Ara Oy v Pascall and others 364 (JOC) (W) | Tobias Schonwetter | January 12, 2016

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Ara Oy v Pascall and others 364 (JOC) (W)

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ARA OY v PASCALL AND OTHERS

WITWATERSRAND LOCAL DIVISION

MYNHARDT J

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JUDGMENT

Mynhardt J: In terms of the Notice of Motion applicant seeks an order:
`(a) interdicting the respondents from their continued, direct and indirect, infringement of the applicant's copyright in the drawings listed in schedule "HE 7'';
(b) that the respondents deliver-up under oath to the applicant all:

(i) two-dimensional reproductions of the applicant's drawings listed in schedule "HE 7" in the possession or under the control of any respondent or any contractor of a respondent.

(ii)three-dimensional reproductions of the applicant's drawings listed in schedule "HE 7" in the possession or under the control of any respondents or any contractor of a respondent, and

(iii) tools, dies, jigs and other tooling and machinery used for the manufacture of the three-dimensional reproductions of the applicant's drawings listed in schedule "HE 7".

c) thattherespondentsprovidetheapplicantwithalistofdrawings,other than the drawings listed in schedule "HE 7", which are legally the property of the applicant and which are in the possession or under the control of the respondent or any contractor of the respondent and that the respondents deliver-up to the applicant the drawings listed;

d)  that the respondents provide the applicant with an account of profits and payment thereof by the respondents jointly and severally;

e)  an award of additional damages in the sum of R2 000 000 to the applicant and payment thereof by the respondents jointly and severally; and

f)  in the alternative to (d) and/or (e) above an order postponing the matttter to be arranged for the hearing of oral evidence in order that the question of an account of profits and/or the question of additional damages may be investigated and determined by the court;

g)  thattherespondentspaytheapplicant'scosts,ontheattorneyandown client scale, such costs to include the costs of the employment of two counsel and the costs, and travelling to Finland and accommodation expenses whilst there, of Dr Burrell of the applicant's attorneys in collecting and collating the evidence necessary to support the application.'

The salient features of the applicant's case may be summarised as follows: the applicant is a Finnish company; over many years applicant and its predecessors have developed the TORO LHD (load, haul, dump) product line, ie machinery, more specifically, front end loaders, of which various models are manufactured and marketed; as part of this development process a number of technical drawings of the parts of these machines and specifications relating thereto have come into being; by virtue of a licensing agreement Bateman Mining Equipment (Pty) Ltd (`Bateman') has become the exclusive licensee of the applicant in the Republic of South Africa; in terms of this licensing agreement applicant has supplied many of its aforesaid technical drawings and specifications relating to parts of the TORO machines to Bateman and there has also been a continual interchange of specialist technical personnel and knowledge; in terms of the licensing agreement the applicant retained its copyright in the drawings and Bateman is obliged to ensure that `all ARA know-how and technical information' provided is to be kept confidential; the respondents are in competition with Bateman in supplying some of the goods and spares for underground loader equipment and other earthmoving equipment; the first respondent was, until 1 April 1988, the general manager of Bateman Mining Equipment Ltd, the predecessor of Bateman; the second respondent was also in the employ of Bateman Mining Equipment Ltd, he was also the company's marketing manager and he resigned on 30 September 1988; the third respondent was also in the employ of Bateman Mining Equipment Ltd as a parts sales clerk and he resigned on 29 February 1988; the first respondent is also a director of the fourth and fifth respondents and he is the sole member of the sixth respondent. During August 1989 Bateman received information that the respondents were involved in stealing confidential drawings of the TORO product line from Bateman and one of Bateman's employees, Mr T L Nkhetoa revealed to Bateman that he had, on various occasions, been requested by the third respondent to make copies of drawings relating to TORO machinery and to supply these copies to him and that he had complied with these requests. Bateman applied to court for a so-called Anton Piller order which was granted. This order was executed at different addresses of the respondents and a number of drawings were attached. An examination of the drawings which were attached revealed that copies have been made of drawings relating to parts which were designed by the applicant and which are used exclusively in TORO vehicles. The respondents have also obtained the services of a sub-contractor to manufacture TORO parts which the respondents have sold and supplied to various clients of them. Applicant initially applied for leave to intervene as a co-applicant in the abovementioned application which was brought by Bateman against the respondents but has since decided not to proceed with the application for leave to intervene but to launch the present application in its stead. Applicant contends that copyright subsists in the drawings which form the subject matter of this application and that the copyright vests in applicant; that the respondents have infringed the copyright and that applicant is therefore entitled to the relief claimed in the Notice of Motion.

The respondents have not produced evidence to refute the applicant's allegations. The respondents have contented themselves with merely denying applicant's allegations. The respondents do, however, allege that applicant and Bateman are acting in concert with each other and that they are improperly utilising the process of the court to mulct the respondents in enormous legal costs and thus forcing them out of the market place. The respondents further alleged that in view of the fact that they have tendered an undertaking the applicant as early as September 1989 not to infringe the copyright claimed by applicant, the present application should not have been instituted but that they in any event consent to an order in terms of paragraph (a) of the Notice of Motion, and that the applicant ought to be ordered to pay their costs of suit.

At the commencement of the hearing Mr Serrurier, who, together with Mr Goodman, appeared for the respondents, conceded that applicant has proved that copyright in the drawings vests in the applicant and that respondents have infringed applicant's copyright and that applicant is entitled to an interdict as prayed for in paragraph (a) of the notice of motion. Mr Serrurier's whole argument was therefore directed to the further relief claimed by applicant and he submitted that applicant is not entitled to the relief claimed in paragraphs (b) to (g) of the Notice of Motion. In view of this concession it follows that at least an order in terms of paragraph (a) of the Notice of Motion will have to be made.

The question therefore is whether or not the applicant is entitled to an order in terms of any one or more of the remaining paragraphs of the notice of motion. These paragraphs will now be considered.

PARAGRAPH (b)

It will be seen from the formulation of this prayer in the notice of motion that applicant seeks an order which is directed to the delivery-up of reproductions of the drawings which belong to applicant and in respect of which applicant is the holder of the copyright, and, also, to the delivery-up of tools, dies, etc. which was used for the manufacture of three-dimensional reproductions of the aforesaid drawings.

Mr Puckrin, who together with Mr Franklin, appeared for the applicant, submitted that the applicant is entitled to an order for delivery-up of the reproductions of the drawings as well as the tools, dies, etc. in terms of section 24(1) of the Copyright Act (no 98 of 1978) (`the Act'). Mr Puckrin conceded that the order was too widely framed in the Notice of Motion in so far as it directed the respondents to deliver-up the documents and items `under oath'. These words will therefore have to be ignored.

Mr Serrurier submitted, in the main, that section 24(1) of the Act does not entitled applicant to an order in the terms as sought by applicant; that the relief sought in any event involves an assumption that the respondents will not heed the interdict, an anticipation that the respondents will not comply with the interdict for which assumption there is insufficient evidence, and, that applicant has not proved that the respondents are in possession of any infringing reproductions of the drawings.

Section 24(1) of the Act reads as follows:
`Subject to the provisions of this Act, infringements of copyright shall be actionable at the suit of the owner of the copyright, and in any action for such an infringement all such relief by way of damages, interdict, accounts, delivery of infringing copies or plates used or intended to be used for infringing copies or otherwise shall be available to the plaintiff as is available in any corresponding proceedings in respect of infringements of other proprietary rights.'
The first question to be considered is whether or not the relief which applicant seeks is `available in any corresponding proceedings in respect of infringements of other proprietary rights'. Mr Serrurier has submitted that the owner of copyright has no proprietary right to recover `offending' reproductions or copies and for this submission he relied upon the judgment of Slomowitz AJ, who delivered the judgment of the Full Bench, in Video Parktown North (Pty) Ltd v Paramount Pictures Corporation; Video Parktown North (Pty) Ltd v Shelburne Associates and others; Video Parktown North (Pty) Ltd v Century Associates and others 1986 (2) SA 623 (T) at 641 F-G. In the passage relied upon by Mr Serrurier Slomowitz AJ said the following:

`As I have been at pains to point out, copyright is a species of ownership. Because it is the ownership of an incorporeal, it does not admit of the notion of natural fruits. The rental received for the letting out of pirated copies of copyright material is a civil fruit of those pirated copies. The offending copies are not, however, part of the patrimony of the copyright owner, and the rental in question is not his either. It follows that in the absence of the remedy of conversion and detention accorded by s 19 of the 1965 Act, no right to an account falls to the copyright owner any more than would the owner of, say a holiday home be entitled to sue a trespasser who has let it for reward to an account of the rental which the trespasser obtained. His remedy is in damages alone.'

Mr Serrurier has also relied upon a passage in the judgment of Van Dijkhorst J who delivered the judgment of the Full Bench in Cerebos Food Corporation Ltd v Diverse Foods SA (Pty) Ltd and another 1984 (4) SA 149 (T). The relevant passage is to be found at p 173 F-I of that judgment and it reads as follows:

`The South African Courts have therefore no jurisdiction to grant an order for the attachment of the property of another where no right of the applicant therein exists, merely for the purpose of its production as evidence.
The last component of the Anton Piller order to be considered is whether, ancillary to an interdict, an order should be made for the handing over of the property of another 'to make the interdict effective' where no right to that property exists. This type of order may arise in trade mark cases where the infringing trade mark is sought to be erased and the applicant wants to do that himself.

This type of order presupposes that the interdict, which prohibits the respondent from utilising that product as long as it contains the infringing trade mark, will be disregarded. This presupposes, even before the order is granted, that the respondent will be in contempt of court and that, should an order be granted that the respondent himself erase the offending work, that order will equally be disregarded. I find this a strange approach. The courts of this country have always acted upon the basis that their orders are complied with and, if not, the procedure for committal for contempt of court is effective. There is no reason to make this order and in law the court has no power to order the handing over of the property, for the reasons set out above.'

In my view it does not follow that because the copyright owner is not the owner of the `offending' copies that he would therefore not be entitled to an order for delivery-up thereof. What section 24(1) of the Act does, in my view, is to grant to the copyright owner relief similar to that granted to the holder of other proprietary rights who complains that his rights have been infringed. The rights of the copyright owner need not be equated to those of the holder, or owner, of other proprietary rights; the section does not, in my view, require or imply that: the section accords the copyright owner relief or remedies similar to that which is available to the owner of other proprietary rights. Mr Serrurier did not contend that the owners of other proprietary rights is not entitled to an order for delivery-up of `offending' copies. It therefore follows, in my view, that if the owners of such rights are entitled to orders for delivery-up then the applicant in this matter would also be entitled to such an order in terms of section 24(1) of the Act.

Furthermore, I do not think, in any event, that the above quoted passage in the judgment of Van Dijkhorst J in Cerebos, supra can be regarded as authority for the submission made by Mr Serrurier. In the Cerebos-matter the court was not concerned with the remedies of, or the relief available to, the holders of rights of a proprietary nature.

The second reason, why, in my judgment, the submission made by Mr Serrurier cannot be accepted, is that orders of this nature have, in the past, been granted by our courts in favour of the copyright holder. In Paramount Pictures Corporation v Video Parktown North (Pty) Ltd 1983 (2) SA 251 (T) McCreath J made an order in favour of the holder of the copyright in the films with which the court was concerned, for the delivery-up of the `offending copies'. This order was the subject of attack on appeal before the Full Bench in Video Parktown North, supra. The appeal against this order was dismissed by the Full Bench. See Video Parktown North, supra, at 636 I.

In Galago Publishers (Pty) Ltd and another v Erasmus 1989 (1) SA 276 (A) the court a quo made an order in favour of the copyright owner for the delivery-up of all copies of the infringing work. On appeal the Appellate Division did not specifically deal with this order of the court a quo as no objection was taken to it. See Galago Publishers, supra, at 194 F-G.

I cannot accept that the court in Video Parktown North, supra, and the Appellate Division in Galago Publishers, supra, would have allowed the orders to stand, even if no objection was taken to them, if a copyright owner was not, in law, entitled to such an order as was contended by Mr Serrurier. In Fax Directories (Pty) Ltd v SA Fax Listings CC 1990 (2) SA 164 (D) a similar order was granted. Admittedly, the order was granted without the court considering the question of whether or not the holder of the copyright was entitled to the order. The case is, however, at least authority for the proposition that our courts have invariably granted orders of this nature of the holder of copyright.

In regard to the other arguments advanced by Mr Serrurier I have come to the conclusion that they, too, cannot be upheld. I agree with Mr Puckrin's submission, namely that it has been shown on the papers that the respondents have made themselves guilty of a flagrant breach of their duty not to infringe applicant's copyright in the relevant drawings listed in schedule `HE 7' to the founding affidavit of Mr Heikki Euro. The respondents have not taken the court into their confidence by stating that they have no other copies of those drawings in their possession. This they could easily have done. Applicant was also not a party to the obtaining of the Anton Piller order and was not involved in its execution. Applicant cannot, therefore, vow for the fact that the respondents still have copies of the relevant drawings in their possession. This is something exclusively within the knowledge of the respondents and they have chosen not to take the court into their confidence. It does not lie in their mouths, therefore, to say that applicant has not shown that they are still in possession of any copies of the drawings. In view of the fact that copies of these drawings were in fact found in the possession of the respondents when the Anton Piller order was executed and the fact that applicant has proved that at least the third respondent had been instrumental in stealing copies of the drawings under the control of Bateman, I would have thought that the respondents would have regarded it their duty to be frank with the court and to have disclosed to the court whether or not they still have copies of the drawings in their possession. This, as I have said, they have failed to do. Under these circumstances it seems to me that the inference is almost an irresistible one that they still have copies of the drawings in their possession. In my view applicant is therefore entitled to an order in terms of prayer (b)(i).

As far as prayer (b)(ii) is concerned the applicant has also proved incontestably that respondents have caused parts to be manufactured by their sub-contractor, Rocoal Mining Equipment Supplies (Pty) Ltd (`Rocoal'). These parts could only have been manufactured by making use of applicant's drawings or copies thereof.

For the same reasons why an order in terms of paragraph (b)(i) will be granted the applicant is, in my view, entitled to an order in terms of paragraph (b)(ii) of the notice of motion.

In regard to paragraph (b)(iii) Mr Puckrin conceded that the relief has been too widely framed. The applicant is not entitled to delivery-up of the respondents' factory, so to speak. What applicant is entitled to is an order for the delivery-up of the appliances used for the manufacture of the parts referred to in paragraph (b)(ii) of the Notice of Motion. In terms of section 24(1) of the Act an owner of copyright is entitled to delivery-up of `plates used or intended to be used for infringing copies ....'. The word `plate' is defined in section 1 of the Act so as to include `any stereotype, stone, block, mould, matrix, transfer, negative or other similar appliance'. Mr Puckrin submitted that the appliances referred to in paragraph (b)(iii) of the Notice of Motion are in fact the `plates' referred to in section 24(1) of the Act. I did not understand Mr Serrurier to contest this. No other argument was advanced by Mr Serrurier why an order in terms of paragraph (b)(iii) should not be granted. It follows therefore that an order in terms of that paragraph of the Notice of Motion, suitably amended, will also have to be granted.

PARAGRAPH (c)

This paragraph is also concerned with drawings which are the property of the applicant. The relief claimed is accordingly of a vindicatory nature.

During argument Mr Puckrin conceded that it would not be necessary, in the event of the order being granted, to demand of the respondents that they compile a list of the drawings. In the event of the order being granted he suggested that it be granted in an amended form so as to direct the respondents to deliver-up to the applicant drawings belonging to the applicant.

Mr Serrurier submitted that, on the probabilities, respondents do not have any other drawings in their possession after the execution of the Anton Piller order. He also submitted that applicant has not proved that respondents have any drawings in their possession which belong to the applicant.
Once again I regard it as an important factor that the respondents have not stated under oath in their answering affidavits that they do not have any such drawings in their possession. Once again I must also make mention of the fact that applicant has showed, by means of the affidavit of Mr Pretorius, Annexure `HE 6' to the founding affidavit, that respondents have been in possession of a number of drawings. It also appears from paragraphs 22 and 23 of Mr Pretorius' affidavit that the respondents must have had drawings in their possession which would have enabled them to give a quotation for a complete refurbishment of a TORO 200D-machine. These drawings could only have been obtained from Bateman which, in turn had the drawings of the applicant under its control. As I understand the matter, there is nothing to show that those drawings which the respondents must have had in their possession, were also attached by the deputy sheriff when he executed the Anton Piller order. If that were so, the respondents could easily have said so. What is more, there is also no proof that the Anton Piller order was executed at all the places or addresses of the respondents where they could possibly have kept documents or drawings. Once again, bearing in mind that this is also a matter within the exclusive knowledge of the respondents, it is rather significant that the respondents have not told the court that they do not have any drawings, other than those listed in schedule `HE 7' of the founding affidavit, in their possession.
In paragraphs 29 and 30 of the founding affidavit and in paragraphs 16 and 20 of Mr Pretorius' affidavit it is alleged that the respondents must have been in possession of the so-called `fabrication drawings' in order to have been able to have manufactured certain components or parts of TORO machines. In paragraph 54 of the founding affidavit it is stated that there are indications that the respondents have filched a substantial number of, if not all, the drawings relating to at least one entire machine in the TORO product line. This allegation is confirmed in paragraph 22 of Mr Zille's affidavit, Annexure `HE 23' to the founding affidavit. In paragraph 56 of the founding affidavit it is also stated that the respondents have other drawings in their possession which they have filched from Bateman. This allegation should be read in the light of what Mr Pretorius has stated in paragraphs 22 and 23 of his affidavit to which I have referred above. The respondents have chosen, for reasons better known to themselves, not to deal in any detail with these allegations and they have not put forward any factual averments to contradict the allegations made by the applicant. Under these circumstances I agree with Mr Puckrin's submission namely that as the papers stand at present the respondents do have drawings in their possession, other than those listed in schedule `HE 7', which belong to the applicant.

I am therefore satisfied that the applicant has made out a case for the relief sought in paragraph (c) of the Notice of Motion.

PARAGRAPH (d)

Mr Puckrin submitted that the judgment of the Full Bench of this Division in Video Parktown North, supra, which held that the remedy of an account of profits was a substantive remedy that it had been removed from the South African Law of Copyright in the Act was wrong. I am, however, bound by the aforesaid judgment and I accordingly refrain from expressing any opinion on the interesting questions whether or not the remedy is merely a procedural one or a substantive one and whether or not it forms part of our law. See also J L & J E Walter Enterprises (Pvt) Ltd v Kearns 1990 (1) SA 612 ZHC at 616 B-F.

It follows, therefore, that applicant is not entitled to an order in terms of paragraph (d) of the Notice of Motion and that that prayer will have to be dismissed.

PARAGRAPHS (e) and (f)

Paragraph (e) is a prayer for an award of additional damages in the sum of R2 000 000 and an order that the respondents should pay that amount jointly and severally. Paragraph (f) is a prayer, in the alternative to prayer (e), for an order referring the matter for the hearing of oral evidence so that the question of additional damages may be investigated and determined by the court.

In paragraph 53 of the founding affidavit it is stated that the applicant and its predecessors have spent between R10 000 000 and R14,4 million in developing the TORO product range. On the basis then of the respondents having stolen all the drawings relating to at least one entire machine in the TORO product line, it is suggested in paragraph 54 of the founding affidavit that they have avoided at least R2 000 000 in costs of development. In paragraph 16 of the applicant's replying affidavit it is stated that the respondents have gained an advantage of at least R2 000 000 through their theft and dishonest copying of applicant's drawings which enabled them to manufacture, or procure the manufacture of TORO parts without having to invest any money.

These allegations of the applicant must also be read in the light of its allegations in paragraphs 55, 56 and 57 of the founding affidavit namely that effective relief would not otherwise be available to the applicant.

In terms of section 24(3) of the Act an owner of copyright is entitled under the circumstances therein set out, to recover additional damages. For present purposes it is not necessary for me to express any opinion on the true nature of the damages recoverable under this section of the Act; a matter about which there exists differences of opinion. See Priority Records (Pty)

Ltd v Ban-Nab Radio & TV; Gramophone Record Co (Pty) Ltd v Ban-Nab Radio & TV 1988 (2) SA 281 (D); CCP Record Co (Pty) Ltd v Avalon Record Centre 1988 (1) SA 445 (C) at 449I-450A.

The question in the present matter is whether or not I ought to make an order in terms of paragraph (f) of the Notice of Motion and either refer the matter for the hearing of oral evidence or for trial in terms of Rule 6(5)(g) of the Uniform Rules of Court.

Mr Serrurier submitted, firstly, that such an order ought not to be granted because the applicant had no basis for not anticipating a dispute of fact in regard to the question of damages and, accordingly, should not have proceeded by way of an application but should have instituted an action. For this submission he relied upon R Bakers (Pty) Ltd v Ruto Bakeries (Pty) Ltd 1948 (2) SA 626 (T) at 630-631 and Room Hire Co (Pty) Ltd v Jeppe Street Mansions (Pty) Ltd 1949 (3) SA 1155 (T) at 1159-1162.

I do not think that it would be correct to say that the applicant had no basis for not anticipating a dispute of fact in regard to the question of damages. If regard is had to the overwhelming proof of unlawful infringement of copyright by the respondents it is not difficult to understand that the applicant might have thought that no real dispute of fact in regard to the question of damages would arise. It should also be borne in mind in this regard that it is only a certain kind of dispute of fact which has to be foreseen in order to disqualify motion proceedings as the appropriate form of procedure. See Cullen v Haupt 1988 (4) SA 38 (C) at 40F-41B. In any event, the applicant would still be entitled to ask the court to refer the matter for the hearing of oral evidence, or for trial, in the event of the court being of the opinion that the disputes of fact cannot be resolved on the papers. See Marques v Trust Bank of Africa Ltd and another 1988 (2) SA 526 (W); Fax Directories (Pty) Ltd v S A Fax Listings CC, supra , at 167 C-J. I therefore remain unpersuaded that the order should be refused merely on this basis.

Mr Serrurier contended, in the second place, that Rule 6(5)(g) only permits the hearing of oral evidence on `specified issues with a view to resolving any dispute of fact ...' or a referral of `the matter' to trial. Relying upon cases such as Room Hire, supra at 1161 and Atlas Organic Fertilizers (Pty) Ltd v Pikkewyn Ghwano (Pty) Ltd 1978 (4) SA 696 (T), Mr Serrurier further submitted that it would be inappropriate to make an order in terms of paragraph (f) of the Notice of Motion in the present case. More specifically, submitted Mr Serrurier, Rule 6(5)(g) excludes the possibility of referring the present matter to trial only in so far as the question of damages is concerned because `the matter' will not then be referred to trial but only a portion thereof and that would result in a piecemeal hearing of the case; something which should not be permitted.

It is true that the courts have consistently declined to regard motion proceedings as appropriate for the determination and recovery of damages. For that reason they have refused to refer questions of damages for the hearing of oral evidence or for trial. A factor which must, in the present case, also be taken into account is the question of how the matter is going to be conducted if the question relating to damages is referred to trial. Mr Puckrin has suggested that the court could give the necessary directions if the parties are unable to agree in regard to the future pleadings. The problem I have with this suggestion is that, in terms of Rules 17(1), 17(2) and 18(10) of the Uniform Rules of Court, a combined summons will have to be issued by the applicant if the matter is referred to trial and it is ordered that the founding affidavit should stand as the summons or letter of demand. In view of the lack of particularity in the founding affidavit and the replying affidavit about the damages suffered by the applicant, the court would be doing the respondents an injustice if it is ordered that the matter be referred for the hearing of oral evidence or that the founding affidavit should stand as the applicant's combined summons. This aspect distinguishes the present case from other cases, eg Pressma Services (Pty) Ltd v Schuttler and another, 1990 (2) SA 411 (C), where the affidavits were ordered to stand as pleadings. Therefore, if the applicant will, in any event, have to file a combined summons I can see no real advantage to be gained by the applicant by requesting the court to refer the matter for trial for adjudication of the question of damages.

In regard to Mr Serrurier's argument that the court is in any event precluded from referring the question of damages to trial because that would result in a piecemeal hearing of the matter as opposed to `the matter' being referred to trial for hearing, I should state that I disagree with that argument. I do not think that the court is precluded, in principle, in terms of Rule 6(5)(g) to refer a particular aspect to trial. See Tamarillo (Pty) Ltd v B N Aitken (Pty) Ltd 1982 (1) SA 398 (A) at 430F-431C.

I am therefore of the opinion, in the light of the aforegoing, that it would not be proper to make an order in terms of paragraph (f) of the Notice of Motion but that it would be more correct not to make any order on this prayer as well as on prayer (e).

PARAGRAPH (g)

This paragraph relates to costs. During argument Mr Puckrin has conceded that, in the event of the applicant being successful, it would not be entitled to an order for costs on the scale as between attorney and own client. I think that this concession was correctly made. Mr Puckrin submitted that an order granting the applicant costs on the ordinary attorney and client scale would be appropriate in the present matter.

The respondents have most certainly behaved in a scandalous manner.

They have filched the applicant's drawings which were under the control of Bateman. They have used these drawings to manufacture components for machines which they have sold to clients of theirs in direct competition with Bateman. They have persistently denied that they have infringed the applicant's copyright. They have persistently denied that applicant is the owner of the copyright subsisting in the drawings. It was only at the commencement of the hearing that the respondents have made the concessions to which I have referred above.

Mr Serrurier submitted that the applicant should be ordered to pay the costs of this application. He argued that as early as September 1989 the respondents offered an undertaking to applicant's attorneys not to infringe applicant's copyright in future. This undertaking was contained in a letter written by respondents' attorneys and a copy of which is Annexure AMP 4 to the first respondent's answering affidavit. Mr Serrurier further submitted that applicant should have accepted that undertaking and should therefore not have instituted the present application as there was, since September 1989, no reason to suspect that respondents would not honour the undertaking. This undertaking was again repeated in a written tender which was filed of record on 4 May 1990. The applicant has therefore made itself guilty of an abuse of the process of the court by instituting the present application, submitted Mr Serrurier.

I do not agree with these submissions by Mr Serrurier. The so-called undertaking of September 1989 was given on the basis of respondents denying having infringed applicant's copyright and on the further basis that applicant had no cause of action against them. The tender of the relief claimed in paragraph (a) of the Notice of Motion which is contained in the aforesaid written tender was tendered on the basis that respondents do not admit any of the allegations made by the applicant in the papers.

In my opinion both the undertaking and the tender were given in terms and under circumstances which justified the applicant in rejecting them. The applicant all along, since August 1989, had reason to believe that its rights have been flagrantly infringed in a scandalous manner. As the owner of the copyright subsisting in the drawings it had every right to take effective steps to protect its copyright. Any undertaking by the respondents could have been justifiably viewed with suspicion by the applicant because of the facts which were disclosed to it by Mr Pretorius and Mr Nkhethoa and by what was attached by the deputy sheriff when he executed the Anton Piller order. The applicant had every reason in the world to be suspicious of the respondents and to be wary to place any reliance upon what the respondents say. Furthermore, in so far as the applicant was not in a position to exercise control over the litigation between Bateman and the respondents, unless it also became a party to that litigation, it was justified in taking the necessary steps to protect its rights.

I have therefore come to the conclusion that applicant is entitled to an order for costs on the scale as between attorney and client.

It was not contested by Mr Serrurier that the present matter justified the employment of two counsel by the applicant.

In regard to the costs incurred by applicant's attorney in travelling to Finland to collect and collate the necessary evidence, I think that I would be usurping the taxing master's functions if I make an order awarding these costs to the applicant. In my view it is a matter for the decision of the taxing master and I am not prepared to award those costs to applicant without the taxing master having considered the matter. See also Cambridge Plan AG v Cambridge Diet (Pty) Ltd & others 1990 (2) SA 574 (T) at 604G-605D.

Although the applicant has not succeeded in obtaining an order in its favour on paragraphs (e) and (f) of the Notice of Motion, I am of opinion, as was also contended by Mr Puckrin, that the applicant still has achieved substantial success. It is obvious from the papers that the most important part of the application was the question concerning the applicant's copyright and the infringement thereof. The applicant has been successful in vindicating its rights. The question whether or not the applicant is entitled to the relief sought in paragraphs (e) and (f) of the Notice of Motion was a subsidiary one and I do not think that it played such an important role so as to warrant a special order of costs.

In the result the following order is made:
1. An order is granted:

1.1 interdicting the respondents from their continued, direct and indirect, infringement of the applicant's copyright in the drawings listed in schedule HE7 to the founding affidavit deposed to by Heikki Euro; 1.2that the respondents deliver-up to the applicant all—

(i) two-dimensionalreproductionsoftheapplicant'sdrawingslistedinthe aforesaid schedule HE 7 in the possession or under the control of any respondent or any contractor of a respondent;

(ii)three-dimensional reproductions of the applicant's drawings listed in the aforesaid schedule HE 7 in the possession or under the control of any respondent or any contractor of a respondent; and

(iii) tools, dies, jigs and other tooling appliances used for the manufacture of the three-dimensional reproductions of the applicant's drawings listed in the aforesaid schedule HE 7;

1.2 that the respondents deliver-up to the applicant all drawings, other than the drawings listed in the aforesaid schedule HE 7, which are legally the property of the applicant and which are in the possession or under the control of the respondents or any contractor of a respondent;
1.3 that the respondents pay the applicant's costs on the attorney and client scale, such costs to include the costs of the employment of two counsel;

2. No order is made on paragraphs (e) and (f) of the Notice of Motion.

3. The claim for an account of profits and payments thereof by the respondents jointly and severally, is dismissed.

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January 12, 2016

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Tobias Schonwetter

Dr.

CopyrightX: UCT

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