ACP Publishing Pty Ltd v Pan MacMillan Australia Pty Ltd [2000] FCA 1849 (24 November 2000)

Last Updated: 15 December 2000

FEDERAL COURT OF AUSTRALIA

ACP Publishing Pty Ltd v Pan MacMillan Australia Pty Ltd [2000] FCA 1849

INJUNCTION - claim of misleading and deceptive conduct and passing off- respondent intending to publish book with similarities to booklets published by applicant - application for interlocutory injunction - although calculation of damages may be complex, not impossible - public interest against restraining publication of information except where necessary to do justice between parties - applicant's case apparently not of great strength - damages sufficient remedy.

ACP PUBLISHING PTY LIMITED v PAN MACMILLAN AUSTRALIA PTY LIMITED

N1260 of 2000

MADGWICK J

24 NOVEMBER 2000

SYDNEY

IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY	N1260 of 2000

BETWEEN:	ACP PUBLISHING PTY LIMITED APPLICANT
AND:	PAN MACMILLAN AUSTRALIA PTY LIMITED RESPONDENT
JUDGE:	MADGWICK J
DATE OF ORDER:	24 NOVEMBER 2000
WHERE MADE:	SYDNEY

THE COURT ORDERS THAT:

1. The applicant's application be dismissed.

2. Each party is to pay its own costs of the application.

IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY	N1260 of 2000

BETWEEN:	ACP PUBLISHING PTY LIMITED APPLICANT
AND:	PAN MACMILLAN AUSTRALIA PTY LIMITED RESPONDENT
JUDGE:	MADGWICK J
DATE:	24 NOVEMBER 2000
PLACE:	SYDNEY

REASONS FOR JUDGMENT

(revised from transcript)

HIS HONOUR:

1 In this case the applicant claims that the publication by the respondent of a book bearing the title "Jokes for Blokes" would constitute misleading and deceptive conduct or conduct that is likely to mislead and deceive in contravention of s 52 of the Trade Practices Act 1974 (Cth) ("the Act") or represented the respondent as having an affiliation that it does not have, in contravention of s 53D of the Act, and would constitute passing off. An interlocutory injunction is sought to restrain the imminent publication of the respondent's book. The applicant and the respondent are both well known and large publishers.

2 The applicant publishes "People" magazine that has a readership of about 200,000 per issue and a circulation of about a quarter of that. It is published weekly. There have been several issues published by the applicant of what one might call a booklet, on each occasion, described on the front cover as "People presents Jokes for Blokes" with the words "jokes" and "blokes" in large and colourful type-face. The covers of the several issues of "Jokes for Blokes" have included different cartoons, rather emphasising humour in bad taste.

3 "People" magazine has, one might say, taken the formula of page 3 of some afternoon papers to new heights. One can confidently say that its appeal is to those who in Australia are, often sardonically now, referred to as "blokes". Without access to a dictionary and

giving this judgment in circumstances of urgency, a working understanding of that term might be: men who see no need to affect a refined sensibility, whether they have it or not. In short, "People" is a crude girlie magazine and the jokes in "People's" version of "Jokes for Blokes" and the cartoons are heavily in the same genre.

4 The respondent's version of "Jokes for Blokes" is in paperback book style. Its cover also contains a cartoon, but the message conveyed by this cartoon is to emphasise the suitability of the book for men who adhere to what may be a vanishing lifestyle, namely aggressively Australian, beer-swilling and with a rural orientation. The cover also identifies the author, Mr Allan M Nixon, who is described as "the Uteman". The back cover indicates that Mr Nixon

"has travelled far and wide around Australia judging at ute shows - and swapping a joke or two! In Jokes for Blokes, Allan has gathered a swag of great Australian jokes. Some might say they're a bit risqué, (a fancy word for `bloody rude mate!'), but when The Uteman asked people out there to tell him some jokes, this is what they gave him. Strewth, it's not his fault, he wanted to write a clean joke book!"

5 The jokes in fact are not all sexually risqué, though a good many are, but they are, to use a term which all blokes understand, considerably less blue than the applicant's publications. The evidence is that the respondent took the usual steps for a book publisher to check that its title would not duplicate another book publisher's title and to alert itself if there might be any issue of potential confusion.

6 The applicant markets its relevant publications in newsagents and other places where its magazines are sold, such as convenience stores. The respondent has its publication aimed at book shops. The only newsagents it is targeting are those in country areas, where newsagents are more apt to carry paperback books than in the city. The suggestion of the respondent is that its sales in the newsagents would amount to less than a couple of a hundred copies. It is prepared to undertake, pending final hearing, to invite all its newsagent customers to return copies of the publication at its expense, and no doubt it can explain to them why this is necessary. Looking at the matter as sensibly as one can, in relation to bookshops it seems to me that there is not likely to be any significantly large number of consumers who would be confused, although there might be a small number.

Applicant's submissions

7 Counsel for the applicant stressed the speed with which their client has acted in approaching the respondent and the Court and its willingness to cooperate in securing a prompt, final hearing which should not be lengthy. The applicant stresses that some bookshop buyers as well as newsagency buyers, or potential buyers, are likely to be confused, misled and deceived as to what they are buying. Counsel also argue that, as they have an established market in the series of booklets which they have put out, an account of the respondent's profits may very well not be adequate compensation and they may need to seek damages. The estimate of the applicant's damages would necessarily be in an imprecise area as to a large part of the damages, if it is successful in a final hearing and, while the Court may be driven to award damages even by the aid of speculation, counsel argue that it would be a far more satisfactory solution to stop the publication of the respondent's book and assess the respondent's damages should the applicants lose on a final hearing. Nobody suggests that the undertakings proffered by each of these large publishers are anything but good.

8 Counsel point out that, on the respondent's actual evidence before the Court, the assessment of their financial loss if an interlocutory injunction were granted would not be a matter of difficulty. To the extent that the respondent would lose the chance to establish a market in its books and would lose the benefit of the Christmas bookshop rush, the applicants claim that any difficulty of quantification of the respondent's damages would very likely apply to a much smaller proportion of what it might be entitled to and is of far less significance than in their own case. They say that they have established a serious issue to be tried. They have referred to decisions of other judges of this Court, in which the Court has not been slow to intervene on an interlocutory basis.

Respondent's Submissions

9 Counsel for the respondent in dealing with the respective strengths of the parties' cases, points to:

* the arguably very different get-up of the two publications;

* the descriptive nature of the phrase "Jokes for Blokes" employed by the two publishers;

* the lack of originality in combining the two rhyming words in that phrase; and

* the very common usage in Australia of the terms "jokes" and "blokes".

10 The respondents claim that the titles are in each case purely descriptive. The selling point of the applicant's cover is the fact that it advises readers that it is "People" magazine which presents its version of "Jokes for Blokes". The get-up internally of the booklets, as well as the content, is of a piece with "People". Counsel for the respondent says that the great majority of bookshop buyers would be likely at least to glance at a page or two of the interior of the book, which is to sell for about $16 (the applicant's book sells for a shade under $6), and the most cursory glance at the respondent's book would persuade the most obtuse reader that the jokes are not of the same ilk as those in the applicant's publication. Counsel claims that, while the applicant may have an arguable case, to say the least the apparent strength of its case is far from overwhelming. It may well turn out to be no more than a case where people would wonder whether the respondent's "Jokes for Blokes" book was connected with the applicant's series and in the same genre, which is a very explicit one.

11 The respondent's counsel invites the Court to take the view that an injunction to restrain the publication of an original work of a literary nature, using that term in a non-censorious way, is a serious step and there is a number of countervailing public interests to that urged by the applicant, namely that potential consumers should not be misled or deceived. Such interests include the public interest in Mr Nixon's being able to complete the prompt publication, at a crucial marketing time, of a book for which he has secured a publisher as well as the public interest of persons who might wish to buy joke books thought suitable for "blokey" men having a choice between the type of jokes available.

Claim for an injunction

12 It seems to me that it is not possible to divorce one's present impressions of the ultimate strength of the applicant's case from other matters relevant to the considerations that fall under the rubric "balance of convenience". I think that there is substance in what the applicant says about the respective difficulties of assessing damages, but I presently have no impression that the applicant's case for final relief is a particularly strong one. Of course, one should not place too much emphasis on this because the applicant has done its best to act

promptly. Their advisors have not had a chance to put on material in reply to the respondent's affidavits and there may well be other evidence or even a lack of evidence which could strengthen their case. For example, on the face of it, one would be surprised if Mr Nixon had not been consulted about the choice of a name for his book, and one would be surprised if a man who evidently writes for those who treasure traditional Australian working class icons had no familiarity with "People" magazine or its spin-off publications. Nevertheless, my present impression is as I have indicated.

13 In any event, it does not seem to me that the extent of the financial harm to the applicant is likely to be great. The damages to which it might be entitled could be assessed, albeit with difficulty, and in my opinion considerable weight has to be given to the broad public interest in freedom of publication to which I have referred.

14 On balance, it does not seem to me that a case has been made out for the granting of an interlocutory injunction. I think it remains the case, despite a more common resort by courts to the granting of interlocutory injunctions than was common, say, a quarter of a century ago, that an injunction restraining the publication of information should only be granted where the Court is satisfied that it is necessary to do justice between the parties. In this regard, there is no warrant for judgment about grades of information. Sociologists might well take the view that in the intermediate, let alone in the long term, jokes are as important to the stability and health of a society as other more formal kinds of information.

Disposition

15 I therefore decline to grant the application for an interim injunction.

16 I note that the respondent has given an undertaking to the Court, on the applicant's usual undertaking as to damages given by its counsel, that it will require its "newsagent customers" to return copies of the respondent's book "Jokes for Blokes" as soon as possible at the respondent's expense. I will give the parties liberty to apply about that matter on 12 hours notice.

17 Each party is to pay its own costs of this application.

I certify that the preceding seventeen (17) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Madgwick.

Associate:

Dated: 14 December 2000

Counsel for the Applicant:	AJL Baman SC & DF Kell
Solicitor for the Applicant:	Gilbert and Tobin
Counsel for the Respondent:	D Connell
Solicitor for the Respondent:	Holding Redlich
Date of Hearing:	24 November 2000
Date of Judgment:	24 November 2000