Fobaco Pty Ltd v Ausae Conference Services Pty Ltd
[1988] FCA 361
•26 May 1988
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IN THE FEDERAL COURT OF AUSTRALIA ) 1 NEW SOUTH WALES DISTRICT REGISTRY
) No. G887 of 1988 ) GENERAL DIVISION )
BETWEEN: FOBACO PTY. LTD. Applicant
AND : AUSAE CONFERENCE SERVICES PTY. LTD.
First Respondent
VICTOR GABAY
Second Respondent
CORRIGENDUN
Amendment to the Reasons for Judgment of Gummow J. delivered
26 May 1988 -
Page 13, line 7 - delete "respondents'"
22 July 1988 Patrlcia Lane
Assoclate to Gummow J.
NOT FOR DISTRIBUTION
IN THE FEDERAL COURT OF AUSTRALIA )
NEW SOUTH WALES DISTRICT REGISTRY ) No. G887 of 1988 1 GENERAL DIVISION )
BETWEEN: FOBACO PTY. LTD. Applicant
AND : AUSAE CONFERENCE
SERVICES PTY. LTD.
First Respondent
CORAM: GUMMOW J. PLACE: SYDNEY
DATE : 26 MAY 1988. EX TEMPORE REASONS FOR JUDGMENT
HIS HONOUR: The appllcants clalm i
relief on the footing first, of copyrlght Infringement,
secondly, of contravention of S. 52 of the Trade Practlces Act
1974 ("the TP Act") and thlrdly, of passing-off. The tendencyin argument has been to consider together the second and third
attending the publlc lnterest element In Part V of the TP Act grounds though there are, of course, speclal conslderatlons lncludlng the injunctive remedy under S. 80. The proceedlngs were commenced by an appllcatlon f l l e d
on 29 Aprll 1988. On the return of that appllcatlon on 19 May, there was apparently some dlscusslon of a proposal by the respondents for a tlmetable which, lf agreed and adhered to,
would have got the matter ready early ln July for a final hearing.
Those discussions did not bear fruit and the
consequences were that the application for the interlocutory Injunctive relief mentioned above was heard yesterday and today. The applicant appears to have taken the view that It
would have been too late In the day for a final hearing to have been had in accordance with the projected timetable.
The respondents reply - and I think there is some substance in this - that even if that were s o , the lateness of the application would, in a real sense, have been a product of the delay of the applicants in instituting the proceedlngs and if there has been damage suffered, it has flowed from events of some months ago. The respondents further say that the situation will not really be satlsfactorily reversed at thls stage by the form of injunctive relief that is sought.
The relief sought appears in somewhat general terms in
para. 7 of the application and also in the form of draft orders handed up yesterday by Mr. Hulme QC, who appears for the
applicant. What 1 s sought is an order that each respondent be
restrained from issuing or displaying printed materlal at or lnconnection with the Australian Society of Associatlon
Executlves National Conference and/or Exhlbltlon due to be h e l d
at the Hilton Hotel in Melbourne on 14-16 September 1988, without includlng in or annexing to such printed materlal a particular statement.
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The statement is to be In a partlcular form and size and to contaln the words "The Australian Society of Assoclatlon Executives Natlonal Conference and Exhibition has no connection wlth the conferences 'Communlcatlon Link-Up '88' and 'Associating 87' or wlth the organiser of such conferences Fobaco Pty. Limlted, trading as 'Australian Convention Management Services'".
The dispute involves consideration in particular of two documents, exhibits C and D, the provenance of which is explained by Mr. Foda, the managing director of the appllcant, in his affidavlt sworn 20 Aprll 1988. Exhibit C contains on the front and back cover much red block printing; exhiblt D has blue as its predominant colour.
Exhibit C is headed "Communication Link-Up ' 8 8 " In
very bold letters. It is accompanied by the words "SYMPOSIUM h EXHIBITION 14-16 August 1988" and it IS stated on the front
cover to be organised by Australian Convention Management Services. The place of the proposed symposlum and exhlbitlon
1 s not shown on the front cover. However, from the materlal inslde the document, it appears that the functlon is to be held at the Hilton International Hotel in Sydney.
Exhibit D 1s headed in bold blue prlnt "THE AUSTRALIAN
SOCIETY OF ASSOCIATION EXECUTIVES, NATIONAL CONFERENCE L EXHIBITION". Further down the page there appear the words, "ASSOCIATION MANAGEMENT 1988" and the words In smaller p r l n t , "The Challenge of Change".
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At the bottom of the first page, the event is sard to be organlsed by AUSAE Conference Servlces. Thls is the name under which the first respondent conducts its business. The date 1s shown as 14-16 September 1988 and the venue as the Hilton International Hotel, Melbourne. On the back cover of each brochure IS a further ldentlflcatlon of the particular organisation which 1s organislng the event in question.
Mr. Foda says in his affidavit that he designed a
brochure entitled, "ASSOCIATING '87". A copy of this 1s exhlblt B. That document on the front page identifles a symposium and exhrbitlon held on 13-15 August 1987 at the Hilton International Hotel, Sydney and was sponsored by the Australian Society of Association Executives, N.S.W. Dlvision. The colour red again is prominently featured on the cover of this document, although not to the degree of exhlblt C. l l r . Foda goes on to say in his affidavit that the brochure which 1s exhibit C was distributed at the conclusion of the symposlum and exhibition held, as indicated, in August 1987 ln Sydney. At that symposium and exhlbitlon, it seems there were some 214
persons in attendance. Mr. Foda says in his affidavit, that on
15 August 1987, this being at the conclusion of the conference, he arranged for the distrlbutlon of the brochure, "Communlcatlon Link-Up '88", that IS to say exhibit C, for the proposed symposium and exhlbltlon to be held on 14-16 August
1988. The distribution was to all sponsors and exhibitors present at the Sydney function.
I should also lndlcate that the brochures ln question,
exhlbits C and D, appear to be directed to potential sponsors of these functions rather than potential delegates. There is evidence from one deponent, Jennifer Kathleen Cronln, who
attended at Sydney in August 1987 as an exhibitor although she
1s also a member of the New South Wales Dlvlslon of the Australian Society of Assoclation Executlves.
In his affidavit, Mr. Foda says that the productlon of
exhlbit B was a development of earller work done by hlm. He says that he was present as an observer at a meetlng of the national body of 14 August 1987. In evidence as an annexure
to his affidavit are the minutes of the annual general meetlng of the Australian Society of Association Executives held on 14 August 1987 at 5 . 1 5 pm at the Hilton Internatlonal Hotel, Sydney. One of the matters dealt with in the minutes was the declsion that the next annual conference would be sponsored by the Victorlan Division and the venue would be at the Hyatt on Collins Hotel in the heart of Melbourne.
Whilst there was no restrictlon on use of the name decided that a different name should be chosen, belng a name "Associating" for the 1988 symposlum and exhibitlon, Mr. Foda
that would have the abllity of retalnlng the clients who had
attended the 1987 conference In Sydney and would also appeal to a greater audience and to other assoclat1ons; hence, he chose the title, "Communication Link-up '88". The brochure in
questlon, exhibit C, cost $ 2 5 0 0 to print and he had 1000 coples printed.
Mr. Foda says that it was in late 1987 that he first saw the brochure put out by the
first respondent, being exhibit
D. He says he endeavoured to consult a particular solicitor specialising in copyright matters and that after a number of telephone calls not being returned, he decided to seek advice elsewhere. He says that in between times he went overseas and this would appear to cover a period of approxlmately two months.
Towards the end of January 1988, he consulted his
present sollcitor and subsequently had a conference with counsel. He says that following on that conference, his
solicitor wrote a letter dated 7 March 1988, a copy of which is in evidence. The respondents point to the further gap between the end of January and 7 March. A reply was received from the respondent's sollcitors dated 10 March 1988 and this letter would appear to have drawn the battle lines between the parties.
However, Mr. Foda goes on to say that In addition a withoutprejudlce conference has been held with certain parties
No dates are given for these communications or the conference. and this was unsuccessful, as had been other communicatlons. The present proceedings, as I have said, were commenced on 29
Aprll 1988.
After the rnstitution of the proceedings,
correspondence ensued between the solicitors for the parties and on 5 May 1988, the solicitors for the respondents wrote to
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the sollcitor for the appllcant statlng, inter alla, that the -- distribution of the blue brochure, exhlblt D, had already taken place so that further delivery was not an issue. The letter stated that the flrst respondent was prepared to undertake not to use in future publlcations a text which was the same as that in the brochure, exhiblt C.
As I have indicated, there is a complalnt as to
copyright infringement. The subject matter of the complaint is not that the front or back cover of exhibit D, the blue brochure, infringes material on the front or back cover of the red brochure, exhiblt C . Rather, the complalnt 1s directed to the contents, particularly the prlnted material, on the Inner pages.
For the purposes of these proceedings only,
the respondents do not deny that there 1s the necessary literacy copyright in that material on the inner pages of the red brochure, exhibit C. It 1s apparent, and I thlnk it 1s not really disputed, that on that footlng there is then at
least a serious question to be trled as to whether or not there
has been a copyright infrlngement. The circumstances in which
exhlblt D was prepared appear from the affidavlt of M r . L l n k s
(who 1 s a director of Company Institutes & Assoclations Publishing Services Pty. Ltd.) and from materials he produced
on subpoena.
Havlng compared the brochures exhlblts C and D and considered the affidavit evldence of Mr. Links, together wlth the materials produced by him on subpoena, my vlew is that there is a quite strong case at an interlocutory level on the copyright infringement ground.
However it does appear from the evidence that the stocks of the brochure, exhibit D, were distributed several months ago and there is no threat to repeat that activity. In particular, the respondents, by their solicitor, lnformed the Court that they were prepared to offer an undertaking that they would not further distribute the brochure, a copy of which was
exhibit D, pending the final determination of the proceedings
or further order.I turn now to the affidavit of the second respondent, Mr. Gabay, sworn 25 May 1988. The deponent says that the company of which he is the managlng dlrector, that is to say the first respondent, was appointed in September 1 9 8 7 to organise the next conference of the Australian Society of Association Executives. He also says that the shares in hls company are owned as to 50 per cent by AWA Travel Pty. Limited, and as to the balance by the Australian Society of Association
Executives. He says that In about October 1 9 8 7 , he discovered that the grand ballroom at the Hilton Hotel, Melbourne would not be avallable for the proposed natlonal conference on the dates originally set, that is to say 6 to 8 October 1 9 8 8 , and accordingly he changed the booking to 14-16 September 1 9 8 8 , these being the only dates available within one month of the original date.
He also indicates that the Australian Society has run
a conference biennially, the last two being at Thredbo in 1986
and at Sydney in 1984. On the other hand, the New South Wales DiViSiOn of the Australian Society ran a conference in 1987 which was a year in which the Australian Society dld n o t run and was not scheduled to run a conference, it being, as it were, an uneven year.
Mr. Gabay says that it is his belief that the history of the relationship between the two bodies has been that the Divisional bodies run conferences in those years in whlch the national body does not run a conference, and he says that so far as he is aware, 1988 is the first year in which a Divisional body has endorsed a conference to be held in a year in which a National conference is also to be held.
The question then arises as to whether there is any
ground for complaint based on contravention or apprehendedcontraventlon of S. 5 2 of the TP Act or passing-off, such as
merit interlocutory in~unctrve relief of the kind sought. The applicants rely on this branch of the case for the
total impression produced by the brochure, exhlblt D, together
wlth the changed venue to the Melbourne Hilton, rather than the Hyatt on Collins Street, and in the change of date, so as to produce the result that the one conference will be at the Hilton Hotel - the Hilton International, Sydney on 14-16 August 1988 and the other conference, the Natlonal conference, wlll be the Hilton Internatlonal Hotel ln Melbourne on 14-16 September 1988, that 1s to say exactly one month later.
There is evidence from Jennlfer Kathleen Cronin, as I
earlier indicated, who 1s the conventlon sales manager of the Conrad International Hotel and Jupiters Casino at Broadbeach in Queensland. She has held that posrtion for two years and 1s the person nominated by the hotel as a member of the AUStKallan Society of Association Executives, New South Wales Divlslon. She says she knows Hr. and Mrs Foda and that towards the end of 1987 she received the blue brochure, exhlblt D.
She noted, however, that the brochure was distributed
on behalf of the national body of the Australian Society of Association Executives. While she says she assumed that the brochure meant that the other functlon - that descrlbed In the red brochure, exhibit C - had been rescheduled, she was later dlsabused of that belief. She has now rearranged her schedule and will be attending both conferences.
My view is that there is not a real prospect that persons to whom the blue brochure, exhlblt D, was directed, would readlly or reasonably form any bellef that the Melbourne conference descrlbed In that brochure had been arranged to supersede the function at the Sydney Hilton for 14-16 August 1988.
The eye-catching ldentlflcation materlal on the front
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cover of both documents 15, ln my view, sufflciently dlstlnct to preserve the contrast between the two functlons. The clrcumstance that there may be some confusion probably arlses, if at all, essentlally from the matters referred to in paras. 7 and 8 of Mr. Gabay’s affidavit, namely the dlsruptlon of the previous temporal relationship between biennlal conferences conducted by the Australian Society of Assoclation Executives and conferences run by Divisional bodies.
The result then, so far as concerns S . 52 of the TP Act and passing-off, 1 s that the applicant, in my view, has barely made out the requlrement that there is a serious question to be tried on these issues. I have then to take into account the balance of convenience and, in particular, the matters urged by the respondents concerning the delay in the Institution of these proceedings for Interlocutory rellef and
in the evident lnutlllty, at this stage, of mandatory relief of
the kind sought, together with the evrdent unfairness to the respondents that would transpire if at the flnal hearing the appllcant failed to obtain any final relief.
I agree with respect to the views expressed by Burchett J in Janssen Pharmaceutical Pty. Limited v Pfizer Pty. Limited ATPR 4 0 - 6 5 4 , as to the avallabllity of mandatory r e l l e f of the kind sought here pursuant to S. 80 of the TP Act.
However, his Honour was speaking in the context of a
final hearing. I bear ln mind also what was said in the context of an lnterlocutory application by Pincus J in FA1 - Insurances Limited v Advance Bank Australia Llmlted (1986) 68
ALR 1 3 3 , particularly at 135. H I S Honour there sald: Although the power of the court to make an order for corrective action in interlocutory proceedings is clear, it will not ordinarlly be thought convenient to do so, in my view, unless It seems reasonably obvlous that the conduct complained of would probably be held
at the trial to fall withln S 52 of the
Trade Practices Act.
One must be cautlous against framing as flxed tests any
observations governing the exercise of the ample powers reposed in the Court by S. 80 of the TP Act. I have recently expressed my views as to the efflcacy of interlocutory mandatory relief where the basis of ]urisdiction rests not in S. 80 of the TP Act, but In the general law, such as occurs where relief is sought by way of injunction pursuant to S. 39B of the Judiciary Act 1903. The decision is Businessworld Computers Pty. Limited v Australian Telecommunications Commission, 2 2 April 1988. As L sald at pages 7 and 8 of that judgment, statutory grants of particular injunctive powers, such as S. 80 of the Act, may require special consideration.
In all the circumstances, havlng regard t o the element
of delay whlch sufficiently appears from the recltation of the facts, to the comparatlve weakness of the case put forward on an interlocutory footlng by the applicant, and to the sentiments expressed by Pincus J with regard to the nature of the interlocutory rellef sought here, I have reached Ehe concluslon that the matter 1 s best disposed of as follows:
Upon the undertaking to the Court given for the
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respondents by their sollcltor, that pendlng determination of these proceedings or earlier further order, they and each of them will not by themselves, thelr servants and agents and the servants and agents of each of them, further dlstribute the brochure, a copy of which 1 s exhiblt D herein ORDER that the respondents' application for interlocutory rnlunctlve relief be dismissed.
I certify that thls and the twelve ( 1 2 ) preceding pages are a true copy of the
Reasons for Judgment of his Honour Mr.Justlce Gummow.
Assoclate: pfifi4e Date: 26 May 1988.
Counsel and Solicitors for Mr. R.S. Hulme Q.C. and Mr.
the Applicant: E.L. Dearn instructed by John R. Quinn h Co. Counsel and Solicitors for Mr. P. Argy of Mallesons
the Respondents: Stephen Jaques
Date of Hearing: 2 5 and 26 May 1988. Date of Judgment: 26 May 1988.
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