* JUDGMENT No. 552.7271 NOT FOR GENERAL DISTRIBUTION IN THE FEDERAL COURT OF AUSTRALIA NEW SOUTH WALES DISTRICT REGISTRY GENERAL DIVISION CORAM: FOX J. DATE: 19 OCTOBER 1987 ) ¥ ) No. G491 of 1987 ) ) BETWEEN : WAYNE FINDLAY First Applicant NAOMI EYERS Second Applicant LISA SHIPLEY Third Applicant AND: CARTONA PTY. LIMITED trading as KINSELAS First Respondent E. A. BILSON PTY. LIMITED trading as KINSELAS Second Respondent ANTHONY CRANES Third Respondent GRAHAM BLUNDELL Fourth Respondent SHERYL BLACK Fifth Respondent KAREN JOHNS Sixth Respondent REASONS FOR JUDGMENT EX TEMPORE FOX J. I said I would deliver reasons this morning and this [I now do. The applicants in this case relv upon s.52 of the Trade Practices Act 1974 and on passing off itn order to obtain injunctive and other relief. At this interlocutorv staqe. no reliance is placed on passing off. The matter came before me in private chambers for ex parte injunctions but in the course of that application, and before I had proceeded far, senior counsel for the respondents arrived. This was, I think. the result of a suggestion of my own which sometimes produces beneficial results - namely. for an applicant to let the other side know when and where they are seekina the ex parte relief. It was thought desirable after a short while to adjourn the matter into court, although for a while it still partook of the nature of anex parte application. The matter having proceeded some distance and it appearing that there would be no disadvantage in the meantime, I adjourned the proceedings at the end of the day until the following morning, namely Friday 16 October 1987. I was then told that two of the respondents were due to appear in the Ray Martin Midday Show on television and that they may be asked questions about their part in the group which has come to be known as "The Fabulous Singlettes". Use of this name by the respondents was and is the matter at issue. Counsel for the respondents told me that he. or those instructindg him, had taken steps to avoid reference by the respondents in the course of that show to the qroup and he offered no opposition to the issue of iniunctions. I therefore made an order as follows: On the usual undertaking as to damages, order that the fifth and sixth respondents be restrained by themselves, their servants and agents from making anv reference on the Ray Martin Midday Show today to "The Fabulous Singlettes". I ordered that the order so made could be communicated by telephone call made bv a member of the applicants" firm of solicitors. Although there was the minimum of time to prepare it, an affidavit has been filed on behalf of the respondents, and deponents of the two affidavits filed on behalf of the applicants as well as the respondent's deponent, have been cross-examined. I have heard addresses on both sides. The matter has remained interlocutorv and statements I make about the case are to be understood accordingly, although the ambit of the relevant dispute is verv small. The first two respondents are engaged in the entertainment business and in particular thev arrange for musical and other entertainment to be given at premises ownede or conducted by them at Darlinghurst. They have advertised in the Svdney Morning Herald and the Dailv Teleqraph 'and perhaps elsewhere) a show due to start on 30 October 1987 in the premises I have mentioned. Performances are advertised as "It's mv Party" with a sub-headina "Featuring The Fabulous Sinalettes". There 18 no doubt, on the evidence before me, that there has been a group of performers recoaqnised under this name. It started using that name in or about about Auqust 1986 and it had been used many times since in various parts of Australia and at the Edinburah Festival. There have also been television performances by a group using that name, one as' recently as 10 October 1987. The applicants presented that performance and none of the respondents participated. The trouble arises principally because there have been chanaes in the constitution of the group. Its formation was the brain-child of the second applicant, Miss Evers, althouch there undoubtedly were others who contributed some suggestions. The idea was to have an all female singing group of three with a band of five or six. As planned, the singers have mainly used songs of the 1960s, part of the idea being to capitalise on nostalgic feelings for the music of that period. The original group of three ladies comprised Miss Eyers, and the fifth and sixth respondents, namely Sheryl Black and Karen Johns. The first applicant in this case. Wayne Findlav,. has been its musical director throughout, as well as. in some senses, its manaqer. s Sheryl Black proved unsatisfactory after a while and was replaced by the third applicant Lisa Shipley. Karen Johns left the group at a critical time when it was in London and did not thereafter have connection with it. She was replaced by Alison Jaier who is not a party. With short breaks, due to fatique or 1liness. Miss Evers has remained with the group throuqhout. The evidence at this stage is clearlv to the effect that the qroup was cohesive and has had a stvle and character of its own. The first and second applicants made a particular contribution in this reqard and thev entered into a partnership concerning its affairs which related their remuneration to profit earned. The evidence shows that the group became clearly identified in its field and, after its performance at the Edinburgh Festival. widely known with international regard. The distinctiveness of the group 1s indeed apparent from the earliest times. Its first performance was in a musical arranged under the auspices of the first and second respondents at the Darlinghurst Theatre Restaurant. This performance was described on the front page of the programme "Stop! In the Name of Love". Under this appears in prominent type the words "With The Fabulous Singlettes". The programme contains prominent photographs of the three first participants as if they were performinda, standing close together with microphones in their hands. Entries in the programme include "To present this electrifying period in the history of rock, Kinselas brings you The Fabulous Sindglettes featuring Naomi Eyers, Karen Johns and Sheryl Black"; then "The Fabulous Sinqlettes are backed by Wayne Findlay's super group and will launch their 2-hour show from Monday to Saturday August 18 to September 20". Then there was a further passage: "With the technical advances since the early 603, not to mention the experience and skill of Naomi, Sheryl and Karen. the Sinalettes, this music even sounds better than it did on vour own HMV Port-0-Disc". In my view it is misleading and deceptive for the respondents to state that "It's my Party" features "The Fabulous Singlettes" when none of the applicants are involved. The two principals have no connection with the show in question and the other two singers who were at an earlier stage part of the group, have been replaced some time ago. Since the respective replacements, the qroup has continued to work as and be known as "The Fabulous Singlettes". There is evidence that the fifth and sixth respondents recentlv registered the name in question as a business name. This is little to the point because that reqistration merely related to the carrying on of business under that name. It 1s possible that an order could be made that they vacate the registration but this was not a matter debated before me. The evidence also touched on a number of matters which seemed to have very little to dowith the case. The question is whether the public or the relevant part of it, being the people interested in qoing to places such as that conducted by the first and second respondents, would be likely to be misled or deceived when they are told that "The Fabulous Sindqlettes"" will be playing. So far as appears from the evidence, the most that anv people relwind upon the advertisement would see would be two of the oriqinal performers in the group. On Friday last as the necessity to get out the injunctions was urgent, I postponed delivery of my reasons until this morning. The orders I made at the time were as follows: The undertaking as to damages continuing, an order until the hearing of proceedings or further order restraining the first, second, third, fourth. fifth and sixth respondents by themselves, their servants or agents, from promoting or advertising the show called "It's my Party" advertised in the Sydney Morning Herald on 14 October 1987 as involving a performance by a group called "The Fabulous Singlettes" or by any name including the word "Singlettes". I made a further order until the hearing of proceedings, or further order, restraining the fifth and sixth respondents by themselves, their servants or agents from performing e1ther individually or with others under the name "The Fabulous Singlettes". In relation to these orders, I directed that thev could be communicated by a solicitor's letter or telex and that that would be deemed to be sufficient service. I ordered the costs of the proceedings to date to be the applicants' costs in the proceedings. I was asked by counsel for the respondents to make an order. as I understood it. ordering that there be security for the undertaking as to damages and it was said that the applicants were without means to meet any order for damages that may be made. The evidence touching this matter was skimpy in the extreme and it was not arqued fully before me and I declined to make the order sought or anything along those lines. The respondents, in particular, are seeking an early hearing as a matter of urgency and I fixed a hearing date for next Mondav, 26 October 1987. Anv necessary directions will be aiven this mornina. I have not touched on the matter of balance of convenience. tT should say that there was no clear evidence as to the likely effect on the respondents or any of them of the issue of the injunctions to which I have referred. One can imagine that they may lose something by not being able to advertise that the performance will feature "The Fabulous Singlettes" but this 1s not a loss which can be given much weight. The current group is, however, likely to lose the benefit of its reputation and the attraction which its name has and this could be irretrievable. The balance of convenience would therefore seem on the evidence presently before me strongly to favour the applicants. I certify that this and the seven (7) preceding pages are a true copy of the Reasons for Judgment herein of his Honour Mr. Justice Fox. s Associate: S feerlhnes- Date: 19 October 1987 Counsel for the Applicant: S. Kalfas Solicitors for the Applicant: Shane Simpson & Co. Counsel for the Respondent: K. G. Horler with C. Waterstreet Solicitors for the Respondent: Gordon & Johnstone Dates of hearing: Sydney: 15, 16 October 1987 Date of judgment: Sydney: 19 October 1987