Nel and another v Ladismith CoOperative Wine Makers and Distillers Limited
[2000] 3 All SA 367 (C?)
Division:
Cape of Good Hope Provincial Division
Date:
31 May 2000
Case No:
5320/99
Before:
Comrie J
Sourced by:
C Webster
Summarised by:
D Harris
. Editor's Summary . Cases Referred to . Judgment .
[1] Intellectual property law Patents and trademarks Copyright Infringement of.
[2] Intellectual property law Patents and trademarks Copyright Whether an adaptation to an original work results in
the elimination of any originality therein Correct approach is to determine whether the original work had sufficient
originality to constitute work deserving of copyright protection, and if so, whether the disputed work constitutes an
adaptation of the original.
[3] Intellectual property law Patents and trademarks Copyright Whether an adaptation to an original work results in
the elimination of any originality therein Definition of adaptation.
[4] Intellectual property law Patents and trademarks Copyright Winebottle labels To the extent that label may
amount to drawings, they may be regarded as artistic works as defined in section 1 of the Copyright Act 98 of 1978.
Editor's Summary
In dispute in casu was the Respondent's use of wine bottle labels developed by the First Applicant. The relief
sought by the Applicants related to the alleged infringements of copyright relating to the labels, and to the alleged
passing off with regard to the labels. The label in contention was developed for purposes of a marketing contract
concluded with the Respondent, but although the contract had come to an end, the Respondent continued to use
the label with very minor alterations thereto. It was the Applicants' case that the label constituted an original
artistic work, the copyright of which vested in the First Applicant as author. Therefore, it was argued, the
Respondent's use of the adapted label after termination of the contract between the parties was unauthorised.
Held Labels, such as that in issue, may amount to drawings, and therefore artistic works as defined in section 1 of
the Copyright Act 98 of 1978 ("the Act"). In response to the Applicants' argument, the Respondent contended that
after the adaptation of the label, there was no originality therein. However, the Court held that the correct
approach was to enquire into whether the original label developed by the First Respondent had sufficient originality
to constitute an artistic work deserving of copyright protection. If this was so, then the second enquiry would be
into whether the label in use by the Respondent constituted an adaptation of the original label. On the evidence,
the Court felt obliged to find that the original label designed by the First Applicant was and remained an original
artistic work, the copyright in which vested in the First Applicant.
An adaptation of an artistic work, in terms of section 1 of the Act, includes a transformation of the work so that
the original features thereof remain recognisable. An examination of the adapted label being used by the
Respondent showed that
Page 368 of [2000] 3 All SA 367 (C?)
the substantial features of the original label remain recognisable in the disputed version. That version was
accordingly found to be an adaptation of the original, and therefore enjoyed copyright protection.
Such copyright in the disputed label vested in the First Applicant unless he had in some way parted with his
rights in favour of the respondent. The Respondent relied upon section 21(1) of the Act in this regard. The said
section provides that where a work is made in the course of the author's employment by another person under a
contract of service or apprenticeship, that other person shall be the owner of copyright in the work. The Applicants
submitted that the contract referred to was a contract of service (locatio conductio operarum) and not a contract for
work (locatio conductio operis). The Court agreed with this submission, whereupon the Respondent attempted to
analyse the contract between the parties in detail in order to show that it was one of service. It was emphasised
that the Court would be primarily influenced by the actual contract which was before it, rather than by what the
parties tried to call it. The contract was seen to bear all the hallmarks of a contract for work, with the Applicants
acting as independent contractors. This being the case, copyright vested in the First Applicant unless there was an
agreement to the contrary as contemplated in section 21(1)(e) of the Act. According to the Respondent such an
agreement whereby copyright would pass to the Respondent did exist. In this regard, it held that it was implicit in
the parties' conduct and agreement that the Respondent would have the right to continue using the label on
termination of the agreement, and that copyright therein would vest in the Respondent. The contract in question
showed that there was no express agreement regarding the rights to the label after termination of the contract.
The respondent was therefore relying on an implied or tacit term. The Court applied the test used to establish the
existence of tacit contractual terms, by taking the facts at their most favourable to the Respondent. It was found
that the requisite element of necessity was lacking, as there was no compelling reason for business efficacy, for the
Applicants to have agreed to the terms alleged by the Respondent. The Court therefore held against the