Page 70 of [2002] 4 All SA 67 (SCA)
View Parallel Citation
(Section 15(3A)(a). The numbering of the proviso has been omitted for the ease of reading.)
[4]
Universal did not dispute Dexion's copyright in the drawings and the issue was consequently limited to that of
copying. Copying is not a term used in the Act but it is understood that "reproduction" requires copying. In
order to establish copying, a twostage inquiry is conducted. It has to be established whether there is the
necessary degree of objective similarity between the original work and the alleged infringement; then it must
be established that the similarity is causally connected to the original work. The causal connection can either
be direct or indirect. See Galago Publishers (Pty) Ltd and another v Erasmus 1989 (1) SA 276 (A) at 280BD.
[5]
The effect of this, in general terms, is that copyright in a technical drawing is not infringed by a three
dimensional version of the drawing, which has no causal connection with the drawing. It is also not infringed if
the version is reproduced from an authorised reproduction (reverse engineering). Even if the owner of the
copyright made threedimensional versions (as defined in the proviso) available to the public, third parties are
not entitled to make three dimensional copies by reference to the drawings. In other words, the drawings may
not be used, directly or indirectly, to produce copyrightfree threedimensional "reproductions". An example of
such indirect copying would be the instance where the third party uses tools that were made from the
drawings to make its version. The same would apply if the third party were to produce its own set of tools by
copying tools produced from the copyright owner's drawings. In this event the tools can be likened to
negatives of photographs: making a photo from a negative infringes the copyright in the photo.
[6]
Objective similarity is not seriously in dispute although, as counsel for Universal pointed out, the similarities are
in part due to commonplace or generic elements and that there are some design differences between the two
systems.
[7]
I then turn to consider the causal connection. Dexion's principal case as pleaded and presented in the court
below in this regard was one of direct infringement: Universal had possession of its drawings and it used them
in designing the Unirack system. Dexion ultimately had to concede that the evidence did not establish direct
infringement and before us reliance was placed solely upon indirect infringement: Universal, so it was
contended, used tooling derived from Dexion's tooling, which in turn was derived from the Dexion drawings,
thereby copying the drawings indirectly. No reliance was placed on subconscious copying, something raised in
Francis Day & Hunter Ltd and another v Bron and another [1963] Ch 587 (CA). Universal's principal case as
pleaded was a reliance on reverse engineering under section 15(3A)(a) but its reliance on reverse engineering
View Parallel Citation
was too highly pitched and in the end it had to be content with a finding in the court below (per Goldblatt J)
that only the footplate is protected by the provision.
[8]
It is convenient to deal with the footplate first. The only aspect of the exception in dispute is whether the
footplate was reproduced from an authorised reproduction. Dexion mounted a muted attack on the finding of
the court below to the contrary. The undisputed evidence of Mr Jones, an employee of Universal, was that he
handed a specimen of the Dexion
Page 71 of [2002] 4 All SA 67 (SCA)
footplate to a toolmaker with an instruction to manufacture tooling for making similar footplates. That was
done. In any event, Dexion's expert, Dr Nurick, testified that the information on the relevant drawing was not
sufficient to enable one to make a footplate; a specimen of the Dexion footplate was required in order to do
that. I am satisfied that there is no merit in the attack.
[9]
Concerning indirect copying, Goldblatt J held that because it had not been pleaded, Dexion could not rely
thereon. Since indirect copying is not a cause of action but simply a method of establishing copying, this finding
cannot be upheld. The learned Judge further held that a reproduction of Dexion's tooling could not have
amounted to an infringement of copyright because the tooling would have been a threedimensional
reproduction of the authorised reproduction, ie, the original tooling. This finding is in conflict with the exposition
of the law in the earlier part of this judgment. He also held that although tools are a means whereby a three
dimensional reproduction of a drawing can be produced, the tools do not reproduce the drawings. As
mentioned, depending on the evidence, tools can be a "negative" of the drawing and an intermediate element
in the indirect copying of the drawing. Additionally, the finding fails to take account of the fact that the racking
elements, and not the tooling, were made available to the public as required by section 15(3A)(a).
[10] In the light of these problems in the approach of the learned Judge, it is necessary to reconsider the evidence
relating to indirect infringement. I will assume for purposes of this judgment, although there is no evidence to
that effect, that the Dexion tools were derived from the copyright drawings in issue. Dexion relied on
circumstantial evidence to establish copying of its tooling: Universal was in possession of some Dexion tools;
when the sublicence was cancelled, Universal refused to return the tools immediately and undertook to
redeliver them once its new tooling was available; and Universal used the same toolmaker who had made the
tooling for its Dexion product. These are material and weighty facts and we were referred to cases (Solar
Thomson Engineering Co Ltd v Barton [1977] RPC 537 (CA) and Frank M Winstone (Merchants) Ltd v Plix Products
Ltd 5 IPR 156, a judgment of the Court of Appeal of New Zealand) where indirect copying was found on
"weaker" facts. However, cases have to be decided with reference to their own facts and evidence of similarity,
striking or otherwise, with or without evidence of access by the alleged infringer does not dispose of the case