Sky Channel Pty Ltd v Southern & Western Community Broadcasters Inc

[1992] FCA 667

JUDG

IN THE FEDERAL COURT OF AUSTRALIA	)
\

ERAL DIVISION

SKY CHANNEL PTY LIMITED

Applicant

AND :	SOUTHERN AND WESTERN COMMUNITY BROADCASTERS INCORPORATED
Respondent

:  HILL J

U: SYDNEY
m: 19 JUNE 1992

EX TEMPORE REASONS FOR JUDGMENT

The applicant, Sky Channel Pty Limited, holds a video audio entertainments information services licence under the Padiocommunications Act 1903 (Cth) to broadcast audio and audio-visual programs by satellite to non-domestic subscribers. It has held that licence since 30 September 1986 and commenced official broadcasting on that day. It seeks interlocutory relief against the respondent, Southern and Western Community Broadcasters Inc, to restrain the use of the word "Sky" by the respondent to identify itself or the services to be operated by it as well as seeking to restrain the use of the call sign "5 Sky" in relation to the service soon to be operated by it.

courses, sporting and other recreational clubs. Subscribers	service are operators of hotels, motels, TAB agencies, race
need a satellite receiving dish to enable them to receive the applicant's service. That service may then be shown on a monitor or monitors which may take the form of a large screen serving an auditorium or, in the case of ordinary hotels and motels, monitors in hotel or motel rooms.
The applicant's service is beamed for approximately 100 hours per week and provides a variety of sporting news, music and entertainment, audio and audio visual programmes. Approximately 27 hours of the weekly service is devoted to purely audio programmes, being the broadcast of music, and according to the evidence in the month of July 101.5 hours of music programming is scheduled. That music is not, however, available through ordinary radio receivers, but it is only available through monitors or television sets fed by the satellite dishes.
The applicant, during the course of its programmes, uses the word "SKY" and "SKY Channel" prominently and regularly. There is no doubt that the applicant is a
substantial company and its operations throughout Australia involve it in reaching some 5800 subscribers with satellite dishes which dishes themselves display the word "SKY" on them. The applicant is the owner of various trademarks and business name registrations in which the word "SKY" appears. Within Adelaide there are 281 subscribers and 509 subscribers throughout South Australia, the first installation in South
Australia having been made in December 1986.
The respondent apparently planned, in 1985 or 1986, to commence a community radio station for the south western and western suburbs of Adelaide. It has, at least since 1986 on documents publicly available, used the words "SKY FM" in logo form. Thus, when announcing to the public its first test transmission, it published a programme guide for that transmission which was to continue for a period of five days on the frequency 101.7 megahertz and used in connection with this transmission a document making it clear that it was a community radio station reaching out to the community from Port Adelaide to Port Willunga.
In connection with that proposed week's transmission, an article appeared in the Southern Times Messenger on Wednesday, 8 January 1986, detailing the proposed activities of the respondent, announced in that article as
proposing to operate under the call sign of "SKY FM" in a catchment area including Glenelg, Marion, Brighton, Henley,
Grange, Happy Valley, West Torrens, Norlunga and Willunga.
As at that date, apparently the respondent was in the process of making submissions to the Australian Broadcasting Tribunal and the Federal Communications Department, seeking approval for a licence to conduct a station. It appears from a report published by the Australian Broadcasting Tribunal of December 1991, that since the early transmission dates of 5-9 June 1986, there have been a further 11 test transmissions, each of approximately one week, in August and December 1986, November-December 1987, March, August and December 1988, October 1989 and January and June 1990, and April and September 1991.
It is perhaps ironical that in October 1986 the respondent's solicitors wrote to the applicant advising of its existence, and reserving any rights of action that the respondent may have against the applicant. In response, the applicant's solicitors denied that its trading in the area of broadcasting was likely to lead to confusion or mislead or deceive members of the public. In due course, the respondent's application for a licence was granted and in January of this year the Department of Transport and Communications wrote to the respondent concerning the steps that might be taken consequent upon the broadcasting tribunal
having determined to offer the respondent a licence for a new
public FM radio service for the southern and western region of
Adelaide in South Australia in December 1991.
The respondent, on 17 January 1992, sought permission to use three potential call signs as alternatives:
"5 SKY", "5 CST" and "5 SEA". On 14 May 1992, the Federation
of Australian Commercial Television Stations advised, in correspondence that is before me, that the Minister had
allocated the call sign "5 SKY". Following the permission given to use the call sign, proceedings were commenced in this Court by the applicant for judicial review of the decision allocating to the respondents the call sign "5 SKY".
Those proceedings came before Einfeld J on 5 June of this year. On that day, his Honour made various orders by consent, one order being a declaration that the decision to allocate the call sign to the respondent conferred no right on the respondent to use the name "5 SKY", nor did it in any way affect any right in the respondent to use the name. His Honour reserved decision on other aspects of the case. Judgment has not yet been delivered.
The respondent proposes to commence transmission of its programs and to use the call sign "5 SKY" in connection therewith unless restrained on 28 June 1992. It is against this background that the applicant seeks urgent interlocutory
relief.
There was no dispute between the parties as to the appropriate test to be applied for the granting of interlocutory relief, namely that the applicant must show there to be an arguable issue and that the balance of convenience favours the grant of an injunction. These two matters are not totally independent of each other for one impinges upon the other.
For the applicant it was submitted that the applicant's case was not so much that members of the public might fall into error in believing that the FM service of the respondent was in fact the service of the applicant, but rather that the broadcasting of programmes by the respondent using the call sign "5 SKY" would leave persons to believe that the broadcasting service was, if not associated with the applicant, at least under the sponsorship or approval of the applicant.
It was pointed out that SKY Channel, the applicant's service, was a service to subscribers and that those subscribers pay money by way of subscription in the expectation that they would receive a broadcast from the applicant. The broadcasting by the respondent of its service could induce the belief in those subscribers that the applicant is not only in the business of subscriber broadcasting, but also free to air broadcasting. This, in
deterred from entering into arrangements with the applicant. turn, might lead to prospective or existing subscribers being
Thus, it was said that the continued use of the call sign "5 SKY" by the respondent after 28 June would, or might, lead to damage to the respondent which it would be difficult or impossible to quantify, and that accordingly the balance of convenience favoured the grant of an injunction. It was also submitted that to date the call sign was not important to the respondent in that the respondent had put up, by way of suggestion to the relevant government authority, three call signs, two of which did not include the word "Sky" and further, that in any event there was no legal obligation to use the call sign in the course of programmes.

The applicant operates what may be described as a
subscription service throughout Australia. Subscribers to the

The respondent proffered an undertaking to the Court

in the following terms:

"To t h e g r e a t e s t e x t e n t p o s s i b l e during

broadcas t s the c a l l s i g n 5 SKY would be

used i n conjunct ion w i t h t h e words

'community radio' and a t l e a s t once every

ha1 f -hour during broadcas t s t h e opera tor

w i l l be i d e n t i f i e d a s community r a d i o SKY

M operated by Southern and Western

Community Broadcasters ."

It is submitted that the giving of this undertaking
would substantially alleviate any risk to the applicant and

thereby assist in maintaining the status quo pending the

ultimate hearing of the proceedings. First, it may be said that whilst it is true that

the applicant has an arguable case, its case is far from

strong. There are real arguments to be advanced for the respondent that there is neither a real risk of confusion nor a real risk that members of the public might be deceived or misled into believing that the FM radio service was in any way connected with or had sponsorship or the approval of the applicant. It may be said that the applicant operates in an area totally diverse from the respondent's activities, so much so that it would be unlikely that members of the public would believe that there was any relationship at all between the applicant and the respondent or their services. The services of the applicant are available only through television, the service of the respondents only through radio. One is a subscription service, the other is a community access radio service.

There is a further difficulty in the argument of the applicants, although it is a matter which can remain until the final resolution of the matter, in that the word "Sky" is an ordinary English word and in the context of radio and television it may not be able to be said that the applicant has a monopoly on the use of the word. Be that as it may, I am prepared to accept, for the purpose of the interlocutory proceeding, that the applicant has an arguable case and that the issue to be addressed is the balance of convenience. In

this connection I note that although the respondent has not legally been able to broadcast in the period from 1986 to date

it has, over the years between, taken some steps to identify itself with the "SKY" name through publications, test broadcasts and newspaper articles.

The extent of this reputation is a matter which will have to wait until the final hearing. Nevertheless, I note also that the respondent has been given, by the appropriate government authority, the right to use the call sign although I accept, of course, that that decision does not confer any rights upon the respondent which it does not already have.

For the respondent now to abandon such reputation as it had developed in the "SKY FM" name, could cause damage to the reapondent of a commercial kind. In part this can be compensated for by an undertaking as to damages which was, of course, proffered by the applicant, but that compensation may not be an adequate one. On the other hand, it is difficult to see, with respect to the submissions of the applicant, that the applicant will suffer unduly in the short time that will elapse between 28 June and the ultimate hearing of the case.

It was submitted that subscribers might be induced not to subscribe or perhaps to let their subscriptions fall. In reality, and on the evidence as it is before me at the moment, I have some difficulty in knowing whether subscribers

the existence of the respondent's service. for the applicant's product would even be remotely aware of

Such danger as there could be, is, in my view, alleviated to a large extent, although I accept not totally, by the respondent's undertaking which will at least ensure on a regular basis that the real owner of the 5 SKY radio station is made known to the general public. The form in which the undertaking is given reflects the fact that the respondent is

staffed, to some extent at least, by volunteer announcers who might slip up if an absolute undertaking were given that every time the call sign was used it would be in association with words such as "community radio". However, it seems to me that such an undertaking will ensure that listeners will understand that they are listening to a community radio program and that, if those listeners stay listening at least, such program is operated by the respondent.

In these circumstances, it seems to me that the balance of convenience does not favour an injunction being granted at this stage, and this is so particularly having regard to the fact that I do not regard the applicant's case as particularly strong.

I would, however, now propose to set a timetable for
the final disposition of the hearing to ensure that the period
between now and that hearing is as short as it may be kept so

be minimised. that any possible harm to the applicant, if there be any, will

I certify that this and the
preceding nine (9) pages
are a true copy of the Reasons
for Judgment herein of his Honour
Mr Justice Hill.

Associate: f L u L d d L

Date: 19 June 1992

Solicitors Blake Dawson Waldron

for Applicant:

Counsel and Solicitors	J. Oakley instructed by
for Respondent:	Camatta Lempens Pty Ltd
Date of Hearing:	19 June 1992
Date Judgment Delivered:	19 June 1992