Biddulph, Stephen & Anor v De Vries, Jake & Anor t/as Pandanus Press [1998] FCA 1502

IN THE FEDERAL COURT OF AUSTRALIA

NEW SOUTH WALES DISTRICT REGISTRY NG 989 of 1998

BETWEEN: StEPHEN BIDDULPH

First Applicant

FINCH PUBLISHING PTY LIMITED

Second Applicant

AND: jake de vries & susanna de vries together trading as pandanus press

Respondent

JUDGE: EMMETT J

DATE of order: 25 September 1998

where made: SYDNEY

Upon the Applicants, by their counsel, undertaking to the Court to pay to any party adversely affected by the interlocutory injunction or undertaking such compensation (if any) as the Court thinks just, in such manner as the Courts directs.

the court orders that: 1. Pending the determination of the proceedings or further order the Respondent be restrained from, by itself, its servants or agents making, promoting by any means, offering for sale, selling or distributing the book "Raising Girls" under or by reference to the cover design depicted in schedule "A" unless there has been applied to the front and back covers and spine stickers in the form shown in the schedule to this order. 2. The matter stand over to 27 November 1998 at 9.30am before Emmett J for further directions. 3. All parties be granted liberty to apply on 24 hours' notice. 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 NG 989 of 1998

BETWEEN: StEPHEN BIDDULPH

First Applicant

FINCH PUBLISHING PTY LIMITED

Second Applicant

AND: jake de vries & susanna de vries together trading as pandanus press

Respondent

JUDGE: EMMETT J

DATE: 25 September 1998

PLACE: SYDNEY

EX TEMPORE REASONS FOR JUDGMENT HIS HONOUR: The first applicant ("Mr Biddulph") is the author of a book entitled "Raising Boys" which was first published in 1997. The second applicant ("Finch") is the publisher of that book. The respondents are the publishers of a book entitled "Raising Girls", first published in 1998. The applicants contend that the get-up of "Raising Girls" is sufficiently similar to that of "Raising Boys" to suggest to members of the book-buying public that there is some affiliation or sponsorship or approval of "Raising Girls" given by the publishers or author of "Raising Boys". The contention is that the offering for sale of "Raising Girls" in the form of exhibit PF7 constitutes a contravention of section 53 of the Trade Practices Act 1974 (Cth). It is also said to constitute passing off under the general law. The applicants allege that the public is familiar with series publishing and would expect that a book which closely physically resembled an earlier book dealing with similar subject matter would be written or approved by the same author and produced or approved by the same publishers. There is evidence before me that people buy Mr Biddulph's books. There is also evidence before me that booksellers often report that people attach a high credibility to Mr Biddulph's parenting advice and would readily buy any new book he writes. Mr Biddulph has published other books and steps have been taken in recent times for other books to be published with covers and get-up similar to that of "Raising Boys", such that it is said that there is a goodwill attached to the series. The contention is that people are likely to buy "Raising Girls" on the assumption that it has some association with Mr Biddulph or with Mr Biddulph's publishers, Finch. Those assumptions would be wrong. The applicants therefore seek to restrain the respondents on an interlocutory basis from promoting, offering for sale, selling or distributing the book "Raising Girls" under or by reference to the cover design which is apparent in exhibit PF7. The respondents dispute that there is any serious question to be tried as to whether or not there is any likelihood of confusion and contend that, in any event, damages would be an adequate remedy in the circumstances. These matters are very much matters of first impression. Whether or not in the real world people are likely to be confused is a matter which may depend upon some evidence as to the practice of the buying public, the practice of booksellers and the like. However, my first impression of looking at the two exhibits, RF1 being a copy of "Raising Boys" and RF7 being the copy of "Raising Girls", is that there are sufficient similarities to justify a conclusion that there is at least a serious question to be tried as to whether or not members of the public are likely to be given the impression that there is some relevant connection between the author and publishers of "Raising Boys" on the one hand and the author and publisher of "Raising Girls". The matters to which attention is drawn are as follows. First of all, the type faces used for the title, while not identical, are similar. They are different in colours in that "Raising Boys" is navy blue and "Raising Girls" is pinkish red. Nevertheless, they are both against white backgrounds with shading behind the letters. Each has a sub-heading immediately below the title. The white background to the title flows into a photograph by means of airbrushing. The photograph on the cover of each book is of children. There are two boys on the cover of "Raising Boys" and six girls on the cover of "Raising Girls". Below the photograph is a strip, red in one case and a pinkish red in the other. On the strip the name of the author appears in white. On the back cover, both books are vertically divided into two sections with the title in the top left-hand section in the same type as the title on the front cover. Underneath the title is an extract from comments said to be made by mothers: the mother of a teenage daughter in the case of "Raising Girls" and the mother of two boys in the case of "Raising Boys". Below that is a list of topics which are to be found in the book. In the right-hand section, which is in the same colour as the strip at the front of the book containing in the authors' names, are comments about the books. There is also a photograph, in the case of "Raising Boys", of three boys; in the case of "Raising Girls", of a girl. All of those matters suggest to me a significant similarity between the two such that one could be mistaken in thinking that there is a connection between the two. On the other hand, careful inspection would indicate that the publishers are in fact different and that there is no connection indicated between Mr Biddulph on the one hand and the authors of "Raising Girls" on the other. On final hearing, with the benefit of other evidence, that may be shown to be significant. I am mindful of the observations made by Sir Harry Gibbs in Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191 at 200 as follows: Speaking generally, the sale by one manufacturer of goods which closely resemble those of another manufacturer is not a breach of s 52 if the goods are properly labelled. There are hundreds of ordinary articles of consumption which, although made by different manufacturers and of different quality, closely resemble one another. In some cases this is because the design of a particular article has traditionally, or over a considerable period of time, been accepted as the most suitable for the purposes which the article serves. In some cases indeed no other design would be practicable. In other cases, although the article in question is the product of the invention of a person who is currently trading, the suitability of the design or appearance of the article is such that a market has become established which other manufacturers endeavour to satisfy, as they are entitled to do if no property exists in the design or appearance of the article. In all of these cases, the normal and reasonable way to distinguish one product from another is by marks, brands or labels. If an article is properly labelled so as to show the name of the manufacturer or the source of the article its close resemblance to another article will not mislead an ordinary reasonable member of the public. Lehane J in Philips Electronics NV & Anor v Remington Products Australia Pty Limited (1997) 39 IPR 283 at 303 in referring to those observations said: What is, I think, quite clear is that the Chief Justice would have contemplated that only in very unusual circumstances would a trader whose product was clearly labelled so as to indicate its source be regarded as guilty of misleading or deceptive conduct only because the product itself closely resembled the well-known product of another trader. I am not sure, however, that those comments are necessarily apt in relation to the products in question. Books, of course, look the same physically in the sense that they are usually rectangular and of a certain thickness and open up to separate pages. In that sense, all books tend to be of the same shape. The only way in which one can distinguish books in that sense is by indicating the source of the books by clearly indicating the publisher and the author. Nevertheless, as I have said, it may well be that, notwithstanding that the authors and publishers, on careful inspection, can be seen to be different, the buying public may well be misled into buying books because of a similarity on reasonably superficial inspection. In the circumstances, I am satisfied that there is a serious question to be tried as to whether or not the selling of "Raising Girls" in the form of exhibit RF7 is a contravention of section 53 of the Trade Practices Act and constitutes passing off. I do not consider, in the circumstances, that damages would be an adequate remedy. Certainly, if damages in the measure recoverable at common law would be adequate remedy and the defendant would be in a financial position to pay them, no interlocutory injunction should normally be granted, however strong the plaintiff's claim appears to be at the interlocutory stage - per Lord Diplock in American Cyanamid [1975] AC 396. However, where one is concerned with the sale of books, questions will arise as to loss of sales and whether taking of accounts is adequate. In the circumstances, I am satisfied that damages would not be an appropriate remedy or an adequate remedy, such that an injunction is merited in the present circumstances. The real argument concerns the form of any injunction which should be ordered in this case. The orders sought by the applicants are as follows: An order that until judgment or further order the respondents be restrained from, by themselves, their servants or agents engaging in trade or commerce in conduct which is misleading or deceptive or likely to mislead or deceive by making, promoting by any means, offering for sale, selling or distributing the book, "Raising Girls", under or by reference to the cover design depicting in schedule A. ……………………………………………………… An order that until judgment or further order the respondents be restrained from by themselves, their servants or agents passing off books not produced by or with the licence of the applicants as books being so produced, by making, promoting by any means, offering for sale, selling or distributing the book, "Raising Girls", under or by reference to the cover design depicted in schedule A. The cover design in schedule A is that of exhibit PF7. I have before me evidence that the respondents, without prejudice, had indicated a willingness to take some steps to ensure that the concern of the applicants was assuaged. First of all, an order was given to various book sellers that the book, "Raising Girls", was to be withdrawn from sale. It was also suggested on behalf of the respondents that the objection or difficulties raised by the applicants would be overcome by additions to the cover of the book which would have the consequence that its get-up would be different. In correspondence from the solicitors for the respondents to the solicitors for the applicant, three stickers had been suggested which would be applied to the front cover, the back cover and the spine of the book. The form of those stickers as they would appear on the book is shown in exhibit M1R in the proceedings. It has been accepted on behalf of the applicants that, had the book "Raising Girls" been published in the form in which it appears in M1R, then no complaint could have been made of the nature which has been made. In the circumstances, I consider that it is appropriate to restrain the respondents from making, promoting by any means, offering for sale, selling or distributing the book "Raising Girls" under or by reference to the cover design depicted in schedule A, unless there has been applied to the front and back covers and spine covering stickers in the form contained in exhibit M1R. I propose to make an order along those lines. However, the respondents have raised the question of how that order might best be complied with. It was contended on behalf of the applicants that it would be appropriate for the respondents to take steps to withdraw all of the books from sale and recall them so that the stickers could be placed on the books. There was evidence before me that although the books had been withdrawn from sale it was still possible by asking at many bookshops to obtain a copy of the book "Raising Girls" without any covering stickers on the covers. The question of whether or not the order which I propose to make is complied with is a matter for the respondents. I should say, however, that I would regard it as reasonable for the respondents, at least in the first instance, to take the steps which have been proposed in the correspondence between the solicitors. That would entail the respondents giving firm instructions to all of the distributors and booksellers to whom the books have been entrusted for sale to ensure that the books are not sold unless these stickers have been imposed on them. It would be incumbent upon the respondents to supply those stickers to the booksellers and distributors and to take whatever steps they consider appropriate to monitor the conduct of the booksellers and distributors ensuring that there is no failure to alter any book which is to be sold. If the respondents found that that was not a successful means of ensuring compliance with the order which I propose, it would be incumbent upon the respondents to take further steps. It may be that at that stage it would be necessary for them to insist on recall of the books which have not been sold. I would expect that the respondents would take reasonable steps to ensure that there is appropriate monitoring so that, if the necessity to recall the books arises, that could be done as soon as possible and without there being any further offending sales. I have made these comments by way of indicating what I would expect would be the steps to be taken on behalf of the respondents. Ultimately, of course, it is a matter for the respondents to comply with the order. If it turned out that it was simply not possible to comply with the order even by taking the steps that have been suggested, that might be a basis for the respondents to make an application for the variation of the order. That is not a course which I would encourage because the costs of doing so may well be disproportionate. While the sums of money involved in this case are no doubt significant for the parties, they are probably not such as would justify multiple applications to the court. The order which I propose and the comments which I have made are designed to ensure as far as possible that there would be no more necessity for another interlocutory application before the final resolution of the proceedings. I certify that this and the preceding six (6) pages are a true copy of the Reasons for Judgment herein of the Honourable Justice Emmett