mdroth/huggingface-course_section-5_zst huggingface dataset:
Case: Butcher v Lachlan Elder Realty Pty Ltd [2004] HCA 60 ; (2004) 218 CLR 592
Outcome: cited
52 has, over the last 35 years, been the subject of considerable judicial exegesis. The burden of its injunction that a corporation shall not in trade or commerce, engage in conduct that is misleading or deceptive, is not in dispute between the parties. Suffice it for me to say the following. First , conduct is misleading or deceptive if, in the circumstances, it induces or is capable of inducing error: see generally Johnson Tiles Pty Ltd v Esso Australia Pty Ltd [2000] FCA 1572 ; (2000) 104 FCR 564 at [63] . Secondly , the omission to do a thing is a species of conduct such that silence can in particular circumstances constitute or be part of misleading or deceptive conduct: Demagogue Pty Ltd v Ramensky [1992] FCA 557 ; (1992) 39 FCR 31 at 32 and 40. As French J observed in Kimberley NZI Finance Ltd v Torero Pty Ltd [1989] ATPR (Digest) 53 ,193 at 53,195: The cases in which silence may be so characterised [as contravening s 52] are no doubt many and various and it would be dangerous to essay any principle by which they might be exhaustively defined ... [U]nless the circumstances are such as to give rise to the reasonable expectation that if some relevant fact exists it would be disclosed, it is difficult to see how mere silence could support the inference that that fact does not exist. Thirdly , there will be no contravention of s 52 unless error or misconception results from the conduct of the alleged contravenor and not from other circumstances for which that person is not responsible: Equity Access Pty Ltd v Westpac Banking Corporation [1989] FCA 506 ; (1989) 16 IPR 431 at 440. Fourthly , the state of mind of the contravenor is immaterial unless the conduct in question involved a statement about its state of mind. It is sufficient that, tested objectively, the conduct in question was misleading or deceptive or was likely to mislead or deceive: Global Sportsman Pty Ltd v Mirror Newspapers Pty Ltd [1984] FCA 180 ; (1984) 2 FCR 82 at 88. Fifthly , where, as here, the alleged misleading or deceptive conduct was that of one party to a business relationship and in the course of it and that conduct is the subject of complaint by the other, the complainant must establish a causal link between the impugned conduct and the loss or damage suffered by that conduct: cf TP Act s 87. In so doing, as indicated in Butcher v Lachlan Elder Realty Pty Ltd [2004] HCA 60 ; (2004) 218 CLR 592 at [37] , it is necessary to consider the character of the particular conduct of, here, AMC, in relation to Hamilton: ... bearing in mind what matters of fact each knew about the other as a result of the nature of their dealings and the conversations between them, or which each may be taken to have known. Factual Setting
Case: Ladbroke (Football) Ltd v William Hill (Football) Ltd [1964] 1 All ER 465
Outcome: cited
have referred on a number of occasions to the latitude given Dr Keung in developing "consumer orientated product indications" in Chinese characters. I am satisfied that the Chinese Language product indications were an original literary work. While they consisted essentially of sequentially listed indications in a literary form, obvious skill, judgment and some research were employed in the choices made of some number of the Chinese characters used. The language of science was supplemented with that of popular communication. The compilation had the requisite degree of "originality": see generally, Ricketson, The Law of Intellectual Property: Copyright, Designs and Confidential Information , [7.40] ff; Ladbroke (Football) Ltd v William Hill (Football) Ltd [1964] 1 All ER 465. The English language indications are far from a "slavish copy" of Hamilton's initial indications: cf Interlego AG v Croner Trading Pty Ltd [1992] FCA 624 ; (1992) 25 IPR 65 at 96-97.
Case: Interlego AG v Croner Trading Pty Ltd [1992] FCA 624 ; (1992) 25 IPR 65
Outcome: cited
have referred on a number of occasions to the latitude given Dr Keung in developing "consumer orientated product indications" in Chinese characters. I am satisfied that the Chinese Language product indications were an original literary work. While they consisted essentially of sequentially listed indications in a literary form, obvious skill, judgment and some research were employed in the choices made of some number of the Chinese characters used. The language of science was supplemented with that of popular communication. The compilation had the requisite degree of "originality": see generally, Ricketson, The Law of Intellectual Property: Copyright, Designs and Confidential Information , [7.40] ff; Ladbroke (Football) Ltd v William Hill (Football) Ltd [1964] 1 All ER 465. The English language indications are far from a "slavish copy" of Hamilton's initial indications: cf Interlego AG v Croner Trading Pty Ltd [1992] FCA 624 ; (1992) 25 IPR 65 at 96-97.
Case: A-One Accessory Imports Pty Ltd v Off Road Imports Pty Ltd (1996) 65 FCR 478
Outcome: cited
Keung clearly was the author of what I have collectively called the AMC Packaging. It is not necessary for me to enter upon whether such works as he may have produced prior to AMC's formation in December 1990 were held on trust for a company to be formed: cf A-One Accessory Imports Pty Ltd v Off Road Imports Pty Ltd (1996) 65 FCR 478 at 491-2. I simply note there is no evidence to this effect. I likewise have no evidence of his having a contract of service with AMC after December 1990 pursuant to which the AMC Packaging was created: cf Copyright Act , s 35(6). However, I am satisfied that works presently in issue relating to packaging for Urederm were created after 1990. It is, for example, Dr Keung's evidence that the real departures in the Urederm product indications were only implemented in 1992. Importantly, I am not prepared to infer that in creating the works, Dr Keung did so as trustee for AMC. There is no documentary evidence corroborating any declaration of trust. There is, in contrast, documentary evidence prior to the October 2006 assignment of the Urederm copyright works in which Dr Keung clearly asserted his own copyright. So, for example, in the email to Mr Blake of 6 January 2003 he said: As long as AMC remains to be the sole distributor of Hamilton products in Hong Kong and China AMC will put our Chinese trademark FUYUNHON, my version of Chinese translation and my design in English on Hamilton products sold by our company. However, Hamilton should not sell any products bearing this logo and my copyright to any third parties unless prior approval has been obtained from AMC. (Emphasis added.) The evidence does not disclose any assignment by Dr Keung, or any surrender, of his copyright ownership to Hamilton. Subclause 30.2 of the Distribution agreement dealing with any improvement or adaptation of "Products" is of no avail to Hamilton. Construed in its context, what the subclause deemed to be the property of Hamilton was any adaptation or improvement of the particular commodities (Urederm, Rubesal, etc) that were the subjects of the Distribution Agreement.
Case: News Ltd v Australian Rugby Football League Ltd [1996] FCA 1256 ; (1996) 64 FCR 410
Outcome: cited
parties were so circumstances by their contract and in their relationship in consequence of it, that Hamilton had no entitlement reasonably to expect that AMC would act in Hamilton's interests to the exclusion of AMC's own self interest in relation to the Hong Kong Packaging or the English Language product indications for Urederm: see News Ltd v Australian Rugby Football League Ltd [1996] FCA 1256 ; (1996) 64 FCR 410 at 538-541. Finally, Dr Keung was the original owner of the copyright works. If he had remained such, AMC's copyright claim would have had no foundation. However, some at least of the copyright works (ie those relating to Urederm created between 1992 and 1999) were assigned to AMC in October 2006. In respect of these AMC can maintain its copyright claims. For ease of exposition I will hereafter call the assigned material "the Urederm Labels". These I would note contain, amongst other things, both the English language and Chinese character versions of the product indications. AMC's claim, as so reduced to the copyright works assigned to it, is that Hamilton made unauthorised reproductions of what I have called Urederm Labels and so breached Dr Keung's copyright in those labels for which AMC now sues as assignee. AMC acknowledged, though, that since 1992 it authorised Hamilton to reproduce such labels for the purpose of packaging products to be supplied to AMC. As put in its submissions, AMC claims that each unauthorised sale Hamilton made of Urederm was a publication within s 31 of the Copyright Act . The sales to Crafers, Pharmalines and "[o]ther undisclosed persons in Australia were infringements". AMC also submits that Hamilton should be ordered to discover all of its records of Urederm "incorporating the product descriptions authored by Dr Keung and sold to third parties (ie not AMC)".
Case: Computermate Products (Aust) Pty Ltd v Ozi-Soft Pty Ltd (1988) 20 FCR 46
Outcome: cited
response to the breach claim for present purposes is twofold. First, the pleaded breach is of "reproduction" of the Urederm Label without the licence of AMC, ie a contravention of s 36(1) of the Act, reproduction being an exclusive right comprised in the copyright: s 31(1)(a)(i). Hamilton contends that (i) there is no evidence that Hamilton itself reproduced the Labels, though there is slight evidence from which it could be inferred it "authorised" reproductions; (ii) AMC has neither particularised nor proved that any acts of reproduction that were done without its licence, ie its "permission" or "consent": Computermate Products (Aust) Pty Ltd v Ozi-Soft Pty Ltd (1988) 20 FCR 46 at 49; and (iii) if Hamilton was authorised to reproduce the labels for the purposes of packaging products to be supplied to AMC and did this, if it later sold those products to a third party, it would not have contravened s 36(1) by reproduction without licence.
Case: Avel Pty Ltd v Multicoin Amusements Pty Ltd [1990] HCA 58 ; (1990) 171 CLR 88
Outcome: applied
it is contended that AMC should not be permitted to amend its case in final submissions to raise a breach of s 38 of the Copyright Act arising from the unauthorised sale of products. The premise of this contention (contrary to AMC's written submission) would seem to be that such a sale would not in the circumstances have been a "publication" ie a first publication in Australia: see Avel Pty Ltd v Multicoin Amusements Pty Ltd [1990] HCA 58 ; (1990) 171 CLR 88 at 93 for the purposes of s 31(1)(a)(ii) of the Act. Section 38(1) provides insofar as presently relevant: 38(1) Subject to Division 3, the copyright in a literary, dramatic, musical or artistic work is infringed by a person who, in Australia, and without the licence of the owner of the copyright: (a) sells ... an article; ... if the person knew, or ought reasonably to have known, that the making of the article constituted an infringement of the copyright ... (Emphasis added.) Hamilton submitted it did not address the case now put at trial, but that in any event AMC has neither pleaded nor proved the elements of s 38 and in particular that Hamilton knew, or ought reasonably to have known, that the " making " of the packaging embodying the Urederm labels constituted an infringement of the copyright. I should indicate at the outset that I will not permit AMC so late in the day to raise what it curiously claims is infringement by "publication". It has not established that any sale infringed its right of "first publication": cf Avel Pty Ltd , at 93. The claim, as Hamilton correctly suggests is for a contravention of s 38(1). I am satisfied that that claim would fail in any event. It is subject to the same vice as the "reproduction" claim. As to the claim of infringement by reproduction without licence, I agree in substance with Hamilton's submissions. The parties obviously did not turn their mind in any way collectively to the question of copyright in the Urederm labels or for that matter the packaging generally. It is reasonable to infer that Hamilton proceeded wrongly on the assumption that copyright in the packaging belonged to it. Be this as it may, the parties so conducted themselves in relation to Dr Keung's copyright as resulted in Hamilton in fact having Dr Keung's licence to reproduce the AMC packaging, oblivious though they may have been to this legal characterisation of the matter. The question whether or not permission or consent has been given to reproduction is an objective one. The scope of the licence so given by Dr Keung is a matter of inference. While it is the case that no express limitations on reproduction were conveyed to Hamilton prior to Hamilton's sales to Crafers and Pharmalines, I consider it improbable that Dr Keung could reasonably be said to have consented to reproduction other than for the purposes of their relationship, ie for sale to AMC. I find accordingly.
Case: Nationwide News Pty Ltd v Copyright Agency Ltd [1995] FCA 1045 ; (1995) 55 FCR 271
Outcome: applied
has not attempted to show when the offending reproductions without permission or consent occurred. The onus in this is on it: cf Nationwide News Pty Ltd v Copyright Agency Ltd [1995] FCA 1045 ; (1995) 55 FCR 271 at 288. The limited evidence that could be said to bear on this matter, does not suggest that the product sold otherwise than to AMC was produced for the purposes of such sales. On the contrary some such sales appear to have been drawn from stock made for AMC. It has not been suggested that Hamilton increased its production so as to accommodate the need to meet its AMC sales. In the circumstances I am in no position to find that when Hamilton reproduced the Urederm labels on its packaging it did so otherwise than in accordance with Dr Keung's licence. Its later conduct in effecting sales of such product may have been an actionable wrong to AMC. It was not the wrong pleaded against Hamilton. I reject AMC's breach of copyright claim.
Case: Cadbury Schweppes Pty Ltd v Darrell Lea Chocolate Shops Pty Ltd [2007] FCAFC 70 ; (2007) 159 FCR 397
Outcome: cited
is not uncommonly the case, several of the misleading or deceptive conduct claims AMC has made have been twinned with passing off claims. It is appropriate in this setting to refer to observations of the Full Federal Court in Cadbury Schweppes Pty Ltd v Darrell Lea Chocolate Shops Pty Ltd [2007] FCAFC 70 ; (2007) 159 FCR 397 at [98] - [99] which bring out the distinction between these two species of action: There is an overlap between causes of action arising under Pt V of the Trade Practices Act and the common law tort of passing off. However, the causes of action have distinct origins and the purposes and interests that both bodies of law primarily protect are contrasting. Passing off protects a right of property in business or goodwill whereas Pt V is concerned with consumer protection. Part V is not restricted by common law principles relating to passing off and provides wider protection than passing off. Whether or not there is a requirement for some exclusive reputation as an element in the common law tort of passing off, there is no such requirement in relation to Pt V of the Trade Practices Act . The question is not whether an applicant has shown a sufficient reputation in a particular get-up or name. The question is whether the use of the particular get-up or name by an alleged wrongdoer in relation to his product is likely to mislead or deceive persons familiar with the claimant's product to believe that the two products are associated, having regard to the state of the knowledge of consumers in Australia of the claimant's product. There are two claims made of contraventions of s 52 and s 53 of the Trade Practices Act . The first is that in the supply of the Products subject to the Distribution Agreement to Crafers for sale into the Hong Kong market, constituted a representation to Crafers that Hamilton was authorised to supply those Products for that purpose. It was not so authorised and the representation was false, hence it contravened s 52 and s 53(c) of the Act. Having rejected the parallel importation claim upon which this is premised, it too must fail at least as pleaded.
Case: Hansen Beverage Co v Bickfords (Australia) Pty Ltd [2008] FCAFC 181 ; (2008) 171 FCR 579
Outcome: cited
the product sold to Crafers was intended for resale to a class of persons whom the Chinese language characters could address. On the findings I have made that intended class, insofar as Hamilton was concerned, was not that of Chinese language reading Hong Kong consumers. Hamilton did not supply Crafers for the purpose of resale in Hong Kong. The Product was to be resold in Australia. The intended addressees were crew and passengers on ships docking in Australian ports. There is no evidence to suggest that "a not insignificant number" of members of these classes were likely to be misled or deceived by the Chinese characters: see Hansen Beverage Co v Bickfords (Australia) Pty Ltd [2008] FCAFC 181 ; (2008) 171 FCR 579. Rather, Crafers sold the Products (seemingly directly and indirectly) to a Hong Kong importer for resale. This was without Hamilton's knowledge or consent and contrary to the understanding it had with Crafers as to resale. Hamilton bore no responsibility for the conduct thus engaged in in Hong Kong. I say this quite independently of the s 5 problem which AMC would have had if Hamilton could otherwise have been found responsible for representations made to Hong Kong consumers. I reject both of the misleading or deceptive conduct claims. AMC claims that the supply by Hamilton of products bearing the Fuyunhon and Tuotoning trademarks constituted a misrepresentation calculated to deceive its prospective and actual Hamilton customers and the end users of the Products, that the Products were the products of AMC. Such representation was made in the course of trade. As with the preceding misleading or deceptive conduct claims, AMC's pleading of, and submissions on, this cause of action are brief to the point of being unhelpful. Hamilton's in contrast are exhaustive. Here again, AMC has not sought to engage with what has been put against it. Considering first the misrepresentation allegedly made in Australia to Crafers, I commence with the well accepted proposition that: The law of passing off does not confer protection on the owners of goods who have no reputation in a particular jurisdiction: Con Agra Inc , at 343. Or, as it is sometimes put, an applicant in "a passing off action" must establish that it had "the requisite reputation in the name or goods in the jurisdiction of the respondent": Hansen Beverage Co , at [34]. Whether an applicant has developed a particular reputation is a question of fact. There is no evidence that either AMC as an entity or the Chinese language marks had any reputation at all in Australia at the relevant date let alone that a substantial number of people in Australia were aware of the Chinese language marks on the goods they distinguished: Hansen Beverage Co , at [34]-[35]. This alone would be sufficient to reject the Australian based aspect of the passing off claim.
Case: Erven Warnink BV v J Townsend &amp; Sons [1980] RPC 31
Outcome: applied
are a significant number of difficulties which doom this claim. I will refer to several of these. By way of preface I refer to the description of the tort of passing off given by Lord Diplock in Erven Warnink BV v J Townsend &amp; Sons [1980] RPC 31 at 93 and do so as AMC's pleading of its claim tracks this description: My Lords, Spalding v Gamage and the later cases make it possible to identify five characteristics which must be present in order to create a valid cause of action for passing off: (1) a misrepresentation (2) made by a trader in the course of trade (3) to prospective customers of his or ultimate consumers of goods or services supplied by him, (4) which is calculated to injure the business or goodwill of another trader (in the sense that this is a reasonably foreseeable consequence) and (5) which causes actual damage to a business or goodwill of the trader by whom the action is brought or (in a quia timet action) will probably do so. See generally, Shanahan's Australian Law of Trade Marks &amp; Passing Off , Ch 20 (3 rd ed, 2003); Kerly's Law of Trade Marks and Trade Names , Ch 15 (14 th ed, 2005); see also Trindade, Cane and Lunney, The Law of Torts in Australia , 6.5 (4 th ed, 2007). It will be necessary to refer below to other elaborations of elements of the tort.
Case: Targelto Pty Ltd v Targetts Australia Pty Ltd [1993] FCA 191 ; (1993) 26 IPR 51
Outcome: cited
is well accepted that the concern of the tort is to protect a claimant's trading reputation or goodwill. Importantly for present purposes, the reputation or goodwill "must extend to the geographical area in which [the alleged tortfeasor] is making the representation and to the class of purchaser to which the representation is addressed": Shanahan [20.75], Targelto Pty Ltd v Targetts Australia Pty Ltd [1993] FCA 191 ; (1993) 26 IPR 51 ; Monaco Willows Pty Ltd v Greenbax Pty Ltd (1996) 36 IPR 387 at 394; W A Gilbey Ltd v Continental Liqueurs Pty Ltd [1960] HCA 21 ; (1960) 103 CLR 406 ; on the territorial scope of goodwill and reputation see Wadlow, The Law of Passing Off , 2.30 ff (2 nd ed, 1995); ConAgra Inc v McCain Foods (Australia) Pty Ltd [1992] FCA 159 ; (1992) 33 FCR 302.
Case: Monaco Willows Pty Ltd v Greenbax Pty Ltd (1996) 36 IPR 387
Outcome: cited
is well accepted that the concern of the tort is to protect a claimant's trading reputation or goodwill. Importantly for present purposes, the reputation or goodwill "must extend to the geographical area in which [the alleged tortfeasor] is making the representation and to the class of purchaser to which the representation is addressed": Shanahan [20.75], Targelto Pty Ltd v Targetts Australia Pty Ltd [1993] FCA 191 ; (1993) 26 IPR 51 ; Monaco Willows Pty Ltd v Greenbax Pty Ltd (1996) 36 IPR 387 at 394; W A Gilbey Ltd v Continental Liqueurs Pty Ltd [1960] HCA 21 ; (1960) 103 CLR 406 ; on the territorial scope of goodwill and reputation see Wadlow, The Law of Passing Off , 2.30 ff (2 nd ed, 1995); ConAgra Inc v McCain Foods (Australia) Pty Ltd [1992] FCA 159 ; (1992) 33 FCR 302.
Case: W A Gilbey Ltd v Continental Liqueurs Pty Ltd [1960] HCA 21 ; (1960) 103 CLR 406
Outcome: cited
is well accepted that the concern of the tort is to protect a claimant's trading reputation or goodwill. Importantly for present purposes, the reputation or goodwill "must extend to the geographical area in which [the alleged tortfeasor] is making the representation and to the class of purchaser to which the representation is addressed": Shanahan [20.75], Targelto Pty Ltd v Targetts Australia Pty Ltd [1993] FCA 191 ; (1993) 26 IPR 51 ; Monaco Willows Pty Ltd v Greenbax Pty Ltd (1996) 36 IPR 387 at 394; W A Gilbey Ltd v Continental Liqueurs Pty Ltd [1960] HCA 21 ; (1960) 103 CLR 406 ; on the territorial scope of goodwill and reputation see Wadlow, The Law of Passing Off , 2.30 ff (2 nd ed, 1995); ConAgra Inc v McCain Foods (Australia) Pty Ltd [1992] FCA 159 ; (1992) 33 FCR 302.
Case: ConAgra Inc v McCain Foods (Australia) Pty Ltd [1992] FCA 159 ; (1992) 33 FCR 302
Outcome: cited
is well accepted that the concern of the tort is to protect a claimant's trading reputation or goodwill. Importantly for present purposes, the reputation or goodwill "must extend to the geographical area in which [the alleged tortfeasor] is making the representation and to the class of purchaser to which the representation is addressed": Shanahan [20.75], Targelto Pty Ltd v Targetts Australia Pty Ltd [1993] FCA 191 ; (1993) 26 IPR 51 ; Monaco Willows Pty Ltd v Greenbax Pty Ltd (1996) 36 IPR 387 at 394; W A Gilbey Ltd v Continental Liqueurs Pty Ltd [1960] HCA 21 ; (1960) 103 CLR 406 ; on the territorial scope of goodwill and reputation see Wadlow, The Law of Passing Off , 2.30 ff (2 nd ed, 1995); ConAgra Inc v McCain Foods (Australia) Pty Ltd [1992] FCA 159 ; (1992) 33 FCR 302.