Business Sampler (WA) Pty Ltd & Morgan, Janette Lynn & Anor
[1995] FCA 1024
•14 Dec 1995
IN THE FEDERAL COURT OF AUSTRALIA
VICTORIA DISTRICT REGISTRY
GENERAL DIVISION No VG 736 of 1995
BETWEEN:
BUSINESS SAMPLER (WA) PTY LTD
First Applicant
-and-
JANETTE LYNN MORGAN
Second Applicant
-and
BRO CORP PTY LTD
Respondent
Coram: Olney J
Place: Melbourne
Date: 14 December 1995
DRAFT MINUTE OF ORDER AND DIRECTIONS
THE COURT ORDERS THAT the applicants' motion of which notice was filed on 27 November 1995 be adjourned and heard at the same time as the trial of the proceeding with costs reserved.
AND DIRECTS THAT in relation to the respondent's motion of which notice was filed on 30 November 1995 be adjourned to
8 February 1996 with costs reserved.
NOTE:Settlement and entry of orders is dealt with in
Order 36 of the Federal Court Rules.
IN THE FEDERAL COURT OF AUSTRALIA
VICTORIA DISTRICT REGISTRY
GENERAL DIVISION No VG 736 of 1995
BETWEEN:
BUSINESS SAMPLER (WA) PTY LTD
First Applicant
-and-
JANETTE LYNN MORGAN
Second Applicant
-and-
BRO CORP PTY LTD
Respondent
Coram: Olney J
Place: Melbourne
Date: 14 December 1995
REASONS FOR JUDGMENT
In this proceeding the applicants seek relief in relation to an alleged breach of copyright and for alleged contravention of ss 52, 53(a), (d), (c) and 55 of the Trade Practices Act.
On 5 September 1995 Jenkinson J heard an application for an interlocutory injunction to prevent the respondent infringing the alleged copyright until the trial of the proceeding. After hearing argument Jenkinson J concluded that there was an arguable case but declined to make any order upon the respondent giving certain undertakings as to its future conduct pending trial. So far as presently relevant Jenkinson J made the following orders:
UPON THE RESPONDENT BY ITS COUNSEL UNDERTAKING
To deliver up within 7 days into the possession of the Applicant's solicitors all voucher backing sheets containing the words set out in exhibit JLM4 or exhibit JLM8 to the Affidavit of Janette Lynn Morgan sworn 1 September 1995.
That it will not by itself, its servants or agents until further order publish, promote, sell or cause to be promoted or sold anything containing the said words or any collocation of any of the said words identical with a collocation in exhibit JLM4 or exhibit JLM8.
IT IS ORDERED THAT
The Application for interlocutory relief be dismissed.
Each party's costs of the Application for interlocutory relief be reserved.
On 27 November 1995 the applicants filed notice of intention to move for orders, inter alia, that the respondent be punished for contempt of the Court. At the same time they filed a "Statement of Charge" the text of which (without the annexed documents) is reproduced below:
STATEMENT OF CHARGE
The contempt of court charged against the respondent is that:
On 5 September 1995 the respondent gave undertakings to the Court embodied in Orders made by the Court on that day a copy of which is annexed hereto and marked with the letter "A" (the "Orders").
Item 2 of the Orders contain an undertaking by the respondent through its counsel as follows:
"That it will not by itself, its servants or agents until further publish, promote, sell or cause to be promoted or sold anything containing the said words or any collocation of any of the said words identical with collocation in exhibit JLM4 or exhibit JLM8".
Item 1 of the Orders included an undertaking given by the Respondent as follows:
"To deliver up within 7 days into the possession of the applicants' solicitors all voucher backing sheets containing the words set out in exhibit JLM4 or exhibit JLM8 to the affidavit of Janette Lynn Morgan sworn 1 September 1995".
On 21 September 1995 an agent of the first applicant made a test purchase in the Melbourne area of a voucher booklet of the respondents having a backing sheet which did not contain the words set out in exhibit JLM4 or exhibit JLM8 to the affidavit of Janette Lynn Morgan sworn 1 September 1995 or a collocation of such words. A copy of the voucher purchased is annexed hereto and marked with the letter "B".
On 1 November 1995 an agent of the First Applicant made a test purchase from the respondent in the Adelaide area of a voucher booklet of the respondents (sic) having a backing sheet containing the words set out in exhibit JLM4 or exhibit JLM8 to the affidavit of Janette Lynn Morgan sworn 1 September 1995 or a collocation of such words. A copy of the voucher purchased is annexed hereto and marked with the letter "C".
On 20 October 1995 an agent of the first applicant made a test purchase from the respondent in the Adelaide area of an entertainment and dining guide booklet and conditions card containing certain of the words set out in exhibit JLM4 or exhibit JLM8 to the affidavit of Janette Lynn Morgan sworn 1 September 1995 or a collocation of such words. A copy of the booklet and conditions card is annexed hereto and marked with the letter "D".
On 12 September 1995 the Respondent delivered up to the applicants' solicitors voucher backing sheets containing the words set out in exhibit JLM4 and exhibit JLM8 to the Affidavit of Janette Lynn Morgan sworn 1 September 1995. Such backing sheets related solely to the respondent's business address in South Australia. Some copies of the backing sheets delivered up are annexed hereto and marked with the letter "E". The respondent did not deliver up any backing sheets containing the said words which related to the respondent's business in Victoria.
(The matters referred to in paragraph 4 of the Statement of Charge are not said to amount to a contempt nor is it said that the delivery up of vouchers on 12 September 1995, to which reference is made in paragraph 7, amounts to a contempt).
In support of the motion the applicants rely upon the affidavit of Andrew Geue sworn 24 November 1995.
The respondent has not filed any material in response to the contempt motion but on 30 November 1995 filed notice of a motion seeking an order that the applicants give security for costs. The respondent also seeks an order that the applicants make available for inspection a copy of a document referred to in their amended statement of claim.
Both motions came on for hearing on 7 December 1995. Counsel for the respondent advised that notice had been given to the applicants' solicitors that the deponent Geue was required for cross-examination. Mr Geue was not present at the time the matters were before the Court. After hearing argument I adjourned both motions sine die to enable me to review the material filed by the parties before determining whether the matter should proceed in default of Geue being made available for cross-examination. Furthermore, I was of the view that the contempt application should be dealt with before the application for security for costs.
In his affidavit Geue says that on 1 November 1995 at the request of the second applicant he purchased a booklet being sold for and on behalf of the respondent being the respondent's Super-Smart Shopper voucher book. Annexed to the affidavit are:
a)the booklet purchased with a photocopy of the conditions of use page contained in it, and
b)a receipt for the purchase of the booklet.
Geue further says that on 20 October 1995 he purchased an entertainment and dining guide booklet sold by the respondent, and has annexed to the affidavit:
c)the voucher booklet and card containing conditions, and
d)a receipt for the purchase of the booklet and card.
In my opinion the respondent is entitled to have the opportunity to cross-examine Geue on his affidavit. His is the only evidence offered in support of the alleged contempt and it would be unfair to allow the matter to be dealt with without affording the respondent the opportunity it seeks. Any question relating to additional costs that may have been incurred by the respondent not giving notice of intention to cross-examine in a timely manner can be considered at the appropriate time.
There is no evidence to support the allegation of contempt implied in the final sentence of paragraph 7 of the Statement of Charge.
The precise meaning and effect of the second undertaking given on 5 September 1995 is not at all clear. The undertaking was not in terms of the undertaking originally proffered by the respondent but rather was drafted by the Judge with the assistance and concurrence of the respondent's counsel in an attempt to express what was then thought to be the true intention of the respondent. Be that as it may, the effect of undertaking 2 is that the respondent undertook not to sell anything containing the words set out in the relevant exhibits or any collocation of any of the said words identical with a collocation in the exhibits.
The words "collocate" and "collocation" are defined in the New Shorter Oxford English Dictionary as follows:
Collocate - Place side by side or in some relation; set in a place or position; juxtapose (a word) with another so as to form a collocation.
Collocation - The action of collocating; the state of being collocated; a disposition, an arrangement; juxtaposition or association of a particular word with other particular words; a group of words so associated.
The Macquarie Dictionary does not specifically define "collocation" but it defines "collocate" to mean:
"To put in certain order; arrange together".
My understanding of the undertaking is that it relates to the sale etc of anything which contains the words set out in the named exhibits or any arrangement of those words which is identical with an arrangement of them in one of the exhibits. (my emphasis).
As the undertaking appears to apply to all of the words used in the exhibits and not to any specific part of parts thereof it seems that the effect of the undertaking may well simply be that the respondent would not sell etc, anything containing the same combination of words as are set out in the exhibits referred to.
At p 20 of the transcript of 5 September 1995 the following exchanges between the Judge and counsel for the respondent are recorded:
HIS HONOUR: Yes. It will not - an undertaking - upon the respondent by its counsel undertaking that it will not, by itself, its servants or agents until further order publish, promote, sell or cause to be promoted or sold anything on which the said words or any part of the said words printed. That is a bit too wide.
MR McGOWAN: I was about to ...
HIS HONOUR: The said words or ...
MR McGOWAN: Perhaps your Honour is trying to cover substantial reproduction.
HIS HONOUR: I do not like using the word substantial, because it introduces arguments as to what is substantial.
MR McGOWAN: The difficulty I see with what your Honour has partially drafted so far, of course, is that ...
HIS HONOUR: The said words or any collocation of words identical with any of the collocations in which the said words are arranged.
That will stop you taking phrases out and using phrases, which is really what is wanted, I think.
It would seem that the undertaking as finally given is different from that formulated by the judge in the final passage quoted above and I am left in considerable doubt as to the true meaning of the undertaking. Indeed, my impression is that it relates to the reproduction of a combination of words which is identical to the combination of words used in the exhibits. If this is the case the sale etc of a product which contains words which do not exactly coincide with the text of the exhibits would not be a breach of the undertaking. If it is not the case, the undertaking may well afford the applicants greater protection than success in the proceeding would ultimately give them.
In the circumstances of the case, the appropriate manner of disposing of the contempt motion is to adjourn it for hearing until the trial of the proceeding. This was a course adopted in Australian Consolidated Press Limited v Morgan 112 CLR 483 in which Barwick CJ said at p 490:
In the present case there were additional reasons for adjourning the motion until the hearing of the suit. In the first place, the undertaking might in terms have afforded the respondents greater protection pending suit than success in the suit itself would ultimately give them. This, in itself, would not in the ordinary course necessarily be a reason for not enforcing an undertaking according to its terms particularly where the undertaking resulted from an arrangement inter partes from which the party giving the undertaking thought itself to be advantaged. But in this case, having regard to the actual terms of the undertaking, the apparent difficulty, if not the ambiguity, of its language, the close relationship between the undertaking and the basis of the respondents' causes of action, and the absence of any elements or urgency, there was, in my opinion, no reason for the Court to hasten to give to the respondent any greater interim protection than was properly to be granted by a final decree in the suit.
If this course is followed, and assuming the applicants wish to press the contempt motion, it will be convenient for Geue to be made available for cross-examination at the trial.
So far as the respondent's motion seeking security for costs is concerned, it is appropriate that directions be given to facilitate the hearing of the application early in the new year.
I certify that this and the preceding 7 pages are a true copy of the Reasons for Judgment of the Honourable Justice Olney
Associate:
Dated: 14 December 1995
Heard: 7 December 1995
Place: Melbourne
Judgment: 14 December 1995
Appearances:
Mr M. Goldblatt (instructed by Sam Holt and Thomas Nelson) appeared for the applicants.
Mr S.R. Horgan (instructed by Davies Ryan De Boos) appeared for the respondent.
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