IDG Communications Pty Ltd v Niche Media Pty Ltd

[1996] FCA 1005

CATCHWORDS

INTERLOCUTORY INJUNCTION - balance of convenience - whether applicants' case sufficiently strong to warrant granting of interlocutory relief.

Trade Practices Act 1974

IDG COMMUNICATIONS PTY LIMITED and INTERNATIONAL DATA GROUP INC v NICHE MEDIA PTY LIMITED

No. NG 831 of 1996

CORAM:    FOSTER J
DATE:     18 OCTOBER 1996
PLACE:    SYDNEY

IN THE FEDERAL COURT OF AUSTRALIA )
  )
NEW SOUTH WALES DISTRICT REGISTRY )    No. NG 831 of 1996
  )
GENERAL DIVISION                 )

BETWEEN:IDG COMMUNICATIONS PTY LIMITED

First Applicant

INTERNATIONAL DATA GROUP INC

Second Applicant

AND:NICHE MEDIA PTY LIMITED

Respondent

JUDGE MAKING ORDERS:    FOSTER J

DATE:     18 OCTOBER 1996

PLACE:    SYDNEY

MINUTE OF ORDERS

THE COURT ORDERS THAT:

1.The application for interlocutory relief be dismissed.

2.The costs of this application be costs in the cause.

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 )    No. NG 831 of 1996
  )
GENERAL DIVISION                 )

BETWEEN:IDG COMMUNICATIONS PTY LIMITED

First Applicant

INTERNATIONAL DATA GROUP INC

Second Applicant

AND:NICHE MEDIA PTY LIMITED

Respondent

CORAM:    FOSTER J

DATE:     18 OCTOBER 1996

PLACE:    SYDNEY

REASONS FOR JUDGMENT
  (Extempore)

HIS HONOUR:    This is an application in these proceedings for an interlocutory injunction, which I heard yesterday afternoon.  It was brought on at short notice after an order abridging time for service had been made three days ago.  Neither side sought an adjournment and the evidence before me was not lengthy. 

The second applicant is an American corporation which publishes extensively in the field of computer related
information.  It publishes over 200 computer information publications in 63 countries, including Australia.  The first applicant is a wholly owned subsidiary in Australia which carries on a similar publishing business.  The second applicant has, since 1986, published in the United States of America a magazine called "Publish", which is distributed worldwide.  It has been available for sale in Australia since 1990.  It has several hundred Australian subscribers, and apparently 500 copies per months are sold from newsstands.  It carries articles and advertising which are clearly aimed at a specialised readership.

The first applicant has published computer magazines in Australia for over 10 years.  It has included material from the magazine "Publish" in its magazine, "Australian Mac World".  In a copy of the front cover of the October 1987 edition of this magazine, annexed to the affidavit in support of the application, there is a statement that "Publish" is included at page 60 of the magazine.  Although there is no direct evidence of this, it may perhaps be inferred that it was intended to bring to the attention of readers that the magazine would contain some material from the American magazine.

The respondent has published in Australia a magazine called "Desk Top" since 1993.  The magazine had been published by another publisher since 1986.  It contained the same sort of material and was aimed at the same general readership in Australia as the imported magazine "Publish" and the magazines of the first applicant.

In November 1994 the respondent first included in "Desk Top" a section headed "publish".  There was no complaint made by either of the applicants in relation to this section or its repetition in subsequent publications of the magazine.  The section had a masthead distinguishing it as a separate section of the magazine which dealt particularly with matters relating to publishers.  

In July and August 1996 the first applicant advertised, by a press release and newsletter inserts in its magazine "Australian Mac World", its intention of publishing and distributing in Australia an Australian edition of the American magazine "Publish".  This was to be a magazine called "Publish Australia".  It was obviously aimed at the same market and was in fact published on 12 September, 1996. 

Prior to the publication of "Publish Australia", and in response to the notification of its intended appearances, the solicitors for the respondent had written to the first applicant expressing concern and claiming that the respondent had a proprietary right in the masthead "publish" which would be infringed by the publication of "Publish Australia".  Legal action was threatened.  The solicitors for the first applicant responded by denying the existence of such a right and asserting that any right to the masthead resided in the second applicant.  This letter also threatened legal action in relation to the use by the respondent of the name "Publish".  This provoked a further letter from the respondent's solicitors on 27 September 1996 in which legal action was again threatened.  By this time the first publication of "Publish Australia" had appeared.

The threatened legal action from the respondent did not then eventuate, although the Court was informed yesterday that it would bring a cross claim in the present proceedings.  However, in the October edition of "Desk Top", at the bottom of the cover sheet in what I would regard as a fairly inconspicuous position, the words "incorporating publish" appeared.  The appearance of the word "publish" bore a similarity to, but was by no means identical with, the same word in the applicant's magazine.

It was this event which provoked the current proceedings in which the applicants seek interlocutory and final injunctions restraining the respondent from using the wording on the front of "Desk Top".  The allegation is made that its use is false and misleading or deceptive conduct within relevant sections of the Trade Practices Act 1974 and also amounts to passing off. This allegation is denied by the respondent who, however, concedes that this is the first time that the word "incorporating" has been used in relation to the word "publish" on its front cover. In the past the word
"publish" has appeared alone, indicating to its readership that the usual section under that name was to be found within.

I have heard the usual arguments as to whether there has been demonstrated that there is a serious issue to be tried and as to the balance of convenience.   The November issue of "Desk Top" is to appear today, and the injunction sought would undoubtedly, on the evidence, impose serious immediate financial hardship on the respondent.  As against this the applicants put the customary argument that estimation of damage in these cases is notoriously difficulty and that injunctive relief is consequently appropriate.  

I must consider, however, in the context of whether interlocutory relief should be granted, the apparent strength or otherwise of the applicant's case.  There is perhaps little doubt that the action of the respondent bears the complexion of commercial cuteness.  However, the question for ultimate decision is whether it was relevantly misleading or deceptive or could constitute passing off of the applicants' property. 

On consideration of the material and weighing of the submissions that have been put to me, I have come to the conclusion that although there is an arguable case, it is by no means a strong one.  Regard must be had in this respect to the very specialised readers market involved in these sort of publications.  The American magazine "Publish" would most likely be well known as would its availability in Australia over the last six years.   The advance publicity of the production of the Australian edition of that magazine would likely lead the particular readership to anticipate the appearance of a magazine of some size with similarities to the existing American magazine. Such a magazine in fact appeared in September.  It would be correspondingly unlikely, notwithstanding the use of the word "incorporating", that the sort of reader in contemplation would be mislead into thinking that the magazine "Publish" was to be found wholly or substantially incorporated within the pages of "Desk Top".  This would be the more unlikely having regard to the fact that for nearly two years that magazine had carried a section entitled "publish". 

Whilst the conduct of the respondent could perhaps produce confusion, the question for ultimate determination is whether it would be deceptive and misleading.  I am not prepared to find that the applicants' case is unarguable but I do not think it sufficiently strong to warrant the granting of the interlocutory relief sought.  Accordingly I dismiss this application.  

I do not consider the conduct of the respondent to have been above reproach, and, indeed, I gave some consideration to whether an injunction should go in respect of future publications.   On reflection overnight I have decided against that course.   However, I do not think the respondent
should have an order for costs.  I order that the costs of this application should be costs in the cause.

I certify that this and the preceding six (6) pages are a true copy of the reasons for judgment herein of the Honourable Justice M. L. Foster.

Associate:

Date:   18 OCTOBER 1996

A P P E A R A N C E S

COUNSEL FOR THE APPLICANT:   R.J. WEBB

INSTRUCTED BY:              KEMP STRANG & CHIPPINDALL

COUNSEL FOR THE RESPONDENT:  G.T.W. MILLER QC
                    with    R.N. GYE

INSTRUCTED BY:              BURDON-SMITH & ASSOCIATES

DATE OF HEARING:            18 OCTOBER 1996

DATE OF JUDGMENT:           18 OCTOBER 1996