Great Moments Pty Ltd v Collingwood Football Club Ltd
[1996] FCA 676
•18 JULY 1996
CATCHWORDS
Practice and Procedure - interlocutory relief - tests applicable
Trade Practices - whether conduct likely to mislead - whether reputation established - whether consumers likely to conclude that the products emanate from the applicant
Tort - passing off - whether reputation established - whether consumers likely to conclude that the products emanate from the applicant
Obligation of Confidence - whether shown to exist
Trade Practices Act 1974 s 52, s 53
Great Moments Pty Limited v Collingwood Football Club Limited & Ors
No. NG 553 of 1996
CORAM:Lehane J
PLACE:Sydney
DATE:18 July 1996
IN THE FEDERAL COURT OF AUSTRALIA )
NEW SOUTH WALES DISTRICT REGISTRY )
GENERAL DIVISION ) No. NG 553 of 1996
BETWEEN:GREAT MOMENTS PTY LIMITED
Applicant
AND:COLLINGWOOD FOOTBALL CLUB LIMITED
First Respondent
COLIN DOOLAN
Second Respondent
BULL GRAPHICS PTY LIMITED
Third Respondent
PHILIP ANTHONY JAMES
Fourth Respondent
ROSS STAPLETON
Fifth Respondent
CORAM:Lehane J
PLACE:Sydney
DATE:18 July 1996
MINUTE OF ORDERS
THE COURT ORDERS:
THAT the interlocutory relief sought is refused.
THE COURT DIRECTS:THAT the question of costs be stood over to 9:30am on 1 August 1996.
THAT the exhibits be returned.
NOTE: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.
IN THE FEDERAL COURT OF AUSTRALIA )
NEW SOUTH WALES DISTRICT REGISTRY )
GENERAL DIVISION ) No. NG 553 of 1996
BETWEEN:GREAT MOMENTS PTY LIMITED
Applicant
AND:COLLINGWOOD FOOTBALL CLUB LIMITED
First Respondent
COLIN DOOLAN
Second Respondent
BULL GRAPHICS PTY LIMITED
Third Respondent
PHILIP ANTHONY JAMES
Fourth Respondent
ROSS STAPLETON
Fifth Respondent
CORAM:Lehane J
PLACE:Sydney
DATE:18 July 1996
EXTEMPORE REASONS FOR JUDGMENT
LEHANE J: By its amended application filed in Court today the applicant seeks to restrain the respondents from making, distributing, supplying, offering for sale, marketing or promoting in Australia certain products described as limited edition prints in the form of a particular print in evidence before me. Further injunctive relief is sought of an ancillary kind, and other ancillary relief as well.
Before me today is a claim by the applicant for interlocutory relief. The claim arises in these circumstances. The evidence is that the applicant, and in particular its director, Mr Priday (who gave evidence before me today), has devised a form of limited edition print which is attractive to supporters of particular football codes or clubs. The prints are of a high quality. Each set of prints comprises a limited edition in the conventional sense: that is to say, they are printed in a limited number and each is endorsed with a record of the total number in the series and the number in that series of the print concerned.
During 1994 and 1995 the applicant successfully introduced this concept to various rugby league clubs in Sydney and produced a number of series of prints depicting what are described as memorabilia relating to particular clubs or particular players. Several of them bear the identifying insignia of a club; many also bear the signatures of well known players.
There is evidence before me of substantial marketing in New South Wales of these prints. The marketing has taken the form, for example, of press advertisements, radio interviews and features on the Sydney version of the television program "The Footy Show" which is, on the evidence, watched by a quite extraordinary proportion of those people in New South Wales who have television sets.
During the latter part of 1995 the applicant gave consideration to the possibility that its product might readily be promoted to AFL clubs in Melbourne and Mr Priday made arrangements to travel to Melbourne to meet with representatives of four of the significant clubs in the AFL competition. His evidence is that during the week of 8 November 1995
he gave presentations to representatives of each of those clubs. One of them was the Collingwood club. On 10 November 1995 Mr Priday met and had a discussion with a Mr Doolan, the marketing manager of that club. Additionally, he left samples of prints and was asked to return later when Mr Doolan expected to have had the opportunity to discuss the proposal with other officials of the club.
When Mr Priday returned later that day, he was informed that Mr Doolan had not had the opportunity to speak to some of the officials and accordingly Mr Priday left the sample prints with him. Mr Doolan asked for a formal written presentation. Mr Priday agreed to provide one and did so. After a certain amount of delay, and what seems on the evidence to have been obfuscatory conduct by Collingwood, the ultimate conclusion of the negotiations was that Collingwood declined the applicant's proposal.
Meantime, however, Mr Priday had been in touch with the fifth respondent, Mr Stapleton. Mr Stapleton is a partner of the fourth respondent, Mr James, in a firm called James Stapleton. Mr Stapleton rang Mr Priday in October seeking a copy of a print produced by the applicant for the Manly Rugby League Club. After discussion Mr Priday agreed to send Mr Stapleton a brochure and he did so.
Some days later, Messrs Priday and Stapleton had a further conversation from which it emerged that the brochure previously sent had not arrived and another was sent. Subsequently Mr Stapleton, having received the brochure, ordered a copy of the Manly print and arrangements were made for the two men to meet in Melbourne so that Mr Priday could give Mr Stapleton his copy of the print.
That meeting took place as arranged. Mr Priday had forgotten to bring with him the print which Mr Stapleton had ordered; however, a discussion ensued between them from which it emerged that Mr Stapleton was engaged in a business not entirely unlike that of the applicant. Mr Stapleton suggested that there might be a possibility of his firm working with the applicant on projects relating to the AFL. There was discussion as to the clubs Mr Priday intended to approach. Additionally, Mr Priday mentioned certain aspects of the prints which the applicant had produced and certain information relating to their marketing which he considered important in the sense that they enhanced the popularity, in his opinion, of those prints.
It emerged that later, on 9 May 1996, there was in existence a Collingwood print, somewhat similar to the print which Mr Priday had proposed to Mr Doolan. On that day Mr Priday was informed that a friend who had watched an episode of the Melbourne version of "The Footy Show" had seen a Collingwood print promoted on that program. He arranged to obtain one and did so on 4 June. He then consulted his solicitors, who in turn consulted counsel, as a result of which these proceedings ultimately were commenced.
In summary, the applicant claims against all respondents (the third respondent being a company with which Mr James is associated and which was concerned with the production of the Collingwood print) relief in reliance on sections 52 and 53 of the Trade Practices Act, the tort of passing off, and alleged infringement of an obligation of confidence.
The question of a possible obligation of confidence can, I think, be dealt with reasonably briefly. The allegations in that respect appear to rely principally upon use of information provided by Mr Priday to Mr Stapleton and also perhaps information and material which he supplied to Mr Doolan. The difficulty, however, quite apart from the question of whether information supplied to Mr Stapleton was in fact passed on by him to Mr James (who on the evidence devised the Collingwood print), is in identifying material in the information supplied which was not already in the public domain. It may be that there is a question to be tried on that aspect of the case; but on the material before me today it seems not to be a strong one.
The issues relating to section 52 and passing off are rather more difficult. I need before proceeding further to add a little more to my account of the facts as they appear from the evidence. The applicant has since its unsuccessful dealings with the Collingwood club had greater success in its dealings with three other clubs: Melbourne, Richmond and Essendon. A print produced for the Richmond club was launched at a ceremony on 21 March this year and considerable publicity resulted from that. Similarly, in relation to the Melbourne club, an official signing ceremony, as it is described, took place at the Melbourne Cricket Ground on 10 April 1996 and again significant publicity resulted including the featuring, so called, of that ceremony on the Melbourne version of "The Footy Show": that show, like its counterpart in Sydney, indeed even more so, appears to enjoy a very large audience.
In that context the first question I have to consider is whether there is a serious question to be tried as to whether, in publishing the Collingwood print, the respondents have
engaged in conduct which is misleading or deceptive or have acted in such a way as to indicate that their print has the same source or origin as those of the applicant or enjoys some association with, or sponsorship of, the applicant.
As Mr Ireland said in his submissions in reply, even on an interlocutory basis the answer to those questions is very much a matter of impression. The Collingwood print is in evidence, as are a number of prints produced by the applicant. There are obvious similarities between the Collingwood print and the applicant's prints; there are also some differences. Equally, there are once again very obvious similarities between each of the various prints produced by the applicant but there are some differences between them as well. There are features common to most or at least a number of them. One is a limited edition sticker which includes a reference to the applicant's name. Another feature that reappears in a number of the applicant's prints though not all, is the signatures of a number of players. Sometimes, though not always, those signatures appear in a block in the centre of the print. Common to all the applicant's prints are a number of photographic images, arranged in a variety of ways, of memorabilia, players, teams, football garb and various other matters or objects associated with the game. Another feature of some, but by no means all, of the applicant's prints is what was described in submissions as something similar to a watermark: that is, the representation of a number of names in faint type, by way of background, covering in some cases a good deal of the print and overlapping with other material on it.
If one then turns to the Collingwood print (that is, the respondents' print), there are obvious similarities with the prints produced by the applicant. There is a limited edition sticker; this one, however, bears, in very small type, the name James Stapleton Marketing. There are signatures in a block in the middle of the print. There are photographic images of persons and objects connected with the club and with the game. There are names printed in faint type by way of background, though in a way that is somewhat different from the watermark effect appearing on some of the applicant's prints.
There is also produced, in association with the Collingwood print, a booklet of quite high quality which contains pictures of a number of the items of memorabilia that the print depicts and, on transparent film covering the pictures, descriptions of what they represent. That has not been done in relation to the applicant's prints, though one of the applicant's complaints is that Mr Priday explicitly suggested during his conversations in Melbourne that an accompanying booklet would be a useful promotional idea; and there is evidence that, in association with at least two of the applicant's prints, booklets of some kind have been produced, though apparently of a rather different kind and some time after the prints themselves were first launched.
Having thus generally described, I hope sufficiently for present purposes, the material with which the proceedings are concerned, I now must decide whether there is a serious case to be tried that, in publishing the Collingwood print, the respondents have engaged in conduct which is misleading or deceptive, or have passed that print off as a print, inter alia, emanating from the applicant.
Two matters in my view tell rather heavily against the applicant in this respect. One is that, on the evidence, the publicity which the applicant's material has received in Victoria is such as to maximise in the minds of people seeing it an association between prints and a club, or prints and football, or prints and particular players, and to lay very little if any stress on the applicant as the source, or indeed a source, of the prints. It is quite clear that the primary marketing stress is upon the association between each print and the particular club whose supporters may be expected to seek to buy it.
That, I think, must make it very difficult for the applicant to succeed in an endeavour to establish that it has, in Victoria, a reputation such that persons interested in these prints are likely to be misled into thinking that the Collingwood print comes from the same source as other prints which they may have seen either directly or in advertising material, including on television. In short, it seems to me that the applicant faces considerable difficulty in establishing a reputation of that kind in Victoria; and Victoria is unquestionably the relevant market, if it is not an even more limited one for these purposes.
There is another difficulty facing the applicant which brings me back to Mr Ireland's comment that the matter is very much one of impression. I have before me a number of prints, all of which clearly are of high quality, between all of which there are considerable similarities and between each of which there are also differences. The question ultimately is whether persons who might be expected to buy prints of this kind are likely, looking at any one of them, to form the view that it has the same source as each of the others: particularly, of course, whether such a person, looking at the
Collingwood print, is likely to conclude that it emanates from the same source as the prints produced by the applicant.
I must say that I think that is highly unlikely. The form of the prints and the way in which they have been promoted combine to give the impression that each has a source in a club, though clubs have no doubt acquired from some commercial source the expertise required to produce them; but there is nothing, it seems to me, in the prints, which is likely to suggest that all have the same source.
Of course the respondents' print is differentiated from those of the applicant at least by having on it the different limited edition sticker; but even if there were no such stickers on any of the prints, although I would hesitate to say there is not a question to be tried, in my view the applicant would still face, on this aspect of the case, formidable difficulties.
I can well understand that, in the light of the history which I have recounted, the applicant may feel that it has not been dealt with entirely frankly or perhaps fairly. The question I have to answer, however, is whether there is a sufficiently strong case before me that a legal wrong has been committed to justify the grant of an injunction.
In my view, Mr Webb, who appeared for the first and second respondents, was correct in submitting that in addition to considering the question whether there is a serious issue to be tried and the balance of convenience I must consider the adequacy of damages; I think he was equally correct in suggesting that frequently the three issues tend to run together:
that the strength of the applicant's case is relevant to the consideration of the balance of convenience, as is the adequacy or otherwise of damages.
One reason why it was said to be desirable that I decide the interlocutory proceedings today is that the Collingwood print is to be the subject of a segment on this evening's edition of the Melbourne version of "The Footy Show". That will, of course, be a very significant promotion of the print. If it were the case that the promotion is likely to confuse in the minds of viewers the Collingwood print and its source with the applicant's prints and their source, or to deceive viewers or mislead them into thinking that the Collingwood print and the applicant's prints have the same source, then clearly the impending promotion would be a matter strongly affecting the balance of convenience in favour of the applicant.
For the reasons I have given, however, I think it is highly unlikely that the program will have that effect. The program, it seems to me, will merely reinforce in the minds of those interested in the Collingwood club that their club has done exactly what some other clubs have done; not that the club is making available a print which has the same source as other similar prints which viewers may have seen.
Submissions have been put to me on other matters going to the balance of convenience; I do not think I need spend a great deal of time on them. For example, it has been put on behalf of the applicant that little inconvenience or damage is likely to result from delay because, if ultimately the respondents are permitted to publish the Collingwood print, the market for that print among Collingwood supporters will by no means have disappeared.
On the other hand it is said that it is intended as a centenary print, that this is the centenary year and that therefore delay must have some effect on marketability.
Other matters have been mentioned, such as embarrassment to the club with its supporters if a print which has already received significant publicity among them is withdrawn. In that respect also, reference has been made to the period which has elapsed between the time when the applicant first learnt of the existence of the Collingwood print and the commencement of these proceedings.
In my view, disregarding the strength or otherwise of the applicant's case, it cannot be said that the balance of convenience clearly favours the applicant. If one takes into account what I believe at this interlocutory stage - and it must be stressed that this is an interlocutory stage and I am by no means finally deciding these issues - to be the relative weakness of the applicant's case, then in my view the balance clearly favours the respondents.
For those reasons, I refuse the interlocutory relief sought. I stand the question of costs over to 9.30 am on Thursday, 1 August 1996, and order that the exhibits be returned.
I certify that this and the preceding 10 pages are a true copy of the Reasons for Judgment of the Honourable Justice Lehane.
Associate:
Dated: 1 August 1996
Heard: 18 July 1996
Place: Sydney
Decision: 18 July 1996
Appearances: Mr J M Ireland QC and Ms J E Stuckey-Clarke of counsel instructed by Holman Webb appeared for the applicant.
Mr R J Webb of counsel instructed by Mahonys appeared for the first and second respondents.
Mr A J L Ogborne of counsel instructed by Dwyer & Company appeared for the third, fourth and fifth respondents.
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