Rapid Phase Entertainment CC and others v SABC

[1997] JOL 393 (W)

Reported in (Butterworths) Not reported in any Butterworths printed series.

Case No: 96 / 13261

Judgment Date(s): 27 / 06 / 96

Hearing Date(s): 18 / 06 / 96

Marked as: Reportable

Jurisdiction: Supreme Court

Division: Witwatersrand Local Division

Judge: Wunsh J

Bench: B Wunsh J

Parties: Rapid Phase Entertainment CC, Henry Livingston Dugmore, Stephen Frances,

Enricho Schacherl (At); South African Broadcasting Corporation (R)

Appearance: Adv J Campbell, Kathleen Satchwell (At); Adv L Bowman SC, Adv Braam Du

Plessis, Maisels Smit and Lowdens (R)

Categories: Application – Civil – Private

Function: Confirms legal principle

 

 

JUDGMENT

WUNSH J:

INTRODUCTION

The second, third and fourth applicants are the members of the close corporation which is the first applicant ("the close corporation") and are all employed by it. In the course of their employment by the close corporation they devised and created a cartoon strip called "Madam & Eve", the copyright of which is, in terms of section 21(1)(d) of the Copyright Act 98 of 1978 ("the Act"), owned by the close corporation. The applicants apply, as a matter of urgency, for an order interdicting the respondent, which was established by section 2 of the Broadcasting Act 73 of1976, from action, being by the screening of an advertisement of its own services on its television channels, which they allege to be a breach of the corporation's copyright, or, alternatively, to be a delictual infringement of its common law rights.

In limine the respondent contended that the application was defective because "there is no affidavit purporting to have been filed on behalf of the first applicant", continuing:

"There is consequently no telling whether the first applicant is before the Court." The founding affidavit, sworn to by the second applicant, describes and cites the first applicant as such, alleges on the ground I have already mentioned that it is the owner of the copyright and annexes supporting and verifying affidavits by the other two members of the close corporation. Anomalously, despite the close corporation's proprietorship of the copyright and, presumably, of the common law rights on which reliance is placed in the alternative, the relief is claimed by all the applicants and all material references to entitlement to the rights and the exploitation thereof in the affidavit are in the first person plural. There is no need for a party to motion proceedings to make an affidavit or for an affidavit to be made "on its behalf". Affidavits are annexed from witnesses who can depose to the facts required to establish the cause of action or defence. While there is no statement in the founding affidavit that the deponent is acting on behalf of the close corporation or that he is authorised to do so, it is obvious that he has brought the application on its behalf and on behalf of all its members. The members of the close corporation who, it must be assumed by reason of section 46(a) of the Close Corporations Act 69 of 1984 and the general picture portrayed in the affidavit, are its managers, are all parties to the proceedings as applicants. There is, therefore, no substance in the preliminary point.

 As I have indicated, the applicants assert their rights collectively but their case is that the first applicant i.e. the close corporation owns the rights which they seek to protect and enforce. I shall therefore confine myself to it when referring to the aggrieved claimant.

THE CARTOON STRIP MADAM & EVE

 The cartoon strip features as its main characters Madam, a white housewife, Eve, her black maid, and her mother, Mother Anderson. Each is obviously recognisable by her constant physical features, dress and general appearance. They are reflected in a residence, participating in domestic activities, such as preparing food, eating, relaxing, cleaning the house and watching television. Apart from a description of its characters, the founding affidavit's allegations as to the special and distinctive quality of the cartoon strip is that it "seeks to reflect contemporary South African reality. It satirizes the relationship between South Africans who are separated by race, ethnicity and class and it looks at how those South Africans are attempting to come to terms, together, with the new South Africa."

Earlier the following had been said:

 "The cartoon strip depicts relationships between a 'madam' and a maid which is unusual in its closeness and in the muted nature of the antagonism between them. The cartoon strip takes as its subject matter the intimate, but difficult and often tension-ridden, relationship between employer and domestic employee and turns this into a warm interaction which is popular with both black and white readership. The fictionalised relationship between 'madam' and maid is closer and more intimate, and possibly more humane, than the reality in South Africa."

 According to the replying affidavit over 2 000 cartoon strips have been published. Twelve pages annexed to the founding affidavit contain some of them and blown-up versions of the main characters, each of which is taken from a frame of a cartoon strip. The heads of argument submitted by Mr Campbell, who appeared for the applicants, suggest the following as being the "distinctive and original features of Madam & Eve", saying that they "are set out in the founding affidavit and annexures thereto, and adumbrated slightly in reply", but they are, to an appreciable extent, the observations which he must have made and the inferences which he has drawn and which he asks the Court to make and draw, from the specimen cartoon strips annexed to the papers:

 "24.1 The peculiarly South African relationship between employer and employee in the domestic environment. In no other employment environment is the employer known as 'Madam' and the employee by her first name. Both the employer and employee are almost always women and this is the relationship captured in the cartoon strip.

24.2 It is not a typical relationship of this type. Eve has an unusual latitude in the relationship; she is often shown coming out on top and much of the humour derives from this inversion of the norm. The same may be said for the 'mielie lady'.

24.3 It is also untypical in the warmth and relative equality between 'Madam' and 'Eve'. This is something not accepted by 'Mother Anderson'. The equality is shown by 'Eve' sharing the sofa when the three watch television. In this, she always sits next to 'Madam', but never next to 'Mother Anderson'. This represents the satirisation of the values of different generations of white people, not just South Africans ('Mother Anderson' is from England, not South Africa).

24.4 The main characters are all women.... There are no male characters of any significance.

24.5 'Madam and Eve' is a satirical concept. Each cartoon strip, as its primary object, seeks to make its audience laugh. Herein lies the seed of its popularity and attraction. In this genre, it is the only mainstream cartoon strip that is South African in conception and execution.

24.6 The characters are all given very distinctive, immutable features and characteristics. This is a feature of cartoons:

24.6.1 Some of 'Madam's' are her odd cartoon hairstyle, earrings and large round eyes.

24.6.2 Some of 'Eve's' are her unusual hairstyle, earrings, maid's uniforms, duster and slimness in comparison with 'Madam'.

24.6.3 Some of 'Mother Anderson's' are her diminutive size, receding white hair, pearls (or beads) around her neck and a variety of facial grimaces.

24.6.4 Physical characteristics apart:
24.6.4.1 the relationship between 'Madam' and 'Eve' is far more equal than the traditional norm;

24.6.4.2 'Eve' is obviously aware, and approving, of the new rights and equalities in South Africa;

24.6.4.3 'Mother Anderson' embodies many old colonial values. She has a rather more traditional and authoritarian attitude to 'Eve's' role in the household.

24.6.5 The 'mielie lady' is largely a catalyst for interaction between the main characters. However she is normally depicted selling her mielies by crying, 'mielies, mielies'. Sometimes she is seen trudging up a road.

24.6.6 The setting, situation and arrangement of the cartoons is unique:
24.6.6.1 it is that of a domestic home;
24.6.6.2 it shows the interaction of a 'madam', a maid and the 'madam's' mother; 24.6.6.3 it often takes place around a television set."

There are minor additional characters, but the only one mentioned, who has appeared on some twenty occasions, is the "mielie lady", a "relatively robust" black woman, typically depicted with mealies on her head. As she features in the close corporation's claim, I quote what the founding affidavit says of her:

"She is generally crying 'Mielies, Mielies' or 'Mealies, Mealies', particularly to the annoyance and chagrin of Mother Anderson. She is an incidental but popular character who has made approximately 20 appearances in the cartoon strip. She acts as a signpost to, and a catalyst for, the interaction of Madam, Eve and Mother Anderson."

The strip appears in seven daily newspapers, with a combined estimated readership in excess of 21⁄2 million, and in four periodicals. Three books of the cartoons have been published in paperback format. The cartoon appears in school textbooks and is used as illustrative material in other publications. Considerable publicity has been achieved in domestic and international media. The cartoon strip is syndicated in the second largest daily newspaper in Denmark.

The actual and intended exploitation of the cartoon characters is not confined to the strips. Developments include collections in books, a book and a T–shirt, a book, T–shirt and desk calendar and stationery. Negotiations have been commenced for the creation of a "Madam & Eve" stage musical. Endorsements of enterprises and commercial products are also planned.

The applicants contend that a "very substantial goodwill and reputation thus vests in the "Madam & Eve" characters and the cartoon strip".

THE ALLEGED INFRINGEMENT

The respondent flights an advertisement entitled "AD Mission" which runs for 60 seconds. It is an advertisement for small business enterprises to advertise on the respondent's television programmes at a discounted price. The advertisement has one set of sequences and is described as follows by the applicants:

"39.1 A robust black lady bearing mielies on her head trudges up a hill calling 'mielies, mielies'.

39.2 Three women are sitting on a sofa in a living room. A large white woman with a blond bouffant wig wearing gold earrings is sitting in the centre of the sofa with her feet up. She is obviously the 'madam'. On her right is a black woman dressed in a maid's uniform carrying a feather duster and whose hair is held back in a ponytail with a ribbon and she is wearing earrings. On the left of the 'madam' is an elderly white woman with receding white hair, wearing pearls and with a scrunched up face.

39.3 They watch the closing frames of a popular soap opera and then they see the mielie lady advertising her wares on television. The response of the maid is amazement, of the 'madam' firstly surprise then irritation and finally warmth. The aged mother appears furious.

39.4 The scene turns to the exterior of the house where the 'madam' and her maid are purchasing mielies from the mielie lady which the maid carries away.

39.5 The mielie lady departs the scene in one of three vans indicating that they are the mielie lady's commercial transport."

THE GROUNDS ON WHICH RELIEF IS SOUGHT

The close corporation claims that the cartoon strip is a literary work, which the respondent disputes, and an artistic work, which the respondent admits, and that the respondent has copied it by reproducing and adapting it or has broadcast it. The relevant passages in the definitions of the cognate expressions of those activities in section 1 of the Act are:

"'adaptation', in relation to–

     (a) a literary work, includes–

     (i) in the case of a non-dramatic work, a version of the work which is converted into a dramatic work;

     (ii) ... (iii) ...

     (iv) a version of the work in which the story or action is conveyed wholly or mainly by means of pictures in a form suitable for reproduction in a book or in a newspaper, magazine or similar periodical;

     (b) ...

     (c) an artistic work, includes a transformation of the work in such a manner that the original or substantial features thereof remain recognizable;

     (d) ..."
"'reproduction' in relation to–

     (a) a literary or musical work or a broadcast, includes a reproduction in the form of a record or a cinematograph film;"

While referring to provisions of the Act, I mention the material parts of four others that will require consideration. The relevant component of the definition of "artistic work", which is exhaustive, is drawings. The definition of "literary work" includes, as the only item which can have relevance in this case, stories. In terms of section 6 copyright in a literary work vests the exclusive right to the following inter alia

     "(a) Reproducing the work in any manner or form; ...

     (c) performing the work in public;

     (d) broadcasting the work;

     ...

     (f) making an adaption of the work;

     (g) doing in relation to an adaptation of the work, any of the acts specified in relation to the work in ((a), (c) or (d))."

In terms of section 7 copyright in an artistic work vests the exclusive right to the following inter alia

     "(a) Reproducing the work in any manner or form;
     ...
     (c) including the work in a cinematograph film or a television broadcast; (d) ...
     (e) making an adaptation of the work;

 

     (f) doing, in relation to an adaptation of the work, any of the acts specified in relation to the work in ((a) or (c))."

In terms of section 23(1) of the Act, insofar as material, a person infringes the copyright of the owner if, without the owner's license, he or she does any act which the owner has the exclusive rights to do or to authorize.

In the alternative the close corporation contends that the respondent's action constitutes a common law delict of appropriating or diluting its incorporeal property.

THE ACT

Literary work

Mr Campbell drew my attention to the non-exhaustive nature of the definitions in the Act (this does not apply to the definition of "artistic work"), flowing from the word "includes"–see Bosal Afrika (Pty) Ltd v Grapnel (Pty) Ltd and another 1985 (4) SA 882 (C) at 892D–H regarding adaptation. I have indicated that the only possible relevant subject included in the definition of "literary work" is "stories". The cartoon strips may be regarded as "stories" in a broad sense but, even if they are, there is no evidence that any of the stories told in them have been reproduced (including broadcast) or adapted. In this sense each cartoon strip is itself a story and the close corporation has not identified any one of which the television advertisement is an adaptation or reproduction. The television film is not a dramatisation of any story in a cartoon to which the close corporation has drawn attention. Even if one looks for a more extended meaning of literary work, the answer is the same.

Where the language of a novel is sufficiently copied for a screenplay or a film, there may be a reproduction. Citing Corelli v Gray, (1913) 30 TLR 116, to which counsel referred me, Copinger and Skone-James on Copyright 13th ed say:

"However, even where there is no language copying but, for example, the defendant has to a substantial extent taken the incidents and plot from the plaintiff's novel and turned them into a dramatic work, this will amount to an infringement. The question is whether the situations or plots have been copied from the novel and then represented in dramatic form (Kelly v Cinema Houses Ltd (1928–35) Mac CC 362). This is not to say that mere ideas or a character can be protected in this way, certainly if the characters or ideas are not novel (Kelly v Cinema Houses Ltd supra; Dagnall v British & Dominion Film Corporation Ltd (1928–35) Mac CC 91 ... Harman Pictures NV v Osborne (1967) 1 WLR 723), but if the combination of events which has been taken is not merely trivial, but amounts to a substantial part, there will be an infringement (Kelly v Cinema Houses Ltd, supra and other cases cited by the authors)" (at 216–7). (I underline)

In Corelli v Gray, for example, the defendant was held by the Court of Appeal to have infringed the plaintiff's copyright in a novel by producing a dramatic sketch which used a combination of six stock incidents, each one of which was taken from the novel, and the Court of Appeal approached the case on the footing that the defendant had the book either under his eyes or in his memory when he wrote his sketches. The cartoon strips in the present case do not constitute one story; each is a self-contained series of incidents and, at the risk of repetition, I have to say that in the sense conveyed by the words of Copinger & Skone- James that I have underlined and of the ratio in Corelli v Gray, it has not been established that any of the stories has been dramatised by the respondent in the video film. I accept that it is only partially correct to say that ideas are not the subject of copyright. In Galago Publishers (Pty) Ltd and another v Erasmus, 1989 1 SA 276(A) at 284 C–D Corbett JA quoted, with apparent approval, a passage from Laddie, Prescott and Vitoria The Modern Law of Copyright at 33:

"... Given that there exists a good copyright in a work, the law does not protect a general idea or concept which underlies the work, nor any one fact or piece of information contained therein. However, a more detailed collection of ideas, or pattern of incidents, or compilation of information may amount to such a substantial part of the work that to take it would be an infringement of the copyright, although expressed in different language or other form, it being a matter of fact and degree whether the dividing line has been impermissibly crossed."

Situations and incidents which have been presented may be a subject of copyright. In Harman Pictures v Osborne (1967) 1 WLR 723 (Ch D) at 728 C–D Goff J quoted a passage from the judgment of Swinfen Eady LJ in Rees v Melville (1914) MacG Cop. Cas 168:

"In order to constitute an infringement it was not necessary that the words of the dialogue should be the same, the situations and incidents, the mode in which the ideas were worked out and presented might constitute a material portion of the whole play, and the court must have regard to the dramatic value and importance of what if anything was taken, even although the portion might in fact be small and the actual language not copied. On the other hand, the fundamental idea of two plays might be the same, but if worked out separately and on independent lines they might be so different as to bear no real resemblance to one another."

There is no recognisable copying to which my attention has been drawn of any situation or incident in the close corporation's cartoons in the television advertisement.

Artistic work

As I have said, the respondent does not dispute the characterisation of the cartoons as artistic works; they are indeed drawings. According to section 1 of the Act "reproduction" in relation to

"(b) an artistic work, includes a version produced by converting the work into a three- dimensional form or, if it is in three dimensions, by converting it into two-dimensional form."

Neither in this sense nor on the ordinary meaning of reproduction has the respondent reproduced the cartoon on its television screens. The question is, therefore, whether there has been an "adaptation" of the work, defined to include a transformation of the work in such a manner that the original or substantial features thereof remain recognisable or whether the respondent has exercised a right which is in the exclusive domain of the close corporation by "including the work in ... a television broadcast."

A cartoon strip is a medium of expression by which a story is told or an incident conveyed and it could be used to present pictorially the story or action of a novel or a short story or a play and thus, even without words, constitute an infringement by adaptation (Copinger & Skone-James op cit at 217). As I have indicated under "literary work", the converse could also be true. But on the basis of the artistic character or attributes of the cartoon strip in the present case, the presentation of an incident in dramatic form with live characters who do not bear the names of those portrayed in the artistic work, even if they do have broadly similar physical characteristics or expressions, cannot amount to a broadcast of "the work" or a transformation thereof in which the original or substantial features of the work remain recognisable. In this regard the function of an artistic work is crucial. To constitute an infringement it is the artistic features or attributes of the artistic work which have to be transformed or adapted, not some concept which it conveys.

Mr Bowman, who appeared for the respondent with the assistance of Mr Brahm du Plessis, relied on Hanfstaengl v Empire Place (1895) AC 20 (HL) where it was held on the facts that tableaux vivants (groups of people on stage forming a silent motionless scene from history, literature etc – Chambers Encyclopedic English Dictionary) were not infringements of copyright in pictures, although the House of Lords considered that this was possible as a matter of law. However, that case was decided under different legislation and the current position is more reliably established in Bradbury, Agnew & Company v Day (1916) 32 TLR 349 (KB). The plaintiffs complained that the defendant reproduced five Punch cartoons as tableaux vivants in a revue. According to the report Coleridge J said:

"A cartoon was a work of art ... (which to merit protection) must consist of two essentials – an idea and a design, or an embodiment of that idea.... it was the embodiment which was the subject of copyright, for though the idea was not original, if the embodiment of the idea or any substantial part of it was copied, copyright was infringed; whereas the idea might be adopted, even if it was original, but if the embodiment of such idea or a substantial part thereof was not copied, no copyright was infringed. The question of fact which he had to decide was whether the living pictures or any of them were reproductions in a material form of the whole or a substantial part of the othe original cartoons." (I underline)

It appears that the Court compared the cartoons and the corresponding living pictures. Again, the words I have underlined indicate that the close corporation has no legitimate case of infringement of its artistic works because there has, in the moving picture produced by the respondent, not been an embodiment of the close corporation's artistic works.

Mr Campbell referred to Natal Picture Framing Co Ltd v Levine 1920 WLD 35, but that was a case where a picture contained a combination of ideas which formed part of a picture produced by the defendant which, despite differences in details, was a colourable imitation of the original. The facts on which the case was decided against the defendant appear from what Bristowe J said at 39:

"Here the plaintiff's picture is a fancy combination. It shows the deputation sailing from Cape Town, a cheering crowd at the docks, medallions containing portraits of the members of the deputation and a title 'Vrijheids Deputatie'. All that is in the respondent's picture with slight variations. For instance, in his picture the ship has just put out to sea, instead of being still alongside the quay as in the applicant's. The cheering crowd is on the left of the picture instead of the right and the figures are larger. The medallions containing the portraits are identical but arranged in a somewhat different order. And the title is 'Republiek Deputatie' instead of 'Vrijheids Deputatie'. There are also other minor differences of detail. As I have said, the respondent's artist had the plaintiff's picture in his possession, whether it was actually applicant's combination of ideas, reproducing them in their main particulars with merely slight differences of detail. This makes the second picture, in my opinion, a colourable imitation, calculated to deceive any person who had a general recollection of the plaintiff's picture."

The case is quite distinguishable from the case with which I am dealing. The defendant's picture, in the same medium, was clearly a copy of the plaintiff's picture. Nothing similar has happened here.

In Joy Music Ltd v Sunday Pictorial Ltd (1960) 1 All ER 703 (QB) the plaintiffs owned the copyright in the words and music of a song called "Rock-a-Billy", which was played in rock–'n-roll rhythm. The defendants published an article concerning the sporting activities of Prince Philip, headed "Rock-a-Philip Rock! Rock!" and containing a parody of the plaintiff's song – including a chorus with several repetition's of "Rock-a-Philip" and printed in the same metre as the verses in the plaintiff's song. The plaintiffs had no copyright in the idea of the song. Their claim of an infringement was rejected. McNair J referred to the observation of Lindley LJ in Hanftstaengl v Empire Palace, in the Court of Appeal (1894) 3 ChD 109 at 125 that:

"in doubtful cases the extent to which the copying has been carried and the object sought to be attained ... are matters which can be considered"

 

"The amusing sketches in "Punch" of the pictures in the Royal Academy are not, in my opinion, infringements of the copyright in those pictures, although probably made from the pictures themselves"

and said:

"There it seems to me the learned judge is saying: 'These are not infringements judged by the purpose and intention with which they had been produced'" (at 703B–F)

A parody or burlesque of a song or other literary work would not be considered to reproduction thereof. The same applies, bearing in mind the words of Lindley LJ, to a parody of a drawing or cartoon or other work of art.

In King Features Inc v Kleeman Ltd, (1941) 2 All ER 403 (HL) the appellants claimed Page 21 of [1997] JOL 393 (W)

relief on the ground that the respondents had sold brooches which were a reproduction in material form of Popeye the Sailor, as depicted in strips of drawings published by the appellant.

Lord Wright said:

"The issue must thus be determined simply on the basis of a comparison between the brooches (which may be treated as all of the same design, notwithstanding some minor variations in the actual examples) and the selected sketch, which was No. 3 of the sketches published in the New York Evening Journal on Jan 17, 1929. The test to be applied is purely visual, the sketch and the brooch being compared oculis subjecta fidelibus. It is not material that the respondents were stealing the idea of Popeye the Sailor, or availing themselves for commercial profit of the popularity acquired by that figure. The appellants' copyright is in the actual sketch, and not in the idea. There would be no infringement if the respondents had independently produced a similar figure without copying the sketch directly or indirectly. The question is whether there was copying of the actual sketch." (at 414A–B)

These words demonstrate that for there to have been a breach of the appellant's copyright, there had to be a copying, in the sense of a reproduction of a substantial part of the sketches or any of them in three-dimential form.

The reason why the appellants succeeded emerges from the speech of Lord Russell of Killowen:

"For my purpose, it is sufficient to refer to sketch No. 3, of which I think a substantial part is reproduced in the brooches. The question of colour is immaterial, but I find reproduced in the figure of which the brooches consist the following salient features of Popeye in sketch No. 3 – namely, the sailor's cap, the nose, the chin, the mouth, the swollen forearms, the baggy trousers, and the enlarged feet. This, I consider, constitutes a reproduction of a substantial part of sketch No. 3. Further, I am of opinion that a comparison of the brooch with the sketch in question raises a strong presumption (not displaced by any evidence) that the figure of the brooch was copied directly or indirectly from that sketch." (at 411F–H)

The relationship between the close corporation's cartoon strips and the respondent's television advertisement is completely different.

To sum up, the close corporation has not made out a case of any breach of its copyright in the artistic work comprising the cartoon strips.

The Common Law

The close corporation's case is that the respondent has wrongfully and unlawfully used and exploited the characters in the cartoon strip and the cartoon strip itself and the reputation, goodwill and marketing power of "Madam and Eve" to advance its advertising campaign. In particular, the respondent is alleged to have misappropriated and utilised the advertising value that attaches to Madam and Eve. The close corporation's right which it says has been infringed is that to the sole exploitation "in every conceivable manner" of the Madam and Eve characters and cartoon strip. These, it is said, are the product of the applicants' inspiration, skill and labour. The close corporation disavowed any complaint of unlawful competition on the basis that it does not sell advertising slots on television.

The right of which the close corporation claims protection is the commercial exploitability of the cartoon strip and its characters. Mr Campbell's argument was that the respondent's use of this property diluted its value and misrepresented the source or origin or business connection of the advertisement. Van Heerden and Neethling point out that, even outside the competitive context and in the absence of deception or confusion, the

"misappropriation of the advertising value of an entrepreneur's trade marks, trade names and service marks creates a real danger of dilution (the gradual "whittling away or dispersion", blurring, erosion or watering-down) of the magnetism or drawing power and consequently of the effectiveness of the name or mark" (Unlawful Competition 214)

This approach is generally confined to trade marks or names which identify a person's goods or services. It is premised on the reputation of a mark or name and its resulting selling power. In a paper Misappropriation of the Advertising Value of Trade Marks, Trade Names and Service Marks, delivered at a seminar on 3 November 1989 and published under the editorship of Neethling under the title Onregmatige Mededinging Unlawful Competition, Rutherford explains the position with regard to the intellectual property referred to in the title. The considerations which he mentions with regard to the dilution of a trade mark by misappropriation as being a form of unlawful competition (for example, in certain forms of comparative advertising) are relevant. Indeed, Mr Campbell referred to judgments and writers dealing with the dilution of trade marks. Rutherford says.

"The greater the advertising value of the trade mark, the greater the risk of misappropriation. Any unauthorised use of the trade mark by other traders will lead to the gradual consumer disassociation of the trade mark from the proprietor's product. The more the trade mark is used in relation to the products of others, the less likely it is to focus attention on the proprietor's product. The reputation and unique identity of the trade mark will become blurred. The selling power becomes eroded and the trade mark becomes diluted. The proprietor of the trade mark usually expends vast sums of money through advertising in order to build up the reputation and selling power or advertising value of his trade mark. The growth of his business is dependent upon the growth of the meaning and importance of his trade mark. It is therefore only fair that he should be entitled to protect this valuable asset against misappropriation. Moreover, a misappropriator should not be allowed to obtain a promotional advantage for his product at the expense of the trade mark proprietor. Misappropriation of the selling power or advertising value of a trade mark is commercially injurious to the trade mark proprietor and results in the impairment of the goodwill of his business. It is submitted that such conduct is, in principle, unlawful and constitutes an infringement of his right to goodwill." (at 56– 7 footnotes omitted)

What we are dealing with is analogous to what is described by Rutherford as "the protection of the advertising function of a trade mark", i.e. the protection of the advertising function of the cartoon characters.

I do not propose to pursue this discussion because even on the basis that what is said about trade marks or names extends to any representation, such as a cartoon character, which is identified with or identifies something of commercial value (cf Federation Internationale De Football v Bartlett and others, 1994 (4) SA 722 (T) at 736D–739A) there is no case for saying that the respondent has taken advantage of the reputation of the close corporation's merchandise, services or incorporeal property for the purpose of promoting the sale of something owned by it. It has not taken the name "Madam and Eve" or the cartoon characters which appear in the strip for the purpose of implanting its or their reputation on its advertising services. It cannot seriously be suggested that the reputation or quality or image of Madam and Eve or its cast have been appropriated to enhance the value or the image of the respondent's advertising services. The most that can be said, which will be the subject of the next enquiry, is that the respondent has appropriated of the concept or idea devised by the close corperation of a domestic scene involving, mainly, three residents of a house and a regular vendor of mealies and their interaction on a relationship with each other. It is not a case of a business person marketing a product to, say, black customers by associating that product with or suggesting an endorsement of it by Eve.

Apart from the copyright in the cartoon strips the close corporation must, however, have a proprietary right in the characters its employees have created. Callman in Unfair Competition Trade Marks and Monopolies 4th ed deals in para 4.65 with cases in which a character created by one author is used by another, saying:

"In this context, neither copyright nor trademark law is appropriate. (In a later passage in the paragraph the author says: "Where plaintiff alleges copyright infringement with respect to several comic strips, he has the burden of proving a valid copyright for each strip in suit (National Comics Publication Inc v Fawcett Publications Inc 198 F2d 927 (CA 2nd 1952))"

Although the appropriation of a character may or may not result in passing off, the appropriation itself should be an actionable wrong. The name of a character may be a title, but it may also be the essence of the work – its very heart and soul."

The following interesting cases are given:

"Imitation of a well-known character is even possible without adoption of the exact name. Thus, Charlie Chaplin was awarded an injunction against one who, under the name "Charlie Aplin," imitated Chaplin's costume, mannerisms and method of performance. As the court properly noted, even if the defendant dropped the name "Charlie Aplin," the injunction would still be proper. So too, the comic strip "The Lone Ranger" was protected against use by an actor on the ground of unfair competition." (footnotes omitted)

The urgency of this matter does not allow the time for further and adequate research which, in view of the conclusion to which I have come regarding the alleged infringement of the close corporation's rights, is, in any event, not necessary. Reference has been made in cases dealing with unfair competition to the criteria of fairness, honesty, boni mores, the general sense of justice of the community (or "die regsgevoel van die gemeenskap se regsbeleidmakers, soos Wetgewer en Regter") and, in some cases, public policy, such as the importance of a free market and of competition in our economic system (see Schultz v Butt, 1986 3 SA 667 (A) at 679A–E). There is no reason why the same criteria should not apply where a person creates a character or set of characters by his or her ingenuity and, obviously, the application of time and labour. The community would, in my opinion, condemn as unfair and unjust the appropriation by another of the product or creation of the close corporation's employees' materialised concept and there is no apparent public interest to displace that condemnation (cf Schultz v Brett, supra at 683H and 684A). Moreover, the cartoon and its characters have a potential commercial value, apart from the fees earned by the publication of the cartoons as such, to be derived from endorsements and use in books. I do not see why protection of the proprietary rights to such characters should be restricted to cases where they are used for character merchandising i.e. "merchandising popular names, characters and insignia in order to enhance the sale of consumer products in relation to which such names and characters are used" (Federation Internationale De Football v Bartlett and others, supra at 736D– E). In that case Joffe J gave the following example:

"A typical merchandising product is the well-known cartoon character Mickey Mouse. As the proprietor of the merchandising property has already invested substantial time and money in developing and popularising such character, and it is the fame and desirability of the merchandising property which will promote the sale of the goods to which it is applied, the proprietor of the merchandising property charges a royalty or licence fee for the use of his merchandising property. The royalty is payable in terms of a licence agreement under which the owner of the merchandising property authorises the licensee to utilise the merchandising property in relation to his goods.

...

It appears that the consumer makes a connection and an association between the character and its creator or owner and the products featuring the character. Thus it is widely known, according to the deponent Wills, that the character Mickey Mouse was created by Walt Disney. Clothing bearing the image of Mickey Mouse is inevitably then associated with Walt Disney." (at 736G–737A)

However, the law would not permit a person to appropriate for his or her own use eg. by creating a series of stories or a film or a cartoon series the Mickey Mouse character or a colourable imitation of him without the license of the successors to Walt Disney. Having said that, I cannot find that the respondent has appropriated the characters in Madam and Eve. The cartoon characters and those in the television advertisement are personifications of the same prototypes but they are different characters. The persons portrayed in the advertisement are not called and they are not nor do they purport to be Madam, Eve and Mother Anderson. Mr Campbell identified what he regarded as some common characteristics-physical, attitudinal and behavioural– and clothing and jewellery, but they do not persuade me that the characters are the same or that they could be confused with each other or that the human personifications in the television advertisement are colourable imitations of the cartoon characters. In my opinion the degree of appropriation of the close corporation's concept and idea is not one which the community would treat as unfair, dishonest or contrary to morality – that is on my assumption that such considerations would render an appropriation wrongful even if effected by someone other than a competitor. The close corporation has not established a delictual wrong.

Order

The application is dismissed with costs, including those consequent on the engagement of two counsel.