Reportable
Case No 500/2000

In the matter between:

DEXION EUROPE LIMITED

Appellant

and

UNIVERSAL STORAGE SYSTEMS
(PROPRIETARY) LIMITED

Respondent

Coram:
HARMS, SCHUTZ, SCOTT, CAMERON JJA and HEHER
AJA
Heard:
26 AUGUST 2002
Delivered: 6  SEPTEMBER 2002
Subject:
Copyright infringement; indirect copying of technical drawings.

JUDGMENT

HARMS JA/

HARMS JA:
[1] This judgment is about copyright infringement.  The appellant
(‘Dexion’) is the owner of the copyright in four technical drawings.  They
reflect different parts of Dexion’s Speedlock racking system.  A racking
system consists of uprights or legs bolted to footplates.  The uprights are
connected to each other by means of horizontal beams. Diagonal bracing
elements between beams provide the necessary stability of the racks.  Pallets
or shelves can then be placed on the beams in order to store goods.  The
advantage of the Speedlock system is that it is an interlocking system and
attaching the beams to the uprights does not require bolting or welding.  At
the extremities of each beam there are beam end connectors with a number
of protruding hooks and these fit into coffin-shaped holes in the uprights
during erection of the racks.

[2] The respondent (‘Universal’) produced the Speedlock system in terms
of a sub-licence from Dexion’s licencee, to whom I shall refer as ‘Brazier’,
until the termination of the sub-licence during 1993.  Universal at the time
sought a direct licence from Dexion and when it transpired that it would not
get one, it decided on a new business strategy of producing a racking system
that would be interchangeable and compatible with the Speedlock system.
Legal advice was obtained and Universal was informed of the copyright
implications and, particularly, the right to design a system by way of reverse
engineering.  Universal returned all drawings in its possession, instructed its
regular toolmaker to manufacture new tools, thereafter returned the Dexion
tooling to Brazier and proceeded to market its ‘new’ racking system as the
Unirack system.
[3] Copyright protection is accorded to original artistic works (Copyright
Act 98 of 1978 s 2(1)(e)).  Drawings, including drawings of a technical

nature, irrespective of their artistic quality, are considered to be artistic
works (s 1 sv ‘artistic work’ and ‘drawing’).  Copyright in an artistic work
vests in the author the exclusive right of ‘reproducing the work in any
manner or form’ (s 7(a)) and this includes the right to convert the drawing
into a three-dimensional form (s 1 sv ‘reproduction’ par (b)).  An exception
exists in relation to this latter right:
‘The copyright in an artistic work of which three-dimensional reproductions were made
available, whether inside or outside the Republic, to the public by or with the consent of
the copyright owner (hereinafter referred to as authorized reproductions), 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 authorized reproductions,
provided the authorized reproductions primarily have a utilitarian purpose and are made
by an industrial process.’
(S 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 two-stage 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) 280B-D.
[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 three-dimensional

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 copyright-free three-dimensional ‘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 in 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 s 15(3A)(a) but its reliance on reverse engineering 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
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 three-dimensional 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 s 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 sub-
licence 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 in favour of the copyright owner (cf Kambrook Distributing v
Haz Products and Others (1986 WLD) per Kriegler J reported in Stranex
Judgments on Copyright 243 277-278).
[11] The drawing relating to the bracing shows a standard lip channel with
two holes at each end.  How such a drawing can be said to be an original
work is not entirely clear (cf Jacana Education (Pty) Ltd v Fransden
Publishers (Pty) Ltd 1998 (2) SA 965 (SCA) 969C-G).  In any event,
Universal uses the same type of channel, cuts it into suitable lengths and
punches a 10 mm hole at each end.  Since the channel is generic, Universal
simply purchases it and does not roll it.  The only tool required is a 10 mm
punch to form the hole.  There is no evidence that Universal ever had a
Dexion punch or that any tooling was made for producing these holes with
reference to a Dexion tool.  One would have thought that 10 mm punches are
quite common in any engineering workshop.

[12] Another drawing relates to the beam connector.  It shows in detail the
form and dimensions of the hooks.  The hooks made by Universal, although
they are intended to and do perform the same function, differ somewhat
from those shown in the drawing.  In order to make the Dexion hooks, a
punch and die are required.  Universal uses a punch and pressure pad and no
dies.  Since there is no explanatory evidence on the matter, it is somewhat
difficult to envisage how it can be said that the Universal tooling is a copy of
the Dexion tooling.  (I will revert to the evidence on how Universal’s
replacement tooling was made.)
[13] The fourth drawing depicts the upright.  The upright consists of a
generic metal channel section, which, in plan view, has a bottle or wide-
mouth flask shape.  Universal used this section for the manufacture of
another racking system prior to the conclusion of the sub-licence.  It
requested Dexion for drawings of its tools in order to roll this section (an

indication that the tooling was not necessarily derived from the product
drawings).  The drawings supplied by Dexion for this purpose could not be
used with Universal’s equipment and they were returned and Universal
continued to use its existing tooling.  The other aspect of the drawing is the
coffin shaped holes.  These clearly require a punch to be formed.  The holes
used by Universal, as noted by Dr Nurick, are somewhat differently shaped
and can best be described as having a coffin-shape adapted to accommodate
not only the Dexion type of hook but also a button-like hook.
[14] Jones was responsible for the design of the new tools and he gave the
necessary instructions to the toolmaker (who has since died).  It was not
necessary to make new punches for everything because existing punches
used for another product were available.  He did not provide the toolmaker
with any Dexion tooling to copy or use in the manufacture of the new tools.
Instead he gave him his own sketches of how he expected the tooling to be

made.  Certain of the dimensions are well known and standard in the art.  He
worked backwards from those dimensions and through trial and error
increased the size of the hook until it fitted.  The tool drawing for punching
the upright was one Jones had made personally some years earlier without
Dexion’s tooling or drawings.
[15] Jones was not taken to task by the cross-examiner on this evidence
because the cross-examiner was still attempting to establish direct copying
and to show that reverse engineering had not taken place.  The Court below
did not make any adverse credibility finding against Jones and it was not
argued that his evidence should have been rejected.  It was never put or
suggested to Jones that the Dexion tooling had been copied.  It is manifestly
unfair to argue a case on inferences from some facts and ignoring
unchallenged direct evidence to the contrary.  To accept Dexion’s argument
would amount to an implicit rejection of Jones’s evidence even though the

submission was not foreshadowed during the trial.  The circumstances of
this case do not justify a departure from the rule that the witness’s attention
has to be drawn to the imputation which will be made during argument, a
rule which has generally been adopted by our courts.  See President of the
Republic of South Africa and Others v South African Rugby Football Union
and Others 2000 (1) SA 1 (CC) 36J-38C (par 61-65) and cases there quoted.
I consequently agree with Goldblatt J that, since the issue was not properly
dealt with in evidence and was not canvassed with Jones, Dexion cannot
succeed on this ground.
[16] Dexion relied, in addition to its copyright claim, on a contractual
claim.  In reciting the facts I intend to continue to ignore the history of the
different companies, their name changes, liquidations and compromises and
to simplify the matter.  Dexion licensed Brazier exclusively during 1971 to
manufacture and sell the Speedlock system in South Africa.  Brazier was

entitled to appoint ‘contract manufacturers, distributors or agents’ subject to
Dexion’s prior approval.  Any such appointment had to contain for the
benefit of Dexion two provisions, namely a right of quality control and the
right to effect changes to the design, specifications or standards.  On the
valid termination of the licence, Brazier was obliged to ‘ensure that all its
contract manufacturers distributors and agents’ cease to manufacture the
licensed components.
[17] The sub-licence between Brazier and Universal likewise imposed a
duty on Universal, on termination, to cease manufacturing the licensed
components.  Dexion alleges that it is the beneficiary of this obligation and
that it is entitled to enforce it.  Goldblatt J held that this clause in the sub-
licence governed the relationship between Brazier and Universal and was
inserted for the benefit of Brazier only.  In addition, he held that there was
no evidence that, if the agreement were one for the benefit of Dexion,

Dexion had accepted the benefit.  I agree with these findings.  The position
as between Dexion and Universal is similar to that between a landlord and a
sub-tenant.  Without a term (express or tacit) to the contrary, the landlord
cannot rely on the term of the sub-lease in order to evict the sub-tenant but
has to rely on ownership.  Apart from this, I even have some reservations
about Brazier’s ability to rely on the provision because, absent any
protectable interest, such as copyright or confidential information, the clause
may be no more than a bare covenant not to compete (Super Safes (Pty) Ltd
and Others  v Voulgarides and Others 1975 (2) SA 783 (W) 785D-F).
[18] The appeal is dismissed with costs.

____________________
L T C HARMS
JUDGE OF APPEAL
AGREE:
SCHUTZ JA
SCOTT JA
CAMERON JA
HEHER AJA