Title: Nevin Jiwani t/a Go Places Publishing v Yellow Pages Publishing and Marketing Limited
Venue: In the High Court at Nairobi
Case ID: No. 1178 of 2005
Authoring Judge: J. B. Ojwang
Date of Decision: 3rd February, 2006
Plaintiff(s): Nevin Jiwani t/a Go Places Publishing
Defendant(s): Yellow Pages Publishing and Marketing Limited
Keywords: Copyright Infringement
The plaintiff is the proprietor of Go Places Publishing magazine. The defendant is a directory magazine providing information on locations and addresses of various establishments. The plaintiff claims the defendant breached its copyright by publishing photographs and articles which are the original plaintiffs’ works. The defendant claimed it did not commit any copyright infringement. The defendant averred that the alleged infringing works were provided by the plaintiff and already printed for distribution and the present suit was actuated by malice.
The plaintiff sought injunctive orders to restrain the defendant from publishing the infringing works.
Whether the defendant had committed copyright infringement.
The court dismissed the plaintiffs’ application for an injunction. In arriving at its decision the court considered the non disclosure by the plaintiff of material facts. The plaintiff did not disclose that her husband was formerly a Managing Director at the defendants’ company. The present suit was as a result of a family fall-out which involved both the plaintiff and defendant.
The court held that the plaintiff did not act in good faith and could not be awarded any equitable remedy.
1. Nevin Jiwani v Going Out Magazine& Another HCCC No0. 336 of 2002
2. “Lilian S” v Caltex Oil (K) Ltd. (1989) LLR
3. Brink’s Mat Ltd. v Eldombe (1988) 3 ALL E.R.
4. Giella v Cassman Brown (1973) EA 358
The applicants were seeking orders of injunction against the defendant, in relation to certain specified courses of conduct namely:
Infringing the 1st and 2nd plaintiffs’ copyright work to all artwork in text and photographs in the publications – Go Places Magazine; Go Places Restaurant Guide and Having Fun Magazine;
Publishing, distributing or selling its 2005-2006 Yellow Pages Directory and its2005 - 2006 Yellow Pages Visitors Guide.
Parting with the possession, power, custody other than to the plaintiffs or their authorized agents) in relation to all documents, files, packing materials, cartons, invoices, receipts, articles, or equipment relating to the manufacture, sale or supply of the 2005-2006 Yellow Pages Visitors Guide.
Permitting of persons authorized by the plaintiff to enter the premises occupied by the defendant or Shivachi Road in Nairobi and any other premises occupied by the defendant, at any time between 9.00am and 6.00pm for the purpose of:-
i. Inspecting, recording and photographing all documents, files, invoices, receipts and accounts relating to the publication, possession, sale and supply of the 2005-2006 Yellow Pages Directory and Yellow Pages Visitors Guide;
ii. Removing into the custody of the advocates for the plaintiff any original documents as well as any item related to copyright infringement.
The application is premised on the following grounds;
a) That the plaintiffs are the publishers of Go Places Magazine, Go Places Restaurant Guide and Having Fun Magazine.
b) That the said magazines use special text and colour photographs in advertising restaurants, and these texts and photographs are prepared, designed and published by the plaintiffs and the same constitute artistic works which enjoy protection under s23 (2) of the Copyright Act (Act No. 12 of 2001), and the protection only expires in 2054;
c) That the plaintiffs enjoy the exclusive right to control the reproduction or sale of the artworks pursuant to s26 (1) of the Copyright Act.
d) That the defendant had the licence to use the copyrighted text and photographs from 2002-2004 but this arrangement was revoked in 2004.
e) That the plaintiffs have become aware that the defendant intends to publish its 2005-2006 Yellow pages directory and Yellow pages Visitors Guide in September 2005 using copyright photograph and text to belonging to the plaintiff, and they have sent warning letters to the defendant advising the defendant that this would be in breach of copyright as the earlier agreement was revoked and cancelled.
f) That without leave, absence or authorization the defendant has proceeded to publish and continues to publish, and now has commenced distribution of 2005-2006 directory and visitors guide containing artworks copied by scanning or reproduced from CD Rom diskettes from the plaintiffs and the same amounts to breach of copyright.
g) That the defendant needs to be prevented by injunction from further publication and distribution of the Visitors guide and directory as thee infringe on the plaintiff’s copyright;
h) That the defendant has approached the same advertisers who advertise the plaintiff’s magazine, and have offered to se advertisers services in the Yellow Pages Directory and Yellow Pages Visitors Guide for 2005-2006; that in that arrangement, the defendant has already taken, and is set to derive substantial income from the advertisements which are in breach of the plaintiffs’ copyright.
Evidence in support of the plaintiff’s application is in the affidavit sworn by the first plaintiff Nevin Jiwani on 28th September, 2005. She depones that she is a proprietor of Go Places Magazine (1st Plaintiff) and she is a principal director of Leisure and Travel Guide East Africa Limited (2nd Plaintiff), and has been authorized to make the depositions. She avers that the 1st plaintiff’s business name was registered in September, 1997 when the business of publishing magazines begun. Go Places Publication it is deponed was the publisher of several magazines (Go Places Magazine, Go Places Restaurant Guide, Having Fun Magazine) up until April, 2005 when the second plaintiff took over. It is averred that the 1st plaintiff is an established and reputable business in the tourism, travel, dining and entertainment circles in Kenya.
It is deponded that the first plaintiff had assigned to the 2nd plaintiff to be the copyright holder of all photographs, materials and designs in the several magazines with effect from April 2005; and that all Go Places Magazines carry a copyright warning in the following terms; Copyrights All photographs, materials, or designs of any nature description appearing in this guide are the sole and exclusive right of Leisure Travel Guides East Africa Ltd. Any reproduction therefore in any form, in whole or in part is strictly prohibited without written consent from the publisher.”
It is deponed that the plaintiff’s magazine involves heavy use of text and colour photographs in carrying out advertisements for restaurant advertisers who constitute an important part of the client base of Go Places Magazine. The said artworks in the magazine entail an intricate artistic process which includes: photography, development, design, artwork, colour separation, formatting and publishing. Such processes, it is averred, constitute artistic work, mental application, collation, creativity, arrangement and individual expression. Such work it is deponed has entailed the deployment of ingenuity and creativity the work and the work is written, recorded and reduced to material form. The deponent avers that he as the author of such works and being alive today, and by virtue of section 23 (2) of the Copyright Act 2001 subsists until at least the year 2054.
The deponent avers that an arrangement for use by the defendant of the artistic works has been made to run from 2002-2004; under the arrangement the defendant was authorised to use the 1st plaintiff’s artworks to carry out advertisements of restaurants, and the 1st plaintiff besides carried out advertisements of the defendants’ business – and such arrangements were made within the framework of a mutually benefiting barter scheme. In aid of that averment annexure NJ – 3 is included a copy of the 2004/2005 Yellow Pages Directory in which the defendant acknowledges the 1st plaintiffs’ artworks; and the said edition of the Yellow Pages Directory has free advertising for Go Places and reciprocally, the 1st plaintiff’s June/July 2004 Go Places Magazine carries free advertising of the defendant’s enterprises.
Is deponed that the barter arrangement between the 1st plaintiff and the defendant was terminated by the end of August 2004 the same therefore was not in place in 2005 and it did not subsists by the time the defendant reproduced the 1st plaintiff’s Hotel and Restaurant Guide 2005. It is averred that in September, 2005 the defendant advertised a forthcoming 2005/2006 Yellow Pages Directory in the Daily Nation newspaper – and the date set for the forthcoming publication was September, 2005. The plaintiff’s thereupon advised the defendants in writing letter dated 16th September, 2005 that the planned publications of the 2005/2006 Yellow Pages Directory would not the covered in the earlier barter deal. The deponent avers that these letter of warning he believes and on the basis of advice from his advocate constituted revocation of authority to use the copyright material as envisaged in s32 (4) of the Copyright Act, 2001.
The deponent avers that the defendant has infringed the plaintiff’s copyright by reproducing the plaintiff’s artistic works without leave, licence or authority in the following publications: Yellow Pages 2005-2006 Directory and 2005-2006 Yellow Pages Visitors Guide. The deponent gives details of the works infringed as follows:
i. The work Bahari Bistro reproduced in the defendant’s Yellow Pages Directory at p. 80 (005-2006 Yellow Pages Visitors Guide p. 24)
ii. The work Bangkok Restaurant Yellow Pages Directory at p. 424 (2005-2006 Yellow Pages Visitors Guide p. 81)
iii. The work Zebra Lounge - reproduced id p. 81 in the defendant’s Yellow Pages Directory at p. 424
iv. The work Hong Kong Restaurant - reproduced id p. 84 in the defendant’s Yellow Pages Directory at p.424
v. The work Kowloon Garden reproduced id p. 82 in the defendant’s Yellow Pages Directory at p.424
vi. The Mulaqaat Restaurant reproduced id p. 85 in the defendant’s Yellow Pages Directory at p.425
vii. The work Maestro’s reproduced id p. 85 in the defendant’s Yellow Pages Directory at p.426
viii. The work Café Cream - reproduced id p. 80 in the defendant’s Yellow Pages Directory at p.424
ix. The work Pavement Café and Club - reproduced id p. 86 in the defendant’s Yellow Pages Directory at p.426
x. The Pepper’s Restaurant - reproduced at id p. 86 in the defendant’s Yellow Pages Directory at p.426
xi. The work IL Castle - reproduced at id p. 87 in the defendant’s Yellow Pages Directory at p.426
xii. The work Osteria del Chianti - reproduced at id p. 88 in the defendant’s Yellow Pages Directory at p.427
xiii. The work Havana - reproduced at id p. 89 in the defendant’s Yellow Pages Directory at p.427
xiv. The work Le Rustique - reproduced at id p. 90 in the defendant’s Yellow Pages Directory at p.427
xv. The work China King - reproduced at id p. 82 in the defendant’s Yellow Pages Directory at p.424
xvi. The work La Dolce Vita - reproduced at id p. 88 in the defendant’s Yellow Pages Directory at p.426
xvii. The work Golden Spur - reproduced at id p. 93 in the defendant’s Yellow Pages Directory at p.428
xviii. The work Blue Ice - reproduced at id p. 87 in the defendant’s Yellow Pages Directory at p.426
It is alleged the defendant infringe and unless restrained by the Court intends to continue infringing the plaintiff’s copyright. It is deponed that the plaintiff’s have suffered injury loss and damage and will continue to suffer the same unless the defendant is restrained by injunction from continuing its impugned acts.
The deponent avers that the defendant has approached the same advertisers who advertise in the plaintiff’s magazines, and offered them a similar service. It is averred that the advertising restaurants in question are not aware the defendant does not have legal authority or capacity and has no assignment, lease, licence or authority as envisaged under the Copyright Act 2001.
The deponent avers that the defendant has taken payments from various restaurants to advertise for them and has gained substantial income from acting in breach of plaintiff’s copyright and while also unfairly taking the plaintiff’s own business clients. It is deponed that the plaintiff’s have suffered substantial loss, injury and damage to their core business, an enterprise which however is not the core business of the defendant.
The deponent avers that the loss suffered by the plaintiff is not compensable in damages.
Mansurali Jiwani a director of the defendant swore a replying affidavit on 2nd Nov 2005. This long affidavit of 52 paragraphs can be summarized into the following key components.
It is averred that the defendant company was incorporated as a family business in 1986 with the deponent and his brother, Mansoor Jiwani as his directors. The shareholders of the business were the deponent (Mansurali Jiwani), Mansoor Jiwani, the deponent’s wife Amina Jiwani and the plaintiff Nevin Jiwani married to (Mansoor Jiwani).
It is averred that the first publication of the Yellow Pages was 1987 and there have been eight other editions – including those of 2002, 2003, 2004 and 2005. The deponent was until August 2004 the Marketing Director while Mansoor Jiwani was the Managing Director.
The deponent deposes that in 1997 his brother (Mansoor Jiwani) without his knowledge lunched a rival publication – Go Places Entertainment Guide. This was an initiative between Mansoor Jiwani and his wife, Nevin Jiwani. It is deponed that Go Places Publications, which passed off as the property of Nevin Jiwani alone targeted the same market as that claimed by the defendant’s Yellow pages. In 200 a search at Companies revealed that Mansoor Jiwani and Nevin Jiwani were in partnership, in Go Places Publications. It is deponed that an agreement was reached between the parties, as an arrangement for the resolution of the conflict, that Go Places Publications was for all intents and purposes to be treated as a publication of the defendant; and in pursuance of this accommodation a joint marketing campaign was undertaken. On that basis the deponent averred that Mansoor Jiwani managed the layout of the 2002-2003 edition; 2003-2004 edition; and the 2004-2005 edition. It was agreed too that Go Places publications were to give the defendants publications as much publicity in their own publications as was equivalent to the cost they would have incurred had they had to position advertisements in the defendant’s publications. The deponent averred that the said arrangement between the parties was to be accounted for: “as a measure of control the parties were to submit invoices to each other reflecting each others’ obligations and to enable them offset their indebtedness; and to date Go Places is indebted to the defendant for the sum of K.Shs. 8,977,740/=.
The deponent averred that it turned out Mansoor Jiwani and Nevin Jiwani was not prepared to have Go Places Publication as part of the defendant’s operations. And so in August 2004 some sort of fall out took place. It was agreed that the Managing Director would take extended leave from 2004-2006, and he was to be paid a monthly retainer which would be paid in dividends in advance; and that he would not be involved in any activity that would be construed as competition or amounting to a conflict of interest between himself and the defendant company. The terms of the agreement were carried in a memorandum of understanding dated 25th August 2004 and signed by Mansurali M. Jiwani, Mansoor Jiwani and witnesses by Harrison Hiuhu.
The deponent avers that the defendant duly complied with the memorandum of understanding but in March 2005 the existence of a new company came to his attention Leisure & Travel Guides East Africa Ltd, the 2nd plaintiff. This new company has been publishing the Go Places Magazine on behalf of the 1st plaintiff. A search at the Companies Registry that Mansoor Jiwani and Nevin Jiwani and two of their sons were shareholders of the new company.
The deponent held that the suit herein was actuated by malice issuing from the removal of the first plaintiff as Managing Director of the defendant company.
It is deponed that the photographs which are the subject matter of this dispute, had been brought to the defendant’s offices by Mansoor Jiwani who had been holding the position of Managing Director of the Defendant and who was involved in three companies at the same time; and the deponent believed these photographs were being used as part of the accommodation of diffusing conflicting interests which had been reached in July 2004. The deponent believes that the plaintiffs, through Mansoor Jiwani had surrendered their rights of copyright to the defendant. The defendant had also been under the assumption that until the plaintiff’s obligations had been cleared; the defendant was at liberty to use the photographs; and Mansoor Jiwani was aware that the defendant had used the 2005-2006 directory but had not raised objections.
The defendant averred that the publishing process, such as that wherein the defendant is engaged is an continuous process involving several active steps – data collection, sale of advertising space, artwork preparation and client approval, collection, classification, alphabetization, layout – which cannot be broken at any stage. It was averred that Mansoor was all along aware of the content both the Yellow Pages and Visitors Guide, as he was until December allowed access to the defendant’s premises.
The defendant believes that any loss such as the plaintiff may suffer in this matter can be compensated by damages; and he avers that the defendant is a successful enterprises with the capacity to pay damages if the court were to order for these to be paid. He averred that the defendant a company employing 16 full time employees and 12 part-time employees, would suffer irreparable loss, and would be exposed to claim for breach of contract, if an order of injunction was granted as prayed.
The deponent that the Mansoor Babu Jiwani and his wife Nevin Jiwani have conceded that they had voluntarily and under mutual agreement given the defendant CD-ROM containing the artworks alleged to have been used wrongfully by the defendant. It is deposed that Mansoor Jiwani had perused and approved the 2005-2006 edition of the defendants’ publication.
When this matter came up before me for hearing on 31st October, 2005 the learned counsel Mr. Ojuro represented the plaintiffs/applicants while Mr. Singh represented the defendant.
Mr. Ojuro did not begin from the history of the relationship between the parties, which has been set out in the replying affidavit by Mansurali Jiwani, but instead went direct into alleged infringement of intellectual - property wrongs being attributed to the defendant. According to the leaned counsel certain elements of the intellectual and artistic property namely photography, design, development, artwork, colour separation, formatting, publishing belong to the first plaintiff and they have now been properly annexed by the defendant and now they would be subject to injunctive orders. Such intellectual property elements Mr. Ojuro submitted are protected by the copyright Act 2001 and specifically section 22 (1) (c) thereof. Mr. Ojuro focused his submission on the personal resources that have gone into the making of the said intellectual works; collection, arrangement, creativity and individual expression.
Mr. Ojuro was not concerned with the apparent family fall out which clearly has spawned competing business ventures, nor the fact that an attempt had been made to accommodate disgruntled family members, and to keep the competing businesses in a state of compromise and harmony rather than invoke an arrangement and a licence under which the defendant had benefited from the plaintiffs’ intellectual property thenceforth had automatically become unauthorized, illegal and wrongful. Learned Counsel so a neat break, from the time of the defendant’s lawful use of the said intellectual property to the period of alleged illegalities - the point of separation being the alleged revocation of licence. It is, I think the validity or invalidity of this claim of a peremptory decision of revocation of licence that will determine the outcome of this application. Had the defendant lawfully employed the 1st plaintiffs’ intellectual property? How did the defendant come to make use of the intellectual property? Who gave the intellectual property to the defendant and for what purpose? Did the plaintiff know that their intellectual property was being used by the defendant? Was the use of that intellectual property something that could be dropped off, at a single protest of the plaintiffs? If the plaintiffs’ protested at the use of the intellectual property by the defendant, did such protest amount to a revocation? And would such protest amount to an expression of revocation of a licence? The submissions of the counsel are to be assessed in the context of the foregoing questions.
Mansurali Jiwani in his replying affidavit did not deny that the defendant had used in its publications intellectual property items which belonged to the first plaintiff but he averred that such use of the plaintiffs’ intellectual property was wholly innocent, and had indeed the approval, acknowledgment and active participation of the 1st plaintiff who was also a director and shareholder of the second plaintiff.
O those grounds and taking into account the family context of the rival businesses enterprises, the deponent painted a picture of coalescence of operations which would not, at least at this stage, and especially with regard to the Yellow Pages publications for 2005-2006, be consistent with a claim for of infringement of copyrights.
The foregoing vital point, however, is not taken up by learned counsel Mr. Ojuro who laid emphasis on benefits which the defendants is believed to have derived at the expense of the plaintiffs by using plaintiff’s copyright material. Mr. Ojuro contended that the plaintiffs were entitled to an injunction, in accordance with s. 35 (4) of the Copyright Act 2001.
Learned counsel went ahead to cite as authority in support of his clients’ claim the High Court decision (Ringera J – as he then was) in Nevin Jiwani v Going Out Magazine & Another, HCCC No. 336 of 2002. Among the passages in that decision cited by counsel was one on governing principles of law such as this:
“The Law in this matter is not in dispute. Under both the old and the new copyright law as contained in the Copyright Act (Act No. 12 of 2001) respectively, no artistic or literary work would be eligible for copyright unless sufficient knowledge and skill had been expended on the making of such a work to give it some original character. And any person who copies or otherwise reproduces the work of another in which copyright subsists is guilty of infringement of that persons copyright. And from the cases referred to……….. it would appear that the most efficacious remedy is an injunction.”
From the above statements of the legal position, and from the non-denial of the claim that the plaintiffs’ works had been reproduced in the defendants’ Yellow Pages publications learned counsel proceeded to urge, on the basis of the authorities on interlocutory injunctions (Giella v Cassman Brown & Co. Ltd 1973) EA 358 ; R. Kuloba Principles of Injunctions) that the plaintiff’s prayers be allowed.
Learned Counsel Mr. Singh presented the respondents case on the basis of the Affidavit of Mansurali Jiwani 2nd November, 2005 and of the defendant’s grounds of opposition dated 5th October, 2005.
It was contended that the plaintiff’s suit was for several reasons void, and hence it could not provide cover of validity for the instant application. Counsel objected to the description of the plaintiff in the amended plaint as proprietor of the 2nd plaintiff for the reason that she (1st plaintiff) was not a sole proprietor, and the description appeared designed to conceal the identity of Mansoor Babu Jiwani who was also a proprietor of the 2nd plaintiff and who had been Managing Director of the defendant company up to the time when the makings of the instant dispute emerged. It was urged that although the 1st plaintiff could properly have effected amendment to the plaint, under Order VI A (1), before close of pleadings the addition of a new party was a different matter and an application ought to have been made under Order 1 rule 10 of the Civil Procedure Rules. Such an application could under Order I rule 10 rule 16 could have been made orally in court or by Summons in chambers. Mr. Singh submitted that the addition of the 2nd plaintiff was unprocedural Counsel identified another defect in the plaint one of the plaintiffs had not sworn the verifying affidavit accompanying the plaint. So the learned counsel urged the court to strike out the suit, by virtue of the provisions of Order VII (3) of the Civil Procedure Rules.
Mr. Singh disputed the veracity of the claim by Nevin Jiwani that she was the author of the copyright material at the center of the dispute; only a partnership and not this one litigant could claim ownership of the work.
Learned counsel submitted that by the plaint the 1st plaintiff was claiming the disputed works on the basis of ownership; and the 2nd plaintiff was claiming on the basis of assignment. Such a picture he contended was contradicted by the supporting affidavit in this application – and so in these circumstances the pleadings must prevail; and the effect was that the copyright was vested not in Nevin Jiwani but in partnership of her and her husband Mansoor Babu Jiwani. If the copyright did not vest in Nevin Jiwani individually, it was submitted, then she lacked locus standi to bring a suit. By definition learned counsel urged, a partnership comprised of two or more people. It was urged that if the ownership of the copyright vested in a partnership, the Nevin Jiwani could not properly claim to have assigned the same to the defendant.
This was a case in which it was submitted the affidavit evidence and the pleadings did not run in tandem; and on the authority of the High Court (Ondeyo J ) decision on Eric Kibet Koros Bomett & Another v National Bank of Kenya Ltd & Another HCCC No. 1514 of 2001 the application would not lie in a prerequisite amendment to the plaint. The claim in the plaint that the copyright was assigned to the 2nd plaintiff was denied in the replying affidavit; and so, it was submitted, there was a duty resting on the 1st plaintiff (Evidence Act (Cap 80) ss 107-110) to show the existence of such an assignment.
Mr. Singh submitted that the 1st plaintiff had not legally surrendered or assigned the copyright; and that by s. 33 (3) of the Copyright Act, assignment could only take place in writing - and there was no evidence of such.
Counsel submitted on the basis of evidence in the replying affidavit, that a person on the plaintiff’s side in the suit is the brother of the chairman in the defendant company, and the suit is being brought in bad faith in the after-math of a fall-out among the family members of the defendant company. Counsel submitted that it is the 1st plaintiff’s husband Mansoor Babu Jiwani who as (then) managing director of the defendant had allowed the defendant to use the images which are now claimed to be copyrights infringed by the defendant; Mansoor Jiwani had approved the copyrights for the artworks for the Yellow Pages Directory; he also signed letters of guarantee to allow a bank to fund the publication now south to be inhibited. Mansoor Jiwani has now been removed from Managing Director of the defendant company, counsel submitted, and so he had motive to destroy the defendant business.
Mr. Singh submitted that the instant application if it succeeded would have endorsed impunity who for a company director contrary to law engaged in business that entailed conflicting interests with the defendant company which he had been serving, as a director. While being a director of the defendant company, the director in question established with his wife a different business, which operated essentially in the same kind of business as the defendant. The target market of the plaintiff’s new magazines and of the defendants Visitors’ Guide was the same.
Mr. Singh submitted that it was improper for the plaintiff to seek orders of injunction against the defendant’s publications, because the plaintiffs very well know that the publication had already been printed and released; so the prayer for an injunction had no basis in law.
Learned counsel submitted that the plaintiff did not merit grant of injunction as prayed because there was material non-disclosure in their application. On what account did the application fail to disclose the name of a crucial person in the litigation: Mansoor Babu Jiwani? Why did the plaintiffs fail to disclose the family-business character of the defendant company? Why did the applicants not disclose the Mansoor Babu Jiwani had personally approved the works now claimed to be copyright in respect of which an order of the injunction is now being sought? Learned counsel submitted that the instant application was a veritable one of a party attempting to steal a match on an opponent, even as that party craved the discretion of the court to grant an equitable remedy against the opponent.
Learned relied on the Court of Appeal decision, “Lilian S” v Caltex Oil (K) Ltd LL. R. 1655 (CAK) (at p.21) 9quoting from Brinks’ Mat Ltd v Eldombe  3 ALL ER., 188 Gibson L. J. at p. 192):
“In considering whether there has been relevant non disclosure and what consequence the court showed attach to any failure to make a full and frank disclosure, the principles relevant to the issues in these appeals appear to me to include the following: (i) the duty of the applicant to make a full and fair disclosure of the material facts; (ii) the material facts are those which it is material for the judge to now in dealing with the application as made; materially to be decided by the court and not to be decided by the applicant or his legal advisers; (iii) the applicant must make proper inquiries before making that application. The duty of disclosure applies not only to any material facts which he could have known if he had made such inquiries; ( iv) the extent of the inquiries which will be held to be proper, and therefore necessary, must depend on all the circumstances including: (a) the nature of the case which the applicant is making when he makes the application; (b) the order for which the application is made and them probable effect of the order on the defendant, and (c) the degree of legitimate urgency and the time available for making of inquiries; (v) if material non-disclosure is established the court will be astute to establish that a plaintiff who obtains an ex parte injunction without full disclosure is deprived of any advantage he may have derived by that breach of duty; (vi) whether the fact not disclosed is of sufficient materiality to justify or require immediate discharge of the order without examination of the merits depends on the importance of the fact to issues which were to be decided by the judge on application. The answer the question whether non disclosure was innocent, in the sense that the fact was not known to the applicant or that its relevance was not perceived, is an important consideration but not decisive by reason of the duty on the applicant to make all proper inquiries and to give careful consideration to the case being presented; (vii) finally, it is not every omission that the injunction will be automatically discharged. A locus poenitentiae (chance of repentance) may sometimes be afforded. The court has discretion, notwithstanding proof of material non disclosure which justifies or requires the immediate discharge of the ex parte order, nevertheless to continue the order or make a new order on terms.”
Learned counsel also relied on I.S. Goldrein, His Honour Judge Kenneth Wilkinson, His Honour Judge Kershaw, T. Gibson, Commercial Litigation: Pre-emptive Remedies 3rd ed. (London Sweet & Maxwell, 1997), p. 63:
“Suppression of a material fact may also taint the hand s of an applicant for equitable relief. This was the position Ross v Boston  W.N. 55, and led to the ex parte injunction”
Mr. Singh submitted that the operations between the plaintiff and defendant in relation to claims of copyright had been regulated by a barter arrangement the value of which could be quantified, and hence amenable to recompense through damages, in a proper case, hence the prayer for an injunction was inappropriate.
Learned counsel went on to contest that the balance of convenience rested in favour of the plaintiff rather than the defendant. The defendnats’ was the publication of directory and this had a long gestation period marked by concrete and burdensome steps – steps all of which up to this stage had already been taken, and with the apparent approbation of Mansoor Babu Jiwani, the spouse of the 1st plaintiff herein.
The defendant has not disputed that it is not the owner of the copyright material which it has used in its publications 2005-2006 Yellow Pages Directory and 2005-2006 Yellow Pages Visitors Guide. But the defendant argued that this is not a fit case for the equitable remedy of injunction; because the defendant is not guilty of a blatant infringement of intellectual property rights. It was the defendants position that the defendant company was always a family enterprise and that the plaintiffs had been part of the family business setting.
I have noted that, about this highly important contention which is based on uncontested evidence the plaintiff has been distinctly silent.
It is clear from the evidence that the Mansoor Babu Jiwani the husband to the 1st plaintiff Nevin Jiwani, had been a leading director of the defendant company; and only after his leadership in the defendant company did he and Nevin Jiwani initiate the claim of copyright infringement against the defendant. It is also not contested that while Mansoor Babu Jiwani served as Managing Director of the defendant company, it is none but he who introduced and approved the use of the now-disputed copyright material into the defendant’s publication project for the 2005-2006 Yellow Pages Directory and 2005-2006 Yellow Pages Visitors Guide. How can Mansoor Babu Jiwani now through his wife Nevin Jiwani move the court, pleading that their intellectual property rights have now been annexed by the defendant? I think is not possible, especially in relation to the 2005-2006 editions of the defendant’s publication. I believe it is a general principle of law that volenti non fit injuria.
I would rely on the two decisions considered earlier Lilian S” v Caltex Oil (K) Ltd LL. R. 1655 (CAK) (at p.21) 9quoting from Brinks’ Mat Ltd v Eldombe  3 ALL ER., to relate the principle that any party who moves the court for an equitable remedy must first address himself to vital disclosures to make; otherwise such a party does not come with clean hands and would be held disentitled to equitable remedies.
The applicants did not disclose the family context of the defendant’s enterprise; they failed to disclose that Nevin Jiwani was the wife of Mansoor Babu Jiwani; they did not disclose that Mansoor Jiwani before being discontinued as Managing Director of the defendant company had positively approved the use of the now contested copyright material for the defendants’ 2005-2006 publications.
Moreover the applicants had nothing to say about the barter deal which they had had with the defendant, touching on the use of the plaintiff’s copyright material. Quite clearly the barter arrangement can be transcribed in pecuniary terms; and any damage caused to the plaintiff is compensalable by an award of damages.
To me it is velar that the balance of convenience rests in favour of the defendant, who relied on a certain situation of holding out by Mansoor Babu Jiwani within the family enterprise which was the defendant, undertook a series of publication steps which have now attained fruition with the publication and distribution of the 2005-2006 Yellow Pages Directory and 2005-2006 Yellow Pages Visitors Guide.
Given the family context of the instant dispute which comes through so clearly in the evidence, and which is not denied by the plaintiffs, it is clear to me that this application has not been brought in good faith and therefore does not merit equitable remedies. It is my view also that the many authorities relied upon by learned counsel for the plaintiffs do not respond to the circumstances in dispute. While it is all very well to state the protective principles of intellectual property law, it has to be remembered that the applicability of these principles rests on the facts of a particular case. The facts of the case show clearly that the said principles of law, are being invoked, with respect, in vain.
Accordingly I dismiss the plaintiff’s application by Chamber summons dated 28th September, 2005 with costs to the defendant.
Title: Nevin Jiwani t/a Go Places Publishing v Yellow Pages Publishing and Marketing Limited