Introduction
Section 15(3A)
Copyright Amendment Act
Bress Designs
Comment
A single judgment often has far-reaching implications on the interpretation and application of legislation. For example, the legal fraternity often misinterprets the BMW AG v Grandmark International (Pty) Ltd(1) judgment and wrongly assumes that aesthetic creations with a functional element which are to be manufactured using a so-called 'industrial process' cannot be protected under the Designs Act (195/1993) or the Copyright Act (98/1978). However, this is a misconception as copyright protection can still be sought for certain industrially manufactured aesthetic creations even after the six-month grace period for filing a registered design has lapsed.
The Bress Designs (Pty) Ltd v GY Lounge Suite Manufacturers (Pty) Ltd judgment held that a peculiar yet original M-shaped sofa had a primarily utilitarian purpose and, as such, fell within the 'reverse engineering' exception under Section 15(3A) of the Copyright Act,(2) despite the fact that the Copyright Act does not take into account a work's artistic quality.
Section 15(3A) of the Copyright Act provides that, where a rights holder has directly or indirectly produced and sold anywhere in the world three-dimensional derivative articles of its protected work that "primarily have a utilitarian purpose" and are made using an industrial process, reproductions by means of indirect copying will not constitute infringement.
The Oxford Dictionary definition of 'utilitarian' is "useful or practical rather than attractive". Further, it has been argued that by using the word 'primarily', the legislature had a specific purpose in mind. This is evident when considering the intent of the Copyright Amendment Act (66/1983), which inserted Section 15(3A) into the Copyright Act.
Section 15(3A) was inserted into the Copyright Act to prevent copyright owners from using their copyright as a form of unregistered design, thereby preventing competition among manufacturers of technical products – in particular, spare parts for motor vehicles, mining equipment and machinery. The Designs Act was also amended to provide for the registration of functional designs. Section 15(3A) was not intended to deprive authors of copyright protection for their aesthetic creations.
In light of this, it has been argued that the term 'utilitarian' should be interpreted in an industrial context; a derivative article must be a useful object in an industrial context for the Section 15(3A) exception to apply. Further, even if an aesthetic derivative article has a functional aspect, it still would not fall within the scope of Section 15(3A) due to the specific use of the word 'primarily'.
In Bress Designs the judge applied an objective test similar to that applied under the Designs Act to determine whether the object in question had a primarily utilitarian purpose. It has been argued that this is an appropriate test; in the more recent case Marick Wholesalers (Pty) Ltd v Hallmark Hemdon (Pty) Ltd – which involved a piece of expensive jewellery rather than a sofa – the court agreed.(3)
Ultimately, it is the purpose of the article and not the derivative article itself which must have a primarily utilitarian purpose for the Section 15(3A) exception to apply. This conclusion is supported by the Nintendo Co Ltd v Golden China TV-Game Centre judgment.(4) Beauty lies in the eye of the beholder and – as such – the average reasonable consumer's motivation when purchasing an item should be considered when determining whether it has a primarily utilitarian purpose or is for adornment.
