Fax Directories (Pty) Ltd v SA Fax Listings CC

• Jurisdiction: South Africa
• Judge: Hugo J
• Judgment Date: 17 May 1989
• Citation: 1990 (2) SA 164 (D)
• Hearing Date: 17 April 1989
• Court: Durban and Coast Local Division

Hugo J:

The applicant company seeks the following relief on motion:

'A.1

Interdicting and restraining the respondent from:

1.1

F infringing the applicant's copyright in and to the compilation of names, addresses and telefax numbers styled "The Pink Pages Fax Directory", "The Pink Pages Fax Book" (hereinafter in para 1 referred to as "the directory") by doing or causing any person to do in the Republic of South Africa any act which the applicant, being the author of the directory has the exclusive G right in terms of s 6 of the Copyright Act 98 of 1978, to do or to authorise the doing of;

1.2

distributing, advertising, selling or offering for sale copies of the 1987/88 and 1989/90 editions of the "SA Fax Listings Directory";

1.3

distributing, advertising, selling or offering for sale any copies of the 1989/90 "SA Classified Fax Listings Directory", or H "SA Fax Listings Directory" reprint which the respondent has announced its intention of publishing during early 1989;

A.2

requiring the respondent to deliver up to the applicant for destruction all copies of the 1987/88, 1988/89 editions of the "SA Fax Listings Directory" as also the proposed 1989/90 "SA I Classified Fax Listings Directory" or "SA Fax Listings Directory" which are in the possession or under the control of the respondent;

A.3

requiring the respondent to pay the costs of this application.

B

Alternatively to A above:

B.1

a temporary interdict in terms of A.1 above pending the determination of an action to be instituted by the applicant J against

Hugo J

A the respondent in this honourable Court within 15 days of the date of this order for the relief set forth in A.1 to 3 above and in addition thereto for damages;

B.2

granting that the costs of this application be costs in the cause of the said action.'

At the outset Mr Magid SC, for the applicant, said that he persisted in B seeking final relief but that, if I could not find in his favour on the basis set out in Stellenbosch Farmers' Winery Ltd v Stellenvale Winery (Pty) Ltd 1957 (4) SA 234 (C) and Plascon-Evans Paints Ltd v Van Riebeeck Paints (Pty) Ltd 1984 (3) SA 623 (A) at 634H - 635C, he would move for a temporary interdict.

C Mr Levinsohn SC for the respondent objected to this approach and maintained that an irresoluble conflict of fact had arisen on the papers and that the applicant should have applied in initio for the matter to be referred to evidence. For this submission he relied on a line of cases of which the most famous is probably Di Meo v Capri Restaurant 1961 (4) SA 614 (N), the effect of which is that an application for the referral to evidence

D 'should be made in unequivocal terms and should not be made conditional upon the Court coming to the conclusion after hearing and considering argument in the whole case, that a conflict cannot be resolved without hearing evidence'.

This was a judgment by Fannin J in an application for leave to appeal. When considered on appeal this aspect of the judgment was touched upon E only in passing and not with apparent approval (see Goldberg and Another v Di Meo 1960 (3) SA 136 (N)).

The correctness of the decision in Di Meo's case has been questioned by some (see for example Uniform Rules of Court by Nathan, Barnett and Brink 3rd ed at 50) and has recently been dissented from in Marques v Trust Bank of Africa Ltd and Another 1988 (2) SA 526 (W) in which case F Morris AJ exhaustively examined the authorities in this regard and came to the conclusion that:

'If counsel believes that the papers entitle him to an order or disclose a valid defence, he is entitled to persist in his application without being precluded, when a dispute becomes apparent and incapable of resolution on the papers, from asking for evidence viva voce. Counsel G should not be saddled with the burden, at the expense of his client, of deciding the very question which the Court must decide.'

To the extent that the Di Meo case purports to lay down an inflexible rule of law, I must respectfully disagree with it. I entirely and respectfully agree with the views of Morris AJ in the Marques case.

H Brave indeed is the advocate who will be prepared to gamble that the Court shares his view of the law and of the facts. This means counsel will almost invariably opt for the safer but more expensive course of asking that the matter be referred to evidence. In so doing he would still be able to argue the legal point but at what cost to his client, both in respect of time and money.

I There are, it seems to me, cases where the legal issues are so crisp and so far removed from the conflict of fact that it would be fair to both parties to allow argument thereon in initio. If the applicant loses the legal battle he should not then be penalised for having tried to save the costs involved in hearing viva voce evidence. (Provided of course that his efforts were bona fide and well considered and not J merely frivolous.)

Hugo J

A In my view this is a case in which counsel was justified in arguing the legal point in initio and making his application for reference to evidence dependent upon my not finding in his favour.

Mr Levinsohn also applied from the Bar to hand up, as part of the respondent's answering papers, an additional or supplementary affidavit by one Lesley Ann Devine, who had also deposed to an affidavit in the B papers already filed.

Mr Magid objected to this procedure and pointed out that no reasons for the lateness had been advanced nor indeed had any reasons been advanced at all for its admission.

I deferred a decision on its admission until argument had been heard C when I could see whether justice demanded its inclusion in the evidential matter before me. If its admission seemed essential to the respondent's case I would possibly have admitted it. It turned out not to be and indeed received but scant attention during argument. It was, it seems, a further exercise in showing the extent of the novel matter D in the respondent's publications. I do not think that the affidavit really advances the respondent's case and in the absence of reasons for its late filing I decided to reject the affidavit.

So much for the preliminaries.

The applicant's case is based upon the following facts.

In about 1986 the applicant's deponent, one Dixon, conceived the idea E of compiling a directory of users of telefax equipment. He set about obtaining the necessary information. This he did by obtaining lists of purchasers from distributors of such equipment and also by canvassing any such purchaser telephonically. Applicant company was incorporated in 1986 to publish this work.

F By October 1986 sufficient information had been obtained to publish the first edition of the directory called 'The Pink Pages', ostensibly for the years 1986/1987. These directories will be referred to as 'The Pink Pages'.

In September of the following year the next edition was published for 1987/1988. This was a considerably thicker publication and contained, in G addition to the names in the first edition, also new ones obtained in the interim.

In July 1988 the third edition of 'The Pink Pages' appeared, this time for 1988 only. This again was a thicker volume than the previous one and contained not only the alphabetical list published in the previous editions but also additional names obtained in the interim. A so-called H 'classified section' containing information of telefax users by trade or profession was included, starting for example with the heading 'Abrasives' and going on to 'Accountants and Auditors' and so forth.

The work that goes into these publications, in particular the gathering of the necessary information, is all done by employees or I staff of the applicant.

The directories were fairly widely disseminated throughout southern Africa.

Thus far these facts are not really in dispute. The respondent's deponent claims to have no knowledge of many of them and therefore does J not admit them. It is plain from the Plascon-Evans case supra that such

Hugo J

A ostensible disputes are not true disputes of fact and, in these instances at least, the applicant's version may be accepted.

Based on the facts above the applicant avers that it is the author (within the meaning of Act 98 of 1978) of the three Pink Pages editions and owns the copyright therein. This allegation is in dispute and I shall return to it later. B

In order to prevent or at least to detect infringement of its copyright the applicant hit on the idea of inserting in the directories a number of fictitious entries. These consisted of a false name and either a false address or the applicant's address or the address of friends of the applicant's deponent.

C Each edition of 'The Pink Pages' contains a notice to the following effect:

'Copyright

No reproduction of this directory in whole or in part is allowed without the express permission of Fax Directories (Pty) Ltd. Legal proceedings will be instituted against anyone reproducing material without the D permission of the publisher.'

In addition each edition contains the following publishing information:

'Publication of the Pink Pages

This directory is published by Fax Directories (Pty) Ltd PO Box 53170 Troyeville 2139 Johannesburg....'

In the first edition it is said that the directory has been 'compiled E and published' by the applicant while the further editions (in the English version only) claim that it was so 'published'. In the Afrikaans version of the notice the claim throughout is that the directory was 'opgestel en gepubliseer' by the applicant.

There is no reference to these notes or notices in the affidavits but F at the beginning of the hearing copies of all the relevant directories, both the applicant's and respondent's, were placed before me. I asked counsel if I was entitled to look at these notes and...