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

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
1981 (3) SA 1129 (T)

1981 (3) SA p1129

Citation	1981 (3) SA 1129 (T)
Court	Transvaal Provincial Division
Judge	Van Dijkhorst J
Heard	April 4, 1981; April 5, 1981; April 6, 1981; April 7, 1981; April 8, 1981; April 9, 1981; April 10, 1981
Judgment	May 19, 1981

Flynote : Sleutelwoorde

D Trade and trade mark — Trade — Passing off-Producer of a television film, company merchandising characters, logos, names etc from such film for the sale of products and services and latter's South African agent applying for temporary interdict against respondents restraining them from using E such characters, logos, names etc in their business, goods or services — Applicants not having created an association in the public's mind between the television film and the goods or services of the respondents — Requirement of goodwill for passing off action not met — No evidence that public likely to be deceived — Character merchandising not so well-known F in South Africa that it can be assumed that the man in the street has knowledge thereof — Passing off not established.

Trade and trade mark — Trade — Unlawful competition — Action based on — Whether defendant's act is contra bonos mores — Necessary to determine what protection is granted by statute or the common law in that field or G closely related fields — Court, in its finding, should merely mirror the general sense of justice of the community as manifested in public opinion and not be used as spearhead of law reform — Application for temporary interdict refused where respondents' acts could not be branded as being against public policy. H

Headnote : Kopnota

The first applicant, the producer of the well-known television series, "Dallas", the second applicant, a company whose business was character merchandising, ie the use of characters, locations, names, titles and logos from television series, films etc for promotions and the sale of products and services, and the third applicant, the South African agent of the second applicant (the first and second applicants being American companies), applied for temporary interdicts against the respondents in three applications, restraining them from using on, in or in respect of their businesses, goods, services or publications any characters, locations, names, titles and logos depicted in the "Dallas" television series. The applicants alleged that it was a well-known fact of present day commercial life that the

1981 (3) SA p1130

characterisations, names and concepts of any successful television or feature film formed valuable assets which were licensed by the creators of A those films and that it was assumed by members of the public that the use of such a characterisation in respect of products or goods is licensed by the creator or copyright holder, and an impression was created in the minds of the public that the product emanated directly from or was associated with the production company or the production itself, and this impression was of great importance in the successful marketing of any product. The respondents in the first two applications had used names from the "Dallas" television series on clothing manufactured or sold by B them and the respondent in the third application had named its restaurant the "Dallas Restaurant" and some items on the menu thereof included descriptions which referred to some of the characters in the television series. It was further alleged that the respondents, in so acting, were infringing the applicants' rights. Applicants alleged in the first instance a passing off by the respondents in that a false impression in the minds of the public that there was a link between first applicant and C the goods or services of the respondents in the form of sponsoring, licensing, endorsing or exercising some kind of control over the activities of the respondents and the quality of their goods with the result that the public was deceived to the detriment of the applicants, and, in the second instance, the applicants, relying on the delict of unlawful competition, alleged that the respondents were using the creation D of the first applicant to promote business for their own advantage, which was unfair as being contra bonos mores.

Held, that, although the "Dallas" television series generated widespread interest and so created a goodwill for the first applicant in this country, such goodwill pertained to the entertainment field: the applicants at no time took any action that was directed to creating an association in the minds of the public between the television series and clothing or restaurants.

E Held, further, that, where a goodwill or reputation exists, the name of the holder or his mark, logo etc should conjure up in the minds of the public the particular class of article or service for which the holder was known: the name of the first applicant or the names of locations or characters in its television series did not have any reputation in respect of clothing or the restaurant business (except insofar as the respondents F had created it). Held, accordingly, that the requirement of goodwill for an action of passing off had not been met by the applicants.

Held, further, that no evidence had been placed before the Court that the public of South Africa had in fact been deceived by the use of the names from the television series by the respondents, as alleged by the applicants, nor was there any acceptable evidence that the public was likely to be deceived by the use of those words.

G Held, further, that character merchandising was not so well-known in South Africa that the Court could, without proper evidence in this regard, assume that the man in the street would have any knowledge thereof.

Held, accordingly, that it could not be found that the applicants had made out a prima facie case of deception or the likelihood thereof, and there could thus be no passing off.

Held, further, in regard to the cause of action based on the general H delict of unlawful competition, that the norm to be applied was the objective one of public policy, ie the general sense of justice of the community, the boni mores, manifested in public opinion.

Held, further, that, in determining whether an act is contra bonos mores, it was not only wise but necessary to determine what protection was granted by statute or the common law in that field or closely related fields: the absence of a remedy in the case of an alleged obvious injustice, when Parliament or the common law has provided a remedy for a closely related wrong might indicate that the so-called injustice was neither obvious nor unjust.

Held, that this could be no more than a guide, as the mores of an ever changing

1981 (3) SA p1131

society were not static and the law might lag behind: yet a court should in its finding merely mirror the general sense of justice of the community A as manifested in public opinion, and guard against being used as a spearhead of the avant-garde of law reform whose forum should be Parliament.

Held, further, having regard to various statutory provisions examined by the Court and to the common law, that neither the morals of the market place nor the interests of society required that the use of the title of the television series "Dallas" and the location 'Southfork" therein, or the names of fictional characters therein, used in a totally unrelated field and outside the direct competitive situation, be branded as against public policy.

B Held, accordingly, that the applicants could not succeed on the basis of the general delict of unlawful competition. Application dismissed.

Case Information

Application for a temporary interdict. The facts appear from the reasons for judgment.

L T C Harms SC (with him E Goldstone) for the applicants in all three applications. C

A H Ashton for the respondent in the first application.

A Suzman QC (with him A H Ashton) for the first and third respondents in the second application.

A Suzman QC (with him C E Puckrin) for second respondent in the second application. D

B Galgut SC (with him P Ginsburg) for the respondent in the third application.

Cur adv vult. E

Postea (May 19)

Judgment

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

1981 (3) SA p1132

Van Dijkhorst J

services. It is alleged that modern buying habits are highly responsive to image...