New South Wales Supreme Court CITATION : ACP Magazines Pty Ltd v Southdown Publications Pty Ltd & Ors [2002] NSWSC 901 CURRENT JURISDICTION: Equity Division Commercial List FILE NUMBER(S) : SC 50130/02 HEARING DATE(S) : 8 - 14 October 2002 JUDGMENT DATE : 19 November 2002 ACP Magazines Pty Ltd (Pltf) Southdown Publications Pty Ltd (1D) PARTIES : Pacific Publications Pty Ltd (2D) PMP Publishing Pty Ltd (3D) Jupelly Pty Ltd (4D) JUDGMENT OF : McClellan J J M Ireland QC/A J Meagher SC/R Cobden/ K Richardson (Pltf) COUNSEL : J T Gleeson SC/P J Brereton/C A Moore (1, 2 & 4D) M Macrossan (3D) Gilbert & Tobin (Pltf) SOLICITORS : Coudert Brothers (1, 2, & 4D) Minter Ellison (3D) CATCHWORDS : COMMERCIAL - construction of contract - where contractual term provided for the transfer of rights in a magazine business - where that magazine business had a long association with an awards show - whether the trade marks for the awards show and other photographic material should be included in the interest to be transferred - goodwill - whether the trade marks were a component of the goodwill of the magazine - breach of contract - whether there is an action for inducement of a breach of contract. LEGISLATION CITED : Limitation Act 1969 (NSW) s 16, s 14 Trade Marks Act 1995 Hepples v Federal Commissioner of Taxation (1992) 173 CLR 492 Commisioner of Taxation v Murry (1998) 193 CLR 605 The Commissioner of Inland Revenue v Muller v Co's Margarine Ltd (1901) AC 217 FC of T v Just Jeans Pty Ltd (1987) 16 FCR 110 Equiticorp Finance Limited (In Liquidation) v Bank of New Zealand (1993) 32 NSWLR 50 Pole v Leask (1863) 33 LJCH 155 Freeman & Lockyer v Buckhurst Park Properties (Mangal) Ltd [1964] 2 QB 480 CASES CITED : Short v The City Bank (1912) 12 SR (NSW) 186 Allstate Life Insurance Company & Ors v Australia and New Zealand Banking Group Ltd & Ors (1995) 58 FCR 26 Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 TGI Friday's Australia Pty Limited v TGI Friday's Inc (2000) 100 FCR 358 Morny Limited's Trade Mark (1951) 68 RPC 131 "Sea Island Cotton" Certification Trade Mark [1989] RPC 87 Unilever Australia Limited v Karounos (2001) 52 IPR 361 Campomar Sociedad, Limitada v Nike International Ltd (2000) 202 CLR 45 Castol Ltd's Trade Mark [1972] RPC 531 DECISION : See para 124 IN THE SUPREME COURT OF NEW SOUTH WALES EQUITY DIVISION COMMERCIAL LIST McCLELLAN J TUESDAY, 19 NOVEMBER 2002 50130/02 ACP MAGAZINES PTY LIMITED v SOUTHDOWN PUBLICATIONS PTY LIMITED & ORS JUDGMENT HIS HONOUR: Introduction 1 In July 2002, exercising rights created under a Deed made in 1980 (the 1980 Deed), ACP Magazines Pty Limited (ACP Magazines) acquired the magazine TV Week from Southdown Publications Pty Limited (Southdown 266). This case is primarily concerned with the rights which passed with the acquisition. Depending upon the construction of the relevant clauses of the 1980 Deed, ACP acquired only the "mast head" TV Week, or it acquired with the masthead the rights to the television awards known as the Logie awards and trade marks related to the awards together with a photograph library. The answer to the primary question may make it necessary to consider other matters related to the trade marks. 2 This is the final hearing of the matter. In a judgment handed down on 1 August 2002, Einstein J made interlocutory orders restraining ACP Magazines from using the Logie trade marks or publishing any claim that TV Week is "the home of the Logies". Other orders were made. 3 Although the parties disagree about some of the inferences to be drawn from the facts, the basic factual matters are not in dispute. Much of it is, of course, material which is in the public domain as the Logie awards ceremony is one of the highest rating programs on Australian television. This was not always the case. The original awards were not presented at the type of public ceremony which occurs today. It is convenient to relate the history of the Logie awards together with that of TV Week in two stages. The first stage is up to August 1980 when the 1980 Deed was executed and the second stage from that date to the present. It is also necessary to understand the complex ownership history of both the magazine and its publisher during each of those periods. TV Week to 1980 4 The Australian television industry commenced in 1956. It was not long before magazines devoted to information about television programs and personalities came into existence. One of those magazines, first published in July 1958, was titled "TV Radio Week". It was initially published by Southdown Press Pty Limited (Southdown 123) and soon became known merely as "TV Week". Southdown 123 published other magazines including New Idea, Truth and Best Bets. Southdown 123 was a wholly owned subsidiary of News Ltd (News). 5 In January 1959, TV Week announced a proposal for a series of "Television Awards" to be known as the TV Week awards. Graham Kennedy, then already a well-known television personality, received an award which he referred to as a "Logie" award after John Logie Baird who is credited, in January 1926, with the first practical demonstration of television. The name has continued to be used. A recipient of an award receives a statuette commonly known as a Logie. 6 The awards continued to be given annually. The awards ceremony was first broadcast on national television in 1968 and probably became a complete live telecast for the first time in 1970, although this date is not entirely certain from the material in evidence. The precise date does not matter. 7 Both in the original ceremony and thereafter, the ceremony was identified, in various ways, as the occasion on which awards referred to as the "TV Week Logie Awards", were presented. As is indicated by the fact that it developed into the occasion for a live broadcast, the significance of the awards grew continuously. 8 Mr Brian Morris joined Southdown 123 as National Advertising Manager in 1964. The following year he was appointed general manager of that company. In or around 1970, he was promoted to the position of managing director, a position which he held until 1979. In that role, he had executive responsibility for TV Week. 9 In his evidence, which I accept, Mr Morris described how TV Week was published with weekly program listings and contained news and stories about local and overseas TV personalities, feature articles and gossip. For a number of years, the magazine included a centre spread pin-up poster of a celebrity. The magazine was given a consistent "look", which involved a degree of colour and brightness to make it "consistent with the pop culture content of the magazine". Although the presentation evolved over the years, the magazine was given a consistency of look and presentation which gave the readers a sense of familiarity. 10 Of the Logie awards Mr Morris said: "TV Week featured content about the Logie awards at several different times during the year. About 8 weeks before the Logies broadcast, coupons allowing readers to vote for Logie winners were printed in the magazine, over a four or five week period. Following the Logies ceremony, the magazine ran two special Logies editions. TV Week might also run feature stories in the following weeks about some of the stars attending the event or the winning programs. My aim (and my general directive to TV Week editorial staff) was to get as much benefit as possible from the Logies to assist in promoting sales of the magazine." 11 Mr Morris gave evidence about the development of the televised presentation of the Logie Awards. He said that when he was first employed by Southdown 123, the awards were not televised live. In 1966, Mr Morris discussed the possibility of a live broadcast and made arrangements with Channel 9 for this to occur. Channel 7 and Channel 10 only became interested in the awards ceremony after it had become one of the most popular shows on television. A deal was struck with Channel 9 which meant that it was required to promote the ceremony as the telecast of "the TV Week Logie Awards". 12 Mr Morris said that he considered that TV Week magazine "owned" the Logie awards. He said: "I considered that TV Week owned the TV Week Logies. Editorial staff and representatives of the magazine (including myself) decided on the structure of the event and made decisions about what guests would appear on the broadcast. That was one reason why the event was not dominated by the stars of the network screening the event: it was irrelevant to TV Week whether or not the personalities appearing on the show were stars of Channel Nine or of rival networks." 13 Mr Morris also described how the date for the awards ceremony was chosen having regard to the availability of overseas television personalities. He also said that: "During my time with Southdown, the TV Week Logie Awards were broadcast on a Friday night. The magazine announcing the winners was produced during the week prior to the event and went on sale the day after the Logies went live to air. The staff of TV Week magazine then worked all day Saturday after the Logies telecast on a further special Logies edition, containing all the pictures and behind the scenes stories from the actual presentation night. That edition went on sale the following week. So, there were in effect, two special Logie editions of TV Week magazine with high potential sales." 14 Mr Morris described the involvement of various persons with responsibilities for the production of TV Week in the organisation of the awards. In particular, TV Week people were involved in identifying and arranging for the required personalities to participate in the awards ceremony. Arrangements were made between TV Week and overseas stars which did not involve appearance money, although the magazine met the costs of their airfares and of an Australian holiday. 15 The costs were actually met by Southdown 123 but were allocated as a cost of TV Week. The overseas personalities would take part in the ceremony and were usually required to be available for a photo shoot for TV Week for publication in the magazine. 16 Through Mr Morris, control was kept on the media appearances of overseas stars. Their services were jealously guarded by TV Week until at least after the awards ceremony had been completed. On the night of the awards, although newspaper journalists were allowed access to the awards ceremony, journalists from magazines other than TV Week were not. By this means magazine coverage of the event was kept exclusive to TV Week. 17 The set designs for the awards ceremony were required to include the TV Week logo which was also required to be displayed on the podium during the ceremony. TV Week staff were involved in many of the administrative tasks for the Logie awards, suggesting the order of the awards and providing biographies for various participants. They also suggested the theme music to be played when the awards were being presented. 18 During most of the years he was associated with TV Week, Mr Morris gave a short speech at the beginning of the awards ceremony. The content of the speech apparently varied from year to year but always highlighted TV Week. However, he was usually introduced as the Managing Director of Southdown 123. This was done to advance his profile in the industry, and benefit Southdown 123 and its various magazines. 19 The awards ceremonies included special industry awards usually decided upon by executives associated with TV Week and other awards voted for by the general public. The vote had to be on a coupon taken from TV Week and in this way, the circulation of the magazine was stimulated. 20 Mr Morris gave evidence that the Logie awards were consistently promoted by Southdown 123, TV Week magazine and Channel 9 as the TV Week Logie Awards. They were never referred to as the awards of any other magazine or organisation. However, it was not the case that all media described the awards as the TV Week Logie Awards. And during the course of the award ceremony, although introduced by reference to TV Week, I am satisfied they were often referred to as a Logie or Logie Award. On one occasion, a special program was prepared for Channel 9 entitled "Forty Years of the Logies", the title containing no reference to TV Week. It was common in an article in TV Week discussing the awards to initially refer to the TV Week Logie Awards and thereafter to the "Logie Awards" or the "Logies". 21 There is also evidence from Mr Lawrence Masterson, at times the National Editor of TV Week, which is evidence I accept, that Channel 9 sometimes referred to the awards simply as "the Logies Awards". He indicated that it was sometimes difficult to get the general press to include a reference to TV Week in the name of the awards when publishing a story which related to them. 22 Notwithstanding these matters, I am satisfied that in the pubic mind, a strong connection between TV Week and the Logie awards was created and constantly reinforced. 23 Mr Morris gave evidence of the critical significance of the Logie awards to the commercial success of TV Week: "The TV Week Logie Awards were significant to TV Week for a number of reasons. They resulted in increased sales of the magazine, particularly in relation to the two 'Logies editions' of the magazine published in the weeks following the awards ceremony. The Logies editions were typically two of the largest circulating issues of the year for the magazine. As we anticipated that to be the case, we typically printed more copies of the Logies editions than we did for issues that were not specially promoted. I estimate that, during the time I was managing director of Southdown, the corresponding increase in revenue from the increased circulation of the Logies edition was approximately 10% of the average weekly circulation revenue. During the time that I was managing director of Southdown, there were no television industry awards in Australia other than the Logie Awards. Further, the Logie awards were viewed as important by the television industry: most television programs that won Logies referred to this in their subsequent program promotions. The perceived prestige and importance of the Logie Awards was, in my opinion, significant because those matters made it more likely that readers perceived TV Week magazine, which conducted the awards, as Australia's pre-eminent television magazine. (I note, in this regard, that in the 1970s, Woman's Day and New Idea were not competing with TV Week in terms of content. Those magazines focused on matters such as gardening and cooking, rather than news and gossip about television and film personalities). The increase in circulation attributable to the TV Week Logies edition resulted in an increased average circulation of TV Week magazine for the entire year. This effectively enabled the magazine to achieve higher advertising rates, and thus higher advertising revenue, because those advertising rates were set on the basis of the average circulation of the magazine over the preceding year." 24 During Mr Morris's time with the company, Southdown 123 maintained a weekly reporting system which provided a record of the performance of each of the company's magazines. Each magazine was required to be independently financially viable and meet revenue and profit targets on its own merits. Weekly circulation, advertising revenue and production costs were recorded. Editorial and promotional costs which were incurred intermittently were averaged over the 52 weeks of the year and allocated on a weekly basis. Executive costs, for instance Mr Morris's costs as managing director, were distributed over each of the magazines for which he was ultimately responsible. Under the accounting approach adopted by Southdown 123, costs associated with the awards were generally treated as promotional costs for TV Week magazine. 25 Mr Ronald Davis was the producer or executive producer of the Logie awards ceremony from 1966 to 1979. However, he was associated with the awards from 1959. He gave evidence that prior to 1966, the awards were presented to successful personalities during the shows on which they appeared. Awards were posted to overseas recipients. 26 The 1966 awards ceremony was held at the Palais de Danse at St Kilda. Some of the awards presented were shown live on the television program, "In Melbourne Tonight". Others were presented at the ceremony. Mr Davis, who was an employee of Channel 9 ("GTV-9"), gave evidence of how he liaised with Mr Rod Lever, the editor of TV Week, in making the arrangements for the awards presentations. It was the responsibility of TV Week to make arrangements for the attendance of celebrities, book the venue and host the function for the awards. GTV-9 was responsible for the production. The set which was required to include the TV Week logo was paid for by TV Week. 27 Mr Davis gave evidence of the arrangements for the awards in the following years when he was involved, saying: "During my time as producer and executive producer of the TV Week Logie Awards: (a) to the best of my recollection and as far as I was aware, they were consistently promoted as the TV Week Logie Awards by both TV Week's publisher, Southdown, by TV Week magazine, and by GTV-9 as required by TV Week; (b) to the best of my knowledge, the representative of TV Week that I dealt with were staff of TV Week magazine, rather than corporate staff of Southdown, with the exception of Brian Morris. Mr Morris, from 1968, was the managing director of Southdown. He had been involved in the initial establishment of the TV Week Logie awards as a feature telecast and continued in this role after he was promoted to the position of managing director; (c) I did not knowingly deal with the staff of any other magazine published by Southdown in the course of my duties as producer of the TV Week Logie Awards telecasts; (d) at no time did I hear or see the awards referred to, by either Southdown representatives, TV Week representatives or GTV-9 staff, as associated with any magazine other than TV Week, or in any way independent of TV Week magazine. Nor were they ever referred to as Southdown's awards, or the Southdown Press Logies." 28 I accept the evidence of Mr Davis. 29 It is also apparent that at various stages in the broadcast of the Logie awards ceremony, TV Week was to be promoted by the compere, by Mr Morris and by references to the awards being the "TV Week Logie Awards" in various voice-overs and graphics. Ownership of TV Week at August 1980 30 From its inception, TV Week was owned and published by Southdown 123 which was a wholly-owned subsidiary of News Ltd. 31 In 1969, as part of a restructure of the corporate interests of News Ltd, Downland Publications Ltd (UK) ("Downland Publications"), through the enterprise known as Southdown Press Division, became the owner and publisher of New Idea, Truth and Best Bets. TV Week continued to be owned and published by Southdown 123 but was now "edited, printed and distributed" by Downland Publications. Southdown 123 continued to be owned by News. In fact, the name of the company was changed from Southdown Press Pty Ltd to Southdown Publications Pty Ltd. Both before and after the name change, I have referred to it as Southdown 123. Downland Publications was owned by News International Ltd. This remained the position at August 1980. The next significant change in ownership occurred in 1984. Australian Consolidated Press Limited (ACP) 32 ACP was the corporate vehicle of the Channel 9 Television Network. Before 1980 it created two magazines related to the television industry. They were titled TV Times and TV Guide. Although ACP was party to the original arrangements with News, which I refer to below, the ACP rights were assigned in 1992 to ACP (TV Magazines) Pty Ltd (ACP Magazines), the plaintiff in the proceedings. The 1980 Deed 33 The parties to the 1980 Deed were ACP, on the one hand and News and Southdown 123 on the other. A full copy of the Deed is Annexure A to these reasons. (copy of the Deed can be obtained from Justice McClellan's chambers). The recitals identified the "Rights" which each party brought to the transaction and provided as follows: "A. ACP is entitled to all of the goodwill trademarks business names and other rights (hereinafter called 'the ACP Rights') which permit it to publish and are sufficient for the publication of the magazines called 'TV Times' and 'TV Guide'. B. News and/or Southdown are entitled to all of the goodwill trademarks business names and other rights (hereinafter called 'the News Rights') which permit it to publish and are sufficient for the publication of the magazine called 'TV Week'." 34 Recital C recorded the fact that "TV Week" is "edited, printed and distributed for Southdown 123 by Downland Publications Limited". The agreement made between ACP and News was that News would, for the agreed consideration, acquire ACP's Rights as defined (Recital D). The intention of the parties was that the Rights of both ACP and News would be merged to become "the Business", being the business of publishing TV Week (Clause 1.1). Clause 1.5 provided for the future conduct of the parties in the following terms: "1.5 Each of News and Southdown will not without the prior written consent of ACP do or attempt or purport to do, or permit, cause or suffer to be done, anything which may materially prejudice the validity, subsistence or good standing of the Rights of any of them." 35 Clause 2 provided that either News or Southdown 123 would "continue to publish edit produce and distribute the magazine presently called "TV Week". The financial arrangements provided for ACP to receive half the profits from the Business or contribute to half of any losses (clause 3.1). ACP was excluded from any participation in the Business over which either News or Southdown 123 was to have control. 36 Clause 6 provided for the "Maintenance of the Rights". Clause 6.1 was in the following terms. "6.1 News undertakes and agrees that it will at all times take all necessary steps to maintain the Rights in good standing and to protect the same." Savoy Clause 37 The parties constructed an arrangement by which the "joint venture" could be brought to an end at a value which either could determine. It was an ingenious arrangement, expressed in cl 7, known as a "Savoy clause". The clause is in the following terms: 7.1 Either News or ACP (hereinafter called 'the offeror party') may at any time after the date six months from the date of this Deed offer in writing to sell or procure the sale to the other party (hereinafter called 'the offeree party') the offeror party's interest under this Deed for the sum of money specified by the offeror party in the said offer. If the offeree party shall not have accepted the offer by giving notice in writing within fourteen (14) days after the making of the offer the offeror party shall thereupon be deemed to have notified the offeree party that the offeror party will purchase from the offeree party all of the offeree party's interest under this Deed for the sum specified in the offeror party's original offer and the offeree party shall in that case be bound to sell to the offeror party. Completion of any sale or purchase pursuant to this Clause 7 shall take place within twenty-one (21) days after acceptance of the offer by the offeree party or the deemed notice by the offeror party as the case may be, and this Deed shall subject to Clause 7.3 cease to operate." 38 The clause operates to transfer a "party's interest" under the Deed. Clause 7.2 describes those interests. Because of the structure of the venture, the interest of ACP is different from that of News. In the case of ACP, the interest is the right to receive the share of the profits. In the case of News its interest is: "…the right title and interest of News in and to the Rights including (but without limiting the generality of the foregoing) in respect of the new title and of each of the separate titles 'TV Week', 'TV Times' and 'TV Guide' and of the goodwill attached to any or all of those titles." 39 This description of the News interest is part of cl 7.2 of the Deed. The full clause is in the following terms: "7.2 In this Clause 7 any reference to the interest of any party under this Deed shall mean in the case of ACP the right to receive the share of the net profits of the Business as provided in Clause 3.1 and shall mean in the case of News the right title and interest of News in and to the Rights including (but without limiting the generality of the foregoing) in respect of the new title and of each of the separate titles 'TV Week', 'TV Times' and 'TV Guide' and of the goodwill attached to any or all of those titles." 40 The right of ACP to continue to publish TV related magazines was protected by cl 8. It was in the following terms: "No Restraint on Competition Nothing in this Deed or in the relationship between the parties resulting from the Deed is to prevent any party in any way from carrying on any business or publishing any magazine in competition with the magazine (howsoever called) and in particular (but without limiting the generality) nothing is to prevent ACP from continuing to publish the TV magazine presently published by it in connection with 'The Australian Women's Weekly'." 41 Clause 11 provided for the consent of one party before the other assigned its interest under the Deed. It was in the following terms: "11. Neither party to Assign, Encumber, etc. Neither this Deed nor the interest of any of the parties in to or arising under this Deed (or any part thereof) herein may be assigned, pledged, transferred or encumbered or any equity therein conferred without the prior written consent of both the other parties." Mr McWilliam's file 42 The defendants tendered the file kept by Mr McWilliam, the solicitor who acted for ACP in relation to the agreement which was recorded in the 1980 Deed. The documents in the file reveal that Mr McWilliam was made aware that there were no physical assets utilised in the production of TV Week which were intended to be assigned under the Deed. Furthermore, the documents made plain that the magazine was actually produced by Downland which provided the physical assets necessary for its publication. 43 The file also reveals that Mr McWilliam made various inquiries, including searches of the relevant companies and it appears that the provisions of the Deed, in particular the recitals, are consistent with his understanding of the role of the various companies. As a result when the transaction was completed the relevant business name transfers were effected. 44 It is submitted by the defendants that the file is admissible when construing the 1980 Deed: (Codelfa Constructions Pty Ltd v State Rail Authority of New South Wales (1982) 149 CLR 337 at 347-353; Brambles Holdings Ltd v Bathurst City Council (2001) 53 NSWLR 153 at 163. However, I am not satisfied that an understanding of the file relevantly assists in determining the issues which now divide the parties. It certainly assists an understanding of the arrangements which were in place for the production of TV Week and the confined nature of the assets which each party agreed to contribute to the joint enterprise. However, the structure of that enterprise and the assets which it was intended to comprise were defined by the Deed. In my view the questions which must be answered are not ultimately assisted by the jottings and correspondence in Mr McWilliam's file. TV Week and the Logies from 1980 45 Mr Peter Faiman is a well known freelance film and television producer. He started as a stage hand with GTV 9 in 1962. Between 1962 and 1968, he worked as a stage hand, cameraman and assistant floor manager on various programs, including the Logie awards. 46 From the late 1970s, he took over the role of producer of the Logie awards. He left Channel 9 in 1985. In relation to the awards, he gave the following evidence which was not effectively challenged. "In this statement, where I refer to roles or tasks performed by 'TV Week', I am referring to roles or tasks carried out by persons I knew, understood or believed to be editorial or administrative staff of TV Week magazine. I knew, understood or believed this because those persons were introduced to me as being from TV Week, or introduced themselves to me in that way. During my time as producer and executive producer of the TV Week Logie Awards: (a) to the best of my knowledge and as far as I was aware, the awards were consistently promoted as the TV Week Logie Awards by both TV Week's publishers, Southdown (later Pacific Publications) by TV Week magazine, and by GTV-9; (b) to the best of my knowledge the representatives of TV Week that I dealt with were ordinarily staff of TV Week magazine, rather than corporate staff of Southdown or Pacific, with the exceptions of Brian Morris and later Dulcie Boling, each managing director of the publisher of TV Week at different times. My dealings with Mr Morris, Mrs Boling, and the staff of TV Week are discussed in more detail below; (c) I did not knowingly deal with the staff of any other magazine published by Southdown or Pacific in connection with producing the TV Week Logie Awards broadcasts; (d) at no time did I hear or see the awards referred to, by either Southdown or Pacific representatives, TV Week representatives of GTV-9 staff, as associated with any magazine other than TV Week, or in any way independent of TV Week magazine. Nor were they ever referred to as Southdown's or Pacific's awards, the Southdown Press Logies, the Pacific Publications Logies or the New Idea Logies. I recall that when I first started working on the TV Week Logie Awards broadcasts as a director, Ron Davis took me to meet Brian Morris at Southdown's offices. I knew Brian Morris was the managing director of Southdown; I also understood him to be the head of TV Week magazine because in his dealings with me and other GTV-9 staff, he appeared to make the final decision about matters required by TV Week magazine in connection with the Logies broadcast. Brian Morris, while I was director, producer and executive producer of the TV Week Logie Awards broadcast, was quite 'hands on' in his involvement with the broadcast. At some point in the late 1970s or early 1980s Dulcie Boling replaced Brian Morris. I knew that Mrs Boling was managing director of Southdown. I also understood her role to be head of TV Week and accordingly head of the TV Week Logie Awards because in her dealings with me and other GTV-9 staff, she appeared to make the final decisions about matters required by TV Week magazine in connection with the Logies broadcast. About 6 months prior to each annual TV Week Logie Award broadcast for which I was executive producer, a formal meeting was held between GTV-9 production staff and TV Week representatives, at Southdown's premises. GTV-9 staff formulated, and presented at the meeting, suggested creative approaches for the next Logies broadcast. TV Week representatives presented any issues raised by the previous year's awards. Other matters discussed in these meetings included possible guests, whether the awards should be cabaret or theatre style and so on. I refer to the booklet entitled '21 Years of the Logies'. I agree that the description of the pre-production process of that booklet is generally accurate. Invariably during these meetings Mrs Boling's expressed concern was the promotion of TV Week magazine – for example, matters such as the amount of prominence given to TV Week logos and references in broadcasts of the TV Week Logie awards, or arranging suitable access for TV Week photographers during the ceremony so that they could take good photographs for the magazine. The latter topic in particular was continually emphasised to me by Mrs Boling and other TV Week representatives. There were a wide range of other issues to deal with in the lead up to the broadcast, and frequent meetings between GTV-9 and TV Week staff in the lead up to the broadcast, to discuss and deal with these issues. For example, sometimes there would be clashes between activities scheduled for celebrities by TV Week and activities required by GTV-9 for the broadcast, such as rehearsals. To sort out these sorts of issues, I dealt with Brian Morris (in the first few years that I was producer); later, I dealt with TV Week editorial staff such as Jerry Fetherston, New South Wales editor of TV Week, then Lawrie Masterson (national editor of TV Week). Both Jerry Fetherston and Lawrie Masterson were very hands on and very involved in the production of TV Week Logie broadcasts. Mrs Boling also involved herself in the production and made decisions on various matters. TV Week representatives were closely involved in virtually every aspect of the broadcast, and constantly reviewed what was being done by GTV-9 in connection with the broadcast. While there was close collaboration between GTV-9 and TV Week staff regarding the TV Week Logie Awards broadcasts, in my view it was TV Week that 'ran the show.' Mrs Boling in particular was very demanding about the manner in which the TV Week Logie Awards were presented. Whenever there was a conflict between TV Week editorial staff and GTV-9 staff about an aspect of the production, and Mrs Boling became involved, she would make statements such as: 'This is not Channel Nine's Logies, this is TV Week's Logies.' Mrs Boling's decisions frequently prevailed or overrode GTV-9's decisions. For example, I remember on one occasion where it had been arranged that Don Lane would present the first award in a TV Week Logies broadcast. At the last minute Mrs Boling overrode this decision and insisted on someone else of her choosing presenting the award. When I protested, she spoke to Don Lane directly about the matter. Her new choice for presenter prevailed. As the date for the awards ceremony approached, some of my meetings with TV Week representatives were held at the venue for the broadcast. On these occasions, if (for example) I was giving a direction to a member of GTV-9 staff about a direction received by Mrs Boling or the other TV Week representatives, I introduced Mrs Boling and the other TV Week staff to the GTV-9 crew as people 'from TV Week.' Likewise, in my day to day discussions with others at GTV-9, I referred to meetings 'with TV Week'. I did not generally in conversation with others at GTV-9 refer to 'meetings with Southdown.' While I was executive producer, on the day of the telecast, at about 5 pm, I usually had a meeting with Bert Newton, Mike McColl Jones (Bert Newton's writer), my assistant and Lawrie Masterson. The guests to appear on the broadcast came to the meeting one by one. I gave each guest a brief about the production and Bert Newton then chatted with the guest. The guest was then escorted to the set by the GTV-9 floor manager, together with a staff member from TV Week, and walked through the set. Some time after each TV Week Logies broadcast for which I was executive producer, I usually attended a debrief meeting with TV Week editorial staff, including Lawrie Masterson, where we would discuss various aspects of the broadcast, including any glitches or matters to remember for the following year's production. Much of the TV Week Logies broadcast was contingent on information provided by TV Week. For example, it was necessary for GTV-9 to edit up the nomination tapes in preparation for the broadcast, and accordingly we were reliant on TV Week staff telling us who the nominees were. I refer, for example, to my memorandum to David Evans and other GTV-9 staff dated 2 February 1982. Matters such as booking of venues, invitations to celebrity guests, arrangement of the tables, seating plans and menus for the dinner served at the award ceremony were carried out by the editorial staff of TV Week, together with Mrs Boling. I refer to a form of invitation issued to Robert Redford in 1981 to attend the 1982 TV Week Logie Awards, signed by Brett Oliver. My recollection is that Brett Oliver worked for Mrs Boling on background organisation of matters such as invitations to overseas celebrities. … TV Week hosted a party for its staff and celebrities invited to the award ceremony on the night before the telecast. My recollection is that invitations to this party were issued on TV Week letterhead. Ron Davis, Bert Newton (the compere of the awards broadcast during the time that I was producer) and I were also invited. We used the party as an opportunity to meet and assess some of the guests, particularly for Bert Newton's benefit, as a large part of the broadcast involved his ad libbed conversation with the guests. Originally, an expert panel judged most of the TV Week Logie awards categories (with the exception of the Gold Logie). The panel comprised editorial staff of TV Week, including (at various points in time) Lawrie Masterson, Prue McSween and Tony Johnston. Each network provided submissions to that panel for judging. The Gold Logie (and, over time, a number of other award categories) were voted for by the readers of TV Week, who filled in voting coupons printed in TV Week magazine. I remember at some point discussing with Mrs Boling the possibility of publishing the voting coupons in publications other than TV Week so that the awards could be seen as industry awards. Mrs Boling rejected this suggestion. While I do not know whether or not voting coupons for the Logie Awards were ever published in other publications, I do not recall this occurring. Until the mid to late 1970s, all media were invited to attend and report upon the TV Week Logie Awards. TV Week then made a decision that all articles and photos about the TV Week Logie Awards were to be exclusive to it, as a way of promoting TV Week magazine. I recall this caused quite a lot of concern and controversy at the time, as the TV Week Logie Awards were very prominent and usually attracted front-page stories in the national press. I remember discussing the issue with Mrs Boling, Lawrie Masterson, and Tony Johnston as part of the various strategy meetings we had about the TV Week Logies. At no stage was there any suggestion made to me by Mrs Boling or TV Week editorial staff that any other magazine published by Southdown or Pacific had any preferential treatment or access in respect of the TV Week Logie Awards broadcasts. During my time at GTV-9 I was also producer and director of the Don Lane Show, The Graham Kennedy Show, The Ernie Sigley Show and The Bert Newton Show, all broadcast on GTV-9. At the request of Lawrie Masterson or other TV Week editorial staff, and also at my own initiative, I arranged for the TV Week Logie Awards to be promoted on these shows, prior to the screening of the awards. That involved the star or host of the show talking about the Logies and displaying a copy of the TV Week magazine, and sometimes encouraging viewers to purchase those editions of the magazines carrying coupons to vote in the TV Week Logie Awards. At the instruction of TV Week staff, it was a feature of each broadcast of the TV Week Logie Awards for which I was producer or executive producer that, at the end of the broadcast, a copy of the TV Week cover for the next edition would be held up by Bert Newton and viewers encouraged to buy that edition. TV Week would arrange to print several versions of the cover, displaying each of the Gold Logie nominees, and tell GTV-9 on the day of the broadcast which cover was to be shown on the program. In addition, 'TV Week' was usually displayed on the set or the lectern used during the ceremony." 47 Mr Lawrence Masterson is a journalist with many years of experience. He first worked as a journalist with TV Week in 1978. He was the national editor of the magazine from 1984 to 1986 and from 1992 until 1996. He worked for Southdown between 1986 and 1992. He gave the following evidence which I accept. "While I was a senior reporter with TV Week, the other people involved in organising the Logies on behalf of TV Week were Brian Morris, the managing director of Southdown, editorial staff of TV Week (including the editors Tony Johnston, Fred Robertson and Tony Fawcett at different points in time), and marketing staff from Southdown (for example Dennis Carty, Southdown's marketing manager). I knew this because, as I was TV Week's most senior reporter, I participated in some meetings with these people to assist in organising the TV Week Logie Awards. I also participated in other tasks in preparation for the awards (including writing stories about the guests attending the awards ceremony, and the ceremony itself). When I commenced with TV Week in 1978, Mrs Dulcie Boling was the editor of New Idea magazine. In about 1981 she became the managing director of Southdown. Prior to her obtaining that position, she did not, to the best of my knowledge, have anything to do with the TV Week Logie Awards or their organisation. However, once she became managing director, she became heavily involved in organising the awards. While Ms Boling was managing director of Southdown and I was editor of TV Week, I had a significant amount of interaction with her in organising the Logies. Dulcie Boling, to my recollection, left Southdown in around 1993 or 1994. The next managing director of the company that published TV Week (which by this time was Pacific) was Colin Duck, to whom I reported. Mr Duck was not as hands on as Ms Boling in connection with the magazines or the Logies, and allowed editors to have greater freedom in how they ran their magazines. Following Mr Duck, Theo Hranakis became managing director of Pacific. At around this time Allan Webster, formerly deputy editor of TV Week while I was editor, returned to Pacific and was appointed as a marketing manager for Pacific. Allan became involved in the Logies from a marketing perspective (for example, arranging the production of television commercials about the Logies, and on one occasion promoting 'Logies collector cards'). In the last few years that I was editor of TV Week, Kerry Freer was employed as an 'event organiser' for the TV Week Logie Awards, and managed matters such as venue arrangement and so on. In this statement, where I refer to roles or tasks performed by 'TV Week', I am referring to roles or tasks carried out by persons who were editorial or administrative staff of TV Week magazine. Generally, those persons to my knowledge attended work at TV Week's offices, or performed tasks for TV Week magazine, and/or reported to me. During my time as journalist and editor of TV Week magazine: (a) to the best of my knowledge and as far as I was aware, the awards were consistently promoted as the TV Week Logie Awards by TV Week's publishers, by TV Week magazine, and by GTV-9 (which usually telecast the awards ceremony). This was required by TV Week's publishers. I cannot now recall how this requirement was communicated to me, but I regarded it as company policy; (b) with the exception of photographic staff used on the evening of the Logie Awards ceremony, only TV Week staff, people engaged by TV Week, and those people referred to above were involved in organising the TV Week Logie Awards on behalf of TV Week. Staff from other magazines published by Southdown or Pacific were not involved; (c) at no time did I hear or see the awards referred to, by either Southdown or Pacific representatives, TV Week representatives or GTV-9 staff, as associated with any magazine other than TV Week, or in any way independent of TV Week magazine. Nor were they ever referred to as Southdown's or Pacific's awards, the Southdown Press Logies, the Pacific Publications Logies or the New Idea Logies. As editor I, together with Mrs Boling, regularly attended planning meetings with staff from GTV-9, where we discussed matters such as the identity of guests to attend the TV Week Logie Awards, how the awards were run and so on. Peter Wynne from GTV-9, when he was producing and directing the awards, usually attended these meetings. One topic we frequently raised at these meetings was the positioning of the TV Week logo on the podium used by the compere during the ceremony, so that the logo would be prominent on the screen during the broadcast of the awards. The language typically used at these sorts of meetings was that 'TV Week' wanted various things done, rather than that 'Southdown' wanted things done. Where there were disagreements between GTV-9 and TV Week about aspects of the broadcast, Ms Boling typically said words to the following effect: 'These are TV Week's awards.' In the weeks leading up to the awards ceremony, I was in fairly constant contact with the producer of the awards, and there were daily calls and meetings between us. When my staff members or I introduced ourselves to GTV-9 staff, we usually referred to ourselves as being from 'TV Week'. I did not refer to myself as being from Southdown. The other staff who attended these sorts of meetings with me included Prue McSween, a TV Week journalist who subsequently became an independent publicist. … There were two types of TV Week Logie Awards. One type was by popular vote (that is, voted by the readers of TV Week via voting coupons published in TV Week magazine). Industry panels voted the other type of award. While I was editor of TV Week magazine, I sat on those panels, together with representatives from the television industry such as (over time) George Negus, Mary Delahunty and Peter Luck. No representatives of any other magazine sat on the panels. Ultimately, the choice of winners of the awards rested with TV Week editorial staff such as Allan Webster (while he was deputy editor), Gary Williams and myself. TV Week staff organised the collation and counting of popular votes for TV Week Logie Awards. In later years, TV Week hired people to assist with the vote-counting process. In early years, the vote counting was done by hand, and later by computer. As editor I received daily reports of the progressive votes for each of the popular categories. I recall that during the years I was associated with TV Week, there was discussion about whether other forms of voting (that is, other than use of voting coupons printed in TV Week magazine, such as phone-in voting) should be used in connection with the TV Week Logie Awards. I always resisted the introduction of any other form of voting. As far as I was concerned, the whole point of the TV Week Logie Awards was to improve the sales of the magazine. I believe that I discussed this with Ms Boling, although I cannot now recall specific conversations with her on the topic. Ultimately however, this was a decision for management rather than my decision as editor. Each year TV Week journalists were assigned to visiting celebrities attending the TV Week Logie Awards as 'minders' for the day preceding the awards, and for the awards ceremony itself. The journalists were required to escort the celebrities to rehearsals, functions organised by TV Week (such as photo shoots and the pre-telecast party), and the ceremony itself. As the day of the TV Week Logie Awards broadcast approached, the attitude at the magazine was that it was 'all hands on deck'. All TV Week staff, including staff from the Sydney and Brisbane offices, participated in assisting to organise the Logies presentation. In earlier years there were two 'Logies editions' of TV Week magazine. The first, published on the Monday following the awards ceremony, was pre-printed and contained the names and stock photographs of the winners. The second, published the following week, contained more extensive reports on the ceremony and a larger number of photographs from the evening. As technology improved, it was possible to publish a single Logies edition with full coverage of the awards ceremony on the Monday following the broadcast. In later years (when technology permitted a full Logies edition to be published the Monday after the broadcast), the biggest job associated with the Logies from TV Week's perspective was getting the Logies edition of TV Week magazine out the next week. This involved starting at midnight on the night of the broadcast (usually a Friday night) and working all night to get the Logies edition of the magazine completed for publication on the Monday. During the time that I was associated with the Logies, it was the usual practice for a copy of the pre-printed edition's cover of TV Week magazine, featuring the Gold Logie winner, to be held up by the compere at the end of the ceremony. To maintain confidentiality, we arranged to print covers showing each Gold Logie nominee, and provided GTV-9 with the correct cover on the evening of the ceremony. For at least some of the period that I was editor of TV Week, it was TV Week policy that no other media be allowed inside the TV Week Logie awards ceremony. I gave instructions to TV Week staff accordingly, and asked them to report any other media representatives found in the ceremony venue to hotel security. Of course, this policy did not prevent general access by other media outside the ceremony. … I understood that there was a requirement within Southdown that New Idea not print any stories regarding the TV Week Logies until after the Logie editions of TV Week magazine had been published. On any occasion when New Idea journalists asked me for access to the TV Week Logies ceremony or celebrity guests on the night of or prior to the ceremony, I refused and told them words to the following effect: 'These are TV Week's awards.' On the night of the TV Week Logie Awards broadcast, every photographer at Southdown was used to ensure that there was adequate coverage of the event, because the number of photographers dedicated to TV Week alone were not sufficient for that purpose. Rob Austen, TV Week's head photographer, coordinated and supervised all the work done by the photographers on the evening. The photographers started work at 6.00 pm on the night of the awards ceremony, and rolls of film were couriered back to TV Week's offices throughout the evening so they could be developed and the photographs ready for me to view when I came back to the office at about midnight that evening. … As the editor of TV Week I was required to operate the TV Week magazine within a budget. I did not know precisely what the budget for the TV Week Logie Awards event itself was, but I was consistently told by Southdown's and later Pacific's finance personnel that the costs for the Logie awards night came out of TV Week's budget. While I was not directly involved with financial aspects of TV Week magazine, I understood from Southdown's and Pacific's finance personnel that a large part of the promotional budget allocated to TV Week was allocated to the Logies event. On several occasions when I approached financial staff within Southdown or Pacific asking for money to run promotions or advertising for TV Week, I was told that most or all of TV Week's promotional budget had already been expended on the Logies. I considered the TV Week Logie Awards to be a very significant component of promotional exposure obtained by TV Week each year, and an integral part of TV Week's identity and goodwill towards the Australian television industry. They were TV Week's annual prestige event. In the last few years that I was the editor of TV Week, to my observation the Logies comprised approximately 80% of the total annual promotional exposure that TV Week obtained on television and in media other than TV Week magazine itself. This promotional exposure occurred over a six week period (usually in January and February) while the voting coupons for the popularly-voted Logies were published in TV Week, and again in the weeks leading up to the ceremony broadcast, when Channel Nine ran promotional spots for the broadcast (and also sometimes print and radio advertisements). In addition, at around this time I would give interviews to newspapers, and occasionally on radio and television, to promote the TV Week Logie Awards. I do not recall any significant level of television advertising in connection with TV Week magazine except in respect of the TV Week Logies. As editor I received weekly reports on the circulation of TV Week magazine. I considered the TV Week Logie Awards to be important in terms of the magazine's circulation. The summer period was a slow time for both television and for the magazine. To my observation, rather than circulation of TV Week magazine dropping over this period, it remained steady or increased. As there was no other significant change to the magazine during this period, I attributed this maintenance or increase in circulation to the promotion of the magazine on television at that time, as referred to above. Further, there were 'spikes' in the circulation figures for TV Week at the time that the voting coupons for the TV Week Logie Awards were included in the magazine (and the Logies promoted on television), and also for the Logies editions themselves. The Logies editions traditionally involved higher circulation figures than the average for TV Week. As far as I was concerned as editor, the TV Week Logie Awards was all about selling more copies of TV Week magazine, so that the more successful the awards broadcast was, the better. In my mind the annual Logie awards ceremony was an important part of the business of the magazine. As editor I generally sought every opportunity to exploit the Logies as a means to promote TV Week magazine." 48 Mr Peter Wynne has worked for Channel 9 for many years. He was the executive producer of the Logie awards ceremony for the years 1988, 1991, 1994, 1996, 1997 and 1998. He was the producer in 1981 and 1982. He gave the following evidence: "During my time as producer and executive producer of the TV Week Logie Awards: (a) to the best of my knowledge and as far as I was aware, the awards were consistently promoted as the TV Week Logie Awards by both TV Week's publishers, Southdown and later Pacific Publications (Pacific), by TV Week magazine, and by GTV-9. My original involvement in the Logies took place some 20 years ago, so I cannot specifically recall how those requirements were originally communicated to me. It may have been in a document or it may have been by other people on the production team passing on this information to me. However, it was clear in my mind that this was a requirement from my earliest involvement; (b) to the best of my knowledge, the representatives of TV Week that I dealt with were ordinarily staff of TV Week magazine, rather than corporate staff of Southdown or Pacific. An important exception to this was Ms Dulcie Boling, the chairman and chief executive of Southdown during the 1980s and early 1990s, who was very closely involved in decision-making about the TV Week Logie Awards. However, in my dealings with Ms Boling in connection with the awards (some of which are described below), her primary concern appeared to be that the broadcast sufficiently promoted TV Week magazine. I give more illustrations of the ways in which I dealt with the staff of TV Week below; (c) I did not deal with the staff of any other magazine published by Southdown or Pacific in connection with producing the TV Week Logie Awards broadcasts; (d) at no time did I hear or see the awards referred to, by either Southdown or Pacific representatives, TV Week representatives or GTV-9 staff, as associated with any magazine other than TV Week, or in any way independent of TV Week magazine. Nor were they ever referred to as Southdown's or Pacific's awards, the Southdown Logies, the Pacific Publications Logies or the New Idea Logies; (e) while, of course, in conversation and in informal contexts the people from TV Week, Southdown or Pacific with whom I dealt would abbreviate the name of the awards or even the ceremony to 'The Logies', in formal contexts, such as correspondence, documents and in particular formal announcements, for example to the press or at the beginning of ceremonies, they almost invariably referred to the award by the full name 'TV Week Logie Awards.' It was my understanding from my dealings with TV Week representatives during each year that I was Executive Producer of the TV Week Logie Awards Broadcast that the TV Week Logies were considered the property of the TV Week magazine. The close connection between the Logies Awards and TV Week magazine was emphasised to me when Bruce Gyngell of Nine Network and I started discussions about moving the ceremony and broadcast from Friday night to Sunday night. For a range of reasons, we were of the opinion that we could make better television and attract better audiences on a Sunday night. Historically the TV Week Logie Awards had taken place on a Friday night. TV Week is on newsstands on Mondays and accordingly, for some decades TV Week staff had worked over the weekend to get the special Logies edition of the magazine out on Monday morning. Obviously, having the Logies ceremony and broadcast on Sunday night enormously increased pressure on a magazine that was to come out on Monday with material about the ceremony. We had a number of meetings and discussions with TV Week executives about this. Initially the executives of TV Week strongly resisted this and said words to the following effect: 'We can't get the magazine out on time.' However, after some discussion it was agreed with TV Week executives that the ceremony and telecast would be moved to a Sunday night, and TV Week was published, for the one time in the year as I understood it, on a Tuesday as a special edition. … I was also made aware by Ian Johnston that GTV-9 was required to prepare promotions of the TV Week Logie Awards, and broadcast those promotions, and in particular to make television advertisements to promote TV Week during the voting period for the popularly voted awards. I was particularly aware of this as my production team was required to produce those advertisements for TV Week for broadcasting on Channel Nine. These activities had considerable impact on my production team as they went on over some months. Between the 1997 and 1998 Logies telecasts I produced for Channel Nine (as I understood it under a contractual requirement with the publishers of TV Week), a special called '40 Years of the Logies.' I did this production myself with one production assistant. I surveyed as much as I could of the tapes of many Logies broadcasts and put together what I thought was a good sampling and overview of the highlights of the broadcasts that had taken place over many years. … Ms Boling maintained a close watch over how the ceremony and telecast was managed and presented. On occasions, she would sit right through rehearsals on the night before the telecast. I would typically check with her occasionally during rehearsals and ask if she was happy with the way things were going. During rehearsals Ms Boling and/or TV Week editorial staff would sometimes discuss with me matter such as the number of references to TV Week during the ceremony, and whether camera angles were such that the TV Week logo on the lectern or elsewhere on the set could be clearly seen. Ms Boling in particular was very pedantic about such matters. … Seating for the TV Week Logie Awards ceremony was arranged by TV Week. The location of celebrities in the room was often organised by TV Week in ways that led me to understand that TV Week was seeking the best possible photographs for the magazine. I recall that Gary Williams required the younger female actors from the TV soap operas such as Neighbours and Home and Away to be seated at the front as this made for good photographs for TV Week magazine. Matters such as the suggested order of presentation, names of Logie winners, table plans, biographies for celebrities and Logie winners appearing on the presentation, were all supplied to GTV-9 by TV Week. Other responsibilities that were not borne by GTV-9, that took place in preparation for the TV Week Logie Awards, and that I understood were borne by TV Week included: (a) seeking entries in the awards; (b) advising GTV-9 of the final nominations in each category; (c) ordering statuettes; (d) booking hotel accommodation; (e) booking hire cars; (f) providing itineraries to celebrities. For most of the period that I was involved in producing the TV Week Logie Awards, only TV Week journalists were allowed to attend the awards ceremony and speak to the guests and celebrities attending the ceremony. In more recent years journalists from publications other than TV Week have been allowed inside the TV Week Logie Awards ceremonies, although they have not been permitted to take photographs. Their access has been limited to interviewing and photographing celebrities, guests and award winners in the media room reserved for that purpose, under the supervision of TV Week staff. I am aware that, at least in recent years, Pacific has instructed the journalists attending the media room to ensure that they refer to the awards as the 'TV Week Logies.' I refer to the memorandum from Simon Joseph of Dreamcoat (which I understand to be media relations consultant to Pacific) to media room attendees at the 2001 TV Week Logie Awards, dated 21 April 2001. I also refer to the note from Simon Joseph and Julia Clarke (Public Relations Manager, Pacific) in respect of the 2002 TV Week Logie Awards. I am also aware that in 1998 and 2000, Robert Fidgeon from the Herald Sun newspaper has published an annual 'form guide' to the TV Week Logies in the Herald Sun." 49 I accept his evidence. Ownership of TV Week after 1980 50 News undertook further corporate restructuring in 1984. The Southdown Press magazine business, which now included the magazines New Idea, Best Bets, Your Garden, Australasian Post and Home Beautiful was assigned from Downland Publications to Nationwide News Pty Ltd ("Nationwide News"). Ownership of TV Week remained with Southdown 123 which, as I understand the position, was owned by Nationwide News which in turn was owned by News. 51 Major changes occurred in 1991. News decided to float its printing and magazine business, which occurred in October 1991. As a consequence, the Southdown Press magazines business was assigned to PMP Ltd (PMP). The documented arrangements provided for the business to be assigned to Pacific Publications Pty Ltd (Pacific 878) which was owned by PMP. TV Week which was still owned by Southdown 123 was transferred to Southdown Publications Pty Limited (Southdown 266) which was owned by Pacific 878. 52 The next change occurred in September 2001 when the magazine business and TV Week were sold to the Channel 7 TV network interests. Seven Network Ltd, the holding company, owned Jupelly PtyLtd, which, in turn, owned Pacific Publications Pty Ltd (Pacific 896). Jupelly acquired the shares in Southdown 266, which owned TV Week. Pacific 896 acquired New Idea and other magazines from Pacific 878. The Trade Marks and Business Names 53 Before 1985, there were no registered trade marks for TV Week or the Logie name or statuette. In June 1985, Nationwide News applied for registration of the TV Week logo mark. Southdown 123 was substituted as the applicant in July 1985. PMP Publishing Pty Ltd sought registration of a further TV Week logo and a TV Week mark in 1991 and 1997 respectively. All of these marks were at different times assigned to Southdown 266. They were assigned to ACP on 24 July 2002 when the transaction under the Savoy clause was settled. 54 Southdown 123 applied to register Logie word marks on 21 February 1979 but the applications were not pursued and lapsed on 17 December 1981. Nationwide News took the matter up and obtained registration of Logie word marks and Logie statuette marks on 2 October 1989. The marks were later assigned to Pacific 878 and then to Pacific 896 on 28 September 2001, when Channel 7 acquired the various magazine interests. 55 Relevant trade marks were also registered in New Zealand by Nationwide News and later assigned to Pacific 878 and then to Pacific 896. 56 The Logies statuette marks were issued subject to a blank space endorsement under the Trade Marks Act 1955. The endorsement applied to the face of the television screen in the statuette. It has been common place for the logo of TV Week to be incorporated into this space. I have annexed to these reasons a copy of a front page from TV Week which has a photograph which includes a large model of a Logie statuette. 57 When Nationwide News applied for and became registered as the owner of the Logie trade marks, it did so as the publisher of TV Week. This is plain from internal communications and in particular the statutory declaration of Ms Boling, then a director of Nationwide News, sworn to support the trade mark application. Ms Boling makes plain that the Logie trade mark was used to promote TV Week 58 The original logo and statuette were conceived with the logo of TV Week prominently displayed as part of the Logie logo and statuette. The trade mark was described as "a modular image of the human form, depicted holding the TV Week logo". 59 Nationwide News first registered the business name TV Week in Western Australia. PMP Publishing registered the name TV Week in New South Wales on 14 August 1998 and the names "TV WEEK LOGIES", "LOGIES" and "LOGIES 2000" in New South Wales in December 1999. All of the names were transferred to Pacific Publications on 28 September 2001 but only the name "TV Week" was transferred to ACP Magazines on 24 July 2002. 60 A summary of the trade mark position is as follows. 61 By the time of the sale by News of its printing and magazine business to PMP in 1991, Southdown 123 held the TV Week trade marks and News the Logie marks. As part of the deal with PMP, Southdown 123 sold its interest in the TV Week business to Southdown 266, which was in turn owned by Pacific 878. Part of the deal provided for the Logie marks to be transferred to Pacific 878. As a consequence, Pacific 878 through Southdown 266, owned TV Week together with the TV Week marks. Pacific 878 also acquired the Logie marks. 62 When Pacific 878 sold its magazine publishing business to Pacific 896, Jupelly Pty Ltd, which owned Pacific 896 also acquired the shares in Southdown 266. The Logie marks were at the same time assigned to Pacific 896. 63 It has only been since the exercise by ACP Magazines of its right to acquire TV Week that the Logie marks have not been owned by a company associated with the publisher of TV Week. The photograph library 64 Substantial evidence was given about the photographs which were taken by TV Week photographers with the intention that they be published in TV Week. Ms Mary Cameron is currently employed by ACP Publishing Pty Limited as Library Manager. However, she was from September 1989 to March 2000 either the Librarian or Library Manager for Southdown Press. 65 Ms Cameron described the physical arrangements for the filing of photographs generated by the various magazines published by Southdown Press. Her evidence was that, although when she joined the organisation, the photographic resources were generally dispersed and the photographs controlled by the staff of the individual magazines, over time this changed and a common library was created. However, photographs which had been taken for the Logie awards were not included in the general library and access to them by other magazines in the group was strictly controlled. This position continued when the library resources were moved to Sydney. 66 Apart from the Logie photographs, the editor of TV Week apparently maintained filing cabinets containing photographs which either had been published in TV Week or were intended for publication in the magazine. The editorial assistant also kept many photographs which had appeared in TV Week. 67 When Ms Cameron commenced the task of streamlining and centralising the photographic resources, she encouraged each of the magazines to provide her with photographs. As part of this process however, TV Week did not provide all of its photographs. Many remained under the control of the editor of TV Week. 68 Ms Cameron also gave evidence of the quality of the TV Week and Logies photographs. Her evidence is: "In the course of my 10 years work as a Librarian/Library Manager for Pacific, I obtained a detailed understanding of the nature of the photographs available for use by TV Week magazine and also for use by other magazines within the Pacific stable. I would in fact often be asked by various journalists for particular photographs or for my ideas as to where the best photographs of particular celebrities could be sourced because I had been responsible for collating and getting together photographic material held by Pacific. TV Week photographs (including the TV Week Logies Photographs) were of a superior quality. This material was often very high quality photographs of significant celebrities or unique combinations of celebrities. TV Week had a close relationship with the television industry and through this relationship gained access to television programs and celebrities to secure unique and exclusive photographs. Importantly, the TV Week photographs were also almost uniformly all in print quality colour and they were easily the best celebrity photographs held by Pacific. Over the last couple of years, I have been working as the Librarian Manager for the publications of ACP Publishing. In that period I have gained further knowledge and understanding of the type of photographic material that is available generally in the market place relating to Australian celebrities. In my view, the TV Week Logies Photographs and the other TV Week photographs provide a unique visual chronicle of Australian TV history, recording the personalities, characters, programs, locations and essence of Australia television. For this reason, those collections of photographs are superior to the photographic collections of Australian celebrities held by ACP Publishing or, as far as I am aware, any other photographic agency or library. 69 Mr Neil White was employed by ACP Magazines from 1986 to 1997 for a time as the Deputy Picture Editor of a magazine known as "New Weekly." From April 1999 to July 2002, he was employed as the picture editor of TV Week. Since July 2002, he has been the picture editor of WOW (What's on Weekly). His evidence is that photographs used in TV Week were obtained from various sources, only some being directly from TV Week's own resources. Pacific Publications maintained a general library, although only a small percentage of the photographs published in TV Week came from this resource. 70 Mr White observed that any photograph contained within the library could be accessed by other magazines and photographs were sometimes syndicated to other publishing houses. Photographs of the Logies were syndicated for the first time in 2002. 71 Mr Masterson also gave evidence about the photographs. He said: "Following the publication of the TV Week Logie editions, the photos of the awards were generally available to New Idea, although New Idea staff were required to ask my permission before those photos were made available to them. TV Week's library of photographs was kept in filing cabinets in my office. All of the photographs taken at the TV Week Logie Awards were kept in these files. These files served as a resource for TV Week on an ongoing basis – for example as a source of stock pictures to be used in program listings, or to use in the following year's magazines when promoting the next award show. While other magazines published by the same company were not refused access to these photographs, they were not made generally available to those other magazines without my permission." Problems between ACP and Southdown 266 - the Settlement Deed and action under the Savoy Clause 72 Difficulties arose in the relationship between ACP Magazines (which had succeeded to ACP rights and liabilities under the 1980 Deed) and Southdown 266 in relation to the operation of the 1980 Deed. Contested litigation was avoided when the parties reached agreement and executed a Deed of Settlement and Release on 14 March 2002. The parties to the Deed included ACP Magazines, Southdown 266, Pacific 896 and Jupelly. Both ACP Magazines and Southdown ratified and confirmed the 1980 Deed. Pacific 896 and Jupelly each acknowledged and agreed "that it will do all things necessary and provide all assistance required to ensure that Southdown (266) complies with its obligations under …. (the 1980 Deed)." (cl 4.9). 73 Action under the Savoy clause was initiated by ACP Magazines on 19 June 2002. By this time, the parties to the Deed were ACP Magazines and Southdown 266. ACP Magazines offered to sell to Southdown 266 its interest under the Deed for the sum of $60,000,000. However, Southdown 266 declined to buy and ACP Magazines was required to acquire the interest of Southdown 266. It was accepted by Southdown 266 that to discharge its obligations under the Deed, the sale must be effected and the rights to the name and mark "TV Week" must be assigned. However, it did not accept that ACP was entitled to receive either the trade marks or any other interest in the Logie awards. 74 Because Southdown 266 accepted that rights to the name and marks "TV Week" must be transferred, it assigned the trade marks of "TV Week". Pacific 896 also assigned its copyright material and the domain name which it held to Southdown 266. However, it did not assign its interest in the Logie trade marks and did not assign the copyright in or deliver up the photographs in the photograph library. The issues 75 (a) The fundamental issue between the parties is the proper construction of cl 7(2) of the deed. It was contended by ACP Magazines that upon the exercise of the Savoy clause, the Rights of Southdown 266, which must be transferred, are the rights which permit it to publish and are sufficient for the publication of the magazine called "TV Week", and include: (i) the Logies trade marks nos. 520303, 520304, 520305, 520306 and New Zealand trade marks nos. 202710 and 202711; (ii) the photograph library held by Pacific 896; and (iii) the television listings and other software previously used in the publication of 'TV Week' magazine. The last claim was abandoned at the trial. (b) If ACP Magazines succeeds on the first issue, it is necessary to consider the consequences which follow from the fact that the Logie trade marks are now vested in Pacific 896. ACP Magazines submits that the trade marks were held by Pacific 896 for and on behalf of Southdown 266 so that as a matter of agency, implied agreement, or implied or resulting trust it was required to assign those marks at the direction of Southdown 266. ACP Magazines further submits that the provisions of the Settlement Deed require Pacific 896 to make the assignment. (c) The third issue between the parties raises claims in contract. ACP Magazines submits that by permitting the registered Logie trade marks to be assigned from Nationwide News Pty Limited to Pacific 878 in 1992 and 1993, and not requiring that those marks be assigned to it, Southdown 266 breached express terms (clauses 1.5, 6.1 and 11) and implied terms of the 1980 Deed. (d) The fourth issue, which only arises if Southdown 266 did breach its agreement, is whether any action for breach of contract against Southdown 266: (i) is barred by section 14 of the Limitation Act 1969 (NSW); (ii) was released by ACP Magazines by clause 3.1 of the Settlement Deed. (e) The fifth issue, in the event there was a breach of contract, is whether Pacific 878, which otherwise has no interest in the matter, induced any of those breaches of contract and, if so, whether: (i) any action for the tort of inducement is barred by section 14 of the Limitation Act 1969 (NSW); or (ii) any action for the tort of inducement is not available because the action for breach of contract against Southdown 266 was released by clause 3.1 of the Settlement Deed. (f) The sixth issue relates to the Logie trade marks, the question being whether the registration of any of the Logie trade marks is liable to be cancelled for the reason that: (a) those four marks are not capable of distinguishing goods or services of any person other than ACP Magazines as the publisher of TV Week and because use of those marks by Pacific 896 would mislead or deceive; or (b) the use of the words 'TV Week' on the two statuette marks has been contrary to a condition and limitation entered on the register, namely that the blank spaces not be occupied by matter which is descriptive and has trade mark significance?" The fundamental issue – the meaning of cl 7(2) 76 The defendants (by which I mean the first, second and fourth defendants), submit that the only interest dealt with in the 1980 Deed was the "masthead" of each of TV Week, TV Times and TV Guide. It is submitted that it is plain from recital C and the other provisions of the Deed that the complete business, including the production and distribution facilities of each magazine, was not being contributed to the new "Business". Accordingly, it is suggested that the interest referred to in cl 7 must be confined. It is argued that provided the masthead or name "TV Week" is assigned to ACP Magazines, it is able to publish TV Week. Accordingly, it is submitted that only the trade marks and business names which relate specifically to and are necessary for the publication of a magazine with the title "TV Week" must be transferred in the event that the Savoy clause is exercised. 77 ACP Magazines submits that the approach of the defendants is too narrow. It is submitted that the Rights referred to in the recital and which form part of the interest under cl 7 include "the goodwill trade marks business names and other rights" which enable the magazine to be published in the same manner and with the same commercial attraction, as was previously the case. Emphasis is placed on the fact that sufficient rights passed under the Deed to enable the publication, not of just a magazine called TV Week, but the magazine known by that name. The submission is informed by an understanding of the concept of goodwill, as considered by the High Court, particularly in Commissioner of Taxation v Murry (1998) 193 CLR 605. 78 Of course, the High Court's consideration of the concept of goodwill is useful, although the ultimate task is to construe the agreement made by the parties. The parties may not have had in mind, the concept of goodwill as precisely understood by lawyers, although their arrangements must be understood having regard to any necessary legal principles. Goodwill 79 Although it is usual to speak of the "goodwill of a business" the concept is accepted as "notoriously difficult to define" Hepples v Federal Commissioner of Taxation (1992) 173 CLR 492 at 519. Goodwill is an accounting and business term as well as a legal term. In a business context, goodwill is often understood as that component in the value of a business which is other than the fair value of the identifiable net assets of the business. (see the discussion in Commissioner of Taxation v Murry (1998) 193 CLR 605). 80 It is accepted that goodwill is an asset of a business and has been described as "the attractive force which brings in custom". It is the one thing which distinguishes an old-established business from a new business at its startup. The goodwill of a business must emanate from a particular centre or source. (The Commissioners of Inland Revenue v Muller & Co's Margarine Ltd (1901) AC 217 at 223-224). It may be described as the legal right or privilege to conduct a business in substantially the same manner, and by substantially the same means, that have attracted custom to it. It is a right or privilege which is inseparable from the conduct of the business. (Murry p 615). 81 Because goodwill derives from "using or applying other assets of the business", it may derive from the use of trade marks, the site of the business, its conventional manner or terms of trading, its management practices and many other elements characteristic of the particular business. Goodwill, at least for legal and accounting purposes, is separate from the source of the goodwill of a business. Although other assets of a business may be transferred separately from a business, the goodwill of the business is only transferred if that business is transferred. (Murry 618). This may be readily appreciated where the business utilises a particular trade mark. Of particular significance in the present case is the fact that a contract for the sale of the goodwill of a business will ordinarily transfer to the purchaser all those matters and things essential to the existence of the goodwill unless the terms of the contract or the surrounding circumstances indicate otherwise. (Murry 617). The relationship between TV Week and the Logies 82 The evidence presents a clear picture of the integration of the Logie awards with the commercial success of TV Week. The concept of the awards was originally generated to promote TV Week and, as the significance of the awards increased, executives and others responsible for TV Week managed the event to its commercial benefit. TV Week controlled the nature of the awards, the means by which recipients were chosen, the awards ceremony and utilised the awards to increase its circulation both before and after the ceremony. There can be no doubt that the Logie awards were conceived as and became a significant element in the manner in which TV Week attracted custom. Access to and control over the Logie awards was reflected in increased circulation of the magazine, both through the voting process and the exclusive capacity to publish photographs and stories from the awards ceremony. 83 This does not ignore the fact that the Logie awards were also used to benefit the magazines within the News or later the PMP group. However, this was a minor and incidental matter. The Logie awards were predominantly managed to advance the commercial success of TV Week. 84 By 1980, the business of publishing TV Week was owned by Southdown 123. Although, it was physically produced by Downland, which provided all of the required resources, the revenue and expense of the Logies were recognised as a cost of the TV Week business. There was no separate business of conducting the Logies. Executive time was given by executives of Downland to magazines other than TV Week. However, to the extent that those executives were involved in the Logies, that time was generally allocated to the cost of managing the TV Week enterprise. Whether this was necessary for the purposes of News' internal accounting it was, of course, essential after 1980 if ACP was to effectively share in the profits of TV Week as was provided by the 1980 Deed. 85 As there is no right of property in a trade mark at common law, the Logies marks were a component of the goodwill of TV Week. The goodwill of TV Week was vested in Southdown 123, which was wholly owned by News. FC of T v Just Jeans Pty Ltd (1987) 16 FCR 110 at 121. Shanahan, Australian News of Trade Marks and Passing Off (2nd ed) at p 288. What passed under the 1980 Deed 86 The 1980 Deed provided for the creation of a new Business from the merger of the defined Rights. That Business was described as the continued publication of TV Week under the new title "TV Week incorporating TV Times and TV Guide." (clauses 1.1 and 2 of the 1980 Deed). 87 It is clear that by 1980, the business of TV Week generated significant custom from its exploitation of the Logie awards and the rights associated with them. It would follow that it was intended that those rights would be contributed to the Business which the parties created in the 1980 deed. The rights became an asset of the Business which the parties created and in which ACP became entitled to a share of the profits. 88 If the argument was confined to an understanding of recital B of the 1980 Deed, the defendants' argument may have greater force than when recital B is considered with other provisions of the Deed. Because it was intended that a "Business" would be created which would publish the magazine then called 'TV Week", it can only be that the capacity to publish TV Week in the manner in which the magazine had been published, was the interest contributed by News and Southdown to the arrangement. The recitals did not confine the "News Rights" to the name TV Week, but, extended to the "goodwill, trade marks and other rights" sufficient for the publication of the existing magazine, TV Week. The evidence makes plain that a component of that goodwill was the commercial benefit from the Logie awards. The awards were by 1980 a "significant part of the attractive force" which brought in custom to TV Week. 89 Even if the intention of the parties is not sufficiently clear from the recitals and clauses 1 and 2 of the Deed, it is further revealed by cl 7.2, under which, in the event of the exercise by ACP of the Savoy clause, News was required to transfer the goodwill attached to the title TV Week. In other words, ACP was entitled to receive the masthead TV Week together with the ability to publish the magazines, with that title, in the same manner and with the same commercial attraction as was previously the case. 90 In my opinion, the defendant's argument denies the commercial context for the 1980 Deed and fails to have regard to the role of the Logies in the publication of TV Week and their significance in its commercial success. It must be remembered that ACP was acquiring an interest which entitled it to participate in the profit or loss from the publication of the magazine. As a significant part of those profits were derived from the Logie awards it is, in my opinion, untenable to suggest that News and Southdown 123 did not have to contribute the benefit of the Logie awards to TV Week on a continuing basis. If that is the case, it must follow that upon the exercise of the Savoy clause, Southdown 266 was required to assign the rights which would enable ACP Magazines to continue the business. This could only occur if ACP Magazines received the rights to the Logie awards. 91 The defendants suggest that because it was plain that plant, equipment and personnel necessary to produce the relevant magazines were not affected by the 1980 Deed, this is an indication that the rights should be limited to the magazine title. I do not share this view. The commercial context of the 1980 Deed is that it was made between two parties, both having the capacity to produce magazines. The elements necessary for that production capacity were not unique but the titles and some of the elements which contributed to their commercial success were. Those latter elements passed under the 1980 Deed. The photograph library 92 ACP Magazines also claims that there is a discrete photograph library, which was an asset of the TV Week business, title to which passed under the 1980 Deed when the Savoy clause was exercised. 93 The evidence makes plain that in the course of conducting the business of TV Week, a multitude of photographs were either taken for TV Week, or, were acquired for the purposes of TV Week from others, who had taken them. They were described by Ms Cameron as a unique collection and I accept her evidence. They form part of the asset of the magazine business, being one means by which the magazine can be published in its usual form and thereby attract custom. The copyright or relevant licence of copyright form part of the assets of the magazine business. 94 Even with some reorganisation of the library of photographs to form the common library of Pacific 878, there remains a separate body of exclusive photographs which are an asset of the TV Week business. I do not believe that the partial dilution of the exclusivity of the collection of which Mr White gave evidence, affects this finding. 95 Upon the exercise by ACP of the Savoy clause, the copyright in the relevant photographs and any licence to use the copyright of others from which part of the goodwill of TV Week is generated and other rights which permit the magazine to be published in the ordinary course were required to be transferred to ACP. Is there a problem because the Logie marks are vested in Pacific 896? 96 The Logie trade marks were originally registered by Nationwide News. It did so as the publisher of TV Week. When the marks were transferred firstly to Pacific 878 in 1991 and then to Pacific 896 on 28 September 2001, this was done because the transferee companies were to become the publisher of TV Week at the relevant time. There is no other explanation for these transfers. The trade marks were an asset of the TV Week business from which the goodwill of that business was in part derived. 97 Accordingly, at each time when the interests of News and Southdown 123 were transferred, the obligation provided by the 1980 Deed required the Rights of ACP to be protected. Accordingly, the Logie marks were required to be protected and if rights under the Savoy clause were exercised, were required to be transferred. 98 It is submitted by ACP Magazines that each of Downland, Nationwide News, Pacific 878 and Pacific 896 published TV Week as agent for Southdown 123 or after October 1991, Southdown 266, and the course of dealing between them demonstrates a consensual agreement under which each was permitted by Southdown 123 and then Southdown 266 to hold itself out as publisher of TV Week and to enter into arrangements in its own name for the purpose and benefit of the owner of that business. This consensual course of dealing is submitted to have given rise to an agency relationship between them, the scope of that agency being defined by the course of dealing over the relevant period. Equiticorp Finance Limited (In Liquidation) v Bank of New Zealand (1993) 32 NSWLR 50 at 132-133; Pole v Leask (1863) 33 LTCH 155; Freeman & Lockyer v Buckhurst Park Properties (Mangal) Ltd [1964] 2 QB 480 at 502. 99 Because of the agency relationship, it is submitted that a trust arose in respect of the registered marks and accordingly, when the agency relationship was terminated in July 2002 on the acquisition by ACP Magazines of the TV Week business, Southdown 266 can require Pacific 896 to transfer the registered marks at its direction. 100 The defendants submit that no trust existed and that care should be taken not to confuse the role of an agent and the creation of a trust. (See Meagher and Gummow, Jacobs' Law of Trust in Australia (1991) (6th ed) at para 210). Because there is evidence that the Logie awards, being controlled by News, Pacific 878 and Pacific 896, were not used exclusively for the benefit of TV Week but benefited other magazines in the relevant group, no trust was created. 101 The creation of an express trust, which is contended for by ACP, depends upon whether or not there was the necessary intention to create the trust. Intention may be inferred. When an agency relationship exists, property vested by a principal in the agent will be held on trust. 102 In the present case, I have found that the rights to the Logie awards are vested in TV Week. Nationwide News registered the Logie marks as the publisher of TV Week. When each of the transactions which assigned the Logie marks to Pacific 878 and later to Pacific 896 occurred, it may be inferred that the transfers occurred as the transferee was to be the publisher of the TV Week business. It would follow that the holder of the trade marks held them on trust for the owner of TV Week, and the owner of that business, now ACP Magazines, can require the transfer of the trust property. The operation of cl 4.9 of the Settlement Deed 103 However, it may not be necessary to finally resolve those problems. Under cl 4.9 of the Settlement Deed, Pacific 896 and Jupelly have agreed to assist in ensuring that Southdown 266 complies with its obligations under the 1980 Deed. Those obligations include the obligation to transfer the Rights which I found include the rights to the Logie awards and the photograph collection. Accordingly, Pacific 896 is bound to assign the Logie marks and the photographs, which it holds, to ACP. Contract claims 104 Because I am of the view that ACP is otherwise entitled to the relief which it seeks, it is also unnecessary to decide the further basis upon which the case is argued. However, each should be briefly addressed. The first alleges a breach of contract in 1992 and 1993 by Southdown 266. 105 In 1992 and 1993, the Logie marks were transferred from Nationwide News to Pacific 878. In the event that the Logie marks cannot now be transferred, it is submitted that this has occurred in circumstances where Southdown 266 failed to require those marks to be assigned to it or be held beneficially for it. It is submitted that this represents a breach of the express terms, cl 1.5, 6.1 and 11, and implied terms of the 1980 Deed. That is, Southdown 266: (a) "permitted" or "suffered" assignments that "prejudiced the validity, subsistence or good standing of the Rights or any of them": clause 1.5; (b) failed to take all necessary steps to maintain the Rights in good standing and to protect the Rights: clause 6.1; (c) allowed an interest under the 1980 Deed to be assigned without the prior written consent of the other parties: clause 11; (d) failed to do all things necessary to enable it to comply with its obligations under the 1980 Deed with respect to the Rights. This was a term implied by the 1980 Deed and the Novation Deed: that Southdown 266 as a successor and assign of News and Southdown 123 would do all things necessary to enable it to comply with its obligations under the 1980 Deed with respect to the Rights. 106 It is submitted that the claim for damages for those breaches is not statute barred because the action is subject to a limitation period of twelve years as it is founded on a deed. (Limitation Act 1969 (NSW)) s 16). 107 It is further submitted that the claim was not released by cl 3.1 of the Settlement Deed because as a matter of construction, that release did not extend to claims which were not made, notified or known at the time of that Deed. Clause 3.1 of the Settlement Deed releases Southdown and its related parties from all claims arising out of or relating to the disputes or the publication of Inside Soap. "Claims" is defined as: "a claim, notice, demand, action, proceeding, litigation, investigation, judgment, damage, loss, cost, expense or liability however arising, whether based in contract, tort or statute and whether involving a third party or a party to this deed." Disputes is defined as: "all Claims arising out of or relating to the TV Week Deed or the conduct of the Business in the period up to 30 June 2001, including without limitation the Inspection Proceedings and the Principal Proceedings". The claim was only made, notified or known to ACP Magazines when Southdown 266 refused to procure the transfer of the registered Logies trade marks on 24 July 2002 – after execution of the Settlement Deed. 108 The response from the defendants is twofold. Firstly, it is submitted that the breach if it occurred at all, occurred in 1989 when Nationwide News first applied for the marks. As a consequence, it is submitted that even though the rights were created by a deed, the twelve year limitation period has passed. Secondly, it is submitted that cl 3.1 of the Deed of Release operates to release all claims for any breach of the 1980 Deed which occurred prior to 30 June 2001. 109 I prefer the submission of the defendants. Irrespective of when the breach occurred, the settlement Deed operated to resolve all claims arising out of 1980 Deed or the conduct of the Business provided for in that deed up to 30 June 2001. The cause of action in tort 110 A claim is brought against Pacific 878 in tort. It is alleged that being aware of the terms of the 1980 Deed, by accepting the assignment of the Logie rights which should have been assigned to Southdown 266, Pacific 878 induced the breach in Southdown 266 of its contract. 111 Before ACP Magazines could succeed in this cause of action, it must prove an intentional act which induces the breach of contract and which causes damage. In Short v The City Bank (1912) 12 SR (NSW) 186, Street J said at 202: "To make out a cause of action of this kind, it is incumbent upon the plaintiff to establish three things. He must establish in the first place that the defendant in fact induced and procured the breach complained of; in the second place that the breach was procured with the deliberate intention of injuring the plaintiff, or in such circumstances that it must have been obvious to the defendant that the reasonable consequence of what he did would be to injure the plaintiff; and in the third place that what was done did in fact injure him." 112 The relevant principles were authoritatively reviewed by the Full Court of the Federal Court in Allstate Life Insurance Company & Ors v Australia and New Zealand Banking Group Ltd & Ors (1995) 58 FCR 26. In that case, Lindgren J said: "In my opinion, the authorities establish conclusively that the graveman of the tort is intention. Although the requirement of knowledge of the contract is sometimes discussed as if it was a separate ingredient of the tort, it is in fact an aspect of intention. The requirement that the alleged tortfeasor have 'sufficient knowledge of the contract' is a requirement he have sufficient knowledge to ground an intention to interfere with contractual rights. Although knowledge of the terms of the contract is an essential element this is because without it there could never be the necessary intention to interfere with contractual rights. Merely being a party to the breach is not enough, the alleged tortfeasor must intend 'that the contract into which he enters with the contract breaker constitutes a breach of the relevant provisions of the contract'." (p 45) 113 In the present case, it is pleaded against Pacific 878 that it was aware of the terms of the 1980 Deed and "sanctioned and procured the conduct of Southdown 266" in assigning the Logie rights so that those rights could not be assigned to ACP Magazines. The necessary intention is not pleaded. It is not sufficient that the tortfeasor be aware of the contract and be responsible for its breach. It must know that the contracting party will be in breach of a relevant provision of the contract. 114 In the present case, ACP Magazines has not identified evidence of the relevant knowledge in Pacific 878 or evidence from which that knowledge could be inferred. The mere fact that the Logie trade marks were assigned to Pacific 878 instead of Southdown 266 could never be enough. And it is not sufficient that Pacific 878 knew of the 1980 Deed. There must be knowledge in Pacific 878 that the further contract constitutes a breach and that it was obvious to the tortfeasor that the reasonable consequence of what it did would be to injure the plaintiff (Short 202). In my opinion, ACP Magazines has not made such a case. 115 Pacific 878 pleaded both s 14 of the Limitation Act 1969 (NSW) and a release of the cause of action by ACP Magazines pursuant to cl 3.1 of the Settlement Deed. The reply by ACP Magazines is that it did not suffer damage until July 2002 when Southdown 266 failed to transfer the registered marks. In the event that the elements of the tort could be proved, the submission by ACP Magazines would be correct. Furthermore, Pacific 878 was not a party to the Settlement Deed and accordingly could not be bound by its terms. Trade Mark Issues 116 Against the possibility that ACP Magazines failed in its primary claim, it seeks relief pursuant to the Trade Marks Act 1995. The following claims are made: (a) A claim is made for relief pursuant to s 88 of the Act because "the use of the trade mark is likely to deceive or cause confusion (s 88(2)(c)). It is submitted that the relevant test to determine whether there is deception or confusion is if "a number of persons will be caused to wonder whether it might not be the case that the two products come from the same source. It is enough if the ordinary person entertains a reasonable doubt." Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592. Because the Logies and the Logie statuette have been throughout their history linked with TV Week it is submitted that to separate the Logie awards from TV Week and for them to be associated with another magazine is likely to cause confusion. Because of the historical association with TV Week, any other magazine in which the Logies are featured may be confused with TV Week. (b) In respect of Logies Marks nos 520303 and 570304, which are the statuettes, it is submitted that the conditions attaching to the marks have been infringed by reason of the inclusion of the words, "TV Week" in the blank space (being a representation of a television screen). The condition required that the blank space either be left vacant or be occupied by matter which is wholly descriptive and has no trade mark significance in relation to the goods or services in respect of which the trade mark is registered. Accordingly, it is submitted that the marks should be rectified by being cancelled. 117 The defendants submit that: (a) ACP Magazines is not an aggrieved person and accordingly cannot maintain proceedings under s 88(2)(c) and s 86 of the Trade Marks Act . It is submitted that its own conduct by exercising the Savoy clause has brought about the separation of TV Week and the Logie awards and accordingly, ACP Magazines is not aggrieved by anything done by the defendants. It is further submitted in relation to the breach of the condition that ACP has profited from it (by sharing in the profits from TV Week) and accordingly, has not been aggrieved by it. (b) It is submitted that because the trade marks were registered under the Trade Marks Act 1955 and have been registered for more than seven years, they may only be revoked for deception if it was deceptive at the date of registration TGI Friday's Australia Pty Limited v TGI Friday's Inc (2000) 100 FCR 358. ACP Magazines does not allege such a deception. (c) It is submitted that there is no evidence which could justify a finding of deception or confusion. The Logies were not always referred to as the TV Week Logies and if now used by a different magazine, "What's On Weekly" has been suggested, no possible confusion with TV Week could arise. It is further submitted that because these proceedings, particularly the interlocutory hearing before Einstein J, received great publicity, most people would be aware that ownership of the Logies is disputed. (d) With respect to the blank space condition, it is submitted that the inclusion of TV Week did not breach the condition – the Logie device remained distinctive of Nationwide News. 118 It is further submitted that in considering whether the court should exercise its discretion to revoke the Logies device marks, the court should take into account: (a) that, if the condition prevents Nationwide News and its successors in title from using the words "TV Week" in the blank space, the condition is too broad and not supported by authority; (b) that the Logies device marks have been used without deception; (c) that the breach (if any) has been cured, in that there will be no further use of "TV Week" in the blank space: see Morny Limited's Trade Mark (1951) 68 RPC 131; "Sea Island Cotton" Certification Trade Mark [1989] RPC 87; (d) that the current proprietor (Pacific 896) would be entitled to obtain registration of the Logies device marks without the blank space limitation (see the letter from the Trade Marks Office). 119 It is further submitted that rather than cancel the registration of the Logies statuette device, the court should exercise its discretion to amend the Register of Trade Marks under s 86 of the 1995 Act, by removing the conditions affected by the trade marks. 120 I am satisfied that ACP Magazines is relevantly an aggrieved person. It has been sued for and is presently restrained from infringement of the relevant marks: see Unilever Australia Limited v Karounos (2001) 52 IPR 361 at 372 and Campomar Sociedad, Limitada v Nike International Ltd (2000) 202 CLR 45. 121 However, I do not believe the alleged deception presently exists or is likely to exist. Although I am satisfied that the Logie marks have been used in close and frequent association with the words TV Week, that association could be broken and the Logie marks used in circumstances where the awards are sponsored by some other magazine. It is suggested by ACP Magazines that the defendants intend to use the Logie marks in conjunction with "What's On Weekly", which would, in my opinion, remove the possibility of deception. Obviously the entity which controls the Logie awards will seek to use them to its commercial advantage, which would inevitably mean using them in conjunction with a magazine as has been done by TV Week. That commercial purpose would be diminished unless an association was created with the new magazine to the exclusion of TV Week. 122 In relation to the "blank space condition", I am of the view that the defendants' submission should be accepted. In my opinion, the insertion of the title "TV Week" in the blank space did not infringe the condition. The Logie marks were owned by Nationwide News or its successors which also published TV Week. The distinctiveness of the mark would not, in my opinion be lost by including the title of the magazine. (Castrol Ltd's Trade Mark [1972] RPC 531). 123 In any event, as there will be no further use of TV Week in the blank space the breach, if it exists, has been cured. "Sea Island Cotton" Certification Trade Mark [1989] RPC 87. Conclusion 124 In the result, I am of the opinion that ACP Magazines is entitled to relief which requires the assignment to it of the relevant Logie marks and business names as well as the photograph library and rights to the photographs in the TV Week library. I direct ACP Magazines to bring in appropriate minutes of order reflecting these reasons. Costs may be argued. ********** Last Modified: 11/22/2002 DISCLAIMER - Every effort has been made to comply with suppression orders or statutory provisions prohibiting publication that may apply to this judgment or decision. The onus remains on any person using material in the judgment or decision to ensure that the intended use of that material does not breach any such order or provision. Further enquiries may be directed to the Registry of the Court or Tribunal in which it was generated.