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[1994] ZASCA 135
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Waylite Diary CC v First National Bank Ltd (663/1992) [1994] ZASCA 135; 1995 (1) SA 645 (AD); [1995] 1 All SA 451 (A) (27 September 1994)
IN THE SUPREME COURT OF SOUTH AFRICA
(APPELLATE DIVISION)
663
Case no:663 of 1992
In the matter between:
WAYLITE
DIARY CC Appellant
and
FIRST NATIONAL BANK LTD Respondent
Court:
Corbett CJ, Smalberger, Kumleben, Nienaber and Harms JJA Heard: 25 August 1994
Delivered: 27 September 1994
JUDGMENT
2
HARMS JA: This appeal relates to the subsistence of copyright in the
appointment pages of a diary.
The appellant (the applicant in the court below) is a close corporation
carrying on business as a designer and producer of diaries.
During the course of
1987 it approached the respondent bank ("FNB") with a view to providing the
latter with diaries for the following
year. In the event an agreement was
reached in terms of which the appellant was to supply FNB with, inter alia,
so-called "field
diaries" for its managers. A field diary is a pocket diary
intended for the use of FNB's bank managers when not at the office. A
field
diary was then designed (by whom is in dispute) and about 3 000 for 1988 were in
due course supplied by the appellant to FNB.
FNB's managing director was very
pleased with the work and the appellant was commissioned to produce similar
field diaries for 1989,
1990 and 1991. During the course of 1991, it seems, FNB
invited tenders for the supply of
3
field diaries for 1992. The appellant submitted a tender, at the same time
pointing out that the diaries had been designed by the
appellant and claiming
that copyright in the diaries vested in it. FNB ignored the implied warning and
awarded the tender to another
printing concern. The format of these field
diaries was, to all intents and purposes, identical to that printed by the
appellant.
Relying on its alleged copyright, the appellant applied during March 1992 to
the Witwatersrand Local Division for an order interdicting
FNB from infringing
its copyright, not in the diary as such, but in respect of the appointment pages
only. (The prayer for the delivery
for destruction of all the field diaries in
FNB's (or their managers') possession was abandoned.) The application was
dismissed by
Stegmann J in a judgment reported at 1993 (2)SA 128 (W). It was in
his view not necessary to consider the conflicting allegations
relating to
authorship; he assumed that the
4
appointment pages were either artistic or literary works; but he concluded
that the work in designing, drawing and composing the pages
in which copyright
is claimed was not original (within the meaning of that word as used in
sec 2(1)
of the
Copyright Act 98 of 1978
("the
Act")) since
it did not have the "quality
of meritorious distinctiveness" (at 136C). He refused leave to appeal but leave
was granted in consequence
of a petition to the Chief Justice.
The field diary in issue is vertical in layout. On the title page FNB's logo
is printed in so-called corporate colours, with the year
and the words "field
diary" and "velddagboek". On its reverse side appears a claim that it had been
"designed and produced by the
WAYLITE Diary Co.", the latter's telephone number
is given and there is a copyright claim. The next page is entitled
"Identification/Identifikasie"
and has space for the insertion of personal
information. Subsequent pages provide lists of public holidays and
5
school terms, some conversion and distance tables, calenders for the current
and following year, the year "at a glance" and space
for important dates and
notes. The last few pages make provision for the following year "at a glance"
and leave space for telephone
numbers. As indicated, the appellant (for no given
reason) did not claim copyright in any or all of this.
The format of the appointment pages in which copyright is claimed, consists
of pairs of facing pages, each pair dealing with a particular
week, beginning on
a Monday. The left hand page furnishes on the first line the name of the month
in English and Afrikaans and also
the number of the week. The days of the week
are then listed (also in both languages) and dated on the same page, with four
horizonatal
lines of writing space for weekdays and two horizontal lines each
for Saturday and Sunday. The right hand page has a number of lines
for the
making of notes and at the foot a calender consisting of the current and the two
succeeding months. The
6
colours and typeface used were standard in terms of FNB's corporate identity
specifications.
Mr Cianfanelli, a member of the appellant and the alleged author of the
appointment pages, stated in the founding affidavit that,
as far as he could
recall, he had spent about twelve hours before arriving at the "preferred layout
and format". This involved preparing
a sketch on tracing paper and erasing and
adding indicia to try out numerous different formats and layouts. He did not, he
said,
base his design on any existing diary and had only utilised his own skill,
knowledge and expertise.
The types of works listed in
sec 2(1)
of the
Act are
"eligible for copyright"
provided they are "original". The categories relevant to this case are artistic
and literary works. The
subsection presupposes, as a general rule, two different
inquiries: first, whether the work relied upon falls within one of
7
the categories and, if so, whether it was original. But, as pointed out by
Blakeney and McKeough, Intellectual Property, Commentary
and Materials, 1987, at
p 27:
"To some extent the concept of what constitutes a 'work within the
Act and
the
concept of originality are intertwined. It is difficult to discuss what amounts
to a 'work' without discussing originality, since
without a sufficient degree of
'originality' a 'work' will not come into existence."
Counsel for
the appellant submitted that this statement is incorrect because
it does not take account of the fact that the question of whether a work
is,
say, an artistic work is an objective question, whereas originality
involves
a subjective inquiry. 1 am not convinced that the latter part of the
submission is correct. While it is true that the actual time and effort
expended by the author is a material factor to consider in determining
8
originality, it remains a value judgment whether that time and effort
produces something original.
To illustrate the point reference may be made to Francis Day and Hunter
Limited v Twentieth Century Fox Corporation Limited and Others
[1940] AC 112
(PC)'. The copyright in the title of a song (written and composed by Fred
Gilbert) called "The Man Who Broke the Bank at Monte Carlo"
was an issue in the
case. The title was subsequently used by the defendants for the name of a film.
Lord Wright stated in this regard
(at 123):
"As a rule a title does not involve literary composition, and is not
sufficiently substantial to justify a claim to protection. That
statement does
not mean that in particular cases a title may not be on so extensive a scale,
and of so important a character, as
to be a proper subject of protection against
being copied. . . .
1Also reported at
[1939] 4 All ER 192.
9
But this could not be said of the facts of the present case. There may have been
a certain amount, though not a high degree, of originality
in thinking of the
theme of the song, and even in choosing the title, though it is of the most
obvious. To "break a bank' is a hackneyed
expression, and Monte Carlo is, or
was, the most obvious place at which that achievement or accident might take
place. The theme
of the film is different from that of the song, and their
Lordships see no ground in copyright law to justify the appellants' claim
to
prevent the use by the respondents of these few obvious words, which are too
unsubstantial to constitute an infringement, especially
when used in so
different a connection."
It is implicit in this statement that
whether an alleged work is proper
subject-matter for copyright protection
involves an objective test, both in
respect of originality and "work"; also
that the two inquiries can become
entwined. And the last sentence quoted indicates that in assessing
whether
a work is entitled to protection, it is permissible to have regard to the
10
consequences of the recognition of copyright in a work of doubtful
substance.
It was submitted on behalf of the appellant that the sketch prepared by Mr
Cianfanelli of the appointment pages is an "artistic work"
as defined by
sec 1
(1) of the
Act, because
it is either a "drawing" or a "chart". The subsection,
as far as is relevant, provides that an artistic work "means, irrespective
of
the artistic quality thereof - . . . drawings" and the term "drawing" is defined
to include any diagram or chart. Reliance was
in this connection placed on
certain dictionary meanings of the words "drawing" and "chart". In regard to the
use of dictionaries
generally, and more particularly counsel's reliance on them,
it may be useful to refer to a dictum of Margo J in Transvaal Consolidated
Land
and Exploration Co Ltd v Johannesburg City Council
1972 (1) SA 88
(W) at 94G
that "(d)ictionary definitions serve to mark out the scope of the meanings
available for a
11 word, but the task remains of ascertaining the particular
meaning and sense
of the language intended in the context of the statute under
consideration."
The Oxford English Dictionary ("OED") gives as one meaning for "drawing",
"(t)hat which is drawn; a delineation by pen, pencil, or
crayon; a
representation in black and white, or in monochrome; a sketch". Applying this
definition, counsel submitted that the lines
and the layout of the appointment
pages form a drawing which is, on the facts of this case, an "artistic work".
Under "layout" counsel
meant the positioning of the words and numbers on the
pages, the spacing of the lines, their colours and the font selected. It was
also argued that a single line or the lines on a exercise book's pages could
similarly be artistic works. I am of the view that this
submission is not
correct. The court in Page v Wisden
(1869) 20 LTR 435
at 436 was more forthright
when it stated that "to say that a particular mode of ruling a book constituted
an object for a copyright
is
12
absurd." The OED's definition must be read in context. It is followed by a
number of examples of the use of the word in the defined
sense, all dealing with
drawings in the nature of paintings or sketches.
This does not mean that a drawing must, for the purposes of the
Act, be
similar to a painting or sketch. A simple drawing may, obviously, be the subject
of copyright, provided it can "fairly be called
... a drawing of any kind" (per
Megarry J in British Northrop Limited and Others v Texteam Blackburn Limited and
Another
[1974] RPC 57
(Ch D) at 68 1 41). The learned Judge was there dealing
with engineering drawings of parts of weave looms. Some he said, were simple,
but they were all carefully drawn to scale with precise dimensions. He was of
the prima facie view that they were therefore artistic
works because, fairly
speaking, they were drawings. Can it fairly be said that these appointment pages
are drawings? On any common-sense
approach to the matter and having regard
13
to the ordinary accepted meaning of the term, I think not. (Cf the approach
adopted by Whitford J in J & S Davis (Holdings) Limited
v Wright Health
Group Limited [1988] RFC 403 (Ch D) 410 1 26-50 with regard to the meaning of
"sculpture" and at 412 1 30-35 in relation
to "simple" drawings.)
The submission that these pages constitute a "chart", was solely based on the
OED's definition no 3a namely "(a) sheet bearing information
of any kind
arranged in a tabular form". Once again, the examples given by the OED do not
support the submission. They all relate
to titles of works such as the
"Historical Chart of the Sovereigns of England". The effect of the argument
would be to blur the distinction
between artistic and literary works in the
light of the definition of the latter (also in
sec 1
(1) of the
Act) which
encompasses "tables and compilations". I do not accept that,
14
fairly speaking, it could be said that the works in issue are charts (cf
Hollinrake v Truswell
[1894] 3 Ch 420
(CA)).
In relation to literary works reference was made, once again, to the OED,
this time for the proposition that "literary" means, among
others, "(p)ertaining
to the letters of the alphabet". There is an annotation against this entry to
the effect that the meaning was
obsolete. On the other hand, it must immediately
be conceded that the word is not used in its ordinary meaning in the
Act, a
fact
amply borne out by what the
Act includes
under this term. In University of
London Press Limited v University Tutorial Press Limited
[1916] 2 Ch 601
,
Peterson J had to consider whether papers set by examiners were literary works.
He said (at 608):
"In my view the words 'literary work' cover work which is expressed in print
or writing, irrespective of the question whether the
quality or style is high.
The word 'literary' seems
15
to be used in a sense somewhat similar to the use of the word
literature' in political or electioneering literature and refers to written or
printed matter."
This dictum, read in its context, does not say
that anything written or
printed is a literary work. Had the position been
otherwise, there would not
have been any need for the Legislature to list
anything from novels to
compilations. It is not necessary for the purposes of
this case to define a
"literary work" any closer since I have not been
persuaded that these pages
are covered by that term. A similar conclusion was reached by the Court
of Appeal in Frank Smythson Ltd v GA Cramp & Sons Ltd and The
Surrey Manufacturing Co
[1943] 1 All ER 322.-
The Court was there
also concerned with the layout of the body of a diary and found that that
part of it was not in any sense a literary work to which copyright could
be
attributed.
2Also reported at
[1943] 1 Ch 133.
16
It was argued, seemingly in the alternative, that these pages are a literary
work because they consist of a "compilation". What was
compiled, according to
the submission, was the selection of the days of the week represented on the one
page and the decision to
place an abbreviated calender of three months at the
foot of the next page. It seems to me implicit in the argument that a layout
and
a compilation are the same, a point of view rejected rather laconically by Lord
Denning in William Hill (Football) Limited v
Ladbroke (Football) Limited
[1980]
RPC 539
(CA) at 545 1 5. In any event, the information "compiled" for the 1988
diary could not be the same as that "compiled" for the 1992
diary. The dates had
all to be compiled afresh. The effect of the argument would be that, having
regard to the fact that copying
can be indirect and that an adaptation of a work
is an infringing act, anyone who sees the field diary and who wishes to produce
a diary having the basic layout of two facing pages, the one for
17
daily entries and the other for notes, will infringe copyright - a result so
far-fetched that the Legislature could not have contemplated
it.
The Frank Smythson case went on appeal to the House of Lords.
3
At
that stage the author had abandoned any further reliance on the appointment
pages of the diary in issue. What remained in contention
was the claim to
copyright in a collection of tables at the beginning of the diary. The author
was unsuccessful. Viscount Simon LC
came to the conclusion (at 335) that "there
seems to be nothing that can properly be described as an 'original literary
work' in
grouping together this information" and Lord Macmillan (at 337) pointed
out that not every compilation can claim to be an original
literary work "even
in the pedestrian sense attributed to these words by the law".
3 G A Cramp & Sons Limited v Frank Smythson Limited
1944 AC 329
;
[1944] 2
All ER 192.
18
These dicta appear to me to be germane to the facts of this case.
Counsel
was unable to distinguish them, nor was it submitted that the case
had been decided incorrectly. It also appears to be in consonance
with other
English case law which, in the absence of local authority, is of considerable
persuasive force. For instance, in Leslie
v J Young and Sons
[1894] AC 335
(HL),
Lord Herschell said (at 340):
"The mere publication in any particular order of the timetables which are to be
found in railway guides and the publications of the
different railway companies
could not be claimed as a subject-matter of copyright. Proceedings could not be
taken against a person
who merely published that information which it was open
to all the world to publish and to obtain from the same
source."
And at 341-342 he drew this contrast:
"But there is another part of the case which strikes me as of a very different
character. ... It appears to me the only
part
19
of the work which can be said to indicate any considerable amount of independent
labour. I refer to the part . . . containing the
information with regard to
excursions. It seems to me that this was a compilation containing an abridgment
of information of a very
useful character . . . . "
In other
words, and relying once again on Lord Denning, for a compilation
to be the
subject of copyright, it must not be a commonplace selection
(William Hill
case, supra at 546 1 7-8). (This case was decided in 1962 but
was first
reported in 1980. His decision that copyright subsisted in the
football
coupon reproduced at 542 of the report was upheld in Ladbroke
(Football) Ltd v William Hill (Football) Ltd
[1964] 1 All ER 465
(HL).)
In my judgment the so-called compilation was clearly commonplace.
To sum up, I am of the view that the appellant has failed to establish that
the appointment pages are either artistic or literary
works for purposes of the
Act. It
is accordingly unnecessary to consider separately whether they
20
were original. The other issues raised during argument also fall away. In
consequence the appeal must be dismissed and the order is:
"The appeal is dismissed with costs, such costs to include the costs
consequent upon the employment of two counsel."
LTC HARMS JA
CORBETT CJ,
SMALBERGER JA, KUMLEBEN JA and NIENABER JA agree.