Happy Landings Pty Ltd v Magazine Promotions Aust Pty Ltd

[1984] FCA 133

Re: HAPPY LANDINGS PTY. LIMITED; ROSS HORNE; TONI BOBBIN
And: MAGAZINE PROMOTIONS AUSTRALIA PTY. LIMITED
No. G 124 of 1984
(1984) ATPR para 40-459/2 IPR 347
Trade Practices

COURT

IN THE FEDERAL COURT OF AUSTRALIA

NEW SOUTH WALES DISTRICT REGISTRY
GENERAL DIVISION
Lockhart J.

CATCHWORDS

Trade Practices - consumer protection - application for interlocutory injunction - publication of cookery books with virtually identical names - differences between the books - whether prima facie case exists - where balance of convenience lies.

Trade Practices Act; ss. 52, 87

HEARING

SYDNEY

#DATE 4:5:1984

ORDER

1. the motion for interlocutory injunctive relief be dismissed;

2. the costs of the motion be the respondent's costs in the proceeding.

JUDGE1

This is a motion for interlocutory injunctions by Happy Landings Pty. Limited, the publisher, and Ross Horne and Toni Bobbin, the authors, of a cookery book entitled The Health Revolution Cookbook, to restrain the respondent, Magazine Promotions Australia Pty. Limited from publishing, distributing, selling and promoting the sale of its own cookery book entitled The Healthy Revolution Cookbook. The applicants assert that the respondent is engaging in misleading or deceptive conduct or conduct that is likely to mislead or deceive in contravention of s. 52, paras. 53(c) and (d) and s. 55 of the Trade Practices Act, 1974.

1. The facts are not in dispute. Happy Landings Pty. Limited ("Happy Landings") was incorporated in New South Wales in 1983 and carries on business as a publisher. Mr. Horne is the managing director of, and the majority shareholder in, Happy Landings. Mrs. Bobbin holds shares in Happy Landings. Mr. Horne is the author of books entitled The Health Revolution, and The New Health Revolution and, as I have said, is the co-author with Mrs. Bobbin of The Health Revolution Cookbook which is the cookery book the subject of the present proceedings.

2. Mr. Horne published his first book, The Health Revolution, in 1981. Happy Landings first published the books entitled The New Health Revolution and The Health Revolution Cookbook in August 1983. I shall for convenience refer to Happy Landings' The Health Revolution Cookbook as "the applicants' cookery book".

3. The applicants' cookery book and the other books to which I have referred have been extensively advertised and promoted throughout Australia and New Zealand under their respective titles since their publication. The advertising and promotion has taken and continues to take various forms including display of the books at newsagencies, bookshops, department stores and health food shops. The books have been featured on various best seller lists and promoted on television and radio and by the daily press and trade journals. Mr. Horne has given public lectures throughout Australia on the topics of diet and health. He has also been interviewed on radio and television and on occasions together with Mrs. Bobbin. The television programmes include programmes known as "The Mike Walsh Show", "Willesee At Seven", "Eleven AM" and "Good Morning Australia".

4. During the radio and television interviews involving Mr. Horne he has been introduced as the author of The Health Revolution, The New Health Revolution and The Health Revolution Cookbook; and both the interviewer and Mr. Horne during those interviews referred to those books by their respective titles. Similarly, during radio programmes those books have been referred to by their titles. Each of the three books published by the applicants has enjoyed strong sales through newsagencies, bookshops and department stores from 1981 to the present time. About 25,000 copies of The Health Revolution have been sold in Australia and New Zealand; about 45,000 copies of The Health Revolution Cookbook have been sold since August 1983 in Australia and New Zealand and about 50,000 copies of The New Health Revolution have been sold there.

5. About 50 per cent of the sales of The New Health Revolution and the applicants cookery book are made in newsagencies and about 50 per cent in bookshops and other outlets. There is some evidence which points to a slightly different ratio but I prefer the evidence which I have just mentioned. There is a continuing market for each of the three books of the applicants. The recommended retail prices of the three books are as follows: The Health Revolution in hard cover $14.95 and in soft cover $8.95. The New Health Revolution $9.95, and the applicants' cookery book $8.95.

6. The applicants' cookery book contains recipes which purport to use the nutritional information contained in the books The Health Revolution and The New Health Revolution and are said to be designed to improve dietary habits.

7. The respondent publishes a wide variety of magazines, including Woman's Day, Dolly, Cosmopolitan, Good Housekeeping and Omega. The respondent intended late in 1982 to publish a cookery book and took steps to do so. The editorial portion of the book was written by Miss Jane Barnes who also composed the recipes. Miss Barnes is a dietician. The name for the respondent's cookery book was selected in mid or late 1983 as The Healthy Revolution Cookbook. I shall refer to it as the respondent's cookery book. It is what is called by the respondent a "special project" book and was produced in 1984. It went on sale on 9 april 1984. About 65,000 copies were distributed to newsagents throughout Australia during the preceding week and it is stocked by about 6,000 newsagents in Australia, representing about 95 per cent of all newsagents. There are no retail outlets for the respondent's cookery book other than newsagencies. About 15,000 copies have been retained by the respondent for further orders and to meet any overseas requirements if they arise. The respondent's cookery book has been advertised principally in its own magazines and by posters distributed to newsagents.

8. The applicants argued that by reason of the respondent's conduct in distributing, selling and promoting its cookery book under the title The Healthy Revolution Cookbook, members of the public have been misled or deceived into believing and will continue to be misled or deceived into believing:
   
   (a) that the respondent's cookery book is the applicants'
   

cookery book;

(b) that the respondent's cookery book is a sequel to or a

serialised or magazine version or a "spin off" of the applicant's cookery book; or

(c) that the applicants sponsor or approve the respondent's

cookery book, are in some way connected in the course of trade with that publication, are affiliated with the respondent, or have some business connection with it or approve of it.

1. A considerable body of evidence, principally by affidavit, was given before me, including evidence relating to knowledge of members of the public with respect to both publications. Ultimately, it is for the Court to determine whether the respondent's conduct contravenes the consumer protection provisions of the Trade Practices Act, and the evidence of attitudes or views of members of the public in the present case is of limited assistance.

2. I am not, of course, finally deciding the issues in this case, I am considering whether there is a seriously arguable question to be tried at the final hearing or, as it is sometimes said, whether a prima facie case has been established, and the related question of where the balance of convenience lies. The tests have been formulated in various ways in many cases, and I need not elaborate them here.

3. The applicants' cookery book is the third in a series of books relating to dietary matters. It is a small soft-covered book. The basic colour of the front cover of the book is red with white print. The front cover plainly bears the name The Health Revolution Cookbook together with the names of the authors Mr. Horne and Mrs. Bobbin, and it states that it incorporates "Pritikin and Gerson (Anti-Cancer) Diets". It also contains a statement "Diet is the Answer" together with certain other printed material. The name The Health Revolution Cookbook and the names of Mr. Horne and Mrs. Bobbin also appear on the outside spine of the book.

4. The respondent's cookery book is very different in size to the applicant's cookery book. It to my eye is akin to a magazine rather than a book in the usual sense, and it is essentially the same size and of not dissimilar thickness to some of the magazines published by the respondent including Womans Day. The cover of the respondent's cookery book is also of generally similar appearance to some of its publications including Womans Day, although, of course, the writing inscribed on it is different. The respondent's cookery book bears in plain type the words "The Healthy Revolution Cookbook", the words "The Healthy ... Cookbook" being blue in colour and the word "Revolution" being red. Also, beside the word "The" appears in white print with red surrounds the words "Womans Day". The name of the author, Jane Barnes, also appears on the front cover. Nothing appears on the spine of the cover. Immaterial matter appears on the back cover.

5. The applicants' case is based essentially on the close correspondence, indeed virtual identity, of the two names of the two cookery books in suit. I should mention, however, that there are other publications which use the word "revolution" in conjunction with the word "diet", though I need not refer to them in detail. The words "health" or "healthy" and "revolution" are ordinary English words. Their use in relation to matters of diet or health is not surprising because there is evidence that what some describe as "the health revolution" started some years ago and that both publications are intended to express the "revolutionary" thinking generated initially by others. The words "health revolution" (I draw no distinction between those words and the words "healthy revolution") are common and descriptive of the subject matter.

6. It was submitted by the applicants that the words "health revolution" have acquired a secondary meaning, distinctive of the applicants' publications including its cookery book. Whether this is proved to be so at the final hearing is a matter on which I offer no comment, except to say that I am not, for present purposes, satisfied that this is so; but I do not suggest that the point is not arguable.

7. The applicants point in particular to a section of the public which they say exists, comprising people who have not yet seen the applicants' cookery book, but have heard about it or read of it, and who, when asking for it by name in the shops, particularly newsagencies, would assume if they saw it there or were handed it there that it was the one they were seeking, even if it be in fact the respondent's cookery book.

8. Notwithstanding the correspondence between or virtual identity of the names of the two cookery books, and the fact that each is a cookery book essentially containing recipes that purport to improve health by dietary means, there are substantial differences between the two publications. I have already touched on some of them.

9. The presence of the words "Womans Day" on the front cover of the respondent's cookery book is important. There was some debate about whether those words comprised part of the title to the respondent's cookery book or not. I do not think that this matters. The fact is that the words are there, whether part of the book's title or not and they plainly identify the respondent's cookery book as having an association with the magazine Womans Day.

10. The respondent's cookery book is basically a magazine and is different from the applicants' cookery book in size, shape, general get-up and format. The front cover of each publication, I think, is important for present purposes, and they are essentially different notwithstanding the use of virtually identical names.

11. I shall say something about the contents of the publications, although I do not think this is the critical matter on which the case turns at this stage. They are, of course, the same in the sense that in the main they both comprise recipes that purport to be conscious of health. But the applicants' cookery book is a rather subdued recitation of the basic principles of the two diets incorporated in it namely, those of Mr. Pritikin and Dr. Gerson; whereas the recipes appearing in the respondent's cookery book are a rather glossy presentation of recipes and photographs preceded by a brief reference to certain dietary principles and a cooking method called "froiling".

12. Although the applicants' case is plainly not unarguable, it is not, in my view, a strong case.

13. There is a considerable body of evidence touching the question of the difficulties which would confront the respondent if it were to be restrained from further publishing, distributing, selling or advertising its cookery book. I do not propose to refer to this evidence in detail. It relates essentially to the method of sale of the respondent's cookery book, the difficulties of recalling copies of it from newsagents, and problems associated with changing pages in its various magazines which advertise it.

14. The applicants' case is, amongst other things, that if interlocutory relief is refused it may suffer reduction in sales of its cookery book, and may afford an opportunity during the passage of time between now and the final hearing for the respondent's cookery book to acquire a reputation in the mind of the public which may injure the applicants.

15. The applicants also assert that any inconvenience or loss that may be suffered by the respondent if interlocutory relief is granted is really of its own making, because the circumstances which it relies on as constituting prejudice if injunctions are granted arose principally from the respondent's own acts and after notice was given to the respondent of the applicants' claims.

16. I am satisfied that there would be practical problems facing the respondent if interlocutory relief were to be granted against it, and that the balance of convenience points to the refusal of such relief. When I add to that conclusion my view previously expressed as to the strength of the applicants' case I am satisfied that interlocutory relief should be refused.

17. I think, however, there should be an early final hearing of the matter, and that directions to that end should be given as soon as possible.

18. The respondent seeks an order that the applicants pay its costs of this motion for interlocutory relief. The applicants have submitted that the proper order for costs is that they be costs in the proceeding. In my opinion the proper order is that the costs of the motion for interlocutory injunctive relief be the respondent's costs in the proceeding. Accordingly the orders of the court are:
    
    1) that the motion for interlocutory injunctive relief be
    

dismissed;

2) that the costs of the motion be the respondent's costs

in the proceeding.