About SAFLII
Databases
Search
Terms of Use
RSS Feeds
South Africa: South Gauteng High Court, Johannesburg
SAFLII
>>
Databases
>>
South Africa: South Gauteng High Court, Johannesburg
>>
2016
>>
[2016] ZAGPJHC 67
|
|
GR5 Degreaser Trading CC v Enterprise Development Solutions Projects (Pty) Ltd and Others (39959/2014) [2016] ZAGPJHC 67 (18 March 2016)
IN
THE HIGH COURT OF SOUTH AFRICA
GAUTENG
LOCAL DIVISION, JOHANNESBURG
Case
number: 39959/2014
DATE:
18 MARCH 2016
In
the matter between:
GR5 DEGREASER
TRADING
CC
........................................................................................
Applicant
And
ENTERPRISE
DEVELOPMENT
SOLUTIONS
......................................................
First
Respondent
PROJECTS
(PTY) LTD
GR5
............................................................................................................................
Second
Respondent
ROGERS,
DENNIS
CLIVE
.......................................................................................
Third
Respondent
KICHENBRAND,
JACQUES
.................................................................................
Fourth
Respondent
JUDGMENT
SATCHWELL
J:
INTRODUCTION
This
is an application for the joinder of one Jacques Kichenbrand
(‘Kichenbrand’) as fourth defendant to an
action where
he is allegedly the author/creator of and seller to first, second
and third defendants of a trademark and
logo representation
thereof which are the subject matter of the dispute in the action.
Plaintiff
produces cleaning agents known as degreasers – being the
manufacturer of a particular degreaser which it has been
selling
under the brand GR5 since 2009. Plaintiff has registered rights to
the trademark in terms of the
Trade Marks Act 194 of 1993
and
alleges that it is the owner of the copyright in the logo
representation in terms of the
Copyright Act 98 of 1978
by reason of
the assignment of such copyright to plaintiff by the creator/author
thereof, one Tatum Langkilde, in 2014.
Plaintiff
learnt that a competitor supplying degreasing agents was also using
the trademark GR5 and a logo which appears similar
to that used by
plaintiff. Accordingly, plaintiff instituted action against the
first three defendants seeking a number of declarations
and
interdicts pertaining to infringements of trademark, copyright and
payment of certain royalties.
Defendants
have disputed that plaintiff is the owner of the reputation and
goodwill in these marks and, in amplification
of their
denial,
[1]
defendants have pleaded:
“
21.5
At all material times, valid copyright subsisted in an original
artistic work (‘the first defendant’s GR5 logo’).
………………
..
21.7 The author of
the first defendant’s GR5 logo was one Jacques Kichenbrand
(‘Kichenbrand’).
…………………
.
21.9
The first defendant’s GR5 logo is the result of Kichenbrand’s
own time, effort and skill and
is therefore an original work.
21.10 At
the time he authored the first defendant’s GR5 logo Kichenbrand
was a South African citizen and resident
and consequently was a
qualified person as defined in the Copyright Act 98 of 1978 (‘the
Copyright Act&rsquo
;).
21.11 The
first defendant’s GR5 logo was first published in South Africa
during or about August 2009.
21.12 The
first defendant is the proprietor of the aforesaid copyright in the
first defendant’s GR5 logo by virtue
of a written assignment of
copyright from Kichenbrand to the first defendant.”
Defendants’
counterclaim is much to the same effect as the claim of plaintiff
but also includes a claim for royalties, in
lieu of damages, from Ms
Langkilde as well as her joinder as second defendant to the
counterclaim.
The
joinder application sets out a series of interactions between
plaintiff, Roy Langkilde, Tatum Langkilde, third defendant and
Jacques Kichenbrand (which the answering affidavit of Kichenbrand’s
attorney specifically states “are not admitted”).
It
would seem that these interactions are suggested to have had the
result that they enabled Kichenbrand to reproduce or copy
plaintiff’s logo – GR5.
7.
The joinder application further avers that
Kichenbrand is currently employed by EOH Digital, and is thought by
plaintiff to have
been so employed since 14
th
February 2001.
THE JOINDER
APPLICATION
Plaintiff
seeks an order that Jacques Kichenbrand be joined as the fourth
defendant to plaintiff’s claim; the notice of
intention to
amend introduces a new paragraph citing Kichenbrand as fourth
defendant, as well as a new paragraph stating that
“The
defendant’s GR5 logo was produced by Mr Jacques Kichenbrand,
the fourth defendant, as an adaptation or revised
version of the
plaintiff’s GR5 logo upon the request of Mr Rogers, the Third
Defendant, for use in relation to the business
to be conducted by
GR5 True Blue Trading (Pty) Ltd aforementioned.” and by
insertion of another paragraph that “the
defendants’ GR5
logo is a reproduction or adaptation, within the meaning of
section
7
of the
Copyright Act 98 of 1978
, of the plaintiff’s GR5
logo.”
Plaintiff
seeks no relief against Kichenbrand.
Kichenbrand’s
attorney has filed an answering affidavit that he has been
instructed by Kichenbrand to oppose this joinder
application. The
attorney specifically states that certain paragraphs in the joinder
application are not admitted. It is asked
that the application be
dismissed with costs.
First
to third defendants have argued against joinder of Kichenbrand.
Evidence and
Documents
One
reason given for joinder was that, although Ms Langkilde has not
been able to locate a particular email between herself and
Kichenbrand himself, “… in all likelihood, Mr
Kichenbrand will have a record - either on that said email address
or elsewhere – of the communication from Ms Langkilde.
As a party to the proceedings, the records and documentation
in this
particular regard will become discoverable and therefore form part
of the factual matrix upon which the Court will be
requested to
decide the matter.”
[2]
This
is roundabout way of obtaining documentary evidence to place before
the court. The cost and inconvenience of being joined
as a party to
litigation should not be visited upon a third party merely because
he or she has certain documents which may or
may not be useful to
one litigant and because discovery can be enforced against a party
to the litigation.
Another,
less costly and less inconvenient manner of procuring production of
documentation in court is to procure issue of a
subpoena
duces tecum
obliging a person to
appear at court and produce those identified documents he or she is
required to produce. Such person can
also be advised that he or she
is required to remain in attendance to be called as a witness by the
party which has procured
the issue of the subpoena and to give
evidence.
There
are, of course, certain strategic advantages as to whether or not a
third party is joined as a defendant or subpoenaed as
a witness. On
the one hand, as a party (fourth defendant) Kichenbrand may elect
never to appear at court or he may be in in court
but elect not to
give evidence. Neither party has the right to consult with him or to
call him as a witness. He is obliged to
discover all documents in
his possession or under his control. On the other hand, as the
recipient of a
subpoena
, both parties can examine him and his
documents in court.
Kichenbrand
may give evidence to confirm that he did so assign the copyright or
he may give evidence that he did not so assign.
Such evidence would
be in his capacity as a witness. He does need to be a party to do
so. If he does not volunteer to give evidence,
plaintiff or
defendants can subpoena him. On defendants’ version they
appear to need him as a witness. Joinder does not
provide evidence –
inter alia,
it provides a party against whom a result can be sought to avoid a
brutum fulmen
or protects a party whose interests may be prejudiced by the trial
result (which protection Kichenbrand apparently does not want).
Employee of
EOH
Subsequent
to issue of summons and prior to bringing the joinder application,
plaintiff learnt that Kichenbrand is currently employed
by EOH
Digital as Head of Digital Design, and is understood by plaintiff to
have been so employed since 14
th
February 2001.
It
was argued by plaintiff that Kichenbrand ‘must explain’
not only ‘how he designed’ the logo but also
that it
‘might be that he had no copyright and EOH is the owner and
therefore the purported assignment by Kichenbrand [to
defendants]
falls away’. I was told that his story must be ‘ventilated’
as regards his employment as well as
his design process.
Plaintiff’s
heads of argument spell the issue out less graphically but more
elegantly. As an employee at the time of his
alleged creation of the
defendant’s GR5 logo, his employer was (at least,
prima
facie
) the first owner of the
copyright in the mark he created, not he. So he had no copyright to
assign. The argument then follows
that he can only make submissions
to the court if he is a party, which submissions might persuade the
court to interpret the
law differently; further that “this is
an aspect fundamental to the defendants entire case both in
convention and reconvention.”
and “Mr Kichenbrand’s
standing,
vis a vis
creation of the defendant’s mark, is core to the defendants’
defence and its
locus standi
for its counter claim.”
Of
course Kichenbrand is under no obligation to explain anything at all
unless he is served with a subpoena. His conditions of
employment
and rights as an author in terms of the
Copyright Act are
matters
for evidence - of himself or of his employer. In fact, his employer
would only have an interest in the logo if such were
designed in the
course and scope of his employment and if his employment contract
did not exclude his employer from author’s
rights.
Insofar
as plaintiff kindly argues joinder for the benefit of the
fundamental issue in defendants’ case, that kindness is
misplaced. If defendant requires joinder, then defendant can apply
for it.
Kichenbrand’s
Interest in the Proceedings –
Res Judicata
A
further reason given for joinder is that Kichenbrand has an interest
in the outcome “including for the reason that he
(purportedly)
entered into an assignment of his alleged copyright and upon which
the defendants have based their entire defence
and counter-claim
(and threatened expungement) of the plaintiff’s trade mark
registration.”
[3]
On
defendant’s version, Kichenbrand assigned his interest in the
logo to defendants a number of years ago.
Notwithstanding
that the existence of Kichenbrand has now come to light, plaintiff
still seeks no relief against Kichenbrand.
I
can see no interest of or for Kichenbrand in the outcome of this
trial. After all, he has supposedly ceded all his rights, title
and
interest and does not appear to have any further claim against
defendants and neither defendants nor plaintiff can claim
anything
from or against him.
It
was submitted in argument on behalf of plaintiff that,
as one looks at the chain of title to the copyright, where
Kichenbrand’s entitlement to dispose of that copyright is in
dispute, then it is up to a him as a party to prove
his title
because he has an interest in that right. But, as I see it,
Kichenbrand has no interest in this copyright. He has disposed
of
his right to defendants (on their version). He does not claim any
interest in the copyright and has no interest in proving
any title
which he may have had.
However,
plaintiff’s counsel took this argument further. As an employee
of EOH at the time of his alleged creation of defendants’
GR5
logo, EOH, as his employer, was (at least
prima
facie)
the owner of the copyright in
the mark which he may have created. He would therefore have had no
copyright to assign. It is argued
that the trial court would, in the
absence of Kichenbrand as a joined party to the proceedings, be
unable to make any finding
to the effect that Kichenbrand was not
entitled to assign any copyright because such a finding might have a
prejudicial effect
on his rights. Similarly, it was argued by
plaintiff’s counsel that the trial court would, in the absence
of Kichenbrand
as a joined party to the action, be unable to find
that Kichenbrand reproduced, copied or adapted the plaintiff’s
logo.
Notwithstanding
that Kichenbrand has been served with this application, has legal
representation, knows the issues and has elected
to oppose this
application for his joinder, it is the possibility of the interest
of or prejudice to Kichenbrand of which one
must be mindful.
The
only interest which was suggested to me in argument was that in
future litigation, Kichenbrand would be confronted with a
plea of
res judicata
.
The
only overlapping future litigation which I could envisage would be
an unhappy set of defendants seeking return of that which
they paid
or damages from Kichenbrand alternatively an unhappy plaintiff
seeking damages from Kichenbrand. But in such a matter,
Kichenbrand
would be the defendant, the cause of action would be different than
that which is currently before the court and
the issue of
res
judicata
could not arise.
[4]
In any
event, plaintiff has decided to seek no relief from Kichenbrand and
defendant has given no indication that it wishes to
do so.
I
have some difficulty in understanding when, where or how,
Kichenbrand would wish to initiate proceedings which dispute any
finding made by this trial court where the defendant/respondent in
such a matter would be able to raise the plea of
res
judicata
. None was adverted to.
The. requirements for successful reliance on the exception
res
judicatae vel litis finitae
are set
out in
National Sorghum Breweries
v International Liquor Distributors
[2000] ZASCA 159
;
2001
(2) SA 232
(SCA) at 239 F-I. See also
Bafokeng
Tribe v Impala Platinum Ltd
1993(3) SA
517 (B) at 556B-G. For
res judicata
to be raised against Kichenbrand, he would have to be the initiator
of the proceedings and taking action against either plaintiff
or
defendant in this trial action.
In
the
locus
classicus
on
joinder,
Amalgamated
Engineering Union v Minister of Labour
1949
(3) SA 637
A, Fagan AJA (as he then was) reviewed many authorities
dealing with the issue of joinder as at 1949 and extracted
therefrom
the principles which remain applicable today. Two
essential principles of law were affirmed – “(1) a
judgment cannot
be pleaded as
res
judicata
against someone who was not a party to the suit in which it was
given, and (2) that the court should not make an order that may
prejudice the rights of parties not before it.”
[5]
This
possibility of prejudice to a party who was not before the court,
led the court in
Amalgamated Engineering
supra
, to
critically examine the reasoning in
Paarl
Pretoria Gold
Mining Co v Donovan & Wolff
, NO 3 S.A.R. 56 at page 93 which
had found that “where a seller [Kichenbrand] has been warned
by his purchaser [first to
third defendants] that his title
has been called in question by a third party and after due notice
has failed to intervene,
he cannot subsequently maintain a suit for
trespass against such third party, and will be successfully met by
the plea of
res judicata
” (the headnote). Fagan AJA
pointed out that
Paarl Pretoria Gold Mining
supra
was
based upon Voet at 44.2.5 where there was given a non-exhaustive
list of parties who are regarded in law as being the same
for the
purposes of the rule that
res judicata
can be pleaded only
when the parties to the previous suit have been
the same
as
in the present one [my underlining]. Such parties who are regarded
as the same in both a first and then a subsequent matter
include
purchaser and seller in certain circumstances.
I
must thank Mr Salmon, appearing for plaintiff/applicant, for his
great patience as he took me through this portion of the judgment
time and again as I seemed to be at cross-purposes with him in my
comprehension thereof. My understanding is that the learned
judge
stated the parties are the same
if
the seller is the party in the first action;
but
not
the same if the purchaser is the party in the first action;
unless
the
seller has joined in the first action commenced against the
purchaser
or
the seller has been notified of the action and has left the
purchaser to fight on alone in which latter two instances seller
and
purchaser are the same for purposes of
res
judicata
[ underlining and semi-colons as they appear in
Amalgamated
Engineering supra
].
[6]
The
logic is inescapable – purchaser and seller are considered to
be the same where it is the seller’s title which
is challenged
or where the seller has joined or where the seller has chosen,
despite notification, not to join. The upshot would
then be that
Kichenbrand is regarded as the same party as are defendants in this
action because he has been notified of the action
and has clearly
expressed that he opposes being joined in this action.
The
question then arises whether or not this is a prejudice against
which Kichenbrand must be protected? The answer appears to
be in the
negative for two reasons. Firstly, he has legal advice and his
attorney has sworn to an affidavit on his behalf as
I have already
indicated.
[7]
Secondly, the
issue of
res
judicata
would only arise should Kichenbrand litigate as a plaintiff or
applicant and such defence be raised against him. I have been
given
no indication of any claim which he would or could bring where the
previous judgment given by this trial court was between
the same
parties, based on the same cause of action and with respect to the
same subject-matter and where the plea of previous
adjudication
could therefore be raised.
I
can find no interests of Kichenbrand which require protection or any
possible prejudice to which he might be exposed which would
justify
his joinder in this action.
CONCLUSION
No
relief is presently sought against Kichenbrand. He has, according to
defendants’ assigned all his interest in the logo
to them.
Findings made regarding his title in the trial court will have no
immediate impact upon himself.
The
only manner in which his interests could be prejudiced would be if
he were to institute proceedings against plaintiff
[8]
on the same cause of action where he could be confronted by a plea
that the same issue has already been adjudicated upon. I can
only
but speculate upon the grounds of any such proceedings which
Kichenbrand might wish to bring. Any that come to mind would
not be
based upon the same cause of action set out in the present claim and
counterclaim.
The
evidence sought to be laid before the court is obtainable from
Kichenbrand or his employer as witness(es). That is not a reason
for
joinder.
Kichenbrand
has, through his attorney (whose authority has not been challenged),
opposed his joinder.
In
the result, an order is made as follows:
The
application for the joinder of Jacques Kichenbrand as the fourth
defendant to the plaintiff’s claim is dismissed with
costs,
such costs to include:
i.
those costs consequent upon the employment
of two counsel by defendants/respondent; and
ii.
those costs incurred by Kichenbrand in his
notice of intention to oppose and his attorney’s answering
affidavit.
DATED
AT JOHANNESBURG 18
th
MARCH 2016
SATCHWELL
J
Counsel
for Applicant: Adv O Salmon SC and with him Adv M Freed
Attorneys
for Applicant Viljoen & Meek
Counsel
for Respondent: Adv R Michau SC and with him Adv K Iles
Attorneys
for Respondent: Dessington De Beer
Dates
of hearing: 02
nd
March 2016.
Date
of judgment: 18
th
March 2016.
[1]
Paragraph
21 of defendants’ plea.
[2]
Paragraph
19 of the Joinder affidavit.
[3]
Paragraph
17of the Joinder affidavit.
[4]
See
Boshoff
v Union Government
1932
TPD
345
;
Cook v Muller
1973
(2) SA 240
N and the discussion on
res
judicata
in
Herbstein and van Winsen from pages 311 and 598 onwards.
[5]
At
Page 651.
[6]
[6]
At
page 654.
[7]
[7]
The
authority of attorney Dessington to make such affidavit was not
challenged. Furthermore, the cautions expressed in
Amalgamated
Engineering supra
at pages 659 and 660 that the non-joined party should have stated
that he ‘disclaims any interest ‘in the result
or that
‘he submits to judgment’ is not applicable in this case
where there is not indication that the issue of
res
judicata
could
ever arise to the prejudice of Kichenbrand.
[8]
His
position being the ‘same’ as that of defendants
vide
Amalgamated Engineering supra.