A recent copyright infringement claim in the Western Cape High Court recently addressed the issue of “aiding and abetting”, based on section 23(2) of the Copyright Act 98 of 1978 (“the Act”).

Nestle Nespresso South Africa (Nespresso) instituted a copyright infringement claim before the High Court against Secret River Trading t/a Caffelux (Caffelux), the local importer and distributor of the Sienna expresso machines.  Nespresso claimed that a number of design features in the Sienna machine were “almost indistinguishable” from those of Nespresso’s Essenza machine.

Section 23(2) of the Act provides that copyright shall be infringed by any person who imports an article into the Republic for a purpose other than for his private and domestic use and/or inter alia, sells any article if, to his knowledge the making of that article constitutes an infringement of that copyright or would have if the article had been made in the Republic.

Nespresso claimed that the design of the Sienna machine had been created so that substantial features of the Essenza remained recognisable.  Nespresso argued that Caffeluxe had sufficient knowledge of Nespresso’s copyright, and still chose to import and distribute the machines from the Chinese manufacturer.

Caffeluxe contended that it had a defence by way of section 15(3) of the Act, i.e.  three dimensional reproductions of the relevant artistic work.  In addition, Caffeluxe stated that for the past three years, i.e.  since 2012, Shoprite Checkers, through whom Caffelux had previously sold the machines, had dealt directly with the Chinese manufacturers to import and sell the Sienna machine.  However, Caffeluxe’s branding still appeared on the packaging of the machines which were found in Shoprite stores, and the company claimed that this was because it was beneficial to do so, as their primary business was the sale of coffee capsules.

This led to Nespresso’s claim that Caffeluxe was aiding or abetting copyright infringement.  It was common cause that Shoprite Checkers was currently importing the offending machine, but the company was not a party to the proceedings, and no steps had been taken to interdict it for the importation of these machines.

The question of aiding and abetting has received a definitive treatment in Cipla Medpro (Pty) Ltd v Aventis Pharma SA 2013 (4) SA 579 (SCA). In this case the respondent sought to interdict the appellant from infringing a patent for a cancer drug by marketing a cheaper generic equivalent. The evidence suggested that the appellant had imported the constituents of the drug, but that local health workers would mix the constituents to make the infringing drug.  Nugent JA examined the question of contributory infringement within the context of a breach of a patent.  Although the judge found that there was no provision in the South African Patents Act which would support such an action, he stated that the law would be “most deficient” if it had no remedy against intentionally aiding and abetting infringement of a patent and held that there was no such deficiency.

The judge noted that it had been accepted that a person is delictually liable (i.e.  under the common law) if he or she aids and abets another to commit a delict. Thus, based on ordinary delictual principles, it is unlawful to incite or aid and abet the commission of a civil wrong, irrespective of whether it is sourced in common law or in a statute.  On the facts, the court held that appellant’s product was to be imported and disposed of with the specific and sole intention that it would be used in a manner that would infringe the respondent’s patent. Its conduct in doing so was therefore unlawful.

For more background in respect of patents, see Burrell para 5.12.

While the South African Trade Marks Act 193 of 1994 does not deal with aiding and abetting, it is clear from the above that our common law delictual principles may be used in order to obtain the necessary relief.

In the abovementioned Nespesso / Caffeluxe matter, Judge Dennis Davis dismissed the application with costs, stating that the primary party committing the breach – assuming there was a breach – was Shoprite Checkers, who was not before the court.  The Judge held that the applicant had not made out a case sufficient to justify the relief it claimed.

Juel Barnett

Attorney
Trade Mark Department
Email juelb@kisch-ip.com
Tel +27 11 324 3050