r JUDGMENT No. 36.788... IN THE FEDERAL COURT OF AUSTRALIA NEW SOUTH WALES DISTRICT REGISTRY No. G887 of 1988 GENERAL DIVISION wee BETWEEN: FOBACO PTY. LTD. Applicant AND: AUSAE CONFERENCE SERVICES PTY. LTD. First Respondent VICTOR GABAY Second Respondent CORRIGENDUM Amendment to the Reasons for Judgment of Gummow J. delivered 26 May 1988 ~ Page 13, line 7 - delete "respondents'" Kw ling Patricia Lane Associate to Gummow J. 22 July 1988 NOT FOR DISTRIBUTION JUDGMENT No, 36! 7. 33 el _s00ssbeeee earnsve IN THE FEDERAL COURT OF AUSTRALIA NEW SOUTH WALES DISTRICT REGISTRY No. G887 of 1988 ~~ rT GENERAL DIVISION BETWEEN: FOBACO PTY. LTD. Applicant AND: AUSAE CONFERENCE SERVICES PTY. LTD. First Respondent VICTOR GABAY Second Respo CORAM: GUMMOW J. PLACE: SYDNEY DATE: 26 MAY 1988. PRINCIPAL AEGISTAY EX TEMPORE REASONS FOR JUDGMENT HIS HONOUR: The applicants claim interlocutory injunctive relief on the footing first, of copyright infringement, secondly, of contravention of s. 52 of the Trade Practices Act 1974 ("the TP Act") and thirdly, of passing-off. The tendency in argument has been to consider together the second and third grounds though there are, of course, special considerations attending the public interest element in Part V of the TP Act including the injunctive remedy under s. 80. The proceedings were commenced by an application filed on 29 April 1988. On the return of that application on 19 May, there was apparently some discussion of a proposal by the respondents for a timetable which, 1£ agreed and adhered to, would have got the matter ready early in July for a final hearing. Those discussions did not bear fruit and_ the consequences were that the application for the interlocutory injunctive relief mentioned above was heard yesterday and today. The applicant appears to have taken the view that it would have been too late in the day for a final hearing to have been had in accordance with the projected timetable. The respondents reply - and I think there is some substance in this - that even if that were so, the lateness of the application would, in a real sense, have been a product of the delay of the applicants in instituting the proceedings and if there has been damage suffered, 1t has flowed from events of some months ago. The respondents further say that the situation will not really be satisfactorily reversed at this stage by the form of injunctive relief that is sought. The relief sought appears in somewhat general terms in para. 7 of the application and also in the form of draft orders handed up yesterday by Mr. Hulme QC, who appears for the applicant. What 1s sought is an order that each respondent be restrained from issuing or displaying printed material at or in connection with the Australian Society of Association Executives National Conference and/or Exhibition due to be held at the Hilton Hotel in Melbourne on 14-16 September 1988, without including in or annexing to such printed material a particular statement. 3. The statement is to be 1n a particular form and s512e and to contain the words "The Australian Society of Association Executives National Conference and Exhibition has no connection with the conferences 'Communication Link-Up "88" and 'Associating 87' or with the organiser of such conferences Fobaco Pty. Limited, trading as 'Australian Convention Management Services'". The dispute involves consideration in particular of two documents, exhibits C and D, the provenance of which is explained by Mr. Foda, the managing director of the applicant, in his affidavit sworn 20 April 1988. Exhibit C contains on the front and back cover much red block printing; exhibit D has blue as its predominant colour. Exhibit C is headed "Communication Link-Up '88" in very bold letters. It is accompanied by the words "SYMPOSIUM & EXHIBITION 14-16 August 1988" and it 1s stated on the front cover to be organised by Australian Convention Management Services. The place of the proposed symposium and exhibition 1s not shown on the front cover. However, from the material inside the document, 1t appears that the function is to be held at the Hilton International Hotel in Sydney. Exhibit D 21s headed 1n bold blue print "THE AUSTRALIAN SOCIETY OF ASSOCIATION EXECUTIVES, NATIONAL CONFERENCE & EXHIBITION". Further down the page there appear the words, "ASSOCIATION MANAGEMENT 1988" and the words in smaller print, "The Challenge of Change". At the bottom of the first page, the event is said to be organised by AUSAE Conference Services. This is the name under which the first respondent conducts its business. The date 1s shown as 14-16 September 1988 and the venue as the Hilton International Hotel, Melbourne. On the back cover of each brochure is a further identification of the particular organisation which 1s organising the event in question. Mc. Foda says in his affidavit that he designed a brochure entitled, "ASSOCIATING '87". A copy of this 1s exhibit B. That document on the front page identifies a symposium and exhibition held on 13-15 August 1987 at the Hilton International Hotel, Sydney and was sponsored by the Australian Society of Association Executives, N.S.W. Division. The colour red again is prominently featured on the cover of this document, although not to the degree of exhibit C. Mr. Foda goes on to say in his affidavit that the brochure which 1s exhibit C was distributed at the conclusion of the symposium and exhibition held, as indicated, in August 1987 in Sydney. At that symposium and exhibition, 1t seems there were some 214 persons in attendance. Mr. Foda says 1n his affidavit, that on 15 August 1987, this being at the conclusion of the conference, he arranged for the distribution of the brochure, "Communication Link-Up '88", that 1s to say exhibit C, for the proposed symposium and exhibition to be held on 14-16 August 1988. The distribution was to all sponsors and exhibitors present at the Sydney function. I should also indicate that the brochures in question, ~ exhibits C and D, appear to be directed to potential sponsors of these functions rather than potential delegates. There 15s evidence from one deponent, Jennifer Kathleen Cronin, who attended at Sydney in August 1987 as an exhibitor although she 18S also a member of the New South Wales Division of the Australian Society of Association Executives. In his affidavit, Mr. Foda says that the production of exhibit B was a development of earlier work done by him. He says that he was present as an observer at a meeting of the national body of 14 August 1987. In evidence as an annexure to his affidavit are the minutes of the annual general meeting of the Australian Society of Association Executives held on 14 August 1987 at 5.15 pm at the Hilton International Hotel, Sydney. One of the matters dealt with in the minutes was the decision that the next annual conference would be sponsored by the Victorian Division and the venue would be at the Hyatt on Collins Hotel in the heart of Melbourne. Whilst there was no restriction on use of the name "Associating" for the 1988 symposium and exhibition, Mr. Foda decided that a different name should be chosen, being a name that would have the ability of retaining the clients who had attended the 1987 conference in Sydney and would also appeal to a greater audience and to other associations; hence, he chose the title, "Communication Link-up '88". The brochure in question, exhibit C, cost $2500 to print and he had 1000 copies printed. Mr. Foda says that 1t was in late 1987 that he first saw the brochure put out by the first respondent, being exhibit D. He says he endeavoured to consult a particular solicitor specialising in copyright matters and that after a number of telephone calls not being returned, he decided to seek advice elsewhere. He says that in between times he went overseas and this would appear to cover a period of approximately two months. Towards the end of January 1988, he consulted his present solicitor and subsequently had a conference with counsel. He says that following on that conference, his solicitor wrote a letter dated 7 March 1988, a copy of which 1s in evidence. The respondents point to the further gap between the end of January and 7 March. A reply was received from the respondent's solicitors dated 10 March 1988 and this letter would appear to have drawn the battle lines between the parties. However, Mr. Foda goes on to say that in addition a without prejudice conference has been held with certain parties and this was unsuccessful, as had been other communications. No dates are given for these communications or the conference. The present proceedings, as I have said, were commenced on 29 April 1988. After the institution of the proceedings, correspondence ensued between the solicitors for the parties and on 5 May 1988, the solicitors for the respondents wrote to the solicitor for the applicant stating, inter alia, that the distribution of the blue brochure, exhibit D, had already taken Place so that further delivery was not an issue. The letter stated that the first respondent was prepared to undertake not to use in future publications a text which was the same as that in the brochure, exhibit C. As I have indicated, there is a complaint as to copyright infringement. The subject matter of the complaint is not that the front or back cover of exhibit D, the blue brochure, infringes material on the front or back cover of the ced brochure, exhibit C. Rather, the complaint 1s directed to the contents, particularly the printed material, on the inner pages. For the purposes of these proceedings only, the respondents do not deny that there 1s the necessary literary copyright in that material on the inner pages of the red brochure, exhibit C. It 1s apparent, and I think it is not really disputed, that on that footing there is then at least a serious question to be tried as to whether or not there has been a copyright infringement. The circumstances in which exhibit D was prepared appear from the affidavit of Mr. Links (who 1S a director of Company Institutes & Associations Publishing Services Pty. Ltd.) and from materials he produced on subpoena. Having compared the brochures exhibits C and D and considered the affidavit evidence of Mr. Links, together with the materials produced by him on subpoena, my view is that there is a quite strong case at an interlocutory level on the copyright infringement ground. However it does appear from the evidence that the stocks of the brochure, exhibit D, were distributed several months ago and there 1s no threat to repeat that activity. In particular, the respondents, by their solicitor, informed the Court that they were prepared to offer an undertaking that they would not further distribute the brochure, a copy of which was exhibit D, pending the final determination of the proceedings or further order. I turn now to the affidavit of the second respondent, Mr. Gabay, sworn 25 May 1988. The deponent says that the company of which he is the managing director, that is to say the first respondent, was appointed in September 1987 to organise the next conference of the Australian Society of Association Executives. He also says that the shares in his company are owned as to 50 per cent by AWA Travel Pty. Limited, and as to the balance by the Australian Society of Association Executives. He says that in about October 1987, he discovered that the grand ballroom at the Hilton Hotel, Melbourne would not be avallable for the proposed national conference on the dates originally set, that is to say 6 to 8 October 1988, and accordingly he changed the booking to 14-16 September 1988, these being the only dates available within one month of the Original date. He also indicates that the Australian Society has run a conference biennially, the last two being at Thredbo in 1986 and at Sydney in 1984. On the other hand, the New South Wales Division of the Australian Society ran a conference in 1987 which was a year in which the Australian Society did not run and was not scheduled to run a conference, it being, as 1t were, an uneven year. Mr. Gabay says that it is his belief that the history of the relationship between the two bodies has been that the Divisional bodies run conferences in those years in which the national body does not run a conference, and he says that so far as he is aware, 1988 is the first year in which a Divisional body has endorsed a conference to be held in a year in which a National conference is also to be held. The question then arises as to whether there is any ground for complaint based on contravention or apprehended contravention of s. 52 of the TP Act or passing-off, such as merit interlocutory injunctive relief of the kind sought. The applicants rely on this branch of the case for the total impression produced by the brochure, exhibit D, together with the changed venue to the Melbourne Hilton, rather than the Hyatt on Collins Street, and in the change of date, so as to produce the result that the one conference will be at the Hilton Hotel - the Hilton International, Sydney on 14-16 August 10. 1988 and the other conference, the National conference, will be the Hilton International Hotel 1n Melbourne on 14-16 September 1988, that 1s to say exactly one month later. There is evidence from Jennifer Kathleen Cronin, as I earlier indicated, who 1s the convention sales manager of the Conrad International Hotel and Jupiters Casino at Broadbeach in Queensland. She has held that position for two years and is the person nominated by the hotel as a member of the Australian Society of Association Executives, New South Wales Division. She says she knows Mr. and Mrs Foda and that towards the end of 1987 she received the blue brochure, exhibit D. She noted, however, that the brochure was distributed on behalf of the national body of the Australian Society of Association Executives. While she says she assumed that the brochure meant that the other function - that described in the red brochure, exhibit C ~ had been rescheduled, she was later disabused of that belief. She has now rearranged her schedule and will be attending both conferences. My view is that there is not a real prospect that persons to whom the blue brochure, exhibit D, was directed, would readily or reasonably form any belief that the Melbourne conference described in that brochure had been arranged to supersede the function at the Sydney Hilton for 14-16 August 1988. The eye-catching identification material on the front ll. cover of both documents 1s, 1n my view, sufficiently distinct to preserve the contrast between the two functions. The circumstance that there may be some confusion probably arises, if at all, essentially from the matters referred to in paras. 7 and 8 of Mr. Gabay's affidavit, namely the disruption of the previous temporal relationship between biennial conferences conducted by the Australian Society of Association Executives and conferences run by Divisional bodies. The result then, so far as concerns s. 52 of the TP Act and passing-off, is that the applicant, in my view, has barely made out the requirement that there is a serious question to be tried on these issues. I have then to take into account the balance of convenience and, in particular, the matters urged by the respondents concerning the delay in the institution of these proceedings for interlocutory relief and un the evident inutility, at this stage, of mandatory relief of the kind sought, together with the evident unfairness to the respondents that would transpire if at the final hearing the applicant failed to obtain any final relief. I agree with respect to the views expressed by Burchett J in Janssen Pharmaceutical Pty. Limited v Pfizer Pty. Limited ATPR 40-654, as to the availability of mandatory relief of the kind sought here pursuant to s. 80 of the TP Act. However, his Honour was speaking in the context of a final hearing. I bear in mind also what was said in the context of an interlocutory application by Pincus J in FAI 12. Insurances Limited v Advance Bank Australia Limited (1986) 68 ALR 133, particularly at 135. His Honour there said: Although the power of the court to make an order for corrective action in interlocutory proceedings is clear, it will not ordinarily be thought convenient to do so, in my view, unless 1t seems reasonably obvious that the conduct complained of would probably be held at the trial to fall within s 52 of the Trade Practices Act. One must be cautious against framing as fixed tests any observations governing the exercise of the ample powers reposed in the Court by s. 80 of the TP Act. I have recently expressed my views as to the efficacy of interlocutory mandatory relief where the basis of jurisdiction rests not in s. 80 of the TP Act, but in the general law, such as occurs where relief is sought by way of injunction pursuant to s. 39B of the Judiciary Act 1903. The decision 1s Businessworld Computers Pty. Limited v Australian Telecommunications Commission, 22 April 1988. As I said at pages 7 and 8 of that judgment, statutory grants of particular injunctive powers, such as s. 80 of the Act, may require special consideration. In all the circumstances, having regard to the element of delay which sufficiently appears from the recitation of the facts, to the comparative weakness of the case put forward on an interlocutory footing by the applicant, and to the sentiments expressed by Pincus J with regard to the nature of the interlocutory relief sought here, I have reached the conclusion that the matter 1s best disposed of as follows: Upon the undertaking to the Court given for the 13. respondents by their solicitor, that pending determination of these proceedings or earlier further order, they and each of them will not by themselves, their servants and agents and the servants and agents of each of them, further distribute the brochure, a copy of which 1s exhibit D herein ORDER that the respondents' application for interlocutory injunctive relief be dismissed, I certify that this and the twelve (12) preceding pages are a true copy of the Reasons for Judgment of his Honour Mr. Justice Gummow. Associate: Mhrate Kine Date: 26 May 1988. Counsel and Solicitors for the Applicant: Counsel and Solicitors for the Respondents: Date of Hearing: Date of Judgment: Mr, R.S. Hulme Q.C. and Mr. E.L. Dearn instructed by John R. Quinn & Co. Mr. P. Argy of Mallesons Stephen Jaques 25 and 26 May 1988. 26 May 1988.