Hoser v Prospero Productions Pty Ltd

[2004] FCA 1376

FEDERAL COURT OF AUSTRALIA

Hoser v Prospero Productions Pty Ltd & Ors [2004] FCA 1376

TRADEMARKS – interlocutory relief – applicant owns registered trademarks “snakebuster” and “snakebusters” - respondent produced television program entitled “The Snakebuster” – one episode already aired – balance of convenience favoured the respondent

RAYMOND HOSER v PROSPERO PRODUCTIONS PTY LTD
N 1497 of 2004

HILL J
8 OCTOBER 2004
SYDNEY

IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY	N 1497 OF 2004

BETWEEN:	RAYMOND HOSER APPLICANT
AND:	PROSPERO PRODUCTIONS PTY LTD RESPONDENT
JUDGE:	HILL J
DATE OF ORDER:	8 OCTOBER 2004
WHERE MADE:	SYDNEY

THE COURT ORDERS THAT:

1. The first respondent pay all monies received for licensing the “Snake Buster” program into an account opened for the purpose and not operated upon till further order.
2. The first respondent, by 10am EST on 12 October 2004 file in Sydney an affidavit setting out all payments received by way of licence fees, and affidavit to be confidential between the parties till further order.
3. The applicant file and serve on or before 13 October 2004 an amended application and statement of claim.
4. The applicant file and serve all evidence on which it proposes to rely on or before 14 October 2004.
5. The respondents file and serve all affidavits on or before 22 October 2004.
6. The matter be stood over to 25 October 2004 at 9.30am before a duty judge.
7. Liberty to apply on 24 hours notice.
8. Costs reserved.

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	N 1497 OF 2004

BETWEEN:	RAYMOND HOSER APPLICANT
AND:	PROSPERO PRODUCTIONS PTY LTD RESPONDENT

JUDGE:	HILL J
DATE:	8 OCTOBER 2004
PLACE:	SYDNEY

REASONS FOR JUDGMENT

HILL J:

1. The applicant seeks interlocutory relief by way of injunctive orders inter alia restraining the fourth respondent, Foxtel Cable Television Pty Ltd, from displaying on Foxtel Networks a program made by Prospero Productions Pty Ltd, the first respondent and entitled "The Snakebuster".  The second and third respondents are officers of or otherwise related to the first respondent.

2. The applicant is a person apparently well known in the area of Australian reptiles.  He has published a number of articles and other works concerning reptiles and is a licensed snake catcher in Australia specifically licensed to remove reptiles from houses.  Since approximately 1984 he has he says used the title "The Snakebuster" or "Snakebusters", which in essence is a business name, describing his role as a snake catcher.

3. He has an Internet domain name, "snakebusters.net", and has three trade mark registrations being mark 912066 for the word "snakebusters" in respect of class 44:

   “Removal of unwanted snakes, reptiles and other wildlife from private premises of persons, companies and other entitles in accordance with State and Federal wildlife laws as well as provision of information on such reptile-related matters including general, zoological and reptile-related consultancy work.”

4. Trademark number 964068, the word "snakebuster" in respect of class 41, being:

   “Television programs, videos, DVDs, Internet sites, books and other medium entertainment relating to snakes, snake catching, snake removals from people's houses as well as similar programs, information documents relating to other reptiles.”

5. The first of those marks was registered in 2002.  The second in July 2003.  In May 2002 the applicant received an email from the third respondent, who advised she was researching a planned program on snake catching.  The applicant in his reply, advised of his ownership of what he referred to as:

   Trademark Internet name snakebusters.net.

6. And asked that she not use the word "snakebusters" as infringing the trademark.  The reply was not totally negative to the idea of assisting the third respondent.  It seems at that time, as the third respondent later advised, the proposed film was in the early stages and the name "Snakebuster" was merely a working title for it.

7. Subsequently the second respondent wrote to the applicant on 27 November 2002 stating that Prospero Productions intended to make a series concerning snakes entitled "Snakebuster".  He disputed any trade mark ownership of the applicant and suggested that the expression "snakebuster" had been used widely throughout Australia.  He made a suggestion of possible settlement to avoid litigation and not opposing the applicant's application for trade mark registration, which apparently had not yet been determined.

8. Subsequently the second respondent did in fact oppose the registration of the trade mark.  For whatever reason that opposition failed.  The applicant was notified by IPL Australia of this in February 2003.

9. Around July/August 2003 the applicant became aware that the first respondent was proceeding with the production of a program under the name "Snakebuster".  He says at that time he wrote to the first respondent requiring that the name not be used.  He wrote also to a Mr Bruce George of Western Australia, who was also a reptile catcher, and who was apparently the star in the program.  Other letters were sent to the major Australian television networks.

10. On 11 August 2003 the second respondent advised he acted both for Mr George and for the first respondent.  He denied infringement, alleging that the applicant had misconceived the extent and nature of trade mark rights.  It was said that any legal action initiated would be defended.

11. It seems that the first respondent continued with the proposal, obtaining backing from the Western Australian Department of the Premier and ultimately obtaining a grant from that Department.  It seems that two of the "Snakebuster" programs produced by the first respondent have already been screened, one of which was in the week preceding 1 October 2004.

12. A copy of one program at least screened was tendered in evidence.  It was entitled "The Snakebuster" and portrayed Mr George in Melbourne.  At or near the commencement of it, Mr George answers the phone as "Snake catcher" and then says:

    I am a licensed snakebuster.

13. I am not aware of any licence for snakebusters in Australia, although there are reptile licences differently so called.

14. It seems that each program is not merely shown once, but on some seven occasions, so that in the week commencing 11 October, Foxtel itself would show the program seven times commencing at 6.00 on 10 October and finishing at 7.30 a.m. on 14 October.  Other channels under arrangements not presently in evidence, are also involved in showing the program in Australia.  These include Transact, Optus, Austair and the Neighbourhood Channel.

15. There is no dispute between the parties that the appropriate test for interlocutory relief is that the applicant demonstrate that there is an arguable issue to be tried and that the balance of convenience favours the grant of injunctive relief.  There is a relationship between those two matters in that the stronger the issue, the perhaps less likely it may be that the injunctive relief would be refused on the grounds of balance of convenience.

16. The applicant clearly has a registered mark, which at least prima facie, can be taken as being valid.  There may be a question, I do not know, whether the applicant has ever used the mark in respect of television programs, being the claimed category.  There is also an issue, which I do not decide now, as to whether the first respondent and/or Foxtel as the company showing the program, can be said to have infringed the mark in any event or whether the word "snakebuster" is used other than as a badge of origin of services.

17. The applicant's case is not put solely on the basis of trade mark, but as well on the basis of the Trade Practices Act and similar State legislation.  The applicant’s ultimate success in the alternative claim would depend upon the reputation of the applicant and matters such as whether the use by the first respondent of the name Snake Buster, in respect of some person other than the applicant would be misleading or deceptive conduct.

18. As I have said, these are all matters that would need to be determined at the final hearing and it really cannot be said that the applicant does not have at least an arguable case in interlocutory proceedings. 

19. The question of whether injunctive relief should be granted at this stage is really, in my view, dependent more upon the balance of convenience for the respondents and for this purpose I do not distinguish between the first, second and third respondents on the one hand and the fourth respondent on the other, although I note that the fourth respondent takes the position largely that the fundamental dispute is one between the applicant and the other respondents, and not it.

20. It is said that injunctive relief should be refused because two episodes out of the ultimate 14 episodes to be broadcast have already been shown on previous occasions, so that any damage which the applicant may suffer has already been suffered.

21. It is submitted that a search of Google on the Internet displays the words "snakebuster" used, for example, in South Africa in respect of a person apparently well known there called Sean Thomas.  The expression "snakebuster" has also been used on the National Geographic Channel and in addition in the years 2002 and 2004 on the ABC in respect of a program called "Aussie Animal Rescue - the Snakebuster", which was broadcast at 6.30 a.m. on 21 January 2004 and concerned Mr Bruce George.

22. It was said that the effect on the parties of the present programs being shown on the cable network was minimal because the audience penetration was small.  It was submitted that no demonstrated adverse impact of at least the showing of the program to date had been shown by Mr Hoser.  It was submitted that there had been significant expenditure outlaid by the first respondent in the production of the programs and this was a matter that should be taken into account.

23. I note that if an injunction were granted there could be a breach of contractual obligations between Prospero and other companies not presently parties to the litigation, as well as between possibly Foxtel and those persons who subscribe to it in the event that programs could not be put to air.  It is not an insignificant matter to note that the present litigation has been launched very late given that there has been correspondence proceeding for well over a year, although Mr Evatt for the applicant points out that it was only last week that his client learned that the actual program was being put to air.

24. I do not think that the balance of convenience favours the grant of injunctive relief at this stage at least. I am particularly concerned by a number of matters.  First, that there are at least four companies including the fourth respondent who are involved in showing the programs in Australia, three of them are not parties presently before me and have not the ability to be heard as to whether programs they might wish to put to air could not be broadcast because of injunctive relief against Foxtel.

25. It is submitted on behalf of Foxtel itself, that it may be virtually impossible at this late stage to stop the program being shown this coming Monday because changing cable or digital programs may have to be done manually, having regard to the fact that some relevant company is moving premises.  There is no actual evidence about this, but perhaps it may be accepted that there are difficulties in the program being changed.  The programs have already been advertised as taking place.

26. If the program is not to be shown there would have to be a need for some other program to be substituted or alternatively the program not run at all, which would be rather unsatisfactory.  It is said, and I do not take this into account to any degree, that if there were changes of program, there would be a need to train call centre staff to deal with persons complaining.  It seems to me that is a matter which Foxtel can overcome if it wishes to do so.

27. However, I am concerned that there are real commercial arrangements between Foxtel and other parties that may be affected should I grant relief at this stage.  Primarily those are I would assume the companies that are likely to broadcast from Australia the program and are presently not parties.  It may, however, include The Discovery Channel and other companies outside Australia.

28. At the present time I do not have evidence before me of the contractual relationships between the first respondent, Prospero, on the one hand or The Discovery Channel as to payment for the screening of the episodes.  It may well be that the first respondent has already received all or a substantial part of the licence fee for the program.  If that is the case, then the order which I propose making will not have any real substantial effect.

29. On the other hand it seems to me at the moment, and as some part of the means of holding the status quo pending a final hearing, that I should order the first respondent to pay all monies received for the licensing of the program, "The Snakebuster", to an account especially opened for the purpose.  Such account should not to be operated upon, however, until further order of the Court.

30. I would also direct that by 10.00 a.m. Standard Eastern Time on Tuesday, the first respondent file with the Court an affidavit setting out all payments that have been received by way of licence fees or otherwise.  That affidavit will be confidential to the parties at this stage and not produced pending further order. 

31. I am influenced also, as may clearly be seen from what I have said, in not granting injunctive relief, that the applicant may be criticised for not having acted sooner in commencing proceedings against the first respondent.  Delay is an important consideration where, as here, commercial interests may be affected.

32. It is obvious that the sooner the matter can proceed for final hearing the better.  I would make the following orders directed at the matter being made ready for hearing:

    1.I direct the applicants to file and serve on or before 13 October, amended application and statement of claim.  The amended application will indicate such other parties as the applicant may wish to include within the litigation.

    2.I direct the applicants to file and serve all evidence upon which the applicant proposes to rely on or before that date.

    3.I will direct the respondents to file and serve all affidavits upon which the respondents propose to rely on or before 22 October.

    4.I order the matter to stand over before the duty judge on 25 October at 9.30 a.m. for further directions.

    5.Liberty to apply on 24 hours notice. 

33. I am not going to make a direction on a final matter, but I would ask all of the legal representatives to perhaps notify my associate of days available for hearing between now and the end of the year so that we can see what possible hearing dates can be allocated for the hearing.

34. I reserve costs.

I certify that the preceding thirty-four (34) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Hill.

Associate:

Dated:            26 October 2004

Counsel for the Applicant:	C A Evatt & M K Rollinson
Solicitor for the Applicant:	Ward Maxwell & Co
Counsel for the First, Second & Third Respondents:	M J Curthoys
Solicitor for the First, Second & Third Respondents:	Fiocco's Lawyers
Counsel for the Fourth Respondent	M Pesman
Solicitor for the Fourth Respondent:	Allens Arthur Robinson
Date of Hearing:	8 October 2004
Date of Judgment:	8 October 2004