Deutscher Menzies Pty Ltd v Deutscher and Hackett Pty Ltd
[2007] FCA 278
•6 March 2007
FEDERAL COURT OF AUSTRALIA
Deutscher Menzies Pty Ltd v Deutscher and Hackett Pty Ltd [2007] FCA 278
DEUTSCHER MENZIES PTY LTD (ACN 080 621 236) v DEUTSCHER AND HACKETT PTY LTD (ACN 123 119 022), CHRISTOPHER RAYMOND DEUTSCHER, DAMIAN MICHAEL HACKETT AND IAN WILLIAM HICKS
VID 170 OF 2007SUNDBERG J
6 MARCH 2007
MELBOURNE
IN THE FEDERAL COURT OF AUSTRALIA
VICTORIA DISTRICT REGISTRY
VID 170 OF 2007
BETWEEN:
DEUTSCHER MENZIES PTY LTD (ACN 080 621 236)
ApplicantAND:
DEUTSCHER AND HACKETT PTY LTD (ACN 123 119 022)
First RespondentCHRISTOPHER RAYMOND DEUTSCHER
Second RespondentDAMIAN MICHAEL HACKETT
Third RespondentIAN WILLIAM HICKS
Fourth Respondent
JUDGE:
SUNDBERG J
DATE OF ORDER:
6 MARCH 2007
WHERE MADE:
MELBOURNE
UPON THE APPLICANT UNDERTAKING:
1.To submit to such order (if any) as the Court may consider to be just for the payment of compensation, to be assessed by the Court or as it may direct, to any person, whether or not a party, adversely affected by the operation of the following orders or any continuation (with or without variation thereof); and
2.To pay the compensation referred to in paragraph 1 to the person there referred to.
AND UPON THE RESPONDENTS UNDERTAKING THAT:
1.Deutscher and Hackett Pty Ltd will trade under and by reference to that name or the trading style ‘Deutscher and Hackett’ and no other name or trading style.
2.Within seven days of these orders, Deutscher and Hackett Pty Ltd will publish a statement on its website and in The Australian, The Age and Sydney Morning Herald newspapers to the effect that Deutscher and Hackett Pty Ltd is neither associated nor affiliated with Deutscher Menzies Pty Ltd, in the form ‘Deutscher and Hackett Pty Ltd is not associated or affiliated with Deutscher Menzies Pty Ltd.’
3.All future correspondence, websites, catalogues and promotional material of Deutscher and Hackett Pty Ltd will bear the notice referred to in paragraph 2 until further order of the Court.
THE COURT ORDERS THAT:
1.The respondents and each of them be restrained from:
(a)making use of information taken from any part of any of the applicant’s databases referred to in paragraph 35 of the affirmation made by Mervyn John Cox on 28 February 2007 (the information); and
(b)publishing, communicating or causing to be published or communicated to any person any of the information, and destroying, parting with possession of or power or control over or defacing or changing in any manner any document containing any of the information or any machine or other equipment embodying or incorporating the information.
2.Within seven days of these orders the respondents and each of them deliver up upon oath to the applicant’s solicitors any copy of any part of any of the applicant’s databases referred to in paragraph 35 of the said affirmation.
3.Within seven days of these orders the respondents and each of them permit the applicant’s solicitors to inspect and copy all documents, materials and other objects within the respondent’s possession which contain, record or otherwise refer to information taken from any part of any of the applicant’s databases referred to in paragraph 35 of the said affirmation.
4.The application be otherwise dismissed.
5.Costs be reserved.
6.The proceeding be placed in the docket of the next available judge.
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
VID 170 OF 2007
BETWEEN:
DEUTSCHER MENZIES PTY LTD (ACN 080 621 236)
ApplicantAND:
DEUTSCHER AND HACKETT PTY LTD (ACN 123 119 022)
First RespondentCHRISTOPHER RAYMOND DEUTSCHER
Second RespondentDAMIAN MICHAEL HACKETT
Third RespondentIAN WILLIAM HICKS
Fourth Respondent
JUDGE:
SUNDBERG J
DATE:
6 MARCH 2007
PLACE:
MELBOURNE
REASONS FOR JUDGMENT
The applicant has satisfied me that there is a serious question to be tried in relation to its confidential information, and that the balance of convenience favours the grant of interlocutory relief. However, the relief sought in pars 4 and 5 of the Application is in my view too broad and lacking in particularity.
The respondents should be restrained, until the hearing and determination of the application or further order, from:
(a)making use of information taken from any part of any of the applicant’s databases referred to in paragraph 35 of the affirmation made by Mervyn John Cox on 28 February 2007 (the information);
(b)publishing, communicating or causing to be published or communicated to any person any of the information, and destroying, parting with possession of or power or control over or defacing or changing in any manner any document containing any of the information or any machine or other equipment embodying or incorporating the information.
I will make the delivery up order sought in par 5 of the Application, though limited to “any copy of any part of any of the databases referred to in par 35 of the affirmation”.
I will make the inspection order sought in par 6 of the Application.
The applicant has not satisfied me that there is a sufficiently serious question to be tried to justify the relief sought in pars 1 to 3 of the Application or that the balance of convenience favours the grant of such relief. In addition there are discretionary considerations that have led me to conclude that the undertakings proffered by the respondents are appropriate to meet the case.
First, the Australian fine art market is relatively small. According to Mr Deutscher, the number of committed collectors at the top end of the market (items in excess of $100,000 per item) is in the order of 200‑300 people Australia wide. He says that most serious art collectors are on numerous mailing lists, and it is not uncommon for the contents of mailing lists and databases of art dealers to be very similar. Having regard to the large sums of money involved in art auctions in Australia, and the small size of the market, I infer that those in the market are likely to be sufficiently sophisticated not to be confused by the entry of the first respondent into the market. There has been much publicity in the newspapers about the events that have led to this litigation, especially about the second respondent’s departure from the applicant and his decision to set up an auction house with the third and fourth respondents. In those circumstances I regard it almost fanciful that those interested in the market will not now know that there are two auction houses bearing the second respondent’s name, and that he is only involved in the one carried on by the first respondent.
The applicant’s rather unpersuasive evidence of two people who say they were confused by the arrival of the first respondent pre‑dated the recent body of reporting of the second respondent’s departure from the applicant’s business.
Second, the applicant has known since 24 November 2006 of the second and third respondents’ intention to establish a fine art auction house under the name “Deutscher Hackett”. Despite this knowledge, proceedings were not issued until 28 February 2007. To my mind this inaction casts doubt on whether the applicant really regards the activities sought to be enjoined as misleading or likely to mislead members of the public interested in the fine art market.
Third, the respondents have expended considerable sums, exceeding $40,000, since January 2007 in naming‑related matters such as image design, letterhead and signage design, printing of letterhead and business cards, advertising in newspapers and magazines, and signage for the building façade. This has occurred during the period before which one would have expected the applicant to have commenced proceedings if it had a serious concern about confusion.
The relevant part of the undertaking to which I referred earlier, and which is offered without any admission of liability, is as follows:
“3. Deutscher and Hackett Pty Ltd will trade under and by reference to that name or the trading style ‘Deutscher and Hackett’ and no other name or trading style.
4. Within seven days … Deutscher and Hackett Pty Ltd will publish a statement on its website and in The Australian, The Age and Sydney Morning Herald newspapers to the effect that Deutscher and Hackett Pty Ltd is neither associated nor affiliated with Deutscher Menzies Pty Ltd, in the form ‘Deutscher and Hackett Pty Ltd is not associated or affiliated with Deutscher Menzies Pty Ltd.’
5. All future correspondence, websites, catalogues and promotional material of Deutscher and Hackett Pty Ltd will bear the notice referred to in paragraph 4 until further order of the Court.”
As I have said, I regard these undertakings as sufficient to meet the requirements of the case.
Upon the applicant giving the usual undertaking as to damages, and the respondents giving their undertakings, I will grant interlocutory relief in relation to the databases in the form set out in these reasons. I will reserve the costs. I will order that the proceeding be placed into the docket of the next available judge.
I certify that the preceding eleven (11) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Sundberg. Associate:
Dated: 6 March 2007
Counsel for the Applicant: A Young Solicitor for the Applicant: Nathan Kuperholz Counsel for the Respondent: R Macaw QC Solicitors for the Respondent: Blake Dawson Waldron Date of Hearing: 5 March 2007 Date of Judgment: 6 March 2007
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