CATCHWORDS Trade Practices - Consumer protection - misleading or deceptive conduct - whether publication and sale of book of certain dimensions and alleged get-up deceptive. Trade Practices Act 1974 s.52 ' PAULA BROCK, ALISON LEWIS, DIANA HANCOCK, INVESTIGATOR PRESS PTY. LIMITED v. THE TERRACE TIMES PTY. LIMITED. No. G.83 of 1981. Bowen C.J., Franki and Davies JJ. 10 February 1982 SYDNEY. & IN THE FEDERAL COURT OF AUSTRALIA) NEW SOUTH WALES DISTRICT REGISTRY) NO. G83 of 1981 GENERAL DIVISION ) ON APPEAL from a single Judge of the Federal Court of Australia BETWEEN: PAULA BROCK ALISON LEWIS DIANA HANCOCK INVESTIGATOR PRESS PTY. LIMITED Appellants AND: THE TERRACE TIMES PTY. LIMITED Respondent. ORDER JUDGES MAKING ORDER: Bowen C.J., Franki and Davies JJ. DATE OF ORDER: 10 February 1982 WHERE MADE: Sydney. THE COURT ORDERS THAT: 1. The appeal be allowed. 2. The orders of the trial Judge of 25 June 1981 be set aside. 3. The respondent pay to the appellants their costs of this appeal and of the proceedings below. IN THE FEDERAL COURT OF AUSTRALIA) NEW SOUTH WALES DISTRICT REGISTRY) NO. G83 of 1981 GENERAL DIVISION ) ON APPEAL from a single Judge of the Federal Court of Australia BETWEEN: PAULA BROCK ALISON LEWIS DIANA HANCOCK INVESTIGATOR PRESS PTY. LIMITED Appellants AND: THE TERRACE TIMES PTY. LIMITED Respondent. CORAM: Bowen C.J., Franki and Davies JJ. 10 February 1981. REASONS FOR JUDGMENT Bowen C.J. and Franki Jd. This is an appeal from the judgment of a Judge of this Court wherein he made orders under s.80 of the Trade Practices Act 1974 ("the Act"). The orders were based on a finding that the appellants engaged in conduct within s.52 of the Act in trade or commerce that was misleading or deceptive or was likely to mislead or deceive. The following orders were made: "1. The respondents, Paula Brock, Alison Bothwell Lewis, Diana Hancock, Investigator Press Pty. Limited, and each of them by themselves and their servants 2. and agents be restrained from printing, publishing, distributing, selling, offering for sale, promoting, displaying or advertising a book entitled "Heritage Recipes, Book One, Historic Eating Houses of Adelaide" by Paula Brock, Diana Hancock and Alison Lewis. 2. Except for the costs of the hearing on 20 May 1981, the respondents are to pay the applicant's costs. 3. The applicant is to pay the respondents' costs of the proceedings on 20 May 1981. 4. Liberty to apply to either party on two days' notice in respect of enquiry as to damages and parties to be bound by these orders." The respondent to this appeal, Terrace Times Pty. Ltd, ("Terrace Times") has published a series of books called "The Terrace Times Cook Book". There are five books in the series, namely the Rocks edition, the Balmain edition, the Melbourne edition, the Sydney edition and the Paddington edition. There is also another book in what might be called the same series, although reliance was not placed upon it by Terrace Times. That ether book is listed in the description of books published as one of the books called "The Terrace Times Minimum effort Maximum effect Cook Book" and it is so entitled. It 1s of the same shape and almost the same size and has a cover substantially similar to the other books and it is called "Looking at Cooking". Each book is, in substance, a collection of recipes, drawings and certain historical notes. Each book is of a rectangular shape about 250cm. long and 120cm. wide and all books, except the book "Looking at Cooking", are of 64 pages. The book entitled "Looking at Cooking" 1s of 80 pages. Each of the six books has a stiff cover with a glossy finish and is of a pastel shade. 3. The first three appellants claim copyright in, and the fourth appellant was the publisher of, a cook book called "Heritage Recipes". This is a book of the same shape and size as a Terrace Times Cook Book (except perhaps, "Looking at Cooking") and like five of those books it consists of 64 pages and it is, in substance, a collection of recipes, drawings and certain historical notes. The appellants' book, "Heritage Recipes", has a stiff cover with a glossy finish and it is of a dark brown colour. The book is marked "Book One" and is entitled "Historic Eating Houses of Adelaide by Paula Brock, Diana Hancock and Alison Lewis". The words "Heritage Recipes Book One Historical Eating Houses of Adelaide Investigator" are marked on the spine of the book. Section 52 of the Act proscribes conduct which is misleading or deceptive or likely to mislead or deceive. One Must carefully examine conduct alleged to fall within these words and decide whether it 1s misleading or deceptive or likely to mislead or deceive. It is obviously misleading or deceptive to describe a brass chain as a gold chain. The appropriate test in a case such as that now before us 1s whether a prospective purchaser of the book "Heritage Recipes" would be deceived or misled or likely to be deceived or misled by the appellant's conduct in putting that book on the market. 4. We consider that the approach in Weitmann v. Katies Limited. (1977) 1 A.T.P.R. 40-041 is applicable to the case before us. In that case Franki J. (at p.17,442) said:- "Whether conduct is deceptive in the subject case must be examined in the light of what the alleged deceptive words mean to the relevant purchaser when used on the sleeve of the ladies T-shirts as they are to be sold. This involves two questions, first, who is to be considered as the relevant purchaser and second, what will the words mean to that purchaser? This seems to lead to two of the questions which arise in a passing off action, first, what is the appropriate class of purchasers to be considered and secondly, have the words "Saint Germain" acquired what 1s commonly called a secondary meaning, namely do they indicate to the appropriate class of purchasers that the goods have come from a particular source, whether the name of that source is known or not?" For the respondent to succeed we consider that it is necessary for it to identify some features in relation to its cook books which have acquired what might be called a secondary significance as indicating to the appropriate class of purchasers that the books are its books. In general we consider that the relevant purchaser is the person who would come into a book shop with some knowledge of the features of the respondent's cook books. Times, in support of the application before the 5. An affidavit of Helen Arbib, a director of Terrace trial Judge contained the following complaint about the appellants' book "Heritage Recipes": "uniqueness which came to brand the plaintiff's "The book is the same size as all my company's aforesaid publications with the exception of 'Looking at Cooking'. It also has the same distinctive shape, glossy cover, straight spine and lace work at the top and bottom of the front cover. It also has a facsimile of a hand drawn illustration in the middle of the front cover similar to my company's aforesaid publications. Furthermore, the book has 64 pages, exactly the same number of pages as all my company's aforesaid publications with the exception of 'Looking at Cooking' ". And: "My company's books are distinctive in that their format combines illustrations of buildings and histories of particular localities with food and cooking." Senior counsel for the Terrace Times submitted that the combination of the following factors: one, shape, works was a size and thickness; two, a mixture of recipes drawings and history; three, an element of nostalgia". relevant The significance flowing from the uniqueness in the sense can only be acquired by sales or display or advertising or by some other method or combination of methods by which the features giving rise to this uniqueness have been brought before the relevant public. 6. Helen Arbib swore "My company's cook books are sold in all States and Territories of Australia. More than 250,000 of my company's cook books have been sold throughout Australia since 1975". Helen Arbib referred to five folders of cuttings from newspapers, Journals and pamphlets dealing with the Terrace Times Cook Books. The first folder deals with the book called "Looking at Cooking". The only material going to reputation in this folder relates to the name of Helen Arbib in association with "The Terrace Times Cook Book". The other four folders contain similar material in relation to the Balmain edition, the City of Sydney edition, the Paddington edition and the Rocks edition of The Terrace Times Cook Book. The material in respect of each edition is collected together in the one folder. The material in the folder relating to the Balmain edition is typical and it features the name "The Terrace Times Cook Book" "Balmain edition", and the name of Helen Arbib and Pauline Clements. The material in relation to the City of Sydney edition features the name "The Terrace Times Cook Book" and the names of Helen Arbib and Pauline Clements. The words " Minimum effort Maximum effect" are also featured in association with the title of the book. RNa a RCE ITA OIE en SRNL TITEL EI EL TITS TIRE OT TTT LET A I ORT ET OTE CR LC I 7. One gets the same impression from the material dealing with the Paddington edition and the Rocks edition. Usually only the front of the cover is shown in the few instances where a representation of the book appears in the material in the folders and often the front of the covers of two editions are shown together, for example the front of the covers of the Paddington edition and of the Rocks edition. In each case the common features are the words "The Terrace Times Cook Book", and the name Helen Arbib sometimes in association with, for example, the name Pauline Clements. Some prominence is also given to the words "Minimum effort Maximum effect". There was no precise evidence of the extent of the publicity evidenced by the material in the folders but it 1s reasonable to conclude that some advertising took place at least in the years 1976 to 1980 and that the effect of this publicity was to bring before the public the features which we have mentioned. The folders contain copies of a number of book reviews apparently in newspapers and the title "The Terrace Times Cook Book" associated with the named Helen Arbib and usually the words "Minimum effort Maximum effect" are featured. In our opinion it is difficult to come to a conclusion that any material appearing in the folders would create any reputation beyond a reputation in the words "The Terrace Times Cook Book" associated with the name Helen Arbib and perhaps one other and perhaps the words "Minimum effort Maximum effect". 8. Whilst some regard may be had to the contents of the cook books and to the fact that they deal with a mixture of recipes, drawings and history and feature an element of nostalgia, it could hardly be said that an association of those features in a book would be within s.52 of the Act. Certainly it could not reasonably be said that if one removed the cover from the appellants' book the material which remained would be liable to deceive or mislead within s.52. There 1s no evidence that the shape, size and thickness of the Terrace Times cook books have become distinctive in Australia or in any State. Helen Arbib's evidence was that these books were known as "Terrace Times Cook Books". There was evidence that 5,000 copies of "Heritage Recipes" had been sold by January 1981 and that copies were on sale in Adelaide in David Jones, Myers, The Rigby Book Shop, the John Master and Standard Book Shop, and other book shops. There is no evidence of the extent of the sales of Terrace Times Cook Books in Adelaide. It may be that the shape and features claimed as distinctive by the respondent for its books are indeed better known in Adelaide as features of the "Heritage Recipes" book. A prospective purchaser of a book might open it and examine it but in our opinion he or she would be most likely to have in mind that the respondent's books were called "The Terrace Times Cook Book" and might know that the name Helen Arbib was associated with them. However the appellants' book is clearly =a TS EL ET I ROR ES SO TO TES NNT A TREN IIa EPRICE INET et a AS RTT ATTRAC in GE TIME TS PE Ta 9 Re A a Pe oe TET A ORE I OR AKIN A RORENRY SORTS Spm, 9. named "Heritage Recipes" and its cover is a dark brown colour, not used by the respondent for any of its books and the names of the author and the publisher are clearly printed. Evidence of deception, whilst unnecessary, is pursuasive. There is some evidence directed to show deception. One witness gave evidence of what appear to be 'trap orders' and others are in a special category. As to such orders see Bryant v. Keith Harris & Co. Pty. Limited (1980) 33 A.L.R. 437 at pp.439-441. The three other witnesses knew the "Terrace Times" series very well. One, Kay Egerton, had in fact illustrated some of the "Terrace Times" books; Naomi Mendelson was a friend of Helen Arbib, and Jill Dawkins was a friend and neighbour of Kay Egerton. Each gave evidence that they had thought on first seeing the "Heritage Recipes" displayed, that it was produced by Helen Arbib. However, on closer inspection they realised the author was different, as was the publisher. Due to their familiarity with the Terrace Times books, these individuals form a very special and limited class. In any event it 1s always the task of the Court to decide whether conduct 1s misleading or deceptive or likely to mislead or deceive (Snoid v. Handley 11 November 1981, unreported). 10. It was not disputed that the appellant's publication was "inspired by" the concept displayed in the Terrace Times cook books but this is not critical in considering the question which we have to decide. We consider that it would be extremely difficult to establish the requisite degree of distinctiveness based on the shape and size of a book. In some cases an order prohibiting the publication of a book "without clearly" (or"sufficiently") distinguishing it from the book with which it is alleged to be deceptively similar might be appropriate. (See generally Kerly's "Law of Trade Marks and Trade Names" 10th Ed.pp.442-444). In the case before us we consider the respondent did not make out a strong enough case for such an order to be appropriate. A cook book called "Rosies Lord Howe Cook Book" was in evidence. This book was of substantially the same size and shape as a Terrace Times cook book but was unconnected with the respondent. It contained a mixture of recipes, drawings and history and perhaps some little nostalgia. It also contained about 64 pages. Some reliance was placed by the respondent on the number of pages in "Heritage Recipes". Its book "Looking at Cooking" contained 80 pages. We consider the number of pages in "Heritage Recipes" 1s explained by the required size of the book. Some relevance was also placed on the get-up of the cover of the Terrace Times cook books. The different editions of 11. the respondent's cook books differ in get-up except for the common features of size and shape, the name "Terrace Times Cook Book", the words "Minimum effort Maximum effect" the name Helen Arbib and what might be called representations of artistic metal work at the top and bottom of the front cover. For example, parts of the Opera House and the Sydney Harbour Bridge are shown in a rectangular frame on the front of the City of Sydney edition whereas on the Paddington edition one terrace house and parts of two others are shown in an oval frame. The back of the City of Sydney edition displays a ship with an oval surround. The back of the "Looking at Cooking" book displays a spoon without surround. Put at its highest, the evidence only shows that some people may initially wonder whether there is any connection between the appellants' and the respondents' books. Once the pooks were examined it would be clear that they came from different sources. Potential purchasers may consider that the appellants had copied the concept of the Terrace Times books. However, this view would serve rather to distinguish the books. In our opinion the evidence does not establish that the appellant's conduct in relation to the book "Heritage Recipes" is misleading or deceptive or likely to mislead or deceive within the words in s.52 of the Act. 12. This is a case which depends on inferences to be drawn from facts not seriously in dispute. The learned trial Judge enjoyed no particular advantage, which should disqualify an appellate court from interfering. We have the right and duty to decide the matter for ourselves. Having given due weight to the conclusion reached by the learned trial Judge, we are unable to agree with it. We would uphold the appeal and order the setting aside of the orders of the trial Judge. We would further order that the respondent pay to the appellants' their costs of the appeal and of the proceedings before the trial Judge. . 2.8 Honour ! , el owt Peascne For ene ee eta, Lat NERS F tno Onref omic, bo * ie « ae, , Me gusktet FCOrs ew a " Assocsate pated: @-2 82% Oe cr Oe Ce es oe woe, 7 eS IN THE FEDERAL COURT OF AUSTRALIA NEW SOUTH WALES DISTRICT REGISTRY ) No. G.83 of 1981 ) ) GENERAL DIVISION BETWEEN : PAULA BROCK, ALISON LEWIS, DIANA HANCOCK, INVESTIGATOR PRESS PTY. LIMITED Appellants AND : THE TERRACE TIMES PTY. LIMITED Respondent REASONS FOR JUDGMENT 10 February 1982 DAVIES, J This is an appeal from a decision of a Judge of this Court wherein his Honour found that the publication and sale of a certain book infringed the provisions of s.52 of the Trade Practices Act 1974 which reads, inter alla, "52.(1) A corporation shall not, in trade or commerce, engage in conduct that is misleading or deceptive or is likely to mislead or deceive." mew His Honour ordered, inter alia, "1. The respondents, Paula Brock, Alison Bothwell Lewis, Diana Hancock, Investigator Press Pty. Limited, and each of them by themselves and their servants and agents be restrained from printing, publishing, distributing, selling, offering for sale, promoting, displaying or advertising a book entitled 'Heritage Recipes, Book One, Historic Eating Houses of Adelaide' by Paula Brock, Diana Hancock and Alison Lewis." The misleading and deceptive conduct was said by his Honour to arise from the similarity between the book "Heritage Recipes" produced by the appellants and a series of books each entitled "The Terrace Times Cookbook" produced by the respondent. His Honour said, "My first impression was that the applicant's and respondents' books were strikingly similar." Similarity of product will not necessarily result in deception. In commerce, Many articles are similar, even strikingly similar. In Hornsby Building Information Centre Pty Limited Vv Sydney Building Information Centre Limited (1978) 140 CLR 216, Stephen J pointed out that s.52 1s not designed to preclude the fair use of features which are not special to one trader. At pages 229-230 his Honour said, "In cases of passing off, where it 1s the wrongful appropriation of the reputation of another or that of his goods that is in question, a plaintiff which uses descriptive words in its trade name will find that quite small differences in a competitor's trade name will render the latter immune from action (Office Cleaning Services Ltd. v Westminster Window and General Cleaners Ltd. (1946) 63 RPC 39 at p.42, per Lord Simonds). As his Lordship said ((1946) 63 RPC at p.43), the possibility of blunders by members of the public will always be present when names consist of descriptive words - "So long as descriptive words are used by two traders as part of their respective trade names, it 1s possible that some members of the public will be confused whatever the differentiating words may be." The risk of confusion must be accepted, to do otherwise is to give to one who appropriates to himself descriptive words an unfair monopoly in those words and might even deter others from 3. pursuing the occupation which the words describe. If this be so in the case of passing off actions the case of s.52(1), concerned only with the interests of third parties, is a fortiori. To allow this section of the Trade Practices Act to be used aS an instrument for the creation of any monopoly in descriptive names would be to mock the manifest intent of the legislation. Given that a name is no more than merely descriptive of a particular type of business, its use by others who carry on that same type of business does not decelve or mislead as to the nature of the business described. Thus both the Hornsby and the Sydney Centres are building information centres and no one is being deceived as to the nature of the service which 1S available there. Any deception which does arise stems not so much from the Hornsby Centre's use of the descriptive words as from the fact that the Sydney Centre initially chose descriptive words as its title and for many years thereafter was the only centre in Sydney which answered the description which those words provide. In consequence members of the public have come to associate 1ts particular business with that type of activity. Evidence of confusion in the minds of members of the public is not evidence that the use of the Hornsby Centre's name is itself misleading or deceptive but rather that its intrusion into the field originally occupied exclusively by the Sydney Centre has, naturally enough, caused a degree of confusion in the public mind. This 1s not, however, anything at which s.52(1) is directed." Nevertheless, there may be features of an article which, by virtue of either uniqueness or advertising, so identify the goods of a particular manufacturer or distributor that "the use by another of those features will mislead or deceive the public unless the goods are otherwise adequately distinguished. As was said by Stephen J in the Hornsby Building Information Centre case at p.227-8, "In determining the meaning of 'misleading or deceptive' in s.52(1) and in applying it to particular circumstances the law which has developed around the tort of passing off, founded as that tort is upon the protection of the Plaintiff's intangible property rights, may not always provide any safe guide. However, the long experience of the courts in that field should not be disregarded, some principles which have been developed appear equally applicable to s.52(1). One of these bears upon the circumstance that what the Hornsby Centre has done is, in a sense, no more than to use itS own corporate name in association with its activities. No doubt the meaning of the statutory prohibition which s.52(1) enunciates must be gained from the terms of the sub-section itself; but nothing in those terms suggests that a statement made which is literally true, 1e, that the centre at Hornsby is conducted by Hornsby Building Information Centre Pty. Ltd. may not at the same time be misleading and deceptive. It clearly may be. To announce an opera as one in which a named and famous prima donna will appear and then to produce an unknown young lady bearing by chance that name will clearly be to mislead and deceive. The announcement would be literally true but none the less deceptive, and this because it conveyed to others something more than the literal meaning which the words spelled out. Thus, in passing off, a newly incorporated defendant company may not use, in its newly established business, its true corporate name if it be deceptively similar to that of a plaintiff with an established reputation (Fine Cotton Spinners and Doublers' Association Ltd. v Harwood Cash & Co. Ltd. (1907) 2 Ch 184, at p.190). What has been said of passing off actions applies equally in the present case; as Buckley LJ remarked in John Brinsmead & Sons Ltd. v Brinsmead ((1913) 30 RPC 493 at p.506), a statement which 1s literally true and accurate may nevertheless carry with it a false representation. Lord Morris expressed much the same notion in Parker-Knoll Ltd. v Knoll International Ltd. ((1962) RPC 265 at p.279). The same will apply in relation to s.52(1)." Thus, in approaching this case, it 1s first necessary to ascertain whether there were features of the respondent's books which, if not distinguished, would associate books having those features with the respondent because those features were identified in the minds of readers with the respondent. On this aspect, his Honour found in favour of the respondent. His Honour said, "I find that before March 1980 the applicant's books were well-known and with an established reputation in Australia associated with the applicant recognised by persons interested in cooking or recipe books." His Honour did not expressly say that he had formed the view that the respondent's books were of a special nature. His Honour described the books in these terms : "All the books have a consistent design and layout and the same size and elongated shape. They contain 64 pages of recipes with drawings and notes of historical interest; the exception being 'Looking at Cooking' which is fractionally larger in size and is 80 pages of recipes without historical content." However, the evidence shows that the size and the shape of the books was exceptional in Australia. As Mrs. H.F. Arbib said in an affidavit in evidence, at page 40 of the Appeal Book : "As far as I am aware the size and shape of the Terrace Times Series of Cook Books was unique in Australia until the publication of the Heritage Recipes Cook Book." Mr. J.S. Campbell, a bookseller, said in evidence at page 112 of the transcript, "They are unusual. That particular book is an uunusual size and shape. They are unusual." Other evidence was to the same effect. In content the books contain recipes and notes on buildings and other matters of historical interest and a substantial number of fine line drawings. The production is artistic so that the books presumably find a market not only among persons seeking recipes but also among persons who have an unterest in drawings and descriptions of interesting buildings and places. Mr. J.M. Reed, a director of two book publishing companies, said of the respondent's books : "I find them a very unusual cook book. eee Having had a recent batch, I have had occasion to read a number of cookery books and these particular ones I find very unusual. wee They are very personal cook books that reflect the personality and an attitude and way of life, if you like, often as it relates to cookery." Asked to describe the particular characteristics of the books, he said, "It is perhaps not a word that lawyers use, but we in the publishing would call in something akin to nostalgia. It has an ambience, something in the books that reflects a way of life. There is a bit of the past in it and things like that. I am not saying that very well, but nostalgia 1S the way of summing it up." The evidence on this aspect of special characteristics of the respondent's books is, undoubtedly, sparse. It is true that in McWilliam's Wines Pty. Ltd. v McDonald's System of Australia Pty. Ltd,, 6 TPC 480, Smithers J said, at p.485, "In this connection 1t 1S to be observed that it is for the court iself to determine whether there 1S a likelihood that the relevant persons will be misled, and, in the words of Lord Morris in Parker-Knoll Ltd. v Knoll International Ltd. (1962) RPC 265 at 279 : 'In arriving at a decision the court must not surrender in favour of any witness its own undependent judgment.' There is ample authority for the proposition that it is for the court objectively to determine whether the conduct 1S likely to mislead. If anything, authority is somewhat sparse for the view that evidence of members of the public has any relevance at all. Reference may be made to two passages from Halsbury 3rd ed, vol 38, the first at p 589 dealing with comparison between trade marks, namely :- 'Whether or not any degree of resemblance likely to deceive or cause confusion exists, is a question of fact for the tribunal or court to decide upon the evidence in each case and 1S not a matter for witnesses. What degree of resemblance 1s likely to deceive or cause confusion in any instance 1s incapable of definition a priori and the observations of judges upon other and quite different facts are usually of little help.' The second, at p 639, para 1051, omitting the first sentence is as follows 'It is for the court to decide, in an action for infringement or for passing off, whether the similarity of the name or get-up complained of to that employed by the plaintiff is such as to be calculated to deceive, and it is therefore not proper for witnesses to be Pew an Maar yep er ee i er sc rosy sate . \ 7. asked whether in their opinion this is the case.' Reference may be made also to the balance of that paragraph and the succeeding paragraph. Reference may be made also to the dicta of Lord Diplock in General Electric Co. (of USA) v General Electric Co. Ltd. (1972) 1 WLR 729 at 738; Wrottesley J in Concentrated Foods Ltd. v Champ (1944) RKB 342 at 350; and Lord Macnaghten in Payton & Co. Ltd. v Snelling, Lampard & Co. Ltd. TiS0T} AC 308 at 311. In my opinion evidence of members of the public that they have been misled, if it does actually go so far as that, is not conclusive of the question for determination but merely of peripheral value. The court must make up its own mind, and it is easier for the court, particularly in my opinion, in the circumstances of this matter to make an objective determination." But his Honour was not there intending to indicate that relevant evidence from members of the public and others as to the reputation of an article or name or special features existing in an article or name would not be both relevant and helpful to inform the court of material facts. In the present case, there was no evidence from any purchaser of the respondent's books or from any retailer of the respondent's book as to the reputation of either the respondent or of its books or of features in the books which members of the public might think were special to books of the respondent. Nevertheless, there 1s evidence of reputation for the evidence is that the books have been produced in an on-going series, one a year, and that over 250,000 books have been sold since 1975. An examination of the books shows that they are similar in nature and yet each of the books has had numerous printings. Thus, there is an on-going demand for the books whch is not satisfied just by the publishing each year of a new book in the series. From this an inference may be drawn that amongst at least a coterie of persons the books have a reputation and are regarded as something special. And when it comes to matters such as books, the court 1s entitled to act upon some general knowledge of books in Australia. I think it proper to put some weight upon my own examination of the books and to conclude therefrom that they appear to be unusual and distinctive. In the course of the trial before his Honour, counsel for the present appellants sought to challenge the evidence which suggested that the respondent's books were special and submitted that the evidence had not established that they were. Nevertheless, no evidence was called to contradict such of the evidence as was called on behalf of the respondent on this aspect of the matter. Indeed, the evidence adduced on behalf of the appellants tended to confirm the respondent's evidence. Mrs. A.B. Lewis, the author of "Heritage Recipes" and one of the persons responsible for its production, said, in an affidavit, "Por some time I have been aware of the existence of the series of books entitled 'The Terrace Times'." She said that she had offered her drawings to Mrs. Arbib, who is the person principally responsible for the production of the respondent's books, and after rejection of her drawings by Mrs. Arbib, "T went to see Barbara Deverson, a publisher in Adelaide. eee I took my drawings, together with copies of 'The Terrace Times'. I said to her in words to the effect, 'We want to publish something similar to this locally'." Accordingly, an inference may be drawn that Mrs. Lewis saw something special in the books which she could best demonstrate by taking two of the books to her prospective publisher. In Mrs. Lewis' oral evidence, when asked why she took the Terrace Times' cook book to her publisher, she said, "Because we were inspired by its concept". She said that "The Terrace Times" had a very good format, that the shape was charming and that she and her colleagues were looking to the same market. I think the proper inference from this 1s that there were unusual and successful features about "The Terrace Times" cook book which encouraged or to use Mrs. Lewis' word "inspired" the appellants to produce something similar. 9. In the result, therefore, I think that the proper conclusion is that the respondent's works are not just recipe or cookery books but are works having a degree of artistic merit and artistic individuality. Part of that individuality arises from the size and shape of the books and from their glossy hard covers which, so far as the first of the respondent's cook books are concerned, the Paddington edition which has had twelve printings, has lacework printed at the top and foot of the front cover and in the centre a fine line drawing of old buildings with considerable lacework and like detail. On the back cover is a smaller fine line drawing, again contained in an oval though a smaller one. The names of the author and illustrator are stated on the cover but not prominently. The other books do not have an oval on the front cover, but nevertheless they do have a drawing on the front and back covers, in each case enclosed within a geometric shape. Lace at the top and bottom of the front cover is a feature. When the appellants' book "Heritage Recipes" was published, there were many similarities between it and the respondent's books. The contents comprised recipes, history and descriptions of buildings and places. Nostalgia associated with old places and good food abounded. The book was of precisely the same shape and size as the respondent's works. The cover was a hard glossy cover with a printing of lacework at the top and bottom. In the centre of the cover was a drawing of a fine old rotunda with a good deal of lacework on it. The names of the authors and illustrator were printed, but not prominently, the words "Book One" appeared to indicate that this was the first of a series. On the back of the cover was a drawing, again within an oval. Finally, although the name of the publisher "Investigator" appeared in very small letters on the spine of the book, there is no evidence to suggest that this name 1s particularly significant to the purchasing public or that that word would have a significant impact. 10. His Honour concluded that : "By reason of the striking similarity of respondents' book to those of the applicant, the respondents have, in combination, in trade or commerce engaged in conduct that 1s misleading or deceptive or is likely to mislead or deceive, in that e.g. members of the public have been and are likely to be misled or deceived into accepting that the respondents' book is one produced by applicant, or part of its series; or that the books came from the same source; or were produced by the same persons." The evidence as to actual deception is weak. Mrs. Mendelson said that on seeing "Heritage Recipes" she was a little puzzled but that she then looked closely at the front cover and noticed that the book was written and illustrated by Paula Brock, Diana Hancock and Alison Lewis. Mrs. Egerton said, "I picked up the Heritage recipe book which from external appearances appeared to me to be one of the Terrace Times series. eee Knowing the Terrace Times series well, as I have ullustrated for it, I was puzzled that I had not heard that a Terrace Times Adelaide cook book had been published. I therefore looked at the front inside pages of the book to see who produced and published 1t and only then did I realise that 1t was not a Terrace Times cook book." Both of these deponents knew Mrs. Arbib well and, although they were puzzled when they first saw the book, they were not deceived to the extent that they purchased the book believing it to be a Terrace Times cook book. Mrs. Thevenet deposed that in the course of making a trap purchase, "I said to a shop assistant, indicating the Heritage receiptes (sic) cook book 'this book about Adelaide, is it published by the same people as the Terrace Times cook book?' He replied tyes'. I said 'oh really!', he replied 'yes'."" This evidence is of little value because 1t does not indicate whether the shop assistant was himself misled by the similarity between ll. the books or whether he was himself being deliberately deceptive. Mrs. Thevenet was not deceived for she knew the differences before she entered the book shop. Mrs. Dawkins, a friend and neighbour of Mrs. Egerton, who presumably knew that Mrs. Egerton had aillustrated for "The Terrace Times" cook book, said that she saw the "Heritage Recipes" book in a book shop and, "Being familiar with the Terrace Times cook book series, I thought that the Heritage Recipe Book was a new addition to the series. I picked 1t up and leafed through it but decided not to purchase it at that stage although I believed it was a Terrace Times Cook Book or very similar to the series." This evidence 1s indeed weak on the aspect of actual deception. However, on the whole of the evidence and after examining the books, I am led to the conclusion that the subject matter of the books, their size, shape and get-up are so unusual and so similar as between themselves that some purchasers, who knew "The Terrace Times" books, would be likely to be misled or deceived into purchasing the "Heritage Recipes" book in the belief that it was a production of the persons or company responsible for the production of "The Terrace Times" cook books. I would emphasize that not only is the overall get-up similar, but the names of the authors and illustrators and of the publishers are not significantly displayed. The nature of the contents, the size and shape of the books and the get-up, particularly the get-up of the cover, predominate over the names of the publishers, the authors and illustrators. Although these books have an artistic content, the names of the authors, illustrators and publishers would not have the same impact as would the name of the artist responsible for a valuable painting or sculpture. I am therefore of the view that his Honour's conclusions were correct. In particular I think that his Honour directed himself to the correct question, not whether the "Heritage Recipes" book 12. was one of "The Terrace Times" cook book series, but rather whether members of the public would be likely to be misled or deceived into accepting the appellants' book as one produced by the respondent or into believing that the books came from the same source or were produced by the same persons. I think that it is likely that some persons would be misled. Of course, a careful examination would show a difference between the works. "The Terrace Times" cook books have a unity about them from their fine line drawings to their printing and overall set-up which is not exactly repeated in "Heritage Recipes" which varies from fine line drawings to wash drawing and from sepia to black and white. But that does not, I think, destroy the conclusion that a person might purchase the "Heritage Recipes" book in the mistaken belief that it was a book put out by the publishers of "The Terrace Times" cook books. If the purchaser wished to acquire another book from the same artistic source or recipes from the same selector, the purchaser would then be disappointed. Some purchasers would no doubt prefer the slightly different style of the "Heritage Recipes" book to that of "The Terrace Times" books. But the point 1s not whether there are different styles or which is to be preferred but rather whether a person might purchase one book thinking 1t to be from the same publishers and to have the same style as the other. A purchaser so purchasing would be misled and deceived. In my opinion, the similarity between the works is so similar that it 1s likely that some purchasers would be so misled or deceived unless a step were taken clearly to distinguish the appellants' work from the respondent's books. In the circumstances, I would dismiss the substance of the appeal. However, his Honour's order restrains the publishing etc of "...a book entitled 'Heritage Recipes, Book One, Historic Eating Houses of Adelaide' by Paula Brock, Diana Hancock and Alison Lewis." What must be restrained is misleading or deceptive conduct. It may be possible to publish the substance of the book "Heritage Recipes" in such a manner as not to mislead or deceive. As to whether it 18 possible to do so I express no 13. opinion. But the injunction should not restrain anything which 1S not deceptive or misleading or likely to be so. I would therefore rephrase the injunction as follows : "The respondents, Paula Brock, Alison Bothwell Lewis, Diana Hancock, Investigator Press Pty. Limited, and each of them by themselves and their servants and agents be restrained from printing, publishing, distributing, selling, offering for sale, promoting, displaying or advertising the book entitled 'Heritage Recipes, Book One, Historic Eating Houses of Adelaide' by Paula Brock, Diana Hancock and Alison Lewis in such manner that members of the public may be deceived or misled unto believing that the book is one produced by the respondent or that it and the respondent's Terrace Times cook books come from the same source or are produced by the same organisation." I certify thac this and che / 3 preceding Pages are a true copy of the reasons for judgment herein of ¢he~Gourt Juche Davee Karen Jean "Wy Associate Dated 5.2 G4