Al Hayat Publishing Co Ltd v Ahmed Sokarno Eman Mohamed & Ors [1997] FCA 122 (28 February 1997)

CATCHWORDS

PRACTICE and PROCEDURE - CONTEMPT OF COURT - whether breach of court order - whether use of name and logo was in or in relation to prohibited activities - whether intention to use mark in breach of orders

Federal Court of Australia Act 1976, s 31

Stancomb v Trowbridge UDC [1910] 2 Ch 190 at 194, cited

Flamingo Park Pty Ltd v Dolly Creation Pty Ltd (1985)

[1985] FCA 123; 5 FCR 169 at 183, cited

Witham v Holloway (1995) 183 CLR 525, cited

Hinch v Attorney-General (Vic) [1987] HCA 56; (1987) 164 CLR 15 at 99, cited

Redwing Ltd v Redwing Forest Products Ltd (1997) 177 LT 387, applied

D A Thomas & Co v Mould [1968] 2 QB 913, applied

Microsoft Corporation v Marks (1996) 139 ALR 99, cited

AL HAYAT PUBLISHING COMPANY LIMITED v AHMED SOKARNO EMAN MOHAMED, RAYMOND CARNABY, THE AUSTRALIAN AL HAYAT PUBLICATION PTY LIMITED, AHMED SOKARNO and AL HAYAT PUBLISHING COMPANY LIMITED

No NG 202 of 1996

Tamberlin J

Sydney

28 February 1997

IN THE FEDERAL COURT OF AUSTRALIA )

NEW SOUTH WALES DISTRICT REGISTRY ) No. NG 202 of 1996

GENERAL DIVISION )

BETWEEN: AL HAYAT PUBLISHING

COMPANY LIMITED

Applicant

AND

AHMED SOKARNO

First Respondent

EMAN MOHAMED

Second Respondent

RAYMOND CARNABY

Third Respondent

THE AUSTRALIAN AL HAYAT

PUBLICATION PTY LIMITED

Fourth Respondent

AHMED SOKARNO

Cross-Claimant

AL HAYAT PUBLISHING COMPANY

LIMITED

Cross-Respondent

CORAM: TAMBERLIN J

PLACE: SYDNEY

DATED: 28 FEBRUARY 1997

MINUTE OF ORDERS

The Court orders that the application be dismissed with costs.

NOTE: Settlement and entry of orders is dealt with in accordance with Order 36 of the Federal Court Rules.

IN THE FEDERAL COURT OF AUSTRALIA )

NEW SOUTH WALES DISTRICT REGISTRY ) No. NG 202 of 1996 GENERAL DIVISION )

BETWEEN: AL HAYAT PUBLISHING

COMPANY LIMITED

Applicant

AND

AHMED SOKARNO

First Respondent

EMAN MOHAMED

Second Respondent

RAYMOND CARNABY

Third Respondent

THE AUSTRALIAN AL HAYAT

PUBLICATION PTY LIMITED

Fourth Respondent

AHMED SOKARNO

Cross-Claimant

AL HAYAT PUBLISHING COMPANY

LIMITED

Cross-Respondent

CORAM: TAMBERLIN J

PLACE: SYDNEY

DATED: 28 FEBRUARY 1997

REASONS FOR JUDGMENT

TAMBERLIN J:

This is an application filed on 20 December 1996 by the Al Hayat Publishing Company Limited ("Al Hayat") which seeks a finding from the Court that the first respondent ("Mr Sokarno"), is guilty of contempt of court. It also seeks an order that Mr Sokarno be punished by the imposition of a substantial fine.

The Statement of Charge is in these terms:

"1. The First Respondent is guilty of contempt of the Court in that in breach of the following order made by the Honourable Mr Justice Tamberlin on 22 March 1996:

'An injunction restraining each of the Respondents by themselves, their servants or agents or otherwise from:

(a) using the words "Al Hayat" in the English or Arabic language in or on any document or the logo set out in Schedule 1 to these Orders (the logo is referred to in these Orders as the "Mark") or any words or logo which are substantially identical with or deceptively similar to either the words "Al Hayat" in the English or Arabic language or the Mark in relation to the promotion, advertising, distribution or sale of newspapers, magazines and printed matter or publishing services without the written consent of the Applicant'

the First Respondent did on or about 6 August 1996 write to the Registrar of Trade Marks using the name Al Hayat and the Mark and stated that he intended to use the name Al Hayat and the mark on newspapers and various other printed matter."

The letter of August 1996, in question, was in response to a request for clarification from an Examiner of Trade Marks. It bears the logo and name of Al Hayat and is as follows:

On 12 December 1996 Messrs Freehill Hollingdale & Page, the solicitors for Al Hayat, wrote to the solicitor for Mr Sokarno stating that pursuant to a request made under the Freedom of Information Act 1976 , they had received a copy of the above letter. They pointed out that Mr Sokarno "may" be in contempt.

Mr Krayem, the solicitor for Mr Sokarno, replied on 17 December 1996. This letter indicated that Mr Sokarno admitted writing the above letter and continues:

"... In relation to the use of the name of Al Hayat logo we are instructed by our client that at the time our client did not believe that the orders of the Court covered a letter of this nature as he thought that the letter was to a Government department and wasn't being used in the public domain as such. He has been advised of the fact that he is not to use Al Hayat or the logo under any circumstances whatsoever and further has been advised of the penalties a Court can impose in relation to the breaching of a Court order. We would ask that this matter not be taken further as it was an inadvertent lapse on our client's part. We would ask that you advise us if you do intend to take this matter any further."

Three days after this letter was written the Notice of Motion for Contempt, now before me, was filed.

Although there was evidence of service of the relevant documents on the solicitor, there was no appearance before me by or for Mr Sokarno on the return date of 20 February 1997 and I proceeded to hear the application.

The law of contempt is designed to uphold and ensure the effective administration of justice and to vindicate the authority of the Court. Without effective sanctions court orders may be ignored with impunity and thereby rendered worthless. The principles relating to contempt are not primarily designed to protect the private rights of parties to litigation: Borrie & Lowe, The Law of Contempt, 3rd edn at 1, although, of course,the sanctions for contempt will assist to secure compliance and thereby advance the interests of the successful party.

The contempt alleged here is traditionally referred to as "civil" contempt as it arises from a failure to obey an order of the court made in civil proceedings. There is no submission that the contempt here is contumacious or involves any deliberate defiance of the Court's order. However, intent to disobey is not necessary. It is sufficient if the person or the corporation is aware of the order and intentionally does an act or omits to perform an act with the result that there is a breach of the order: Stancomb v Trowbridge UDC [1910] 2 Ch 190 at 194; Flamingo Park Pty Ltd v Dolly Creation Pty Ltd [1985] FCA 123; (1985) 5 FCR 169 at 183. Of course deliberate defiance or contumacious disregard of the order is relevant to the determination of an appropriate sanction.

As the High Court observed in Witham v Holloway (1995) 183 CLR 525 at 530, the distinction between criminal and civil contempt is largely illusory. All proceedings for contempt must now realistically be seen as criminal in nature: Hinch v Attorney-General (Vic) [1987] HCA 56; (1987) 164 CLR 15 at 99 and Witham (supra) at 534. The usual outcome of successful contempt proceedings is punishment in one form or another whether it be in the form of an admonishment, a fine or imprisonment. For this reason the criminal standard of proof must be satisfied in both civil and criminal contempt proceedings. The application of the criminal standard of proof recognises the gravity associated with any charge of contempt. Such a charge is criminal in nature and because of this a charge of contempt should not be brought lightly or without proper cause.

The contempt alleged

In substance the submission made by Al Hayat is that the above letter to the Trade Marks Office in August 1996 from Mr Sokarno breached Court Order 1(a). It is pointed out that the letterhead embodied an exact representation of the prohibited name, Al Hayat, and the associated logo. It is further said that the letter indicates that the purpose of the reproduction in the letterhead was in relation to the promotion of newspapers, advertising, and the sales of newspapers. The letter not only reproduces the name and logo, it is said, but discloses an unqualified statement of intent on the part of Mr Sokarno that he will, in future, use the name and logo in relation to publications.

Power of the Court

The Court's power to punish for contempt is to be found in s31 of the Federal Court of Australia Act. That section gives the Federal Court the same power to punish contempts of its power and authority as is possessed by the High Court in respect of contempts of the High Court. The power of the High Court is to be found in s24 of the Judiciary Act 1903 (Cth) which provides that:

"The High Court shall have the same power to punish contempts of its power and authority as is possessed at the commencement of this Act by the Supreme Court of Judicature in England."

Order 40 of the Federal Court Rules sets out the procedural rules and it is not necessary for me to reproduce those provisions here.

The present case

The August handwritten letter from Mr Sokarno, said to constitute or evidence contempt, was written to the Trade Marks Office in response to a letter from that Office, dated 17 July 1996, concerning the trade mark application made in the name of Mr Sokarno. It was not an unsolicited or "public" notification. The Trade Marks Office sought clarification as to whether Mr Sokarno wanted to use the trade mark on newspapers and other printed matter, or simply on newspapers. A suggestion was made by Mr Jeffrey of the Trade Marks Office that Mr Sokarno might call him in relation to the matter. The reply, by Mr Sokarno, which is under consideration, expressed an intention to use the trade mark on newspapers and on various other printed matter. This expression of purpose is said to be evidence of contempt.

There is no suggestion in the evidence provided by Al Hayat that, apart from the undated letter received by the Trade Marks Office on 6 August 1996, the orders made in March 1996 have not been fully complied with.

In this matter I am not persuaded that there has been any contempt on the part of Mr Sokarno by way of breach of the order set out in the Statement of Charge. In reaching this conclusion I have taken into account the following matters:

1. This application concerns one handwritten letter in a period of over nine months, in circumstances where as pointed out above, there is no evidence of any other failure to comply in any respect with the orders.

2. The letter was in response to an official request for the purpose of clarification. It was not unsolicited.

3. As a matter of construction, the use of the name and logo on the letter could not, in my view, properly be described as being a use in the promotion, advertising, distribution or sale of newspapers, magazines or printed matter or the provision of publishing services. Nor can it be said to be a use in relation to such matters. The substantive issue in the action in respect of which the present order was made, is concerned with the use of the Al Hayat name and logo on the masthead of a newspaper and this should be borne in mind when considering the proper approach to the meaning of the order.

4. On a proper characterisation it was simply a letter written by Mr Sokarno in order to clarify an issue raised in the course of the routine processing of a trade mark application. It is not possible, even taking the broadest approach, to characterise the letter as directed to securing publicity or coming within the terms of the order.

5. Even if the construction of the order in 3 above was wrong, it would still be open to reasonably take the view that the letter was not in relation to the specified matters.

As Jenkins J said in Redwing Ltd v Redwing Forest Products Ltd (1947) 177 LT 387 at 390:

"... a defendant cannot be committed for contempt on the ground that upon one of two possible constructions of an undertaking being given he has broken his undertaking. For purposes of the relief of this character I think the undertaking must be clear and the breach must be clear beyond all question." (Emphasis added)

In P A Thomas & Co v Mould [1968] 2 QB 913 at 923, it was said:

"where parties seek to invoke the power of the court to commit people to prison and to deprive them of their liberty, there has got to be quite clear certainty about it. I see no such certainty in the present case and I am not prepared to give any relief to the plaintiffs on this motion:.." (Emphasis added)

See also Microsoft Corporation v Marks (1996) 139 ALR 99 at 118-119.

In my opinion there is no ambiguity in the present case and the act complained of is clearly outside the order.

6. The expression of intention to use the mark relied on in the letter is open to the reasonable interpretation that the mark would be used at such time when it became lawful to do so. It should be so construed. There is no statement of intention to use the mark immediately or contrary to any order of the Court. The absence of any evidence of the use of the mark and logo on any other occasions since March 1996 is consistent with the conclusion that there was in August 1996 no present intention to use the mark.

7. Even if the sending of the letter did amount to a formal breach of the order, it was in my view, inadvertent and de minimis and the Court should not be concerned with breaches of such a trifling or minor nature, particularly having regard to the fact this was an isolated incident over more than 9 months.

8. The terms of the letter are not calculated to secure any publicity and its promotional effectiveness, as it rests in the files of the Trade Marks Office, must be seen as negligible.

9. The letter considered in its context, in my view, can have no tendency to detract from the authority of this Court, nor can it in any way be seen to diminish the effectiveness of the Court's orders.

Conclusion

In my view, this application lacks legal substance and is devoid of merit. It should be dismissed with costs and I so order.

I certify that this and

the preceding eleven (11)

pages are a true copy of the

Reasons for Judgment herein of

his Honour Justice Tamberlin.

Associate:

Date: 28 February 1997

Counsel for Applicant: Mr S G Burley

Solicitor for Applicant: Freehill Hollingdale & Page

Date of Hearing: 20 February 1997

Date Judgment Delivered: 28 February 1997