Butt v Schultz and Another

• Jurisdiction: South Africa
• Judge: Mullins J
• Judgment Date: 26 April 1984
• Citation: 1984 (3) SA 568 (E)
• Hearing Date: 13 February 1984
• Court: Eastern Cape Division

Mullins J:

The applicant is, inter alia, a boat builder, who has practised

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A this trade for a number of years at his farm at Kenton-on-Sea. The papers before me reveal that, despite the lack of any formal training in boat-building he has, by trial and error, experimentation, and practical experience of the performance of various types and configuration of boats, and particularly the hulls thereof, as constructed by him, developed a fibreglass catamaran-type boat which he markets, B apparently with considerable success, under the name of "Buttcat".

The "Buttcat" is a sturdy craft used largely, although not exclusively, for deep sea fishing purposes. The applicant also builds larger boats, which do not, however, figure in this application. Furthermore the "Buttcat" hull can be constructed C from one of two different moulds, both evolved by applicant, which he refers to as his No 1 mould and his No 2 mould. Most of the boats presently sold by him have hulls constructed from his No 1 mould, and it is these hulls which are the subject of the present litigation. Any reference in this judgment to the Buttcat and the hull thereof refers therefore to hulls constructed from the said No 1 mould.

D First respondent is a boat builder of Port Alfred. Second respondent is the Registrar of Designs. The relief sought, according to the notice of motion (as amended at the hearing) was as follows:

"1.

That a rule nisi do issue calling upon the first respondent to show cause if any in the above E honourable Court on a date to be determined by the above honourable Court why an order should not be granted:

(a)

Directing the second respondent in terms of s 10 (2) of the Designs Act 57 of 1967 to make the appropriate entry or amendment to the register of designs so as to cancel the registration of designs Nos 83/0645 and F 83/0647, both being in class 12 and both of which were registered on 4 August 1983 at the instance of the first respondent.

(b)

Interdicting and restraining the first respondent from using

(i)

any catamaran hull manufactured by the applicant; or

(ii)

any mould made from a catamaran G hull manufactured by the applicant

for the purpose of manufacturing catamaran hulls.

(c)

Interdicting and restraining the first respondent from manufacturing catamaran hulls according to the model or design from the applicant's catamaran hulls.

(d)

H Interdicting and restraining the first respondent from selling or otherwise disposing of in the course of trade any catamaran hulls presently in his possession made from any mould referred to in para (b) above.

(e)

Directing the first respondent to deliver up to the Sheriff or his deputy all moulds or I hulls in his possession made from any mould referred to in para (b) above for destruction of such moulds or hulls.

(f)

Directing the first respondent to pay the applicant's costs on the scale as between attorney and client; alternatively on the scale as between party and party.

2.

That such rule as may be issued by the above honourable Court

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in terms of para 1 above will operate as a temporary A interdict with immediate effect pending the return date.

3. (a)

Declaring that the first respondent's 'Supercat' boat hull and mould are infringing copies (as defined in Act 98 of 1978, as amended) of the applicant's 'Buttcat plug or mould or hull';

(b)

B interdicting and restraining the first respondent from using the mould of the Supercat to manufacture Supercat hulls;

(c)

directing the first respondent to deliver to the applicant all Supercat moulds and hulls in his possession or under his control;

(d)

directing the first respondent to deliver to C the applicant a full account of all sales of Supercat craft manufactured and sold by him;

(e)

directing the first respondent to pay the applicant's costs on a scale as between attorney and client.

4.

Alternatively to paras 1, 2 and 3 above, an order directing that the relief claimed in para 1 (a) - (d) D and in para 3 (b) operate as an interim interdict pending the outcome of an action to be instituted by the applicant against the first respondent for the relief set out in paras 1 to 3 above.

5.

Granting such further or alternative relief as the above honourable Court may deem fit."

E It was common cause in argument however that no purpose would be served by a rule nisi, the issues having been very fully ventilated in the affidavits on behalf of the applicant and the first respondent respectively. The second respondent abides the decision of the Court, no costs being claimed against him.

A brief description of the method of construction of the F Buttcat hull is necessary as a preliminary to the history of the disputed issues between the parties. A catamaran-type boat has a double or twin hull, and the applicant built his first boat of this type of wooden construction in about 1954. It is not disputed that such a design, namely the twin hull, was a novel concept in South Africa at the time.

G The use from about this time of the material colloquially referred to as fibre glass apparently revolutionized the boat building industry, and applicant commenced to work with this material. The method of doing so is as follows. The shape of the desired hull is constructed of concrete in inverted form on H the ground. This is referred to as a plug. When the desired shape and configuration of the plug has been achieved, layers of fibre glass and resin of sufficient thickness are applied to the plug so that when removed from the plug a mould is obtained. Blemishes and imperfections on the inside of the mould are removed until a highly smoothed and polished surface is obtained. Hulls can then repeatedly be made from that mould I by the application of layers of fibre glass and resin to the inside of the mould, to which a release agent is first applied to prevent sticking to the mould. The hull so produced is nothing but a shell, without even a transom, ie the stern, which is fitted subsequently. The gunwales are then also finished off to the desired height and thickness, and a deck and super-

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A structure to suit the individual owner's requirements are later added. It is however the shape and configuration of the hull that is the critical feature of the seaworthiness and performance of the finished boat.

In the course of arriving at the present shape of the Buttcat hull, the applicant altered and modified a number of the important features thereof, and in particular introduced B certain novel features which he himself evolved and designed as a result of his knowledge and experience of boats. Between 1955 and 1978 he constructed several moulds, in each case modifying and improving on the earlier shape. He commenced using the name Buttcat in 1959, but the No 1 mould, which he still uses, was constructed during 1978. Until 1964 or later, C according to applicant, he was the only manufacturer of fibre glass catamarans in South Africa.

Apart from the general configuration and size of the hull, he paid particular attention to certain features which he incorporated in his design from time to time. He altered the shape, height and width of the tunnel, ie the middle section D between the two hulls. He altered the shape of the bows to a concave configuration, in place of the usual convex shape. He provided for what are referred to as "reverse chines", which are ridges or steps near the bottom of the hull on each side, designed to throw water downwards instead of spraying upwards. He flattened the keel surfaces between the chines on each side. E The most conspicuous change was to alter the front, or bows, to provide for a V shape indentation between the front tips of the twin hulls at gunwale level in place of a straight section across the front of the boat.

None of these modifications were effected for cosmetic or aesthetic reasons. While there may be a dispute as to the effectiveness thereof, the purpose of introducing these changes F was because, in the opinion of the applicant, they effected functional improvements. It is clear that apart from the purely physical task of building plugs and moulds to incorporate these features - a laborious process according to applicant - the decision to effect the changes in each case followed on experimentation and experience over lengthy periods of time.

G Nor does there seem to be any doubt that the present Buttcat, of which the hull is constructed from the No 1 mould, is a successful commercial venture. While certain criticisms thereof appear in first respondent's affidavit, he does not seriously contend, save as a competitor promoting his own boats, that applicant may not justifiably claim credit for having evolved a H popular and reliable boat of the catamaran type, with a hull designed solely by the applicant. First respondent concedes, albeit grudgingly, that it is "a very good hull design", to which applicant has devoted a great deal of time, thought and money over the years.

It follows from the above that in order to construct a hull it I is necessary to have a mould. The construction of the mould is in turn a mechanical process once the plug has been constructed. The inventive work involved in the whole process is executed firstly in the construction of the plug, and thereafter to a lesser extent in the mould made from that plug. Applicant has never worked from any plans or drawings. The configuration of the hull, and all the adaptations thereto,

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have been, as the applicant says, "conceived and executed in A threedimensional form by construction of the plugs". More than one identical mould can of course be made from the same plug, and anyone wishing to copy applicant's hulls would require such a mould.

I turn now to the facts giving rise to the present dispute. Early in 1983...