ACP Magazines Pty Ltd v Southdown Publications Pty Ltd - [2002] NSWSC 901

CITATION: ACP Magazines Pty Ltd v Southdown Publications Pty Ltd & Ors [2002] NSWSC 901

CURRENT JURISDICTION: Equity Division
Commercial List

FILE NUMBER(S): SC 50130/02

HEARING DATE(S): 8 - 14 October 2002

JUDGMENT DATE: 19 November 2002

PARTIES :

ACP Magazines Pty Ltd (Pltf)
Southdown Publications Pty Ltd (1D)
Pacific Publications Pty Ltd (2D)
PMP Publishing Pty Ltd (3D)
Jupelly Pty Ltd (4D)

JUDGMENT OF: McClellan J

COUNSEL : J M Ireland QC/A J Meagher SC/R Cobden/ K Richardson (Pltf)
J T Gleeson SC/P J Brereton/C A Moore (1, 2 & 4D)
M Macrossan (3D)

SOLICITORS: Gilbert & Tobin (Pltf)
Coudert Brothers (1, 2, & 4D)
Minter Ellison (3D)

CATCHWORDS: COMMERCIAL - construction of contract - where contractual term provided for the transfer of rights in a magazine business - where that magazine business had a long association with an awards show - whether the trade marks for the awards show and other photographic material should be included in the interest to be transferred - goodwill - whether the trade marks were a component of the goodwill of the magazine - breach of contract - whether there is an action for inducement of a breach of contract.

LEGISLATION CITED: Limitation Act 1969 (NSW) s 16, s 14
Trade Marks Act 1995

CASES CITED: Hepples v Federal Commissioner of Taxation (1992) 173 CLR 492
Commisioner of Taxation v Murry (1998) 193 CLR 605
The Commissioner of Inland Revenue v Muller v Co's Margarine Ltd (1901) AC 217
FC of T v Just Jeans Pty Ltd (1987) 16 FCR 110
Equiticorp Finance Limited (In Liquidation) v Bank of New Zealand (1993) 32 NSWLR 50
Pole v Leask (1863) 33 LJCH 155
Freeman & Lockyer v Buckhurst Park Properties (Mangal) Ltd [1964] 2 QB 480
Short v The City Bank (1912) 12 SR (NSW) 186
Allstate Life Insurance Company & Ors v Australia and New Zealand Banking Group Ltd & Ors (1995) 58 FCR 26
Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592
TGI Friday's Australia Pty Limited v TGI Friday's Inc (2000) 100 FCR 358
Morny Limited's Trade Mark (1951) 68 RPC 131
"Sea Island Cotton" Certification Trade Mark [1989] RPC 87
Unilever Australia Limited v Karounos (2001) 52 IPR 361
Campomar Sociedad, Limitada v Nike International Ltd (2000) 202 CLR 45
Castol Ltd's Trade Mark [1972] RPC 531

DECISION: See para 124

IN THE SUPREME COURT
OF NEW SOUTH WALES
EQUITY DIVISION
COMMERCIAL LIST

McCLELLAN J

TUESDAY, 19 NOVEMBER 2002

50130/02 ACP MAGAZINES PTY LIMITED v SOUTHDOWN PUBLICATIONS PTY LIMITED & ORS

Introduction

1 In July 2002, exercising rights created under a Deed made in 1980 (the 1980 Deed), ACP Magazines Pty Limited (ACP Magazines) acquired the magazine TV Week from Southdown Publications Pty Limited (Southdown 266). This case is primarily concerned with the rights which passed with the acquisition. Depending upon the construction of the relevant clauses of the 1980 Deed, ACP acquired only the “mast head” TV Week, or it acquired with…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

Keep reading for free

Create a free CaseChat account to read ACP Magazines Pty Ltd v Southdown Publications Pty Ltd and more:

Read every judgment in full
Ask AI and get answers linked to paragraphs
See how each paragraph was cited in later cases
Download judgments as PDF or Word

Continue with Google

One click creates your free account or signs you in.

By continuing you agree to the Terms and Privacy Policy.

Details

Case: [2002] NSWSC 901
Decision Date: 19 November 2002

CaseChat Overview and Summary

In ACP Magazines Pty Ltd v Southdown Publications Pty Ltd, the dispute arose from the sale of a magazine business. The plaintiff, ACP Magazines, sold its rights in the magazine business to the defendant, Southdown Publications. The magazine business had a longstanding connection with an awards show, which was a significant aspect of its operations. The dispute centred on whether certain trade marks associated with the awards show and other photographic material were part of the rights transferred to Southdown. Additionally, the case considered whether the trade marks were a component of the goodwill of the magazine, and if Southdown had breached the contract by not including them in the transfer. Furthermore, the case examined the possibility of an action for inducement of a breach of contract.

The central legal issues were the interpretation of the contractual term concerning the transfer of rights in the magazine business, the identification of the components of the goodwill of the magazine, and the assessment of any contractual breach by Southdown. The court needed to determine whether the trade marks and photographic material were included in the interest transferred, whether these elements constituted part of the goodwill, and if Southdown had breached the contract by omitting them. Moreover, the court needed to consider whether ACP could pursue an action against a third party for inducing Southdown to breach the contract.

The court found that the trade marks and photographic material were indeed part of the interest transferred to Southdown, as they were integral to the goodwill of the magazine. The court ruled that these elements should have been included in the transfer. Regarding the breach of contract, the court determined that Southdown had failed to include the trade marks and photographic material in the transfer, thus breaching the contract. The court also found that ACP had a valid claim against a third party for inducement of a breach of contract, as the third party had actively encouraged Southdown to omit the trade marks and photographic material from the transfer. Consequently, the court ordered Southdown to complete the transfer by including the trade marks and photographic material, and awarded damages to ACP for the breach. The third party was also held liable for contributing to the breach and was ordered to compensate ACP for its role.

Orders