Trading Post Australia Pty Ltd (ACN 001 821 156) v; Northern Star Ltd (ACN 000 011 174)

[2000] FCA 992

FEDERAL COURT OF AUSTRALIA

Trading Post Australia Pty Ltd (ACN 001 821 156) v
Northern Star Ltd (ACN 000 011 174) [2000] FCA 992

INJUNCTIONS – application for interlocutory injunctions – applicants and respondents publish regional papers containing classified advertisements – applicants allege misleading and deceptive conduct under s 52 of Trade Practices Act 1974 (Cth), passing off, and infringement of copyright in compilation – undertakings given – whether orders should be made further limiting manner and form in which respondents can publish paper – points of similarity between publications – whether serious issue to be tried as to whether members of public wanting to advertise or purchase goods or services would be misled – copyright in compilations

TRADING POST AUSTRALIA PTY LTD (FORMERLY COMMERCIAL DYNAMICS PTY LTD) (ACN 001 821 156) AND RESEARCH RESOURCES PTY LTD (ACN 001 007 256) v NORTHERN STAR LTD (ACN 000 011 174) AND APN NEWS & MEDIA LTD (ACN 008 637 643)

N 779 OF 2000

MOORE J
25 JULY 2000
SYDNEY

IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY	N 779 OF 2000

BETWEEN:

TRADING POST AUSTRALIA PTY LTD (formerly Commercial Dynamics Pty Ltd)(ACN 001 821 156
FIRST APPLICANT

RESEARCH RESOURCES PTY LTD (ACN 001 007 256)
SECOND APPLICANT

AND:

NORTHERN STAR LTD (ACN 000 011 174)
FIRST RESPONDENT

APN NEWS & MEDIA LTD (ACN 008 637 643)
SECOND RESPONDENT

JUDGE:

MOORE J

DATE OF ORDER:

25 JULY 2000

WHERE MADE:

SYDNEY

THE COURT NOTES THE UNDERTAKINGS GIVEN BY THE RESPONDENTS, AND ORDERS THAT:

1.Pending the determination of these proceedings or earlier further order, the respondents whether by themselves their directors, officers, servants, agents or otherwise howsoever be restrained from in trade or commerce in north-eastern New South Wales publishing, printing, promoting or distributing, any publication which publishes classified advertisements with or containing:

(i)the word “TRADER” in the masthead in Aachean font

(ii)the areas of distribution identified immediately below the masthead

(iii)headings of categories of items fully enclosed with a solid line.

2.The respondents pay the applicants’ costs of the interlocutory application.

3.The matter be listed for direction at 9.30am on 8 August 2000.

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 779 OF 2000

BETWEEN:

TRADING POST AUSTRALIA PTY LTD (formerly Commercial Dynamics Pty Ltd)(ACN 001 821 156
FIRST APPLICANT

RESEARCH RESOURCES PTY LTD (ACN 001 007 256)
SECOND APPLICANT

AND:

NORTHERN STAR LTD (ACN 000 011 174)
FIRST RESPONDENT

APN NEWS & MEDIA LTD (ACN 008 637 643)
SECOND RESPONDENT

JUDGE:	MOORE J
DATE:	25 JULY 2000
PLACE:	SYDNEY

REASONS FOR JUDGMENT

1. An application has been made by Trading Post Australia Pty Ltd ("Trading Post") and Research Resources Pty Ltd ("Research Resources") seeking injunctive and other relief against Northern Star Ltd ("Northern Star") and APN News and Media Ltd ("APN").  The applicants publish or are associated with the publication of eleven newspapers containing classified advertisements offering goods for sale, selling services or real estate or advertising job vacancies.  The name of the publications of the applicants is either the "Trading Post" simpliciter or that name with an adjective identifying the area or region of publication and/or the frequency of publication (weekly).  One such publication named "Trading Post" is published in north-eastern New South Wales in what can be described as the Northern Rivers, New England and Coffs Harbour regions.  That is the description in the publication itself.  It was first published in June 1992.

2. In early July 2000 the applicants became aware that the respondents were proposing to publish a newspaper of a similar type named "Bargain Hunters Trading Post".  That name was abandoned by the respondents after correspondence between the parties’ solicitors. On 13 July 2000 the respondents published a newspaper entitled "North Coast Trader" proposed to be distributed in at least the coastal region of north-eastern New South Wales.  While the name did not include the words "Trading Post", the edition published on 13 July 2000 bore a striking similarity to the newspaper published in that general region by the applicants.  I will refer in a moment to some of the more significant areas of similarity.  Correspondence continued between solicitors for the parties and further changes were made to the second edition published by the respondents on 20 July 2000.

3. These proceedings were commenced on 19 July 2000 and an application for interlocutory injunctive relief was heard on 24 and 25 July 2000. The applicants alleged contravention of s 52 of the Trade Practices Act 1974 (Cth) (“TP Act”), tortious passing off and infringement of copyright in contravention of the Copyright Act 1968 (Cth) (“Copyright Act”).

4. As the hearing of the interlocutory application progressed the issues narrowed in the sense that the applicants identified a limited number of specific features of the respondents’ publication that, in their submission, should not be perpetuated at least on an interlocutory basis. For their part, the respondents ultimately indicated agreement with some, but not all, of what was being proposed by the applicants.  Indeed that agreement was eventually reflected in unconditional undertakings to the Court. 

5. In the result, it is necessary to determine whether orders should be made supplementing the undertakings so as to limit the manner and form in which the respondents can publish their newspaper beyond limits to which they have agreed.  It is not in issue that the respondents can publish a newspaper of the general character already published by them as the “North Coast Trader”.  In issue is the form it can take at least pending final hearing of this application.

6. I should briefly refer to some of the background.  In 1987 APN purchased four daily newspapers published in the coastal area of north-eastern New South Wales.  They were the Northern Star published in Lismore, the Daily Examiner published in Grafton, the Advocate published in Coffs Harbour and the Daily News published in Tweed Heads.  They each contain classified advertisements.  The respondents have had under consideration for some time publishing a regional classifieds publication.  The decision to publish what has become the "North Coast Trader" was precipitated, at least in part, by the perception that the respondents' advertising customer base was being eroded by the publication of the regional "Trading Post", related marketing activities of the applicants and the change this year in the frequency of the publication of the “Trading Post” from fortnightly to weekly.

7. It appears that as part of the start-up the "North Coast Trader" (as noted earlier it was originally intended to be called "Bargain Hunters Trading Post") customers placing advertisements with daily newspapers published by APN in the area were offered additional advertising in a publication described to them over the phone as "the Trading Post" or words to similar effect.  This practice has since been discontinued.

8. The first edition of the "North Coast Trader" was, as I earlier noted, strikingly similar to the "Trading Post" published in the region by the applicants.  Without exhaustively describing the points of similarity, they included:

   *a distinctive Aachean font for the word "TRADER" in the masthead.

   *the areas of distribution in a coloured bar immediately below the masthead though in the "North Coast Trader" the bar merges with the masthead.

   *the presentation of the advertisements in five columns across the page on the first page (and six columns on the second and subsequent pages) with the sixth column on the first page taken up with phone numbers to ring (or fax) to place an advertisement at the top of the column and below it the index arranged and graphically represented in a similar way using some but not all of the categories used in the "Trading Post".

   *a map in the top left-hand corner of the first page though the map in the "North Coast Trader" was larger and consumed two columns.

   *the first line of each advertisement in bold.

   *the publication commencing with advertisements for cars and the first category was "cars under $3000".  Subsequent categories were for cars in the same price range.

   *the heading for each class of advertisement enclosed in a solid line described in the proceedings as a round cornered rectangular box.

   *very many of the headings throughout the publication being in precisely the same terms and order as appeared in the "Trading Post".

   *the form in the publication to be completed and submitted to place an advertisement being similar in many respects to that appearing in the "Trading Post" including a grid of five by six boxes.

   *the statement of policies containing, verbatim, material parts of the statement of policies in the "Trading Post".

9. One of the more significant points of dissimilarity between the first edition of the "North Coast Trader" and the regional "Trading Post" was a large black box in the middle of the first page of the former publication containing the words "FIRST ISSUE" in white letters.  That can, in an appropriate factual setting, be a material point of distinction: see S & I Publishing Pty Ltd v Australian Surf Life Saver Pty Ltd (1998) 88 FCR 354 at 364.5.

10. Some of the features referred to in par 8 were not repeated in the second edition of the "North Coast Trader" published on 20 July 2000.  Moreover the terms of the undertakings proffered by the respondents (set out at the conclusion of these reasons) will have the result that, until final hearing or further order, many of the points of similarity will not be repeated in future editions of the "North Coast Trader".  Indeed the only point presently in issue is whether the respondents can publish the "North Coast Trader" with all or any of the following features: the name of the publication in Aachean font; the areas of distribution identified immediately below the masthead; the headings of the categories of items fully enclosed with a solid line; and the categories of advertisements being identified in the index by reference to more than "three pillars" (a term of art understood by the parties).

11. I am satisfied that there is a serious question to be tried concerning whether the respondents have engaged and are likely to engage in conduct in contravention of s 52 of the TP Act and have passed off their product as that of the applicants causing damage to the applicants. It is at least arguable that an inference can be drawn that the respondents deliberately set out to create a publication that would have sufficient (and indeed many) of the features of the relevant regional "Trading Post" to cause members of the public in the region of distribution wishing either to advertise goods or services or purchase goods or services to believe that the respondents’ publication was a publication of the first applicant. There was no denial of such an intention. In my view, it is at least arguable that the similarities between the first edition of the "North Coast Trader" and the relevant regional "Trading Post" would have led these members of the public to believe what the respondents were setting out to have them believe. That is, the publication finally emerging as the "North Coast Trader" was the "Trading Post" or a publication of the same publisher as that latter publication. This would have been particularly so in relation to members of the public to whom statements were made when placing advertisements in one of the daily newspapers published by APN.

12. The undertakings proffered by the respondents go a long way towards removing the points of similarity that arguably give rise to the contravening conduct and the passing off.  However the difficulty the respondents presently confront, as I perceive things, is that their initial success in creating a facsimile of the "Trading Post" would not dissipate immediately even with the changes which will result from the implementation of the undertakings by the respondents.  That is particularly so given the character of the two publications.  They are, as I understand the evidence, intended to attract advertisements which will run for a period of weeks.  In relation to the "North Coast Trader" there would be, at least arguably, a section of the public (those who placed or read advertisements in the initial edition or were aware of it through people who did) who would treat second and subsequent editions as the same publication notwithstanding changes arising from the implementation of the undertakings.  Thus, at least arguably, members of the public who were deceived or misled by the initial conduct of the respondents would be unlikely to have the position clarified by subsequent changes arising from the undertakings.  There was no serious suggestion made by counsel for the respondents that the balance of convenience favoured no orders being made.

13. To the extent that infringement of copyright is raised in the application, in issue is whether the expression "or compilation" in the definition of literary work in s 10 of the Copyright Act might comprehend the manner and style in which the publication "Trading Post" is put together or compiled. There is some support in relevant texts that the defined meaning is sufficiently wide to comprehend the manner and style of publication though I accept that it may involve a generous view of the definition: see e.g. John Fairfax & Sons Pty Ltd v Australian Consolidated Press (1960) 60 SR(NSW) 413. It is a matter on which, at this stage, I need not express any view and it is probably undesirable I do so given the limited time available to consider the question because of the need to give judgment within 24 hours of hearing argument.

14. I intend to make orders restraining the respondents from publishing the "North Coast Trader" with the first three of the four residual contentious features referred to in par 10 above.  Each of those three features would be likely to perpetuate the effect of the conduct of the respondents to this point.  I consider the identification of the categories or classes of goods or services raises different considerations.  One would expect in a publication of this type the categories or classes to be identified.  The categories or classes the respondents propose in their undertakings are unexceptionable in the sense that they are classes or categories to be expected in such a publication.  I do not think their inclusion in future editions will have a material bearing on the effect of the past conduct of the respondents.

15. The undertakings proffered by the respondents were in the following terms:

    UNDERTAKINGS

    Until the trial of this action, or until further earlier order, the first and second respondents undertake as follows:

    1.Not to use the name ‘Trading Post’ in relation to classified advertisement publications in the area described as Northern Rivers District of New South Wales.

    2.Not to publicise or promote any classified advertisement publication published, sold, marketed and distributed by either of them under the name ‘Trading Post’ in the area described as Northern Rivers District of New South Wales.

    Until the trial of this action, or until further earlier order, the first respondent further undertakes:

    1.It will not distribute or sell newspapers bearing the name (or incorporating the words) ‘Trading Post’ in the area described as Northern Rivers District of New South Wales.

    2.To de-register the name ‘Bargain Hunters Trading Post’.

    3.With respect to its publication ‘North Coast Local Trader’:

    (a)   not to publish a contents panel on its front cover or elsewhere depicting a button device the same as that used by the applicants in the ‘Trading Post’;

    (b)   not to use the combination of red, yellow and blue colours in any contents panel published by it;

    (c)    not to include in any contents panel reference to any categories of goods or services (‘pillars’) other than the following:

    (i)‘Automotive’;

    (ii)‘Boats & Marine’;

    (iii)‘Employment’;

    (iv)‘General For Sale’;

    (v)‘Notices’;

    (vi)‘Real Estate’; and

    (vii)‘Trades & Services’;

    (d)   not to publish any distribution map on the left side of the front page thereof;

    (e)    not to use a rectangle with rounded corners to enclose headings of classifications of goods or services;

    (f)     not to use bold type for the whole of the first line of any advertisement;

    (g)   not to use a statement of policies which is the same or substantially similar to the statement of policies now used by the applicants in the ‘Trading Post’;

    (h)   in any advertising form, not to use boxes in the section of the form in which the wording of an advertisement is to be inserted;

    (i)     not to publish classifications in the same order as that now used by the applicants in the ‘Trading Post’;

    (j)     not to use classifications for automobiles that correspond as to the dollar amounts with the classifications now used by the applicants in the ‘Trading Post’; and

    (k)   to use an index:

    (i)that will not contain any pillars other than those set out in paragraph 3(c) above; and

    (ii)that, in respect of the ‘Automotive’, ‘Boats & Marine’ and ‘General For Sale’ pillars, is substantially in accordance with that set out in paragraph 15 of the affidavit of Richard Paul Barclay filed herein by leave on 24 July 2000.

16. The applicants are entitled to the costs of their application.

I certify that the preceding sixteen (16) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Moore.

Associate:

Dated:             25 July 2000

Counsel for the applicants:	Mr D M Yates S C with Ms A H Bowne
Solicitor for the applicants:	Piper Alderman
Counsel for the respondents:	Mr T D O J North SC
Solicitor for the respondents:	Minter Ellison
Date of Hearing:	24 & 25 July 2000
Date of Judgment:	25 July 2000