Enzed Holdings Ltd v Wynthea Pty Ltd

Re: ENZED HOLDINGS LIMITED AND ORS.
And: WYNTHEA PTY LIMITED AND ORS.
No. WA G33 of 1984
Trade Practices - Copyright
4 FCR 450

COURT

IN THE FEDERAL COURT OF AUSTRALIA

WESTERN AUSTRALIA DISTRICT REGISTRY
GENERAL DIVISION
Sheppard(1), Morling(1) and Wilcox(1) JJ.

CATCHWORDS

Trade Practices - misleading and deceptive conduct - representation that corporation has sponsorship or affiliation it does not have - analysis of complex evidence - damages - whether on findings of primary Judge he was bound to make an award of damages no matter that the exercise was speculative

Trade Practices Act 1974, ss. 52 and 53(d).

Copyright - artistic work commissioned by second appellant in New Zealand - author resident in New Zealand - whether second appellant owner of work - whether second appellant a competent applicant to sue for infringement of copyright.

Copyright Act 1968, ss. 10, 32, 35, 115, 119, 184 and 249

Copyright (International Protection) Regulations, reg. 4

Copyright Act 1962 (New Zealand), s. 9

Copyright - "Author" resident in New Zealand - "Artistic work" commissioned by New Zealand company and published in that country - Application by the New Zealand company in Australia for injunctive relief and damages for infringement in Western Australia of the copyright in the artistic work - Whether the second appellant (the New Zealand company) was competent to sue - Copyright Act 1968 (Cth), ss 32, 35, 115, 119, 184(1), 196, 249; Copyright (International Protection) Regulations, reg 4(1), (3), (4) and Sched 1, Pt 1; Copyright Act 1962 (NZ), s 9(3).

HEADNOTE

In considering whether a New Zealand company (the second appellant) which had commissioned a New Zealand resident to design an artistic work (a drawn logo) and which was thereby the "owner" of the copyright in the work pursuant to s 9(3) of the Copyright Act 1962 (NZ), could sue in Australia for infringement of the copyright in Australia, the Full Court considered the following Australian copyright legislative provisions and regulations:

Section 32 of the Copyright Act 1968 (Cth). In the case of a published work (such as the drawn logo here) copyright subsists in it only if the first publication of the work took place in Australia and the author at that time was a "qualified person" (effectively, an Australian resident or citizen).

2. Section 35 of the Copyright Act 1968 (Cth). The author of an artistic work is the owner of any copyright subsisting in the work.

(3) Sections 115 and 119 of the Copyright Act 1968 (Cth). The only person who may bring an action for infringement of copyright is the owner of the copyright or an exclusive licensee thereof.

(4) Section 196 of the Copyright Act 1968 (Cth). Copyright may be assigned or may devolve by operation of law.

(5) Regulation 4 of the Copyright (International Protection) Regulations which applies the provisions of the Copyright Act 1968 (Cth) to, inter alia, artistic works first published in certain countries (here, New Zealand) and to, inter alia, residents of certain countries (here, New Zealand) "in like manner as those provisions apply in relation to", artistic works first published in Australia and to Australian residents.

Held (per curiam), that reg 4 expressly specifies the limited areas in which the operation of the Copyright Act 1968 (Cth) is to be extended, and in this case specifies that the provisions of that Act apply as if each of the place of publication of the work (New Zealand) and the residence of the author of the work (again, New Zealand) had been Australia. In the absence of an assignment or exclusive licence from the author of the work, only the latter was entitled under the Copyright Act 1968 (Cth) to bring an action in Australia for infringement of copyright in the work and therefore the second appellant's action for such infringement failed.

Observations made on the Berne Convention as revised by the Rome Revision (1978), art 4(1) and the Paris Revision (1971), art 5(1) and the regard which ought to be had to it in the event of any uncertainty or ambiguity in the provisions of the Copyright Act 1968 (Cth).

Salomon v. Commissioners of Customs and Excise (1967) 2 QB 116; Warwick Film Productions Ltd v. Eisinger (1969) 1 Ch 508, considered.

The judgment is reported only upon the foregoing aspects.

HEARING

1984, December 6. #DATE 6:12:1984

APPEAL AND CROSS-APPEAL

Appeal and cross-appeal from a decision of Lockhart J relating to proceedings brought by the appellants for, inter alia, infringement of copyright.

M L Bennett, for the appellants.

S Owen-Conway, for the respondents.

Solicitors for the appellants: Stone James Stephen Jaques.

Solicitors for the respondents: Corser & Corser.

GFV

ORDER

The appeal be dismissed.

The cross-appeal be allowed in part.

The orders made by Lockhart J. on 26 March 1984 be varied by deleting therefrom the order numbered 4.

The cross-appeal be otherwise dismissed.

The appellants pay one-fifth of the respondents' costs of the appeal and the cross-appeal.

Appeal dismissed and cross-appeal allowed so far as relates to copyright.

JUDGE1

This is an appeal and cross-appeal from a judgement of a single judge of this Court (Lockhart J.) given on 26 March 1984. The proceedings were brought by the appellants to obtain injunctive relief and damages against the respondents for alleged breaches of s. 52 and para. 53(d) of the Trade Practices Act 1974, infringement of copyright and passing off. The appellants established their entitlement to relief pursuant to their causes of action based on the Trade Practices Act and upon infringement of copyright. His Honour did not find it necessary to deal with the question of passing off. His Honour granted injunctions to restrain the respondents committing further breaches and infringements. He refused to award any damages. It is from that refusal and also from his Honour's decision to make no order as to costs that the appellants appeal. The cross-appeal is brought by the respondents in order to have his Honour's decision to grant any relief set aside. The respondents contend that the appellants did not establish any breach of the Trade Practices Act nor any infringement of copyright. The respondents seek an order that the costs of the trial be paid by the appellants.

The first four appellants are members of a group of companies known as the Enzed group. The group consists of a holding company and a manufacturing and distributing company. The first appellant is the holding company and the second appellant is the manufacturing and distributing company. Both these companies are incorporated in New Zealand and do not carry on business elsewhere. The third appellant is the Australian distributor of Enzed products. The fourth appellant controls the Australian franchising of the group. Both the third and fourth appellants are companies incorporated and carrying on business in Australia. The fifth appellants are not part of the group, but on 15 July 1982, the first of them, Compressed Air & Packing Systems Pty Limited (hereinafter referred to as "CAPS") was given a franchise to market the group's products in Western Australia. Subsequently the franchise was taken over by the other fifth appellant, Contender Pty Limited.
The first respondent, Wynthea Pty Limited, was formed on 23 January 1981. Fifty per cent of its share capital was taken up by a company, Bendara Pty Limited, and the remaining fifty per cent by another company, Kimden Pty Limited. Prior to 23 January 1981, Bendara Pty Limited had been the Western Australian distributor of Enzed products. It held the distributorship pursuant to an agreement which had been made on its behalf by another of the respondents, Mr. A.G. Smith. The agreement was with a company, not one of the appellants, Enzed Hydraulics Pty Limited, which was until April 1981 the sole Australian distributor of Enzed products. Since 24 April 1980, Bendara Pty Limited has been the registered proprietor of a business name, "Enzed Hydraulic Hose & Coupling Service". Wynthea Pty Limited was formed to accommodate the entry into the business of the respondent, Mr. W.R. Cooper. He controls Kimden Pty Limited. Wynthea Pty Limited was not registered as the proprietor of the business name, Enzed Hydraulic Hose & Coupling Service. This was due to an oversight. There is no question but that the name and the business were owned by Wynthea Pty Limited at all material times. Both Mr. Cooper and Mr. Smith were respondents to the application as well as Wynthea Pty Limited.
The Enzed group was founded in 1972 in New Zealand. It designs, manufactures and distributes hydraulic hoses and couplings and similar products. On 10 September 1979 Enzed Hydraulics Pty Limited, under the direction of Mr. Peter Duncan, an Enzed distributor in New Zealand, and Mr. Davey, the Enzed New Zealand national sales manager, was given sole distribution rights in Australia. This arrangement terminated in April 1981.
On 13 March 1980, Mr. Smith made the earlier mentioned agreement with Enzed Hydraulics Pty Limited to become the Western Australian distributor. The terms of the agreement appear in a letter dated 13 March 1980. They included terms as to price, stock and equipment, terms conferring on Mr. Smith's company the sole Enzed distribution and sale rights for Western Australia and a term that the Western Australian company would obtain its supplies exclusively from Enzed Hydraulics Pty Limited. The agreement commenced on 1 May 1980.
On 14 March 1980 Mr. Smith set up Bendara Pty Limited to hold the distribution rights. It commenced business as Enzed Hydraulic Hose & Coupling Service on or about 1 June 1980. The business made use of two logos belonging to Enzed. These were described by the learned primary Judge as "the name logo" and "the drawing logo". The name logo consisted of the word "ENZED" preceeded by two red flashings or flicks. The drawing logo was a line drawing of eight hydraulic couplings. Both logos were designed by a Mr. L.L. Anderson, a resident of New Zealand, who had been commissioned to design the logos by the second appellant, Enzed Precision Products Limited.
Upon setting up the business Mr. Smith found that two other companies were carrying Enzed products. The Enzed products were said by him to have a poor reputation in the Western Australian market. His belief in that regard was not shared by the Enzed interests.
On 6 April 1981 Enzed Hydraulics Pty Limited ceased to be the Australian distributor. Its operations were restricted to New South Wales. From July or August 1981 the Australian operations were directed from Melbourne. The third and fourth appellants had their headquarters in Australia there; a Mr. Rex Falloon was in charge. The respondent, Mr. Smith, was aware of these changes. By this time he had become dissatisfied with Enzed products and had made his dissatisfaction known, firstly to the Sydney, and then to the Melbourne, offices.
Despite discussions between Mr. Smith and Mr. Falloon in September 1981 the relationship deteriorated. On 21 October 1981 Mr. Falloon sent a telex to Mr. Smith saying that the relationship was terminated from that day. The telex continued, "You are requested to cease using the Enzed trade mark and you are requested to remove the Enzed name from your premises and the promotional material on vehicles . . ."
As earlier mentioned, on 15 July 1982, the fourth appellant appointed CAPS as Western Australian distributor of Enzed products. Later it was decided that a company separate from CAPS should be formed to hold the Enzed franchise. This led to the incorporation of Contender. In the meantime Mr. Smith continued in business under the name, "Enzed Hydraulic Hose & Coupling Service". He continued to use the Enzed logos, that is, both the name and drawing logos.
On 4 August 1982, the parties attempted to settle their differences. On that day a written agreement was made, the parties to which were the third appellant, Bendara Pty Limited and Mr. and Mrs. Smith. Mr. and Mrs. Smith, for a consideration of $2,250, agreed to cease using the business name, Enzed Hydraulic Hose & Coupling Service, to withdraw from the next yellow pages telephone directory any advertisement which included a reference to the word "Enzed" or incorporated the name logo or any logo substantially identical with or deceptively similar to it, not to carry on business under or by reference to the style and/or name, Enzed Hydraulic Hose & Coupling Service or a style or name which included the word "Enzed" or any style or name deceptively similar thereto, and to sell to the third appellant the Enzed stock on hand for an amount to be determined.
Mr. Smith took steps to comply with the agreement. He registered a new business name, "C. & S. Hydraulic Services (W.A.)"("C. & S."). He began using a new name logo, notified existing customers, inserted advertisements stating what the position then was and complied with the requirements of the agreement in relation to the Perth yellow pages. However, the white pages continued to have the "Enzed Hydraulic Hose & Coupling Service" entry. This was published again in August/September 1982 when a new edition of the white pages of the telephone book appeared. It is to be observed that nothing was said in the agreement about the drawing logo. Mr. Smith continued to use it on vans, business cards and stationery. What might be described as the van livery remained the same. Contender, the new Western Australian distributor, complained but to no effect. The appellants commenced these proceedings on 23 August 1983. They sought injunctions pursuant to s. 52 and para. 53(d) of the Trade Practices Act. They also sought injunctions to restrain alleged passing off of the respondents' business as that of the third and fifth appellants and to restrain the respondents from infringing the second appellant's copyright in the drawing logo. They also sought damages.
On 24 August 1983 the appellants made application for interlocutory relief. The application was resolved when the respondents gave a number of undertakings to the Court. The undertakings required Wynthea Pty Limited to obliterate the drawing logo from its service vans, to destroy all business cards in its possession bearing the drawing logo, not in future to use the drawing logo on any of its plant or literature and to give to the employees of Wynthea Pty Limited a written direction signed by Mr. Smith and Mr. Cooper that any person getting in touch with Wynthea and seeking to deal with any of the applicants was to be informed immediately that Wynthea had no connection with any of the applicants.
The learned primary Judge found that the telex sent on 21 October 1981 did not terminate the distribution agreement which Mr. Smith had made with Enzed Hydraulics Pty Limited. The agreement was already at an end. In his Honour's view the agreement had been terminated by the conduct of the parties no later than September 1981. His Honour thought that the respondents' right to use the Enzed name and logos was dependent upon the agreement continuing in force and was thus also terminated no later than September 1981. He concluded that the respondent, Wynthea Pty Limited, had contravened both s. 52 and para. 53(d) of the Trade Practices Act between September 1981 and 27 August 1983 because:-

(i) it continued to carry on business under the name

"Enzed Hydraulic Hose & Coupling Service";

(ii) it continued to use the drawing logo;

(iii) Mr. Smith failed to take steps to remove the entry

from the 1982 white pages of the telephone directory. The deadline for alterations to the entries therein was the end of May 1982 (not the end of May 1981 as is stated in one place in the judgment.)

Permanent injunctions to restrain further breaches of the Trade Practices Act were granted. His Honour did not deal with passing off because it was common ground that the claim for passing off did not raise wider issues than the claim based on breaches of the Trade Practices Act. His Honour thought the question of whether the appellants were entitled to relief in respect of their claim based on passing off to be academic. His Honour found that Wynthea had infringed the copyright of the second appellant in the drawing logo. He thought that injunctive relief to restrain further infringements should be granted. His Honour then went on to consider damages and reached the conclusion that no award of damages should be made in favour of any of the appellants. He also reached the conclusion that there should be no order as to costs.
The principal matters relied upon by counsel for the appellants in support of the appeal were as follows:-

1. Upon his Honour's findings of fact, he was bound, no

matter how difficult the task, to make some award of damages to each of the appellants.

2. His Honour should have ordered the respondents to pay

the appellants' costs of the application.

The principal submissions made in support of the cross-appeal were as follows:-

1. It was not open to the learned primary Judge to find

conduct which was in breach of any provision of the Trade Practices Act in so far as it was alleged that the first respondent had engaged in that conduct prior to September 1982. It was said that it was no part of the appellants' case as pleaded or conducted that the first respondent had engaged in any offending conduct prior to September 1982. The purpose of this submission was to exclude from his Honour's findings a finding that the respondents were under an obligation to secure the removal of the Enzed entry from the 1982 white pages of the telephone directory.

2. There was either no evidence or insufficient evidence to

support the finding by the learned primary Judge that during the period September 1982 to August 1983 the conduct of the first respondent resulted, on a not insubstantial number of occasions, in confusion in the minds of the public leading some of them to think that C. & S. Hydraulic Services (W.A.), the respondent's new name for Wynthea's business, and the Enzed business, were one and the same and led others, conscious of the fact that C. & S. and Enzed were different businesses, to think that upon dealing with C. & S. they were dealing with Enzed.

3. The learned primary Judge was in error in finding that

Mr. Smith's right to use the name Enzed, the name logo and the drawing logo had ended by September 1981.

4. The learned primary Judge erred in finding that Mr.

Smith was, within the meaning of s.75B of the Trade Practices Act, a person involved in the contraventions of the provisions of the Trade Practices Act by the first respondent. This was because, so it was submitted, Mr. Smith was the person for whose conduct the first respondent was held to be vicariously liable and could not thereby himself be made liable as an accessory.

5. The learned primary Judge erred in finding that the

first respondent had infringed the second appellant's copyright in the drawing logo because neither it nor any of the other appellants was the owner of any copyright in the drawing logo in Australia; none was therefore a competent applicant to rely on this cause of action.

6. His Honour should have ordered the appellants to pay the

respondents' costs of the application. Alternatively he should have made an order that the appellants pay some part of the respondents' costs.

Because the cross-appeal challenges the fundamental findings made by the learned primary Judge in favour of the appellants, we find it more convenient to deal with the cross-appeal first of all. If it should succeed in whole or in part, there will be a consequent effect on the appellants' position which will need to be taken into account when the appeal, as distinct from the cross-appeal, is being considered.

The various submissions of the parties require an analysis of a number of his Honour's findings and some reference to the evidence. We propose to undertake that analysis and reference before going on to deal with the various submissions which are involved.
His Honour reviewed certain evidence given by persons who were, for the most part, either customers of one or other of the firms or who were potential customers of one or the other. This evidence was to a degree inconclusive, but having reviewed it, his Honour said that he was satisfied that during the period from the commencement by Contender of its business, that is, about September 1982, until about the end of August 1983, shortly after the undertakings were given to the Court on 24 August 1983, there were occasions on which customers of Contender or other members of the public thought that they were speaking to or dealing with employees or van drivers of Contender, whereas in truth they were speaking to or dealing with employees of the respondents' firm. In at least one instance the confusion resulted in the respondents' firm obtaining a small order intended for Contender with the consequent loss to Contender of that order. His Honour continued:-

"The 1982 Perth White Pages seems to have been the major source of this confusion; but for reasons I shall mention later, it is my view that Mr. Smith should have taken steps before the end of May 1982 to ensure that the 1982 White Pages, which appeared in August-September 1982, did not contain reference to "Enzed Hydraulic Hose & Coupling Service" with his own business address and telephone number. Therefore, in my opinion, the respondents were responsible for some of the confusion that arose."

Later his Honour said:-

"Looked at over the period September 1982 to August 1983, I am satisfied that the conduct of Wynthea resulted in a not insubstantial number of occasions of confusion in the minds of members of the public which led some of them to think that C. & S. and "Enzed" were one and the same business and led others, conscious of the fact that 'Enzed' and C. & S. were different businesses, to think that upon dealing with C. & S. they were dealing with 'Enzed'."

His Honour then entered upon a review of the evidence concerning the relationship between the appellants and the respondents and referred to the fact that there had been no formal termination of the arrangement which had been made between Mr. Smith and the Enzed Sydney company. However, his Honour found, as we have earlier mentioned, that that relationship must be taken to have been terminated not later than September 1981. By then, so his Honour said, Mr. Smith had ceased buying Enzed products from any Enzed company, his last purchase having been made in April 1981. His Honour said that Mr. Smith's right to use the name "Enzed" and the two logos arose because of his contract with the Sydney company. Once the appointment as distributor was terminated, Mr. Smith's right to use the name and the logos ceased. In his Honour's view a term needed to be imported into the contract to give it business efficacy. The term was that Mr. Smith's entitlement to use the name "Enzed", and the two logos and otherwise to represent his business as being affiliated with or associated with the Enzed group subsisted only so long as did his distributorship. Once the contract was terminated, so was his right to use the name and the logos.
His Honour concluded that the first respondent's conduct after August 1982 was misleading or deceptive within the meaning of s. 52 of the Trade Practices Act and that it did represent that it had a sponsorship, approval or affiliation it did not have and was thus also in breach of para. 53 (d) of that Act. His Honour added:-

"The misleading and deceptive conduct was in Wynthea's continuing to carry on business under the name 'Enzed Hydraulic Hose & Coupling Service', and by continuing to use the two logos, the vans, documents, promotional and other literature all styled either as 'Enzed' or as being in some way associated or affiliated with it and as representing that its business was that of 'Enzed'. Also Mr. Smith should have taken steps to remove the telephone entry 'Enzed Hydraulic Hose & Coupling Service' before the end of May 1981 (sic. 1982) (which was the deadline for inserting material for the 1982 Perth White Pages). After September 1981, at the latest, Mr. Smith had no right to carry on business as 'Enzed Hydraulic Hose & Coupling Service'. It was certainly open to him to sell Enzed products if he could obtain them and to state that he was a seller of them, but he was not entitled to assert that he continued to be in effect the 'Enzed' Western Australian distributor."

The next matter his Honour considered was the effect of the agreement made in August 1982. In his Honour's view the agreement did not purport to settle the whole dispute between the parties. He thought that the agreement must be taken as dealing with the matters mentioned in the agreement and with no others. Thus his Honour rejected a submission made on behalf of the appellants that the agreement extended to require Mr. Smith not to use the drawing logo and a submission of the respondents that anything not dealt with in specific terms by the agreement "assumes that Mr. Smith was in effect given a licence to carry on his business in a manner which otherwise would constitute a violation of the third appellant's rights".
As earlier mentioned, the August agreement was complied with. But Mr. Smith continued to use the drawing logo and the entry, Enzed, remained in the 1982 edition of the white pages of the telephone directory. Mr. Smith continued to use the drawing logo until the giving of the undertakings to the Court on 24 August 1983 soon after the commencement of the proceedings. His Honour was thus satisfied that between September 1981 and 24 August 1983 the first respondent engaged in conduct which contravened both provisions of the Trade Practices Act which were relied upon by the appellants.
His Honour next turned to the question of whether he should grant permanent injunctive relief. He referred to the fact that there had been no offending conduct after 24 August 1983. But he also said that at the time the proceedings were commenced, the first respondent was acting in contravention of the two provisions so that the undertakings given to the Court still left open the possibility of conduct being committed by the respondent which would constitute a contravention. His Honour emphasised that it was essentially the public interest that he was considering and not merely the interests of the appellants. He concluded that it was in the public interest that injunctions be granted to restrain the first respondent from engaging in misleading or deceptive conduct in its business of selling and servicing hydraulic hoses and couplings and associated goods by representing that its business was associated with the business of the appellants or any of them. He also thought that similar relief should be granted against Mr. Smith but not Mr. Cooper. As mentioned, his Honour did not find it necessary to deal separately with the claim based on passing off.
His Honour then dealt with the question of copyright. We need not mention any part of his judgment on the question of copyright except that which is raised for consideration by the cross-appeal. There was no argument that the drawing logo was not an artistic work, that copyright did not subsist in it or that the copyright had not been infringed. It was nevertheless submitted by counsel for the respondents that the second appellant was not a competent applicant because it was not the owner of the copyright. The second appellant had commissioned Mr. Anderson to design the logo. He was thus the author of the work and the owner of the copyright. He was not a party to the proceedings with the result that the cause of action based on infringement of copyright should fail. His Honour rejected the submission. He held that the second appellant was a competent applicant in the circumstances of this case by reason of the provisions of the New Zealand Copyright Act which by sub-sec. 9(3) confers ownership of copyright upon a person who has commissioned a work. Whether his Honour was correct in applying the New Zealand law is the question that arises for consideration, and to which we shall come in due course.
The final matter dealt with by his Honour was the question of damages. He said that the appellants took as the starting point for their claim a budget prepared before Contender commenced business, as amended by a supplementary budget prepared in October 1982. His Honour said that the appellants asserted that the budget as amended was a reasonably accurate forecast of anticipated sales and profits of the fifth appellant. As its actual sales were lower, the difference represented the base from which any computation of loss or damage flowed. After a lengthy analysis, his Honour concluded that neither the original budget nor the budget as amended provided a reliable base for the determination of any damage suffered by Contender by reason of the respondents' conduct. Nevertheless his Honour went on to consider the claim for damages on the assumption that, notwithstanding his finding, the budget as amended did provide a reliable basis for the calculation for the claim for damages.
He said that from the commencement of its trading activities Contender had fared poorly. Figures for September and the first half of October 1982 were 50 per cent behind the initial budget figures. His Honour concluded that Contender's performance was due to a number of factors, some of which he specified, although making it clear that the list was not exhaustive. The list was not formulated in any order of priority. Eight factors were mentioned. Seven related to matters quite unconnected with any conduct on the part of the respondents. They were that the Western Australian market for hydraulic hoses, couplings and fittings was highly competitive, the Enzed pricing policy prevented Contender from granting any substantial discounts, Contender was not efficiently managed, there was a rather unhappy working environment in Contender, it did not obtain the benefit from the International Harvester Group of companies which it had expected, original equipment manufacturers tended to supply customers with spare parts, and the market for hydraulic hoses, couplings and fittings was not buoyant during much of the period after September 1982. His Honour's final factor which involved conduct on the part of the respondents was stated as follows:-

"(h) Competition provided by C. & S. probably had some adverse effect on Contender's business. The problem in this case is that it is impossible to state the extent to which the activities of the respondents caused loss or damage to Contender's business. The matters which I have mentioned as having some bearing upon the poor performance of Contender's business are not capable of being treated piecemeal. They must be viewed together. I accept that C. & S. caused some loss or damage to Contender; but it is impossible to calculate the amount of that loss or, indeed, the basis on which it can be determined or measured. Any attempt to determine that loss would be sheer speculation."

After specifying the various matters to which we have referred his Honour said, "I am not satisfied, however, that any substantial loss or damage was suffered by Contender by reason of the conduct of C. & S."
After referring to some other matters, his Honour stated his conclusion as to damages as follows:-

"I am not satisfied therefore that, even if it were legitimate to regard the amended budget of Contender as a reliable base from which to determine loss or damage resulting from the activities of the respondents, it could be said with any confidence that any such loss or damage is attributable to the conduct of the respondents. The reality is that Contender's poor performance is essentially due to causes other than any competition presented by the respondents. In addition, it is impossible to say to what extent any diminution of Contender's business due to the competition of C. & S. can be further severed into legitimate competition and competition attributable to the unfair trade practices of C. & S."

In the result, although the applicants succeeded in their claim for injunctive relief against the respondents, they failed in their claim for damages. It was largely for this reason that his Honour refused to make any order for costs.
In their cross-appeal the respondents attacked almost all his Honour's conclusions. They contended that they were entitled to continue to use the Enzed name and the drawing logo after the August 1982 agreement. They disputed his Honour's finding that the original franchise agreement had come to an end by September 1981 and they submitted that, whether it had by then come to an end or not, they continued to have the right to use the Enzed name and the logos. These rights were affected by the August 1982 agreement but only so far as was specifically provided. They contended that the August 1982 agreement was intended to bring about a full settlement of all disputes and that what it did not forbid they were entitled to do.
Having given these various submissions due consideration, we are satisfied that they should be rejected. No error is disclosed in that part of his Honour's judgment which deals with these submissions.
Counsel for the respondents analyzed the consumer evidence. He said that it disclosed confusion in only one or two cases. These were said to be of a minor kind. We think there is force in this submission, but that does not warrant interference with any of his Honour's findings earlier quoted (p. 13). As his Honour said:-

"The evidence of the consumer witnesses was relevant to the issue of misleading or deceptive conduct (also to passing off), but, as has been said more than once by the courts, the determination of these questions ultimately rests with the Court and its assessment of the evidence as a whole."

In other words it was for the Court to determine objectively whether the conduct in question was misleading or deceptive or was likely to be so.

We have considered the evidence and looked at a number of the exhibits including photographs of the respondents' vans and facsimiles of business cards and stationery which were used. There is also the matter of the entry in the 1982 white pages of the telephone directory. The get-up of the vans as shown in the photographs has a substantial similarity to that used on Contender's vans. The same is true of business cards and other stationery. As in all these cases one must make a value judgment. One must bear in mind that it is unlikely that members of the public, whether those who are likely to have dealings with either of the parties or not, will see the two vans together so that they are able to make comparisons. Having considered his Honour's findings on this part of the case we see no reason to disturb them. Indeed we are in agreement with them.
Much was said of his Honour's finding that the principal problem was caused by the existence of the entry in the 1982 white pages of the telephone directory. His Honour's conclusion in this regard no doubt stemmed to a large extent from his consideration of the consumer evidence to which we have earlier referred. Undoubtedly his Honour's primary finding in this regard was well open. But the respondents said that they had come to meet a case which was based on misleading or deceptive conduct having occurred over the period September 1982 to August 1983. For an entry to be changed in the white pages, instructions had to be given to Telecom no later than the end of May 1982. It was no part of the appellants' case, so the respondents said, to complain of conduct which had occurred as early as May 1982. That was particularly so bearing in mind that Contender did not commence to carry on business until August 1982.
His Honour found, (correctly, as we have said), that the original distribution agreement with Mr. Smith came to an end no later than September 1981. The respondents were not thereafter entitled to use the Enzed name or either of the logos. They were therefore under an obligation to remove the name from the telephone book as soon as reasonably possible. They could have done so at any time up to the end of May 1982. It follows that the entry in the telephone book as it was in the period of twelve months or so prior to August 1983 was an entry which the respondents were obliged to have removed and which they could have removed if they had taken action in time. They did not remove it, so it seems to us, because they considered themselves entitled to continue to use it. Their belief in this regard was ill-founded.
The presence of the entry in the telephone book was, in his Honour's view, "the major source" of the confusion between the two organizations. More importantly, its presence had the effect or was likely to have the effect of misleading persons dealing or intending to deal with one or other of the two businesses. Because of their erroneous belief, the respondents failed to take steps to remove the entry well aware that it would remain as an indication of their business name in Western Australia throughout the life of the 1982 white pages. In our opinion, the whole of these circumstances constituted misleading or deceptive conduct on the part of the respondents. As a result of it the respondents achieved a situation in which the offending entry remained in the white pages throughout the period of 12 months ending about the time of the giving of the undertakings in August 1983, that is, the period during which the respondents agree the appellants did assert misleading or deceptive conduct on their part. For that reason no error is disclosed in his Honour's taking into account the entry in the telephone book as part of the misleading or deceptive conduct in which the respondents engaged during the period September 1982 to August 1983.
Our conclusion in this regard avoids the necessity of considering whether the appellants did conduct their case upon the basis of misleading or deceptive conduct occurring prior to August 1982. Counsel were not at one in relation to that matter. All we would say is that if the appellants did confine their case to the period after August 1982, they were nevertheless entitled to rely upon the entry in the 1982 telephone book as part of the misleading conduct of the respondents during that period.
Then it was submitted that the appellants had no reputation in Enzed products in Western Australia. It was common ground that the relevant market was the Western Australian market and not the Australian market generally. Counsel for the respondents pointed to the fact that the first two appellants carried on business only in New Zealand and the third and fourth were in Victoria. Contender did not commence business until September 1982 at the beginning of the period when the offending conduct was alleged to have occurred.
Counsel for the appellants submitted that reputation was irrelevant. That is not a matter we find necessary to deal with. If reputation is required, there is ample evidence of it. Enzed products were marketed in Western Australia by companies associated with Mr. Smith between May 1980 and about April 1981 or a little later. Prior to 1980 they had been marketed by other companies as well. Mr. Smith's marketing was carried out under the Enzed name and logos. He continued to use the name and both the logos until August 1982, and the name (in the telephone book) and drawing logo until August 1983. The inference is open and should be drawn that during the whole of this period he was purporting to represent the Enzed group and to be selling products which were either Enzed products or products sponsored by it. Those products had had a market in Western Australia since before 1980.

In passing off cases a plaintiff needs to establish reputation in the country or part thereof where the passing off is alleged to have occurred. But this does not require the plaintiff to be present or to be himself carrying on business in that place. It is the existence of the reputation in that place which is the deciding factor. No doubt Contender developed no reputation until after it began to trade in September 1982. But the Enzed group had a reputation for their business and their products in Western Australia at all material times. The evidence is clear that the respondents sought to take what advantage they could from that reputation by continuing to use the Enzed name and the logos. We would therefore reject the submission that the appellants had no reputation in Western Australia at the relevant time.
Counsel for the appellants submitted that his Honour erred in granting permanent injunctive relief. Upon the basis of the conclusions which we have so far reached we are of opinion that such a submission has no substance. The respondents were carrying on the offending conduct until restrained by the undertakings which they gave the Court once the proceedings had been commenced and an application for interlocutory relief was on foot. If it had not been for the proceedings, it would seem probable that the conduct would have continued. We are reinforced in that conclusion by a consideration of some of the principal submissions upon which the respondents relied. It was their case that they were entitled to use the drawing logo and to maintain the name Enzed in the telephone directory. This seems to us to indicate that if they had not been restrained by the interlocutory relief, and subsequently the permanent relief, they would have continued with the conduct of which the appellants complained.
Next it was submitted that no relief should have been granted against Mr. Smith. It was said that he was the person for whose conduct Wynthea Pty Limited was held to be vicariously liable and could not therefore himself be made liable as an accessory. Reliance was placed upon dicta in Mallan v. Lee (1949) 80 CLR 198 per Dixon J. (as he was) at pp 213-216.
In Mallan v. Lee the company's liability was vicarious. It would not be in breach of s. 230 of the Income Tax Assessment Act 1936 unless its public officer knowingly and wilfully understated on its behalf the amount of income which it derived. Here the legislation is quite different. The Court's power to grant injunctive relief is provided for in s. 80 of the Trade Practices Act. The Court is, inter alia, empowered to grant such relief against a person who is engaged in, or is proposing to engage in, conduct that constitutes or would constitute a contravention of a provision of Part V of the Act in which ss. 52 and 53 appear. The Court also has power to grant an injunction restraining a person from aiding, abetting, counselling or procuring a person to contravene such a provision or from being in any way knowingly concerned in, or party to, the contravention by a person of such a provision. In our opinion the section conferred clear power upon his Honour to grant injunctive relief against Mr. Smith. The misleading or deceptive conduct was that of Wynthea Pty. Limited. Mr. Smith procured that conduct and was knowingly concerned in Wynthea's contravention of the Act. His Honour did not award damages. But s. 82 of the Trade Practices Act when read together with s. 75B conferred power on the Court to make an award of damages against Mr. Smith if damages were found proved. We would therefore reject the submission concerning Mr. Smith's liability.
So far as the cross-appeal is concerned that leaves the question of copyright to which we now come. Lockhart J. found that the drawing logo was an artistic work, the author of which was Mr. Anderson, a resident of New Zealand. Mr. Anderson was commissioned and paid in New Zealand to make the drawing for the second appellant. The learned primary Judge also found that under New Zealand law the second appellant was the owner of the copyright in the drawing.
After a consideration of ss. 115 and 184(1)(a) of the Copyright Act 1968 and the Copyright (International Protection) Regulations, his Honour said:-

"In my opinion the Copyright (International Protection) Regulations operate to entitle the second applicant to sue under s. 115 of the Australian Act, as owner of the copyright, for its infringement. One turns to New Zealand law to determine whether the second applicant is the owner of the copyright: see in particular s. 9 of the New Zealand Copyright Act.

In my opinion Wynthea has infringed the copyright of the second applicant in the drawing logo."

The question is whether it was competent for the second appellant to sue for an infringement of copyright. Difficulty arises because the Australian and New Zealand Copyright Acts contain different provisions concerning the ownership of the copyright in commissioned work. Sub-section 9(3) of the Copyright Act 1962 (N.Z.) provides, in effect, that where a person commissions, inter alia, the making of a drawing and pays or agrees to pay for it in money or money's worth and the work is made in pursuance of that commission, the person who commissioned the work shall be entitled to any copyright subsisting therein.
Section 35 of the Australian Act provides for the ownership of copyright in original works. Subject to the section, the author of a literary, dramatic, musical or artistic work is the owner of any copyright subsisting in the work by virtue of "this Part". Section 35 appears in Part III which is headed, "Copyright in Original, Literary, Dramatic, Musical and Artistic Works." Sub-section 35(5) provides that where a person makes for valuable consideration an agreement with another person for, inter alia, the drawing of a portrait or the making of an engraving by the other person and the work is made in pursuance of the agreement, the first mentioned person is the owner of the copyright. There was no submission in the present case that the drawing logo was a portrait or an engraving; it would seem that no such submission could have been successful (see the definition of "engraving" in sub-section 10(1) and Ricketson, The Law of Intellectual Property (1984) pp. 316-7.
Section 32 deals with original works in which copyright subsists. It distinguishes between published and unpublished works. The drawing logo is a published work. In the case of such a work, copyright subsists in it only if the first publication of the work took place in Australia and the author of the work was a qualified person at the time when the work was first published. "Qualified person" means in effect an Australian citizen or a person resident in Australia. Thus s. 32 read in isolation would mean that no Australian copyright could subsist in the drawing logo because the first publication took place in New Zealand and the artist (i.e. the author), Mr. Anderson, was not a qualified person.
However, s. 32 commences with the words, "Subject to this Act". It is necessary to read it in conjunction with certain of the provisions of Part VIII of the Act. That Part is entitled, "Extension or Restriction of Operation of Act". Section 184, which is one of the sections in Part VIII, provides, so far as relevant, as follows:-

"184. (1) Subject to this section, the regulations may make provision applying any of the provisions of this Act specified in the regulations, in relation to a country (other than Australia) so specified, in any one or more of the following ways:

(a) so that the provisions apply in relation to literary, dramatic, musical or artistic works or editions first published, or sound recordings or cinematograph films made or first published, in that country in like manner as those provisions apply in relation to literary, dramatic, musical or artistic works or editions first published, or sound recordings or cinematograph films made or first published, in Australia;

. . . . . . . . . . . . . . . . .

(c) so that the provisions apply in relation to persons who, at a material time, are citizens or nationals of that country in like manner as those provisions apply in relation to persons who, at such a time, are Australian citizens;

(d) so that the provisions apply in relation to persons who, at a material time, are resident in that country in like manner as those provisions apply in relation to persons who, at such a time, are resident in Australia;

. . . . . . . . . . . . . . . . . ."

General power to make regulations is conferred by s. 249 of the Copyright Act. Pursuant to ss. 184 and 249, the Copyright (International Protection Regulations) were made. Regulation 4 of the regulations, so far as material, is as follows:-

"4(1) Subject to these Regulations, the provisions of the Act apply in relation to literary, dramatic, musical and artistic works and editions first published, and sound recordings and cinematograph films made or first published, in a country that constitutes, or forms part of, the territory of a Country specified in Part I or Part II of Schedule I in like manner as those provisions apply in relation to literary, dramatic, musical and artistic works and editions first published, and sound recordings and cinematograph films made or first published, in Australia.

. . . . . . . . . . . . . . . . . . . .

(3) Subject to these Regulations, the provisions of the Act relating to works and other subject-matter apply in relation to persons who, at a material time, are citizens or nationals of a Country specified in Part I or Part II of Schedule I in like manner as those provisions apply in relation to persons who, at a material time, are Australian citizens.

(4) Subject to these Regulations, the provisions of the Act relating to works and other subject-matter apply in relation to persons who, at a material time, are resident in a country that constitutes, or forms part of, the territory of a Country specified in Part I or Part II of Schedule I in like manner as those provisions apply in relation to persons who, at a material time, are resident in Australia."

New Zealand is a country specified in Part I of Schedule I to the Regulations. The effect of reg. 4 is that the provisions of the Australian Act apply in relation to the drawing logo and Mr. Anderson in like manner as the provisions apply in relation to artistic works first published in Australia and to citizens or residents of Australia.
Under the Copyright Act the only person who may bring an action for infringement is the owner of the copyright or an exclusive licensee thereof; ss. 115 and 119. Copyright may be assigned or may devolve by operation of law; s. 196. There is no question of assignment or devolution by operation of law here. The question is whether the second appellant who commissioned Mr. Anderson to design the drawing logo may sue. In Australia it could only do so if it were the owner; it would not be the owner under Australian law; see sub-secs. 35(2) and (5) mentioned above.
The question then is whether the operation of s. 184 and reg. 4 of the Copyright (International Protection) Regulations lead to the conclusion that one looks at the New Zealand Act to determine the ownership of the copyright for present purposes. Unless they do, the second appellant has no title to sue.
Regulation 4(1) is expressed in general terms and without limitation. Consequently when it stipulates that the provisions of the Act apply in relation to the drawing logo and to a New Zealand resident, there is no reason to exclude the Australian provisions relating to ownership of copyright. The protection afforded by the Australian Act in relation to the subject matter and persons referred to in s. 184 and reg. 4 is no greater and no less than that provided for works first published in Australia by a qualified person. It is difficult to see how any other interpretation of reg. 4 was intended when it is borne in mind that there is in reg. 4 no express or implied limitation on the operation of the Australian provisions.
If it be thought that there is any uncertainty or ambiguity in the provisions of the Copyright Act and the relevant regulations, that uncertainty or ambiguity is resolved in favour of the construction we have adopted if one has regard to the provisions of the Berne Convention to which both Australia and New Zealand are parties. That such a course is permissible, if there be uncertainty or ambiguity, is well established; Salamon v. Commissioners of Customs and Excise (1967) 2 QB 116 at pp 143-5 and Warwick Film Productions Limited v. Eisinger (1969) 1 Ch 508 at p 521.
The Berne Convention of 1886 has been revised on a number of occasions, lastly by the Paris Revision in 1971. Australia is bound by that Revision but New Zealand is not. However, New Zealand is bound by the Rome Revision of 1928 to which Australia was also a party. That Revision provided in Article 4(1) that authors who are nationals of any of the countries of the Union shall enjoy in countries other than the country of origin of the work the rights which the respective laws do now or may hereafter grant "to natives" as well as the rights specially granted by the Convention; Copinger on the Law of Copyright, 7th Ed., p. 411. Article 5(1) of the Paris Revision is in similar terms; Copinger and Skone James on Copyright, 12th Ed., p. 853. The Copyright (International Protection) Regulations were made to give effect to Australia's international obligations under the Berne Convention. They are in accordance with its provisions in that they afford national treatment to authors who are nationals of other countries of the Union.
In summary reg. 4 effects a limited extension to the Australian Act. If it is only by reason of place of publication or residential or other status of the author that the Australian Act does not apply, then reg. 4 provides that the Act may, in specified circumstances, nevertheless apply. Regulation 4 has expressly specified the areas in which the operation of the Act is to be extended. Other than in the specified areas of extension, the Act is to operate normally and without modification. It follows that in the absence of an assignment or exclusive licence Mr. Anderson is the only person entitled to bring an action in Australia for infringement. Accordingly, we would allow the cross-appeal in relation to the question of copyright.
We turn then to the appeal itself. The principal submission relied upon by counsel for the appellants was that, upon the basis of his findings, his Honour was bound to make some award of damages to each of the appellants. Central to the appellants' submission that his Honour was bound to award some damages in his finding already quoted in the context earlier mentioned which was as follows:-

"I accept that C. & S. caused some loss or damage to Contender; but it is impossible to calculate the amount of that loss or, indeed, the basis on which it can be determined or measure. Any attempt to determine that loss would be sheer speculation."

But this statement must be read in the light of a number of qualifications one of which we may describe as an overriding qualification and which we shall mention last. The other qualifications are:-

(a) "I am not satisifed, however, that any substantial loss or damage was suffered by Contender by reason of the conduct of C. & S."
(b) "The reality is that Contender's poor performance is essentially due to causes other than any competition presented by the respondents."
(c) " . . . it is impossible to say to what extent any diminution of Contender's business due to the competition of C. & S. can be further severed into legitimate competition and competition attributable to the unfair trade practices of C. & S."
That latter statement led to some discussion during the argument as to whether the matters stated in para. (h) (p. 19), being the last of his Honour's eight specified factors explaining Contender's poor performance, were intended to embrace both fair and unfair competition by C. & S. We think the better view is that they were and that explains the qualification which his Honour later made.
The overriding qualification to which we refer was his Honour's clear statement that he rejected the amended budget as a basis for the quantification of the appellants' damages. His Honour made that clear on a number of occasions, last of all towards the end of his judgment after he had specified the many reasons why he thought that Contender had fared badly. He said:-

"I am not satisfied therefore that, even if it were legitimate to regard the amended budget of Contender as a reliable base from which to determine loss or damage resulting from the activities of the respondents, it could be said with any confidence that any such loss or damage is attributable to the conduct of the respondents."

It is to be observed that this sentence immediately precedes the qualification set out in (b) above and that the last part of the sentence is the explanation for the statement made in (b).

Counsel for the appellants did not attempt before us to tie his flag to the masthead of the amended budget. He did not submit that his Honour's findings concerning it should be distrubed. All he said was that the budget provided some guide as to the upper limit of the claim. Thereafter it went into the background of the case.
But counsel submitted that upon his Honour's findings he was bound to make some award of damages to each of the appellants, no matter that the task was difficult and involved much speculation. For this submission he relied upon Chaplin v. Hicks (1911) 2 KB 786 and upon a number of other authorities which have followed it. Chaplin v. Hicks was a case in which the plaintiff sued the defendant for breach of contract because she was wrongfully deprived of a chance of being amongst the finalists in a competition which the defendant had conducted. There was no issue in the Court of Appeal as to the defendant's breach of contract. Nor was there any doubt that the plaintiff had suffered some loss, no matter how difficult it was to quantify it. The only question was whether the award of #100 damages to the plaintiff by the jury should be set aside and judgment entered for nominal damages instead. The Court of Appeal rejected the submission. Fletcher Moulton L.J. said (p. 796):-

"But in most cases it may be said that there is no recognised measure of damages and the jury must give what they think to be an adequate solatium under all the circumstances of the case".

In Biggin & Co. Limited v. Permanite Limited (1951) 1 KB 422, Devlin J. (as he was) said (pp. 438-439):-

"Is the plaintiff to recover nominal damages only because he cannot prove against either defendant what part of the depreciation in value was due to his acts? It is one thing to say as I have said that this is the sort of situation which parties in contemplating the measure of damages would be glad to avoid, and it is another thing to say that it is one which must necessarily result in an injured plaintiff obtaining no satisfaction. I think that in such a situation the court is bound to do the best that it can . . . It is only that where precise evidence is obtainable the court naturally expects to have it. Where it is not, the court must do the best it can.

The emphasis is ours.

In Callaghan v. William C. Lynch Pty Limited (1962) NSWR 871 the Full Court of the Supreme Court of New South Wales said (p. 877):-

"Thus, a jury, doing the best it can, may have to form conclusions on matters, on slender material; and to make allowance for contingencies, even to the extent of guess-work or speculation . . . . . . . . . . . . . . . . . . . . . . many cases illustrate that uncertainty in the quantification of damage, either in cases of contract or tort, does not prevent an assessment; provided that some broad estimate can be made".

Counsel for the appellants relied on a number of other authorities to which we do not find it necessary to refer. The principle is clear. If the Court finds damage has occurred it must do its best to quantify the loss even if a degree of speculation and guess work is involved. Furthermore, if actual damage is suffered, the award must be for more than nominal damages. We should add that we can see no reason why this principle should not apply in cases under the Trade Practices Act as well as in cases at common law. We emphasise, however, that the principle applies only when the court finds that loss or damage has occurred. It is not enough for a plaintiff merely to show wrongful conduct by the defendant.
The first question to be resolved is whether counsel was entitled to put aside the budget upon which he had relied at the trial and, before us, to take advantage of such findings as were made in favour of the appellants in his Honour's secondary approach to the question of damages which, as we have said, was made subject to his rejection of the primary approach. In our opinion counsel is entitled to take the course he has. Really his Honour approached the matter by putting the budget aside and then examining the evidence to see whether he was persuaded, nevertheless, that some basis existed for an award of damages. That is not precisely how his Honour expressed himself but that is the effect of what was done.
Upon the basis of the analysis of his Honour's findings earlier made, the question then arises as to whether counsel for the appellant was correct in saying that his Honour found that Contender suffered some damage. It is convenient to mention at this stage that there is no indication in his Honour's judgment that he found that any damage had been suffered by any appellant except Contender. Counsel for the appellants, nevertheless, submitted that it was apparent that each of the first four appellants (and, we assume, CAPS) had suffered some damage because of the reputation they have in Western Australia in Enzed products. In our opinion there is no basis in the evidence to which we were referred for that submission. The submission should therefore be rejected.
Then, in relation to the second and third appellants, it was submitted that they were entitled to damages because of the loss of wholesale business due in turn to business lost by Contender itself. That submission depends in part on the outcome of the submission that Contender was entitled to an award of damages.
We turn to that question. It gives rise to more difficult questions. That is partly due to some ambiguity in the language used in the judgment. At times his Honour appears to be saying that he has found that Contender suffered some damage. Importantly, however, his Honour's final conclusion earlier quoted was:-

"I am not satisfied therefore that . . . it could be said with any confidence that any such loss or damage is attributable to the conduct of the respondents. The reality is that Contender's poor performance is essentially due to causes other than any competition presented by the respondents."

In our opinion, that is tantamount to saying that Contender had not established any damage as a result of the conduct of which it complained. It follows that his Honour correctly declined to award any damages either to Contender or to the second and third appellants.

We should add that counsel for the appellants expressly declined to make any submission challenging his Honour's primary findings on the question of damages. The reason for this was, no doubt, that in counsel's submission the findings disclosed that his Honour had found some damage to have been suffered. Be that as it may, we have not ourselves analyzed the evidence to determine whether his Honour's findings should be disturbed. We would say, however, that having heard the various submissions of counsel for both the appellants and the respondents and looked at a great deal of the material which was before his Honour, it does not readily occur to us that any challenge to his Honour's primary findings on the question of damages would have been successful. In this regard we have not overlooked his finding (p. 13 above) that in at least one instance the confusion between the two businesses resulted in the respondents' firm obtaining a small order intended for Contender with the consequent loss to Contender of that order. If that were the only evidence on this matter, as we believe it is, damage would not be established. One would need to know whether the order would have been a profitable one. There is no evidence of this. One would plainly require that evidence in a case such as this because of his Honour's findings in relation to the many reasons for the unsatisfactory performance of Contender.
Finally, there is the question of the costs of the hearing at first instance. Ought his Honour's decision to make no order as to costs be distrubed? From the appellants' point of view our conclusion would mean no change to the substantive result except that their cause of action for infringement of copyright would have failed. They are, therefore, in a somewhat worse position than they were under his Honour's orders. It is true that they were held to be entitled to injunctive relief. But from what we were told in argument, a great deal of the hearing at first instance was taken up with evidence concerning the damages claim. In those circumstances we would not be disposed to make an order for costs more favourable to the appellants than was his Honour's order.
We would have the same view of the respondents' situation, subject to the question of whether there needs to be any change to take into account our view that the cause of action for infringement of copyright should fail. In our opinion very little extra time could have been involved in relation to this question. Furthermore, the appellants were entitled to injunctive relief for their causes of action based on breaches of the Trade Practices Act. In practical terms this relief yielded them protection which was no less extensive than the protection they would have received from an injunction restraining further infringement of copyright. Finally, his Honour did not award any damages in respect of the infringement. In all those circumstances we would not distrub his Honour's order as to costs.
We would therefore dismiss the appeal and uphold the cross-appeal in so far as it relates to copyright; we would otherwise dismiss the cross-appeal. In the light of the respondents' success on the question of copyright, we would order the appellants to pay one-fifth of the respondents' costs of the appeal and the cross-appeal. The two were heard together and we think that this is a more practical order than an order distinguishing between the costs of the appeal and the costs of the cross-appeal.

[1984] FCA 416

06 DECEMBER 1984