of the applicant,  to join the staff of the first respondent. Mr Bress, managing director of the applicant, thereupon on 24 August 1989 telephoned Yoshlowitz to complain. The latter justified his conduct by the counter-accusation that the applicant had in the past copied items of the first respondent's furniture. This Bress denied, conceding that he had taken ideas from pictures of the furniture of the first respondent, but protesting that he had never 'stripped down' a model of the first respondent's furniture. Bress stated that they looked at pictures in magazines and in that way obtained ideas for designs. Yoshlowitz further accused Bress that a saleslady in the employ of the applicant was running down the first respondent's wares. Bress stated that if that were true it would be contrary to his instructions. Yoshlowitz further stated that he had never had the time to hit back at Bress, but that he now had the time to do it. He told Bress that they were on a total headlong collision course and that there would be all out war. He would 'retaliate in every single way'.

   Shortly after this conversation, early in September 1989, the first respondent commenced manufacturing a lounge suite identical in appearance and construction to the Fendi. There are differences in the thickness of the cushioning and of the plywood attached to the frame, differences of height and width, and different screws are used for attaching the backrest to the frame itself. All these differences would by an expert be regarded as insignificant and would not be noticed by the average buyer. For practical purposes this new lounge suite, which is called the Pisa, is aesthetically and structurally identical to the Fendi. It consists of a three-seater sofa, a two-seater sofa and a chair.

   The similarity between the Pisa and the Fendi is not fortuitous. The overwhelming probabilities are that the first respondent stripped down a Fendi and slavishly copied it.

   The first respondent commenced marketing the Pisa to the public through the second respondent at the end of September 1989 at a price of R4 999,90, whereas the retail price of the Fendi was R5 695. The applicant alleges that it has suffered a vast reduction in sales of the Fendi, which it has always regarded as its flagship line.

   The first question to be answered is whether the applicant has copyright in the Fendi.

   The applicant relies on s 21(d) of the Copyright Act 1978 for its allegation that, as the employer of the creators of the Fendi, it holds the copyright in that suite (if such copyright exists). This is not in dispute.

    The applicant's case is that the Fendi is an original artistic work and qualifies for copyright in terms of s 2(1)(c) of the Copyright Act 98 of 1978. Counsel for the applicant argued that the fact that the applicant used the Preview photograph and created a substantially identical couch does not preclude the applicant's Fendi from being original. In this respect he argued that the use of the photograph is irrelevant; it is two-dimensional and the work of the applicant is three-dimensional, in a different medium. In my view the requirement of originality is satisfied. We are not concerned with the question whether the Fendi incorporates a novel idea or is a novel piece of furniture. In the context of the Copyright Act, what is required is that the work must emanate from the author himself. Labour, skill or judgment are required. That has been demonstrated to have been present in the instant case.

   The question whether the Fendi is an artistic work is more difficult. The applicant says it is. The first respondent says that its Pisa and also the Fendi are utilitarian objects with aesthetic appeal. Per definition 'artistic work' means

   'irrespective of the artistic quality thereof -

   (a)  paintings, sculptures, drawings, engravings and photographs;

   (b)  works of architecture, being either buildings or models of buildings; or

   (c)  works of artistic craftmanship, or works of craftmanship of a technical nature, not falling within either para (a) or (b) '.

The words 'or works of craftmanship of a technical nature' in subpara (c) were inserted in the definition by Act 66 of 1983.

   Is the Fendi a work of artistic craftsmanship? (The Act uses the obsolete term. I will use 'craftsmanship'.) Considering that this term is already to be found in the English Copyright Act of 1911, incorporated by us in 1916, and repeated in both the later English Act of 1956 and South African Acts of 1965 and 1978, the dearth of judicial interpretation is striking. The term has a limited meaning as the artistic works set out in subparas (a) and (b) are expressly excluded. Prof Copeling, the author of the title on copyright in Joubert (ed) The Law of South Africa vol V para 336, adds another category of excluded works:

   'Also excluded, it is thought, are all works comprising articles made mainly or solely for utilitarian purposes. For, as remarked by Pape J in Cuisenaire v Reed (1963 VR 719 at 730) in considering whether such an article could be regarded as a work of artistic craftsmanship in terms of similar provisions under the Australian Copyright Act: "The true test, I think, is whether the author, in making the article... was applying his skill and taste to its production with the main object of creating an article which, even if it be utilitarian, nevertheless will have a substantial appeal to the aesthetic tastes of those who observe it." Apart from saying that the intention that the article's appeal to the aesthetic senses be an important, rather than the main reason for the author bringing the article into being, the test suggested by Pape J, it is submitted, is a correct one. Moreover it accords with the meaning of the word "artistic" - accepted by Clauson J in Burke and Margot Burke Ltd v Spicers Dress Designs (1936 Ch 400 at 408) - as that which has as its object the gratification of the aesthetic emotions by perfection of execution whether in creation or representation. Examples of articles capable of complying with the test would be the works of gold and silversmiths, potters, woodcarvers, hand-embroiderers and so forth.... In short, the question of whether or not a work may be considered one of artistic craftsmanship depends ultimately upon the intention of its author in creating it; considerations of artistic quality are irrelevant.'

The author cites as further authority for this proposition: Cuisenaire v South West Imports Ltd [1968] 1 Ex CR 493 at 514. These reports are not available to me.

   There are excerpts from the judgments in these two cases in Copinger and Skone James on Copyright 12th ed s 178. It appears that Pape J held as follows:

   'As a general rule, the Court adjudicating on the matter will apply a purely objective test by an examination of the article itself. When, however, as in this case, such an objective test may be thought to deny that the work is one of artistic craftsmanship, and it is sought to establish the contrary, the object of the creator of the work must, in my view, play a dominant part in the resolution of the question.'

With respect, I find it an unusual approach to apply an objective test yet, when it does not lead to the desired result (viz that it is a work of artistic craftsmanship), to switch to a different test and ask the creator what he intended.

   I would prefer the view of Pape J to that of Prof Copeling and hold that for an article to be a work of artistic craftsmanship its main object should be artistic and not utilitarian.

   I respectfully differ from the views of both Pape J and the author that one has to look at the object the creator had in mind. In my view the test should be objective: does the article fall within a class which can be described as works of artistic craftsmanship, ie works generally made by artistic craftsmen with an aesthetic rather than a utilitarian end in mind. To apply a subjective test would create uncertainty in the application of the law, as eg the intention of the creator of a utilitarian article, for example a knife or a gun or a motor car, which because of the high quality of its craftsmanship is a collector's item, would be unknown and the existence of copyright therefore an unknown factor. This could not have been the intention of the Legislature.

   One should further bear in mind that distinctive features of design, shape, form and colour, even if they appeal to the eye, are not necessarily 'artistic'. It would seem that something more is required.

   I will apply an objective test. I am fully aware that judicial assessment of artistic merit or quality is to be avoided. That is clear from the definition of 'artistic work'. But one does not exercise that function when determining whether the composite phrase 'works of artistic craftmanship' encompasses a sofa (of whatever design). The words are in ordinary use in the English language. The question which I have to determine is whether that object falls within the scope of the common meaning of that phrase.

    Once this test is applied, the objects of the applicant with its Fendi and the first respondent with its reproduction thereof become irrelevant, and one has to answer the question what, objectively seen, is the main purpose of the Fendi couch. The answer to this question is clear. However appealing aesthetically, it remains a sofa, ie an article of furniture used to sit on and will be bought and sold for that purpose. It is not a work of artistic craftsmanship. The Afrikaans equivalent used in the act, namely 'kunshandwerk', leaves no doubt. By no stretch of the imagination can that term be applied to this couch.

   This conclusion is supported by some of the divergent opinions of the House of Lords in George Hensher Ltd v Restawile Upholstery (Lancs) Ltd 1974 FSR 173 (also reported in 1975 RPC 31). Lord Reid stated (at 176): 

   'A work of craftsmanship suggests to me a durable useful handmade object and a work of artistic craftsmanship suggests something, whether of practical utility or not, which its owner values because of its artistic character.'

Lord Morris stated (at 181):

   'In deciding whether a work is one of artistic craftsmanship I consider that the work must be viewed and judged in a detached and objective way. The aim and purpose of its author may provide a pointer but the thing produced must itself be assessed without giving too much weight to the author's scheme of things. Artistry may owe something to an inspiration not possessed by the most deft craftsman. But an effort to produce what is artistic may, if forced or conscious, for that very reason fail. Nor should undue emphasis be given to the priorities in the mind of a possible acquirer. A positive need to purchase an object or thing in order to put it to practical use may be the primary reason for its acquisition but this may be reinforced by a full appreciation of its artistic merits if they are possessed.'

Lord Simon, after stating (at 193) that the craftsmanship of cobblers, dental mechanics, pattern-makers, boiler-makers, plumbers, wheel-wrights and thatchers would not be artistic, whereas that of the maker of hand-painted tiles could properly be described as such and his products as works of artistic craftsmanship, continued:

   'In between lie a host of crafts some of whose practitioners can claim artistic craftsmanship, some not - or whose practitioners sometimes exercise artistic craftsmanship, sometimes not. In the former class for example are glaziers. The ordinary glazier is a craftsman, but he could not properly claim that his craftsmanship is artistic in the common acceptation. But the maker of stained glass windows could properly make such a claim; and indeed, the revival of stained glass work was one of the high achievements of the Arts and Crafts Movement. In the latter class is the blacksmith - a craftsman in all his business, and exercising artistic craftsmanship perhaps in making wrought iron gates, but certainly not in shoeing a horse or repairing a plow share. In these intermediate - or rather, straddling - classes come, too, the woodworkers, ranging from carpenters to cabinet makers: some of their work would be generally accepted as artistic craftsmanship, some not. Similarly, printers, book binders, cutlers, needleworkers, weavers - and many others. In this straddling class also fall, in my judgment, the makers of furniture. Some of their products would be, I think, almost universally accepted as "works of artistic craftsmanship"; but it would be a misuse of language to describe the bulk of their products as such. Where and how is the line to be drawn?'

As has been seen I have drawn the line, and the Fendi falls short of it. It does not qualify as a work of artistic craftsmanship.

   Is the Fendi a work of craftsmanship of a technical nature? This was not the case made out explicitly in the founding affidavit, but as counsel for the applicant pointed out, the production process of the Fendi was fully described by the applicant and dealt with by the first respondent.

   A work of craftsmanship is an article produced by craftsmen. A craftsman is one who practises a handicraft that is a manual skill; a manual art or trade or occupation. (The Concise Oxford English Dictionary.)

    Not all works of craftsmanship qualify as 'artistic works', only those 'artistic' and 'of a technical nature'. The Afrikaans equivalent in the Act for the latter is 'handwerke van 'n tegniese aard'. The Oxford English Dictionary gives the following definition of 'technical':

   '1. Of a person: skilled in or practically conversant with some particular art or subject. 2. Of a thing: skillfully done or made. 3. Belonging or relating to an art or arts, appropriate or peculiar to, or characteristic of, a particular art, science, profession, or occupation; also of or pertaining to the mechanical arts and applied sciences generally, as in technical education, or technical school.'

All works of craftsmanship ('handwerke') require a basic technical skill and know-how in their creation. The words 'of a technical nature' ('van 'n tegniese aard') cannot be intended to refer thereto. That would be tautologous. In fact, if that were the intention, all works of craftsmanship would be subject to copyright and no distinction or classification need be made into artistic and other works of craftsmanship. The definition would be entirely different.

    The added category 'works of craftmanship of a technical nature' is therefore a limited category where something beyond basic and everyday skills and techniques of the common crafts is present. The most plausible interpretation of that phrase is in my view to be found in the application of the last part of the definition in the Oxford English Dictionary, viz pertaining to the mechanical arts and applied sciences, and one has to read the word 'technical' in that sense. A couch skillfully made by welding, cutting, stitching and the like cannot in my view qualify as a work of craftsmanship of a technical nature (''n handwerk van tegniese aard'). (In Schultz v Butt1986 (3) SA 667 (A) at 684 it was common cause that a particular type of hull was a work of  craftsmanship of a technical nature and the meaning of that phrase was not discussed.)

   The applicant's Fendi therefore is not an 'artistic work' as defined in s 1 of the Act and does not qualify for copyright protection in terms of s 2(1).

   The applicant's claim to copyright in the Fendi also fails on another ground.

   Section 15(3A) of the Copyright Act 1978 was inserted therein by Act 66 of 1983 and amended by Act 13 of 1988, which deleted certain portions thereof. In its present form it reads:

   '15(3A)(a) The copyright in an artistic work of which three-dimensional reproductions were made available, whether inside or outside the Republic, to the public by or with the consent of the copyright owner (hereinafter referred to as authorised reproductions), shall not be infringed if any person without the consent of the owner makes or makes available to the public three-dimensional reproductions or adaptations of the authorised reproductions, provided -

   (i)   ...

   (ii) the authorised reproductions primarily have a utilitarian purpose and are made by an industrial process

   (b)....'

The deleted portions set a time period of ten years' use of the authorised reproductions before unauthorised copying was allowed.

   This section has an interesting history. It concerns the controversial protection which industrial articles such as machinery and spare parts derive from the Copyright Act. Already in the Patents, Designs, Trade Marks and Copyright Act 9 of 1916 drawings and other so-called artistic works were protected irrespective of artistic quality or merit. Amongst the types of works protected as artistic works were mechanical and other technical drawings. The copyright in these works was infringed by the unauthorised making of three-dimensional reproductions thereof either derived from the drawings themselves or from intervening three-dimensional versions of such works derived from the drawings. See Klep Valves (Pty) Ltd v Saunders Valve Co Ltd1987 (2) SA 1 (A). The same protection was afforded by the Copyright Act 63 of 1965. As the possibility existed that certain works could enjoy protection both under design legislation and copyright legislation, limitations were imposed on the right of the owner of the copyright in a relevant artistic work to sue for infringement of copyright by s 11 of the 1965 Act. The section provided that, where a design corresponding to an artistic work was registered under the designs legislation or used in practice, that part of the copyright which would have overlapped with the rights arising from a registered design was forfeited. Copyright owners became increasingly aware of the possibilities which copyright law provided for restraining so-called reverse engineering of their products. Reverse engineering means taking a competitor's product and, by means of measuring up and copying it, arriving at drawings, enabling one to manufacture a competing article. Claims of copyright infringement through reverse engineering escalated and calls arose for the abolition of this form of copyright protection, inter alia, as the period of copyright protection was felt to be too lengthy. The Copyright Act 98 of 1978 gave the same protection to technical drawings and other artistic works against the making of three-dimensional reproductions whether by direct or indirect copying thereof. There was, however, no equivalent to s 11 of the 1965 Act and therefore no limitations on the operation of copyright in the field covered by designs legislation. The lacuna in the Act was filled in 1983 by an amendment which placed limitations upon the protection enjoyed by technical artistic works against three-dimensional reproduction, providing that where a copyright owner had produced and sold three-dimensional derivative articles which primarily had a utilitarian purpose and were made by an industrial process, then no infringement would occur by unauthorised reverse engineering after the lapse of ten years. (The amending Act also enacted s 45A which provided for compulsory licensing. This amendment has not yet been promulgated.) On 25 September 1987 by Government Notice 704 the Minister of Economic Affairs and Technology amended the existing regulations with the result that foreign technical articles which primarily have a utilitarian purpose and are made by an industrial process were only protected under copyright to the extent that similar protection was granted under the copyright laws of their countries of origin to South African works. The Copyright Amendment Act 1988 went further. It had the effect of depriving South African owners of copyright in technical works of the right to restrain reverse engineering of their products where they primarily have a utilitarian purpose and are made by an industrial process. And here the matter rests at present.

    It is common cause that the applicant has caused three-dimensional reproductions of the Fendi lounge suite to be made available to members of the public.

   Counsel for the applicant contended that the applicant's purpose was not utilitarian but aesthetical and that s 15(3A) was therefore not applicable. In my view his approach is incorrect. The test is objective. What the maker had in mind is irrelevant. So is the purpose for which a particular buyer might buy it. The reasoning which I set out when dealing with the concept 'works of artistic craftsmanship' is equally applicable. I have found that the Fendi primarily has a utilitarian purpose.

   It remains to be decided whether it is made by an industrial process (Afrikaans: 'industriële proses'). Counsel for the applicant sought to limit this concept to manufacture by automatic machinery. I do not think that the meaning is so limited. Industrial means 'of industry'. The latter, in this context, is 'a branch of trade or manufacture' (Concise Oxford Dictionary ). According to Collins Cobuild Essential English Dictionary 'industry is the work and processes involved in manufacturing things in factories'. A 'process' in this context would mean 'a course of action, proceeding, especially series of operations in manufacture' etc (Concise Oxford Dictionary ).

   Whichever way it is looked at, the manufacture of the Fendi is an industrial process which takes place in the applicant's furniture factory. The Fendi falls squarely within the provisions of s 15(3A) and its exception from protection of copyright. The applicant's case based on copyright fails.

   The second pillar upon which the applicant's case rests is that of passing off.

    The applicant alleges that it began manufacturing the Fendi lounge suite during 1986 and has continued to manufacture and sell it since that time. It has spent vast amounts over the four-year period in advertising the Fendi and on numerous occasions the Fendi suite or parts thereof have been included in television programme sets broadcasted nationally. In all these cases the applicant has expressly been cited as the manufacturer of the suite. The Fendi lounge suite has over the years and continues to be advertised in leading nationally distributed interior design magazines and nationally distributed newspapers. The applicant has sole distributors of its products in Cape Town and Durban and its products, including the Fendi lounge suite, are displayed in showrooms in these cities and also in Johannesburg where the applicant has its own showroom. The Fendi lounge suite is the applicant's flagship product and is also the flagship product of its agents in Durban and Cape Town. The three-seater Fendi sofa appears on the applicant's stationery and the Fendi is one of the applicant's best selling products. Vast amounts have been spent on advertising it. In excess of 1200 Fendi suites have been sold. Accordingly the applicant alleges that it has acquired a substantial goodwill and reputation in the distinctive design of the Fendi lounge suite which has become associated in the minds of members of the public with the applicant, its business and its products.

   The applicant contends that the first respondent has committed wrongful acts of passing off by deceiving members of the public into believing that they are purchasing a product emanating from the applicant whereas the product emanates from the first respondent; deceiving members of the public into believing that the first respondent's business is in some way associated with that of the applicant in the course of trade; and deceiving retailers of furniture who are unaware that the applicant and the first respondent are not associated in any way into believing that they are so associated and that the first respondent has permission to produce the Fendi lounge suite.

   Passing off in our law is a form of unlawful competition. It consists in a representation by one person that his merchandise or business is that of another and, in order to determine whether a representation amounts to a passing off, one enquires whether there is a reasonable likelihood that members of the public may be confused into believing that the merchandise or business of the one is connected with that of another. Capital Estate and General Agencies (Pty) Ltd and Others v Holiday Inns Inc and Others1977 (2) SA 916 (A) at 929C. In every passing off case two propositions have to be established by a plaintiff before he can succeed. The first is that his name, mark, sign or get-up has become distinctive, that is, that in the eyes of the public it has acquired a significance or meaning as indicating a particular origin of the goods (business, services) in respect of which that feature is used. This is called reputation. The second is that the use of the feature concerned was likely to deceive and thus cause confusion and injury,  actual or probable, to the goodwill of the plaintiff's business.

   Atlas Organic Fertilizers (Pty) Ltd v Pikkewyn Ghwano (Pty) Ltd and Others1981 (2) SA 173 (T) at 202; Adcock-Ingram Products Ltd v Beecham SA (Pty) Ltd1977 (4) SA 434 (W) at 436; Lorimar Productions Inc and Others v Sterling Clothing Manufacturers (Pty) Ltd; Lorimar Productions Inc and Others v OK Hyperama Ltd and Others; Lorimar Productions Inc and Others v Dallas Restaurant1981 (3) SA 1129 (T) at 1138 - 40; Jarman and Platt Ltd v I Barget 1977 FSR 260 (CA) at 269, approved in Hollywood Curl (Pty) Ltd and Another v Twins Products (Pty) Ltd (1)1989 (1) SA 236 (A) at 251B. Jarman's case is of interest since it was concerned with a claim that competing furniture manufacturers were passing off their goods as the plaintiff's goods.

   'It was the shape of the plaintiff's suites of furniture which was claimed to be distinctive of the plaintiff's manufacture and to give it its reputation which the defendants, by copying the distinctive shape, were said to have infringed.'

  (At 270.) The Court of appeal cited with approval the judgment of Graham J on the issue of passing off in the Restawile case a quo, reported as G Hensher Ltd v Restawile Ltd [1973] 1 WLR 144 (at 271):

   'Chairs and settees are not normally bought by members of the public for the reason that they are goods of a particular manufacturer; they are bought because the buyers like the shape, the comfort or the look, having regard also to the particular price of the suite in question, and the choice is quite regardless of who made them.'

The Court of appeal further held:

   'A plaintiff must show more than mere prior user by him of the particular "get-up". He must show that the "get-up" has become in the mind of the public distinctive of one particular trader and no other trader; so that the "get-up" has come to mean, to the public, a product coming from a particular commercial source. They, the public, do not have to know the name of the trader. But it has to be shown that the product is, in the minds of individual members of the public who are buyers or potential buyers of the goods, "the product of that manufacturer with whom I have become familiar".... Where the "get-up" consists of characteristics of the product itself, such as the shape and colour of the article itself, such proof is not easy. The common law leans against the recognition of a monopoly right.... The task of a plaintiff seeking to establish such a right is particularly difficult where, as here, the distinctiveness claimed for the product itself in some degree involves a copy of or supposed resemblance to, some pre-existing artistic style: such as French bedroom furniture, white in colour and with gold-coloured ornamentation and with more or less standardised shapes of various parts of the articles of furniture.'

I have some doubt whether the applicant has established that it has a reputation in the 'M'-shaped design of the Fendi. It has not adduced any evidence by members of the public. The two retailers and Bress who say so do not substantiate this allegation. The applicant was not the only manufacturer of this type of furniture before the first respondent entered the market. It is doubtful whether the applicant can succeed on the first of the requisite propositions.

   The applicant's case is weaker still on the second proposition. Its product is known as the Fendi. The first respondent's product is called the Pisa. There can be no possibility of confusion caused by the names. They are entirely different and distinct.

   The applicant markets its product under its own name as being a 'Bress design'. The first respondent's product is advertised as being a 'Gerald Yosh original'. The first respondent has a widely established reputation in the furniture manufacturing business. All products produced by the first respondent have tags attached to them which clearly identify that they are 'Gerald Yosh' products.

   It is inconceivable that any furniture retailer would not be aware that the applicant and the first respondent are separate businesses and in no way associated. The mere 'M' shape of a couch would not lead furniture retailers to the conclusion that there is an association. The applicant's contention that members of the public might be deceived into believing that the first respondent's business and the applicant's business are in some way associated does not bear scrutiny and is unsupported by the evidence. The absence of any evidence of confusion is striking. Though such evidence is not a sine qua non for the applicant's success, it would go a long way to establish a likelihood of deception.

   The applicant's case based on passing off fails.

   There remains the third pillar of the applicant's case, namely unlawful competition.

   The applicant's case is that the first respondent is unlawfully competing with the applicant by copying its product and competing with it from a position that the first respondent would not otherwise have been able to achieve if it had spent the necessary time, skill, effort and money (as was done by the applicant) in order to produce its own lounge suite.

   I reject the first respondent's argument that the Pisa is not a slavish copy of the Fendi and that the first respondent developed the Pisa in very much the same way as the applicant developed the Fendi, adapting the state of the art 'M'-shaped design to its own requirements using its own skill, effort and money. I find it probable that the first respondent deliberately set out to produce a copy of the Fendi and to that end acquired one and stripped it down. The aim of the first respondent was to market a product which was substantially identical to the applicant's flagship product at a price substantially below the applicant's retail price with the express purpose of causing the applicant harm. In this exercise the usual profit motive was either absent or of minor importance.

   The first respondent contends that, at any rate, the competition which it has engaged in has been lawful, having regard to the mores and standards of practice in the furniture industry and against the background of the prevalence of the state of the art of the 'M'-shaped design. It further contends that it hardly lies in the applicant's mouth to complain that the first respondent competed unlawfully with it. The applicant did not come to Court with clean hands. Its copying of the first respondent's and overseas designs and its slavish copying of a 'Regale' chair imported and distributed by Gralan (Pty) Ltd are such that the Court should be loathe to come to the applicant's assistance when it cries 'unlawful competition'. (These designs are different from the Fendi and Pisa.) It is further contended that if copying took place by observation and measurement no wrong was committed. More particularly is this so where the scale of the applicant's initial investment was small and of dubious originality. In addition, so it is said, there is no technical and commercial feasibility of product differentiation. There is no economic sense in requiring investment in redesigning a satisfactory product from scratch. This was the first respondent's argument.

   The law which is applicable was set out by the Appellate Division in Schultz v Butt1986 (3) SA 667 (A) at 678 - 9. As a general rule every person is entitled freely to carry on his trade or business in competition with his rivals. The competition must, however, remain within lawful bounds. If it is carried on unlawfully in the sense that it involves a wrongful interference with another's rights as a trader, that constitutes an injuria for which the Aquilian action lies if it has directly resulted in loss. In order to succeed in an action based on unfair competition the plaintiff must establish all the requisites of Aquilian liability, including proof that the defendant has committed a wrongful act. In such a case the unlawfulness which is a requisite of Aquilian liability may fall into a category of clearly recognised illegality or may consist of unfairness and dishonesty. The latter are to be determined with due regard to the boni mores and the general sense of justice of the community. Questions of public policy, like the importance of a free market and of competition in our economic system, may be relevant in a particular case. In short, the delict of unfair competition occurs where the competition is contra bonos mores.

   In Schultz v Butt (supra ) the question to be decided was whether the appellant was competing unfairly with the respondent by making a mould of a hull of a ski boat designed by the respondent with which the appellant made boats which he sold in competition with the respondent. The respondent's design had been evolved over a long period of time with considerable expenditure of time, labour and money. It had not been registered in terms of the Designs Act 57 of 1967.

    The appeal Court held that the question was not whether the copying of the hull which was not protected by the Copyright Act, the Patents Act or the Designs Act could be unfair or unlawful as anyone may ordinarily make anything produced by another which is in the public domain: one may freely and exactly copy it without his leave and without payment of compensation. The question to be decided was whether the making of a substantially identical copy by the appellant of an article made by the respondent using the respondent's mould and selling it in competition with the respondent should be branded unfair competition. The wrongfulness lay, not in the copying, but in the use of the mould. The basis of the decision of the appeal Court in favour of the respondent was that it is intolerable that one manufacturer should be allowed to sponge on another by pirating the product of years of invention and development without licence or recompense and reap the fruits sown by another. Morally and ethically such practices strike a discordant note. It cuts across the grain of justice to permit an intruder to profit not only by the efforts of another but at his expense as well. The appellant went further. Having trespassed on the respondent's field, he added impudence to dishonesty by obtaining a design registration in his own name for the pirated hull with the object of forbidding the field to other competitors. (At 683D, E, H and I.)

   In the instant case the copying was as effective as in Schultz v Butt, but the method differed. There was no mould involved. A Fendi was stripped down. This involved the removal of the upholstery from the steel frame. The frame was not exactly duplicated as the measurements differ slightly.

   I have a problem with the wrongfulness of this action per se. Not all imitation is unlawful. On the contrary, imitation may be said to be the essence of life. (Cf Lorimar Productions (supra at 1140, 1153).) The Legislature has granted protection in the fields of patents, designs, copyright, trade marks and plant breeders' rights. A contrario, beyond that statutory protection the field is open to imitators. The applicant took no steps to register its design. It cannot complain if it is copied. If one is entitled to copy that which is in the public domain,  which is the law, what difference does it make what your method is? Whether you measure with the eye or with a tape-measure. Whether you record your findings in your retentive memory or in a notebook or through the lens of your camera. Whether you look only at the exterior or also look at the interior, removing upholstery to do so. I cannot see that the fact that the Fendi was dissembled, per se, creates the unlawfulness.

   Nor am I much impressed by the applicant's emphasis on the trial and error of its creation of the prototype and its detailed information of the process thereafter. An inspection revealed that the frame is quite simple and the upholstery, though of fine craftsmanship, is not extraordinary. To put it simply, the first respondent copied a couch which the applicant had copied from a photograph of an American design. There is no suggestion that the applicant acted unlawfully. In the circumstances one balks at a finding (on these facts alone) that the first respondent acted contra bonos mores.

   One should, however, not dissect the first respondent's conduct into separate components and so neutralise the whole. An importantcomponent must not be overlooked, and that is its motive. On the probabilities the motive of Yoshlowitz in engaging on this course was sheer malice. The improvement of the first respondent's position was of little or no importance. This distinguishes this case from the normal one where, propelled by the capitalistic profit motive, the supermarket undercuts the corner store, causing its inevitable demise. Lamentable as such demise may be, this action is not wrongful. Price wars are part of competitive trading. And in all wars some fall by the wayside. This is tolerated for the greater public good.

   May I take the first respondent's motive into account? It is trite law that, generally speaking, motive is not a material element of civil liability. Tsose v Minister of Justice and Others1951 (3) SA 10 (A) at 17G. The doctrine of abuse of rights is an exception. The abuse of a right animo nocendi vicino is unlawful between neighbours. Union Government (Minister of Railways and Harbours) v Marais 1920 AD 240 at 270; Gien v Gien1979 (2) SA 1113 (T) at 1121D and cases cited. There is authority that also in the field of unfair competition motive is a relevant consideration. The Appellate Division in Schultz v Butt (supra at 683) approved of extracts from the work by Christine Fellner The Future of Legal Protection for Industrial Designs. The relevant portion reads:

   'In the absence of specific industrial property rights, by no means all copying is prohibited; but where it is felt to be "unfair", the law will provide a remedy. As well as the fact of copying, the Judge can consider the scale of the plaintiff's initial investment, the originality and commercial success of his product, the ease with which it was copied, the technical and commercial feasibility of product differentiation, and the economic sense or nonsense of requiring investment in redesigning a satisfactory product from scratch. He can also scrutinise the behaviour of the parties, taking account, for example, of any unfairness in the way information was obtained, impropriety of motive, and dubious marketing practices, including public deception. His aim is to reach a decision which is fair as between the parties while paying due regard to the public's interest in free, as well as fair, competition.'

 There are also a number of decisions of our Courts which elevate motive to a relevant factor when the reasonableness and therefore the lawfulness of acts of competition is determined. Cf Atlas Organic Fertilizers (supra at 200E); Murdoch v Bullough 1923 TPD 495 at 508, 518 - 20; Tothill v Gordon and Others 1930 WLD 99 at 114, 115; Spilkin, Newfield & Co (Pty) Ltd v Master Builders and Allied Trades Association, Witwatersrand 1934 WLD 160 at 166.

   In my view a clear line should be drawn between acts of interference with the interests of another when the object is the advancement of a person's own interest and such acts whose sole or dominant purpose is the infliction of harm for its own sake. Whereas in law the advancement of one's own economic interests is, generally speaking, a legitimate motive for action, there can be no doubt that the community would condemn as contra bonos mores the malicious destruction or jeopardising of a sound business through the marketing of identical furniture at cut-throat prices for reasons of personal vindictiveness. I have no doubt that not only by the community in general but also in the field of the ethics and morality of the furniture manufacturers such conduct is not acceptable, though copying each other's products may be the order of the day.

   On the papers before me I find therefore that the first respondent has prima facie infringed the applicant's rights by unlawful competition. The second respondent supported it in marketing the Pisa.

    The granting of a temporary interdict is an extraordinary remedy and the approach of a Court in these instances is set out in Eriksen Motors (Welkom) Ltd v Protea Motors, Warrenton and Another1973 (3) SA 685 (A) at 691C - G. The applicant has established prima facie the right it seeks to protect.

   It was argued that the balance of convenience is against the applicant as it is in the public interest that consumers should be able to purchase a superior product at a more competitive price and as the first respondent will lose irrecoverable ground in the marketing and distribution of the Pisa should an interdict be granted against it pending the outcome of a trial action.

    The first reason advanced is irrelevant in this context. The public interest is taken into account when the wrongfulness of the alleged infringement is determined, not when the balance of convenience between the two contending parties is weighed. As regards the second reason, it is true that the first respondent will lose irrecoverable ground and that it has no track record of its sales of the Pisa which it can use to measure its loss. On the other hand, the applicant has demonstrated a clear drop in the sales of its Fendi which is probably related to the expected price war between the parties. The Fendi is the applicant's flagship product and to harm its sales is to stab at the heart of the applicant's business. As against this, the first respondent has a well-established business with a wide variety of lines of furniture and can in no way be said to be dependent upon the sales of its Pisa. The balance of convenience is in the applicant's favour. The ordinary remedies cannot avoid irreparable injury. In these circumstances I find that the applicant is entitled to the continuation of the temporary interdict and confirmation of the rule nisi in a somewhat modified form. No argument was presented why I should grant costs on the attorney and client scale and I hold that the normal order should issue. There remains the application by the applicant to strike out certain allegations in the first respondent's papers. In my view it was unfounded. It played no material role in the argument and I do not deem it necessary to award any costs in this respect to either party.

   I make the following order:

  1. Pending the outcome of an action for a final interdict to be instituted by the applicant against the respondents within three weeks from date hereof the first respondent is interdicted from manufacturing and distributing and the first and second respondents are interdicted from offering for sale and selling the Pisa lounge suite or any lounge suites substantially similar thereto.
  2. Unless the applicant institutes the said action against the respondents within three weeks this interim relief shall lapse.
  3. The first respondent is ordered to pay the costs of the applicant (excluding the costs of the application to strike out).

 

 Applicant's Attorneys: Allan Levin & Associates. First Respondent's Attorneys: Fluxman Rabinowitz - Raphaely Weiner.

 

 

 

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January 12, 2016

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Tobias Schonwetter

Dr.

CopyrightX: UCT

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