South Africa: A Small Cup Of Copyright

Last Updated: 6 November 2015
Article by Rachel Sikwane

Most Read Contributor in South Africa, September 2018

The recent South African case of Nestle Nespresso S.A. v Secret River Trading cc t/a Caffeluxe Distributors (Western Cape High Court, Judge Davis, 5 October 2015) dealt with the unusual issue of copyright in a coffee machine. 

Nestle claimed that it had copyright in drawings "depicting the external design of the Nespresso Essenza espresso coffee machine". The company's complaint was that a local business, Caffeluxe Distributors, had infringed its copyright, or at least aided and abetted the infringement. It had done this, said Nestle, by importing similar-looking machines that had been manufactured in China, which it knew infringed Nestle's copyright. These machines, which were called Sienna, had been sold in South Africa by a leading retail chain, Shoprite Checkers. The retailer had not, however, been joined in the proceedings, a fact that did not impress the judge. There was some dispute as to whether Caffeluxe Distributors had actually imported the machines, or whether it had simply put the retailer in contact with the Chinese manufacturer.

If you know anything about South African copyright law, you will know that this is section 15(3) territory. Predictably, Caffeluxe Distributors raised this section as a defence. Section 15(3) of the Copyright Act, 1978 was introduced some time back in an attempt to deal with the issue of industrial design copyright, and its intention was seemingly to clarify that industrial designs do not form part of copyright law, but rather design law, which in South Africa allows for the registration of "functional designs".

Section 15(3) is not an easy read: "The copyright in an artistic work of which three-dimensional reproductions were made available ... to the public by or with the consent of the copyright owner ... shall not be infringed if any person without the consent of the owner makes or makes available to the public three-dimensional reproductions or adaptations of the authorised reproductions, provided the authorized reproductions primarily have a utilitarian purpose and are made by an industrial process."

It would have been interesting if Judge Davis had considered this defence, and especially the issue of whether or not the coffee machines primarily had a utilitarian purpose. But Caffeluxe Distributors raised a second defence, a defence that was perhaps slightly easier to deal with.

So, there's unfortunately little copyright in the judgment. What we do know is that Nestle presented expert evidence that said it was "significantly improbable, bordering on impossible, that the designer of the Sienna coffee machine did not have the Essenza design available as a reference when designing the Sienna". The judge also tells us that there was some debate about whether this was a case of reverse engineering or copying from a drawing. But, apart from that, the judge didn't discuss section 15(3), "save to comment that the matter is not free of considerable difficulty".

Judge Davis did, however, discuss the issue of aiding and abetting IP infringement. He accepted that such a concept does exist. But that wasn't really in much doubt, because of the Supreme Court of Appeal's recent decision in the case of Cipla Medpro (Pty) Ltd v Aventis Pharma SA 2013 (4) SA 579 (SCA). This was an interesting case in which the issue was whether a drugs patent had been infringed in circumstances where the defendant had simply imported the various ingredients needed to make the drug, and then left it up to doctors to mix these ingredients and create the infringing drug. The court in that case said this: "Our law would be most deficient if it had no remedy against intentionally aiding and abetting infringement of a patent and in my view there is indeed no such deficiency."

So what was the second defence? Caffeluxe Distributors said that Nestle was not entitled to an interdict (injunction) because there was no reason to suppose that there would be any further importation of the machines.  It argued that it had had no involvement with the importation of Sienna coffee machine for some three years. The only exceptions to this were that it did offer warranties on the machines, and some of its branding did appear on the product, seemingly so that owners might buy coffee capsules from it.

Judge Davis looked at some of the major cases dealing with the right to an interdict. There was the case of Oude Meester Group v Stellenbosch Wine Trust 1972 (3) SA 152 (C), in which the court said that if there has been a breach of copyright, the owner "cannot be expected to be content with respondent's assurances", especially where the copying was intentional. And there was the more recent case of NCSPCA v Openshaw (2008) 4 All SA 225 (SCA), where the Supreme Court of Appeal said that an interdict can be sought if an injury is reasonably apprehended.

But Judge Davis saw no case for an interdict here. The most significant factor was the length of time that had elapsed, a full three years – as the  judge said, an interdict had been granted in the famous old case of Glenton & Mitchell v French Tea and Coffee Works 1927 WLD 272, but there the period of inaction was merely three months. The judge also felt that the retailer's absence from the proceedings was relevant. He said this: "The primary party committing the breach is not before the court'. He summed up his thinking as follows: "In this case there is nothing on the papers that justifies the conclusion by a court of a reasonable apprehension of a continued infringement of the copyright by way of aiding and abetting."

So, an interesting enough case, but one that could have been even more so.

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