Like a butterfly flapping its wings on the other side of the world, a single judgment often has far reaching implications on our interpretation and application of the law.  The legal fraternity often misinterprets the judgment given in BMW AG v Grandmark International (Pty) Ltd and Another 2014 (1) SA 323 (SCA) and wrongly assume that as a consequence of this judgment, aesthetic creations which also has a functional aspect to it and which is to be manufactured in a so-called “industrial process”, can no longer be protected under the Designs Act 195 of 1993, nor the Copyright Act 98 of 1978.  This is, however, a misconception and even after the six-month grace period for filing a registered design has lapsed, one is still entitled to copyright protection for certain industrially manufactured aesthetic creations.

In Van Dijkhorst J’s judgement in Bress Designs (Pty) Ltd v GY Lounge Suite Manufacturers (Pty) Ltd and Another 1991 (2) SA 455 (W) it was held that a peculiar, yet original – the Copyright Act does not consider the artistic quality of a work – “M-shaped” sofa had a primarily utilitarian purpose and as such fell within the ambit of Section 15(3A) of the Copyright Act – the so-called “reverse engineering” of products exception.  

Section 15(3A) of the Copyright Act provides that where a copyright owner has directly or indirectly produced and sold three-dimensional derivative articles of his or her work anywhere in the world and such derivative articles primarily have a utilitarian purpose and are made by an industrial process, no infringement occurs thereafter by the making of unauthorized reproductions by means of indirect copying.

The Oxford Dictionary provides that “utilitarian” means “useful or practical rather than attractive”.  Furthermore, it is submitted that by using the word “primarily” the legislature had a specific purpose in mind – the purpose of which becomes clear when one considers the backdrop to the Copyright Amendment Act 66 of 1983 which introduced Section 15(3A) into the Copyright Act.  

Section 15(3A) was introduced into the Copyright Act to preclude copyright owners from effectively using their copyright as a form of unregistered design and thus preventing competition in the manufacture of technical products and more particularly spare parts for motor vehicles, mining equipment, machinery and the like.  At the same time, the Designs Act was amended to make provision for the registration of functional designs.  Section 15(3A) never meant to deprive authors of their copyright protection in their aesthetic creations.

In light of the above, it is submitted that the term “utilitarian” should be interpreted against an industrial backdrop; a derivative article must be a useful thing in an industrial context for the exception of Section 15(3A) to apply.  Furthermore, even if an aesthetic derivative object has a functional aspect to it, it would still not fall within the ambit of Section 15(3A) due to the specific use of the word “primarily”.  

But what of the Bress Designs case?  Van Dijkhorst J applied an objective test, similar to that applied in accordance with the Designs Act, to determine whether the object in question had a primarily utilitarian purpose.  It is submitted that this test remains true; however, a piece of expensive jewellery is not a sofa and in the more recent case of Marick Wholesalers (Pty) Ltd v Hallmark Hemdon (Pty) Ltd 1999 BIP 394 (T) the court accepted same – although tacitly.

In conclusion, it is the purpose of the article and not the article itself which must have a primarily utilitarian purpose for the Section 15(3A) exception to apply – this view is supported by the judgment in Nintendo Co Ltd v Golden China TV-Game Centre and Others 1995 (1) SA 229 (T).  “Beauty lies in the eye of the beholder” and accordingly the motivation of the average reasonable purchaser in purchasing the article should be considered when considering whether the article has a primarily utilitarian purpose, or whether it is for adornment.

As the oldest and one of the most respected intellectual property law firms in South Africa, KISCH IP has established itself as a true captain in navigating clients between the Scylla of insufficient intellectual property rights protection and the Charbydis of attempting to enforce the wrong type of intellectual property rights.  KISCH IP’s team draws from the expertise of all our departments, which includes patents, trademarks, copyright, anti-counterfeit, competition, commercial and intellectual property valuations and thereby ensures that our client’s valuable intellectual property rights are fully protected.