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[1995] ZASCA 57
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Payen Components South Africa Ltd. v Bovic Gaskets CC and Others (448/93) [1995] ZASCA 57; 1995 (4) SA 441 (AD); [1995] 2 All SA 600 (A) (25 May 1995)
IT THE SUPREME COURT OF SOUTH AFRICA (APPELLATE
DIVISION
)
CASE NO. 448/93 In the matter
between
PAYEN COMPONENTS SOUTH AFRICA LIMITED
APPELLANT
AND
BOVIC
GASKETS CC
FIRST RESPONDENT
VICTOR WILLIAM BODELL
SECOND RESPONDENT
ARTHUR LESLIE WILFRED
OLIVER
THIRD RESPONDENT
DAVID GEORGE BOYCE
FOURTH
RESPONDENT
THOMAS MICHAEL BODELL
FIFTH RESPONDENT
CORAM
: CORBETT CJ, HEFER, STEYN, FH GROSSKOPF et SCHUTZ
JJA
DATE HEARD
: 9 MAY 1995
DATE
DELIVERED
: 25 MAY 1995
2
JUDGMENT
SCHUTZ JA
:
The appellant ("Payen" - applicant below) and the first respondent ("Bovic" -
first respondent below) are competitors in the market
for gaskets used in
assembling and repairing motor vehicles. The customary aspersions are cast.
Payen complains that Bovic's products
are of inferior quality and that it does
not keep a full range of gaskets, which allows it to concentrate on the more
lucrative part
of the market. The result is that it undercuts Payen. Bovic
counters by ascribing Payen's higher prices to inefficiency, and charges
that
Payen is trying to establish a monopoly. However all that may be, the legal
grounds on which Payen relies to curb Bovic's activities
are copyright, unlawful
competition, and, lastly and faintly, contract. There is no reliance
3
on trade mark or passing off, although many expressions associated with these
disciplines are used. Resort to the Merchandise Marks
Act and the Trade
Practices Act was abandoned in this court.
The second respondent ("Bodell" - second respondent below) is a 50% member
and the controlling force in Bovic. Three further persons
were cited as
respondents below but the claims against them were abandoned in this court, so
that their participation in these proceedings
is now confined to their claim for
costs.
The activity of which Payen complains is the use by Bovic in its price lists
and catalogues and on the wrappers containing its gaskets
of the Payen code for
identifying the huge range of gaskets in use in South Africa. Each code consists
of five digits, the first
two being letters and the other three numbers. The
first letter indicates the type of gasket, so that, for instance, all
4
cylinder head gaskets commence with an A or a B. To give examples of complete
codes, AF 240 denotes a cylinder head gasket for an
Alfa Romeo 1300, and CJ 494
a head set for a Nissan L 185. There is nothing novel about such a system, but
its utility is such that
Bovic contends that it has become the language of the
trade when identifying gaskets, so much so that it is necessary for any trader
to use it (so it is contended).
Copyright Work?
First, the facts. Payen's essentially uncontested case is based on the
evidence of five witnesses, Ellis, Thomas and Butler who depose
to the code's
English origins, and Parker - Nance and Galloway who describe its South African
adaptations and accretions.
Companies not only enjoy perpetual succession but some also undergo changes
of name and parentage. The "Payen Group" in the United
5
Kingdom is a good example, which tends to render the exposition following
rather tortuous.
Coopers Mechanical Joints Limited ("CMJ") was a subsidiary
of another Payen Group company, namely Engineering Components Limited ("EC").
The coding system for gaskets in use in 1970, although partly computer based,
was unsatisfactory in several respects. One Machin,
the management services
manager of EC, tackled the problem first. What he did was to work out the
mathematical basis for what was
to become the new Payen coding system. He
prepared a table of significance ("the table") which contains an outline of the
later system,
although there were some departures from the outline. The table is
skeletonic in form and is in no sense the final embodiment of
the work. No
copyright was claimed in it. It is neither a catalogue nor a price list.
6
The next step was taken by one Butler, the chief systems analyst working at
EC under Machin. Using the table he "devised a computer
program for allocating
new reference numbers in place of the old" ("the program"). That is all that we
are told about this important
step.
Thomas took over the co-ordination of the project in October 1971. The old
numbers were grouped in accordance with the classes of
gasket, which were
described. This data which was to be fed into the computer was then meticulously
checked and re-arranged. Then,
to quote the words of Thomas, also echoed by
Butler, "the data was entered into the computer to generate new numbers in
accordance
with (the) program devised by Mr Butler." That is all we are told
about this other important step. Although the bulk of the new numbers
was
generated in this way, a significant part was formulated manually. This was done
"by the staff of the Payen
7
technical department" where the old number was not in the standard format.
This technical department appears to have been that of
EC.
The next important step is not expressly stated at all, namely the printing
out by the computer of the list of new numbers. However,
I suppose that it is
implicit in the narration. What followed next, after many months, was two lists
giving cross references from
the old numbers to the new, and the new to the old
("the lists"). They were first used internally and were then published in
February
and April 1972. Although there is confusion and contradiction in the
affidavits it seems that it is the originals that no longer
survive, not the
printed ones. Five named persons prepared these lists. They were all British
subjects employed by EC or CMJ. The
lists were necessary for the transitional
period.
They were used for the preparation of the first master
catalogue,
8
which was published in October 1972. The format was that of the old catalogue
but the numbers were new. Four other named persons prepared
it. They too were
British subjects and employees of EC or CMJ. All the later catalogues were based
on the 1972 master.
After a master list had been entered into the computer it was thereafter kept
up to date. This work was done by Butler and employees
of EC, CMJ and Coopers
Payen Limited ("CP" - the new name for CMJ after 1980, and thus still a
subsidiary of EC).
As both South Africa and the United Kingdom give effect to the Berne
Convention the various Payen companies and their employees are
to be treated as
if they were here.
Although there is a challenge on this point by Bovic, I think that it is
obvious from the recitation of the facts so far that the
preparation of the
9
new English catalogue involved much labour and at least some skill.
On 11
March 1988 EC and CP (formerly CMJ) assigned copyright and rights of a like
nature in the numbering system to Payen International
Limited ("PI"). EC is the
wholly owned subsidiary of PI. What was not ceded was Butler's program. What was
ceded was the "original
works" consisting of the table, the 1972 and later
catalogues, the computer printout of the summer of 1971 (here mentioned with
Butler
as the author), and the "New Reference/Old Reference." This last pair and
the printout are shown as having been authored by Butler
and being no longer in
existence. Their best available reference is given as the "Interchange Lists
February and April 1972." This
last no doubt refers to the published
cross-reference lists, whereas the "New Reference/Old Reference" presumably
refers to the original
manuscript or part manuscript form.
10
Although Payen (the applicant - Payen Components South Africa Limited - a
subsidiary of PI's holding company Turner and Newall Limited)
has been the
exclusive licensee of the numbering system for a long time, a written licensing
agreement was concluded with PI (by
now the copyright holder) only in 1989. Nemo
dat quod non habet.Payen's rights can be no better than PI's rights.
Parker-Nance has been involved in the production of the South African version
of the catalogues and price lists using the new system
since the first local
edition in 1973. It had to be adapted to the South African market and has had to
be kept up to date. Doing
this has entailed "a vast amount of work". Among other
things he has to keep abreast of new models as also modifications. New gaskets
are referred either to CP in the United Kingdom or Components Eastern Limited
("our Far East Associate")
11
depending on the country of origin of the new engine. Numbers are allocated
by the one or other of those companies. The new numbers
are then included in the
catalogue. Nothing more is said about the nature of the association with the Far
East associate. One additional
task has had to be undertaken in South Africa,
namely the translation of the material into Afrikaans.
The catalogue cum price list is of a kind as may qualify as a "literary work"
in the generous sense that that phrase is used in copyright
law. Moreover it has
been "written down" in a material form. Further, there has been enough labour
and skill expended both in England
and South Africa for the same to be
"original", in the sense of copyright law.
Mr Ginsburg, for Bovic, raises two contentions, both related to authorship.
The first goes along these lines. Except in those cases
where the law provides
otherwise, for copyright to subsist it must be possible to identify
12
a human author. Here there was no human author, as the author was a computer.
Even though a computer program may qualify as a literary
work, Butler's program
cannot be relied upon because it has not been infringed. It is a completely
different work from the printout
or its successors. That, no doubt, is why it
has not been relied upon by Payen. Nor has it even been assigned to PI. The
program,
so the argument proceeds, was the thing that mattered. It was what made
or allowed the computer to do what it did. It was the "author"
of the printout.
Butler was merely the author of the program not the printout. This argument is
not dependent upon its being only
in 1992 that separate provision was made in
our statutes for copyright protection for computer programs, which before
qualified,
if they qualified at all, as "literary works" in the ordinary way -
Nothern Office Micro Computers (Pty) Ltd and others v Rosenstein
1981(4) SA
123(C).
13
Mr Ginsburg relies on one English case Express Newspapers PLC v Liverpool
Daily Post & Echo PLC and others
[1985] 1 WLR 1089
(Ch):
[1985] FSR 306
and
two foreign textbooks Laddie, Prescott and Vitoria The Modern Law of Copyright
94 and Dworkin Blackstone's Guide to the Copyright
Design and Patents Act 1988
47. A distinction is drawn between "computer aided" and "computer generated"
works. In the former case
the computer is a mere tool like a pen or word
processor. In the latter the work of creation is performed by the computer
itself
with relatively little human input. Perhaps it should be noted that the
computer which Butler used was used in 1971 when computers
had not yet been
taught to do all the remarkable things they now do.
Dworkin describes a computer generated work in these terms (op cit 47):
14
"The computer-generated category is really aimed at more sophisticated
devices such as those now beginning to be marketed whereby
a computer can
produce to order an original piece of music in the style of a known composer."
And again at 185-6:
"There is now a crucial distinction between a computer-aided work, as in the
above case (the Express Newspaper case), and a computer-generated
work. The
latter work is one which is created without expenditure of significant human
skill and effort in the completed work. For
example, the compilation of new
crossword puzzles, moves generated by computer chess programs or
computer-generated original pieces
of music in the style of a known composer.
The steps to be taken by the operator of the machine may be so trivial (hat it
is difficult
on normal principles to say that he or she is the author. The real
creative work is done by the person who devises the original computer
program,
but it would be inconvenient and misleading to treat that programmer in all
cases as the owner of the copyright in the new
works which his program produces,
for example, in all the new music produced by the various programs which are
sold to the public."
Laddie (op cit) says at 94:
"There may be cases where the real work has been done by the
computer, the human contribution being too trivial or not
15
sufficiently related to the work that has emerged. Suppose a computer linked
directly to a large number of meteorological instruments
and programmed
automatically to print out a weather chart on demand. It seems factually wrong
to contend that the deviser of the
program is the 'author' of the chart. He may
have died many years ago, the program may have been bought in from an
independent software
house, yet every day quite different charts are printed
out. (It is true that the programmer's labour and ingenuity are in a sense
responsible for the chart; but in that sense so are the efforts of the designers
of the computer itself; for that matter, so are
those of the inventor of the
barometer.) It is perhaps even more artificial to argue that the operator of the
computer is the author:
the only skill and labour he had employed is ensuring
that the flow of programs and data to the machine is maintained. It might be
said that the real author is the owner or hirer of the computer who has expended
the capital in setting up and operating the system;
but such person is probably
a body corporate, and if considered to be the 'author', would enjoy a
potentially perpetual copyright."
The Express case was concerned with a competition entitled
"Millionaire of the Month" published in three newspapers with a view
to
increasing circulation. Numerous cards, each carrying a five-letter code,
were
16
distributed free and at random to members of the public. In
order to see
whether or not they had won a prize those taking part in the competition
could
check the cards against grids containing 25 letters and two separate
rows of
five letters which were published daily. Various prizes were offered to
lucky
winners. Another newspaper copied the scheme as it was, and an
infringement action was brought. The manner in which the scheme had been
prepared for the plaintiff was fully explained in the affidavits. What had
to
be done was to produce a large number of combinations which would suffice
for a year or so, whilst at the same time ensuring that there would not be
too
many winners. The description proceeds (at 1093 C):
"What Mr Ertel says is that he started off by seeing whether he could work
out these grids by just writing down appropriate sequences
of letters. It soon
became apparent to him that, although this could be done, and done without too
much difficulty when just producing
a small number of grids, if you are going to
produce sufficient for a year's supply or something of
17
that order, it becomes a very different matter indeed. It was immediately
apparent to him that the labour involved in doing this
could be immensely
reduced by writing out an appropriate computer programme and getting the
computer to run up an appropriate number
of varying grids and letter
sequences.
Mr Ertel did all this. He programmed his computer; he ran out the results; he
checked the results; and the steps which he had to
take in this regard show that
indeed the preparation of these grids and sequences of five letters involved a
great deal of skill
and labour."
The point taken
before Whitford J and the manner in which he disposed of it are contained in
these words (at 1093):
"A point was taken by Mr. Jeffs on the question of the employment of a computer,
the suggestion of Mr. Jeffs being that, whatever
might be the position of
anything that was done before the computer was employed, although he was
prepared to accept that computer
programmes might well be copyright works, the
result produced as a consequence of running those programmes, was not a work of
which
it could truly be said that Mr. Ertel was the
author.
I reject this submission. The computer was
no more than the tool by which the varying grids of five-letter sequences were
produced
to the instructions, via the computer programmes, of
18
Mr. Ertel. It is as unrealistic as it would be to suggest that, if you write
your work with a pen, it is the pen which is the author
of the work rather than
the person who drives the pen."
The distinction
between computer generated and computer aided works drawn in these writings
seems to me to be valid and such as should
be recognized here. It may be of
importance in cases where ownership and duration of copyright are in issue, and
bears upon this
case because the question whether copyright did or did not vest
in 1971 or 1972 must be decided with reference to the Copyright Act
63 of 1965 -
see
S 43
of the
Copyright Act 98 of 1978
as interpreted in Appleton and another
v Harnischfeger Corporation and another
[1994] ZASCA 141
;
1995 (2) SA 247(A)
at 260 E and 261
G-H.
This brings me back to the facts. Has Payen proved that there was a human
author, in other words that the printout was not computer
generated?
19
In answering this question it is necessary first to observe
that the facts set out by Payen are extremely sparse at some critical
points.
Also that computer literacy is not to be assumed in persons over 50, as most
judges are. Copyright is a technical subject
and it is essential that a party
trying to prove it establishes the technical points necessary for his claim:
Vagar (t/a Rajshree
Release) v Transavalon (Pty) Ltd (t/a Avalon Cinema)
1977
(3) SA 766(W)
at 775 C.
However, I consider that enough evidence has been produced. After the
computer had received the data what remained was essentially
an arithmetic
function including the requirement that there should be no duplication.
Mr. Ginsburg's second point was that Payen has not proved what the original
"work" was, a matter sometimes interwoven with the paramount
20
question of identifying the author, as is pointed out in Dean Handboek of
South African Copyright Law 1-15. It is true that Mr. Puckrin,
for the
appellant, had difficulty in pinpointing at what point the original work came
into existence, and there were even contradictions
in his argument. This is not
surprising given the sketchiness of the affidavits at some places. But there is,
I think enough, just
enough, to get him home. The first printout was the basis
of all that followed. What was added or changed thereafter was done by
employees
of the assignors or of Payen. Problems that might have arisen if this had not
been so do not arise. Nor do I think that
the fact that later numbers are
supplied by CP or Components Eastern Limited affects the result. There is
clearly a need for international
uniformity in numbers. The process seems to be
no more or no less than adding or removing items in a railway timetable on the
basis
of information supplied. What Payen is doing is
21
maintaining an up-to-date compilation.
For these reasons I consider that
Payen has proved copyright in its catalogue cum price list.
Copyright
Infringement
In terms of
S 43
of the
Copyright Act 98 of 1978
questions of infringement
are to be decided in accordance with that Act even although copyright vested
before it came into force.
Infringement in this case under S 23 would consist in reproducing (meaning
copying) the work in any manner or form (S 6(a)). Reproduction
of any
substantial part would suffice (S 1 (2A)). By that standard there clearly were
repeated infringements by Bovic's use of the
Payen code in its catalogues cum
price lists. Indeed Bovic has sought to justify such use in relation to unlawful
competition. But
it has desisted and now uses its own
22
numbering system for purposes of identification. The Payen code does not
appear in the current catalogue. As this retraction occurred
after the bringing
of the application, Payen is entitled to its costs at least until Bovie stopped
using Payen's numbering system.
But Payen still seeks an interdict. Bovic's
response is that apart from changing its catalogue cum price list it has
undertaken not
to repeat its use of the Payen system in them in the future and
that Payen has no need of an interdict, as there is no reasonable
ground for
apprehending further harm. An issue has been sought to be raised as to whether
an undertaking has in fact been given.
Mr. Ginsburg has formally said in his
heads and in his argument that it has. That binds his client. An interdict is
not a remedy
for a past invasion of rights: Philip Morris Inc and Ano v Marlboro
Shirt Co SA Ltd and Ano
1991 (2) SA 720
at 735 B. However, the infringement
complained of is not confined to the catalogues
23
and price lists.
Although the wrappings in which Bovic's gaskets are sold
bear Bovie numbers, they to this day also bear a disclaimer that includes
Payen's numbers, in this form, "This product is supplied by Bovic Gaskets. The
number mentioned below is for identification purposes
only and in no way
suggests that this gasket set is anything other than a Bovic product.
Alternative To:
(and then follows the Payen number)."
Bovic justifies this conduct by saying that it is done in order to identify
the products to the purchaser in terms of a Payen number
with which he is
invariably more familiar.
This is copying in fact. The question is whether it is copying of a
substantial part. In this connection Copinger and Skone James
(op cit) say at
8-26 to 8-27:
24
"Quality not quantity taken the test. It has repeatedly been held that
'substantial' in this connection relates much more to the quality
of what has
been taken than to the quantity. The quality, or importance, of the part taken
is frequently more significant than the
proportion which the borrowed part bears
to the whole work. Thus if so much is taken that the value of the original is
sensibly diminished,
or that the labours of the original author are
substantially, and to an injurious extent, appropriated by another, that is
sufficient,
in law, to constitute a piracy pro tanto. In deciding questions of
this sort, regard must be had to the nature and objects of the
selection made,
the quantity and value of the materials used, and the degree to which the use
may prejudice the sale, or dimmish
the profits, direct or indirect, or supersede
the objects of the original work. It may be relevant to consider whether there
has
been an animus furandi on the part of the defendant in the sense of an
intention on the part of the defendant to take for the purpose
of saving himself
labour. Many mixed ingredients enter into the consideration of such questions.
In short, the question of substantiality
is a matter of degree in each case and
will be considered having regard to all the circumstances. Generally, it is not
useful to
refer to particular decisions as to the quantity taken."
See also Galago Publishers (Pty) Ltd and Ano v Erasmus 1989
(1) 276(A) at 285 B-F, Fax Directories (Pty) Ltd v SA Fax Listing CC 1990
25
(2) SA 164(D) at 177 D - 178 F and also the remark of Petersen J in
University of London Press Ltd v University Tutorial Press Ltd [1916]2
Ch
601 at 610, "what is worth copying is prima facie worth protecting." In
the
passage cited above in Galago there is a quotation from Ladbroke
(Football)
Ltd v William Hill (Football)Ltd
[1964] 1 All ER 465(HL)
at 469,
in which
Lord Reid says that a convenient short cut in deciding whether the part
copied
is a substantial part is sometimes to ask whether that part on its own
would
have qualified for copyright. But, he adds, that is a short cut only and:
"A wrong result can easily be reached if one begins by dissecting the
plaintiffs work and asking, could section A be the subject of
copyright if it
stood by itself, could section B be protected if it stood by itself, and so on.
To my mind, it does not follow that
because the fragments taken separately would
not be copyright, therefore the whole cannot be."
I consider that that passage fits this case. It would be wrong
to
take one wrapper and say that the code on it is not a substantial copying,
then
26
to take the next and say the same, and so on. That would be to ignore that a
large part of the whole has been copied. But the matter
goes further. Even
ignoring warehouses, I can readily imagine that in shops a large collection of
gaskets will be displayed on racks,
shelves and the like, or otherwise readily
accessible to members of the public, so that a substantial part of the Payen
numbers will
indeed be displayed together, on any meaning of the word
substantial. The fact that the mode of presentation differs from what is
presented in the Payen catalogue does not, to my mind, make a difference.
I would therefore grant an interdict in respect of wrappers. That means that
Bovic is still infringing to this day. That being so
1 would grant an interdict
in respect of the catalogues cum price lists as well, despite Bovic's
undertaking. What also influences
me in this connection is that I think that
Bovic has been less than frank in its affidavits in suggesting that the
numbers
27
copied were not Payen's numbers, but the numbers of an English, firm Clough
and Wood. Mr. Ginsburg has rightly not sought to press
this suggestion and I do
not think that I need expand upon it further.
Unlawful Competition
Having reached the conclusion which I have in connection with copyright it is
strictly unnecessary to deal with unlawful competition,
but I shall nonetheless
indicate briefly why I do not consider that such competition has been
proved.
The broad and flexible principles relating to this branch of the law have
been stated in this Division in Schultz v Butt 1986 (3)
667(A) at 678F - 679E
and Taylor and Horne (Pty) Ltd v Dentall (Pty) Ltd
1991 (1) SA 412
(A). It is
unnecessary for me to restate them. But I would repeat that in judging questions
of unlawfulness, not only in this Geld,
questions of policy
28
may play an important part, and that in the field of unlawful competition an
important one is the need for free competition.
Mr Puckrin, who urged this part of his case not too strongly, had some
difficulty in defining exactly what constituted the unlawfulness.
In the first
place he said that Bovic was competing and had appropriated part of the market
built up by Payen without itself having
expended skill, time and effort. This is
not in itself unlawful - see Taylor and Horne (above) at 422 B-D. But there were
added elements
he said. They were that there had been not only an appropriation
but a slavish misappropriation. It is not clear to me what the use
of the
pejoratives adds. Then it was said that Bovic had been spared building up its
own system. Finally, what Bovic had done "facilitated
substitution". All in all
not an impressive list, when reliance on all the recognized heads
29
of unlawful competition is excluded.
The main reasons why I consider that
unlawfulness has not been proved are these:
First, much of Payen's evidence
is to be found in the interstices between copyright and passing off. In the case
of copyright S 41(4)
of the Act expressly provides that no copyright or right in
the nature of copyright shall subsist otherwise than by virtue of the
Act or
some other law. Turning to passing off, it has not been relied upon at all as
such. In my opinion a court should be wary of
allowing the sharp outlines of
these two established branches of the law of unlawful competition, evolved
through long experience,
to be fudged by allowing a vague penumbra around the
outline. Unlawful competition should not be added as a ragbag and often forlorn
final alternative to every trade mark, copyright, design or passing off action.
In most such
30
cases it is one of the established categories or nothing.
Secondly, what
we are concerned with is a numbering system. The case is like Taylor and Horne
(at 422 G-E) in that it is not concerned
with the appropriation of another's
product or performance as such. There is a question of degree involved, but I
think that the
complaint stands beyond the periphery.
Thirdly, there is a considerable body of evidence, including that of traders
from Delarey to Soshanguve to the effect that the Payen
code system is in
general use in the gasket market in South Africa, is indeed within the public
domain. It would be unrealistic,indeed
futile for the court to try and alter
this situation. So why, absent copyright of course, restrain Bovic? This
evidence comes from
Bovic's side. But Payen has sought a final interdict on
paper. The problem that a judge faces when reading first the founding
31
papers and then the answer is nowhere better stated than by Jane Austen
in
ch 36 of
Pride and Prejudice
:
"... it was impossible not to feel that there was great duplicity on one side or
the other ... She put down the letter, weighed every
circumstance with what she
meant to be impartiality - deliberated on the probability of each statement -
but with little success.
On both sides it was only assertion. Again she read on.
But every line proved more clearly that the affair, which she had believed
it
was impossible that any contrivance could so represent as to render Mr Darcy's
conduct in it less than infamous, was capable of
a turn which must make him
entirely blameless throughout the whole."
Payen not
having proceeded by way of action and not having even asked for oral evidence,
must bear the consequence that it is not
feasible nor just to expect a judge to
decide this issue in Payen's favour on the papers.
I have spoken of the Payen code as being in general use. In fact Bovic tried
to pitch its case much higher, contending that it was
driven to its plagiarism
by necessity. There was no other way. Necessity is a strong word.
32
That the compulsion was not as great as claimed is proved by the fact that
Bovic has now largely desisted from its former practices
and is still in the
market. Temptation yes, convenience yes, advantage yes, but necessity no.
Thirdly, on the evidence there is no likelihood of deception. There is no
direct evidence that anyone has been deceived and a considerable
body of
testimony that customers and dealers will not be confused. Again Bovic's version
must be accepted. Indeed I understood Mr.
Puckrin to abandon reliance on
confusion at the start of his argument.
Fourthly, it has also to be accepted that Bovic's products are not inferior,
whatever Payen says and whatever substance there may
or may not be in its
contentions in this regard.
All in all I do not consider that unlawfulness has been established. In this
respect I agree with the decision of the court a quo
(whilst
33
disagreeing on copyright infringement). That court's decision is reported as
Payen Components SA Ltd v Bovic Gaskets CC and offers
1994 (2) SA 464(W).
Contract
It is suggested that an exchange of correspondence in 1988 and 1989 led to a
contractual undertaking by Bovic not to use the Payen
system. There was a demand
for such an undertaking by Payen's attorneys and a threat to take action when it
was not given. On 1 June
1989 Bovic's attorneys wrote, "We have been instructed
that our client has in fact complied with the various demands made by you,
without admitting that it was liable to do so, but our client is not prepared to
undertake to pay your client damages." Payen's attorneys
wrote back noting the
statement that Bovic had complied with Payen's demands and repeating its demand
for a written undertaking.
34
The matter rested there for some two years until the exchanges leading to
this litigation commenced. Nowhere in this correspondence
do I find an
acceptance of Payen's offer couched in the form of a demand. Payen may have been
entitled to feel that it had been deluded.
But in my opinion there was no
contract.
Condonation
Payen has applied for condonation of the late filing of a short volume five
of the record. There was no opposition other than on the
prospects of success
and the non-compliance was explained, with the result that the application was
granted subject to wasted costs
being paid by Payen, such costs to include the
costs consequent upon the employment of two counsel.
Costs
35
By reason of the withdrawal of the claims against the third to fifth
respondents in this court they are entitled to their costs in
both
courts.
This is a case warranting the employment of two counsel.
Order
In the result I order
that:
1.
The appeal is allowed, the first and second respondents are ordered
to pay the appellant's costs jointly and severally, and the appellant
is ordered
to pay the costs of the third, fourth and fifth respondents, all costs to
include the costs consequent upon the employment
of two
counsel.
2.
The order made by the court a quo
is set aside and replaced by the following:
"An
order is granted:
36
1. Interdicting the first and second respondents, their agents and employees,
from infringing the applicant's copyright vesting in
the applicant's identifying
code system set out in its catalogues and price lists by:
(a) (i)
reproducing, or
(ii) publishing, or
(iii) making an adaptation thereof, or any part thereof, in any material
form;
(b)
reproducing or publishing
or distributing whether in the course of trade or otherwise the first
respondent's price list dated 4 March
1991 (or any infringing version
thereof);
(c)
reproducing or publishing the
said identifying code
37
system (or adaptations thereof) which appear in the applicant's catalogues and
price lists on the first respondent's gaskets or gasket
sets or the wrappers in
which they are contained.
2. Ordering the first and second respondents jointly and
severally to pay the
applicant's costs, such costs to include
those consequent upon the employment
of two counsel.
3. Ordering the applicant to pay the costs of the
third, fourth
and fifth respondents, such costs to include the costs
consequent upon the employment of two counsel."
W P SCHUTZ JUDGE OF APPEAL CORBETT CJ) HEFER JA) STEYN JA) CONCUR FH
GROSSKOPF JA)