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 Restaurant

• Jurisdiction: South Africa
• Judge: Van Dijkhorst J
• Judgment Date: 19 May 1981
• Court: Transvaal Provincial Division

Van Dijkhorst J:

As a mongrel attracts ticks, so a popular soap opera F television series is often sponged upon by a spate of manufacturers and dealers who attempt to capitalise on its popularity by branding or advertising their product with reference to its characters or localities. The fact that the ethics and conduct of the characters are not above reproach seems rather to enhance their attractiveness in this respect. G The current "Dallas" television series is a case in point. It has given rise to these three applications. The applicants are the same in all three applications, which were for convenience' sake heard together.

The first applicant (hereinafter referred to as Lorimar) and the second applicant (hereinafter referred to as Ziv) are companies registered in H terms of the laws of the state of California, United States of America, with registered offices in that State. The third applicant (hereinafter referred to as Meyer) is a company registered in the Republic of South Africa. Lorimar produces television films and feature films. It produced the television series Dallas and is allegedly the copyright owner thereof. The business of Ziv is that of character merchandising. Thereby is meant the use of characters, locations, names, titles and logos from television series, feature films or other entertainment programmes for promotions and the sales of products and

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services. It is alleged that modern buying habits are highly responsive to image related advertising. If carefully chosen merchandise is marketed A in overt association with a popular film, television series, celebrity, fictitious character or the like, that merchandise will enjoy a greater consumer demand than could have been expected for the unadorned product. It is alleged that the natural response of the entertainment industry to this phenomenon has been the development of a substantial business in the B sale of endorsements and licences for the use of material which will endow licenced merchandise with the aura of an existing box office success. Allegedly manufacturers are prepared to pay considerable sums of money for the privilege of using (usually under elaborate conditions as to quality control) a particular name, title, photograph or similar C embellishment in or upon merchandise which might thereby obtain a springboard into the market place. This then is the basis of Ziv's business in character merchandising.

Acting on behalf of Lorimar, Ziv appointed Meyer as Lorimar's agent in, inter alia, the Republic of South Africa. In terms of this appointment Meyer had allegedly the sole and exclusive right to use and to licence the D names and likenesses of the persons, characters, titles and/or logos and derivatives therefrom from, inter alia, the Dallas television series. (I understand that the word logo is derived from the word logogram and means a symbol designed to represent a simple graphic form or object.)

In each of these applications the applicants seek a temporary interdict restraining the respondents, their servants and agents from using on, in E or in respect of their businesses, goods, services or publications, any characters, locations, persons, titles, logos and concepts depicted in the Dallas television series pending the final determination of an action to be instituted by the applicants for a permanent interdict and for damages. F The main prayer in these applications was for a permanent interdict, but this was not proceeded with. As there was a dispute of fact whether Lorimar had a duly registered copyright in respect of each episode of the Dallas series, and was therefore the copyright owner in terms of the law of the United States of America and whether by virtue thereof Lorimar had G copyright protection in South Africa, and further as it was disputed that Lorimar was the holder in the United States of America of the registered trade mark "Dallas" in respect of certain classes of goods, the applicants for the purpose of this application disclaimed any statutory rights either H by the virtue of the copy-right or the trade mark law. This case is therefore to be decided upon common law principles.

The applicants allege that Lorimar licensed SABC-TV to transmit the Dallas television series and that the first transmission took place on 27 February 1979. It is alleged that as a result of this transmission Lorimar has created a goodwill for itself in respect of the characters, locations, persons, titles and logos depicted in the series. In support of the allegation that goodwill has been created for Lorimar as aforesaid, it is stated that each episode screened indicates prominently the name of Lorimar as the production company and the fact that it is the holder

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of the copyright. The applicants alleged that it is a well-known fact of present day commercial life that the characterisations. names and concepts A of any successful television or feature film form valuable assets which are licenced by the creators of those films and that it is assumed by members of the public that the use of such a characterisation in respect of products or goods is licenced by the creator or copyright holder, and an impression is created in the minds of the public that the product B emanates directly from or is associated with the production company or the production itself. The creation of the impression of such a link-up is alleged to be of great commercial importance in the successful marketing of any product. These allegations are made on behalf of the applicants by Brad N Globe, the director of business affairs of Ziv. It should be noted that he does not profess to have any experience or knowledge of the South C African situation. His allegations are, however, confirmed by Neville Morris Meyer, managing director of Meyer, presumably an incola of this country, who merely states that he confirms the contents of Brad's affidavit in this respect. No evidence by any member of the public was presented.

The applicants state that it is common knowledge that Dallas is one of D the most popular television series in the history of television. I accept for the purpose of this application (making due allowance for the hyperbole of show business) that it is a popular series in South Africa and that its fictitious characters such as JR, Jock, Bobby, Sue-Ellen, Pamela, Lucy and Ellie Ewing as well as the locations Southfork and Dallas E are well-known to a large section of the South African television viewing population. I also accept that a large number of newspaper articles, feature articles and other publications dealing with these characters and locations depicted in the Dallas series have appeared regularly in the press.

F The applicants allege that the South African Broadcasting Corporation, which has a merchandising department which deals inter alia in character merchandising, recently attempted to obtain for itself a merchandising right in respect of the Dallas series. It is also alleged that Lorimar has licenced the Los Angeles Time syndicate to distribute a cartoon strip based on the Dallas series and that a large number of licensees have been G appointed in the United States and in England for a variety of products. These range from leather-wear and puzzles, to buttons and beer. Sunglasses, enamel costume jewellery and male cosmetics are also worthy of mention.

As stated Meyer has the sole and exclusive right to use and to licence the H names and likenesses of the persons, characters, titles and/or logos and derivatives therefrom of the Dallas series. It advertised the fact and received a large number of enquiries from persons and companies interested in entering into licence agreements. A licence was entered into in respect of T-shirts, and "the Dallas game" and "the Dallas card game" are being imported on a licence arranged with Ziv through Meyer. But it is alleged that further negotiations have been suspended by virtue of "the large scale infringement problem in South Africa". Allegedly the respondents are partly responsible for this problem. The respondent in the first application (a company

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hereinafter referred to as Sterling) markets jeans under the name "Southfork". In its advertisements it was using and continues to use the A initials "JR". Sterling is a clothing manufacturer whose goods are sold throughout the Republic of South Africa. On 23 November 1979 Sterling made application under No 79/6279 for the registration of the trade mark Southfork (and device) in class 25 in respect of articles of clothing. On 28 November 1979 it commenced manufacture of its jeans bearing the B Southfork label and began soliciting orders for these goods through salesmen who operated throughout the Republic during January 1980. To date the effected sales of the Southfork jeans amount to some R396 000. Apart from the marketing effort of its salesmen it has expended some R18 000 in advertising costs in order to effect the said sales. The aforesaid C trade mark application was accepted by the Registrar of Trade Marks on 13 October 1980 and this acceptance was duly advertised in the Patent Journal of 29 November 1980. The statutory period for objection to this trade mark application provided for in s 21 of the Trade Marks Act 62 of 1963 D accordingly expired on 29 January 1981 without objection from the applicants or any other party. Sterling therefore alleges that it has a substantial business interest in the sale of its Southfork jeans, whereas the applicants had no business of any nature in the sale of merchandise in South Africa until November 1980 and even at the present time have no business in the sale of clothing bearing the mark Southfork or the initials JR.

E In the second application the applicant joined as respondents only the first respondent (a company hereinafter referred to as OK Hyperama) and the...