Copyright in a Spare Parts Code

The Appellate Division has recently handed down an important judgment in copyright law, relating to copyright in a catalogue cum price list for gaskets (Payen Components SA Ltd v Bovic CC and Others 1995 (4) SA 441 (A)). The appellant, Payen Components South Africa Limited alleged that the respondent, Bovic Gaskets CC, had infringed its copyright in its catalogue cum price lists by using the Payen code in its price lists and catalogues and on wrappers containing its gaskets.

The court first looked into the question of the subsistence of copyright, accepting that the catalogue cum price list qualified as a literary work in the generous sense that that phrase is used in copyright law (which defines literary work to include, inter alia, tables and compilations). The work had been written down in a material form and the facts had shown that enough labour and skill had been expended in the creation of the work for it to be original in the sense of copyright law.

The facts had established that the work in issue was created both in the United Kingdom and in South Africa over a number of years and, in one of the development phases, a computer was used (Mr Butler had devised a computer program for allocating new reference numbers in place of the old and data was entered into the computer to generate new numbers in accordance with the program). One of the defences raised by Bovic was that the author was the computer program. The court was accordingly faced with the issue of drawing a distinction between "computer aided" and "computer generated" works. It considered the English case Express Newspapers PLC v Liverpool Daily Post & Echo PLC and others [1985] 1 WLR 1089 (Ch); [1985] FSR 306 and two foreign textbooks Laddie, Prescott and Vitoria The Modern Law of Copyright 94 and Dworkin Blackstone´s Guide to the Copyright Designs and Patents Act 1988 47. It accepted that in the former case the computer is a mere tool like a pen or word processor while, in the latter, the work of creation is performed by the computer itself with relatively little human input. The court also noted that the computer input was made in 1971 when computers had not yet been taught to do all the remarkable things they do now. (We should mention that the Copyright Amendment Act of 1992 recognised the concept of computer generated works in defining the author in relation to a literary, dramatic, musical or artistic work or computer program which is computer generated as the person by whom the arrangements necessary for the creation of the work were undertaken). On the facts the court found that after the computer had received the data what remained was essentially an arithmetic function and it accordingly found that the work was a computer aided work.

Having found that Payen had proved copyright in its catalogue cum price list the court considered the question of copyright infringement. It found that there were clearly repeated infringements by Bovic´s use of the Payen code in its catalogues cum price lists in that a reproduction of a substantial part had taken place. The matter did not rest there, however, as Bovic had stopped using the Payen code in its numbering systems but Payen still sought an interdict. In considering this issue the court looked at the current conduct of Bovic as the wrappings in which Bovic´s gaskets were sold bore a disclaimer that included Payen´s numbers in this form:

"This product is supplied by Bovic Gaskets. The number mentioned below is for identification purposes only and in no way suggests that this gasket set is anything other than a Bovic product. Alternative to: (and then follows the Payen number)."

The court found that this was copying in fact but the question to be considered was whether the copying was of a substantial part. The court stressed that quality and not quantity is the test and also considered the maxim "what is worth copying is prima facie worth protecting". It then quoted extensively from Ladbroke (Football) Ltd v William Hill (Football) Ltd [1964] 1 All ER 465(HL) at 469 in which Lord Reid says that a convenient short cut in deciding whether the part copied is a substantial part is sometimes to ask whether that part on its own would have qualified for copyright. But, Lord Reid adds, that it is a short cut only and:

"A wrong result can easily be reached if one begins by dissecting the plaintiff´s work and asking, could Section A be the subject of copyright if it stood by itself, could Section B be protected if it stood by itself, and so on. To my mind, it does not follow that because the fragments taken separately would not be copyright, therefore the whole cannot be."

Applying the aforementioned passage to the facts the court stated that it would be wrong to take one wrapper and say that the code on it is not a substantial copying, then to take the next and say the same, and so on. That would be to ignore that a large part of the whole has been copied. The court went further to say that in shops a large collection of gaskets would be displayed so that a substantial part of the Payen numbers would indeed be displayed together, on any meaning of the word substantial. It went on to state that the fact that the mode of presentation differs from what is presented in the Payen catalogue does not make a difference. In the circumstances copyright infringement was found and the court granted an interdict in respect of the wrappers.

Charles E. Webster

SPOOR & FISHER

Date published: 2000/07/28
Author: Charles E. Webster

Tags: copyright spare parts code gaskets