Bress Designs (Pty) Ltd v G Y Lounge Suite Manufacturers (Pty) Ltd and Another

• Jurisdiction: South Africa
• Judge: Van Dijkhorst J
• Judgment Date: 29 March 1990
• Citation: 1991 (2) SA 455 (W)
• Court: Witwatersrand Local Division

Van Dijkhorst J:

A 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 B 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.

C 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.

D 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 E 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 F 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 G 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 H 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 I 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 J to the drawing. In the cutting process no real skill is

Van Dijkhorst J

A 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 B 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, C 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 D 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 E 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 F 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 G 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 H 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 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 J more oblique in the Componer than in the Fendi.

Van Dijkhorst J

A 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 B 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 C 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, D 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 E 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. F 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 G 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 H 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...