"was...to complete the sale to the plaintiff of its right, title and interest in the goodwill, trade mark, business names and other rights which permitted the first defendant to publish and were sufficient for the publication of the magazine called TV Week. [plaintiff's written submissions paragraph 8].
64 There is of course a dimensional difference between the concept of a sale of a business and the concept of a transfer of closely defined " rights " by reference to the construction of a written instrument.
65 On the evidence before the Court at the interlocutory stage it would appear that there is little doubt but that the goodwill of, and relating to, the undertaking which until settlement published TV Week, included as part and parcel thereof the benefit of the clear association which the subscribers and public ascribed to the strong and extremely valuable connection between the magazine and the Logies in terms of every parameter of the Logies. But that is not the question which falls for determination where the respective legal rights of the defendants and the plaintiffs is required to be assessed together with the balance of convenience.
66 The plaintiffs extended and arguably alternative submission seeks to draw attention, on the construction issue, to the significance of the merger of rights which clauses 1.1 and 1.2 of the 1980 deed recognise and deal with. The proposition is that in 1980 for the first time, there commenced a merged business and that it is that merged business with all of its ingredients, which became the subject of ownership rights on the part of News and of profit-sharing rights on the part of ACP [the original party]. The consequential submission is that it is all of the goodwill of, and in relation to, that business which became part of the bundle of rights to which the plaintiff, following the exercise letter and the 24 July 2002 deed, became entitled as a matter of contract and in equity. Whilst this construction may ultimately be found to be correct, my impression, albeit at this interlocutory stage and which is not to be taken as in any sense a final view, is that the submission has very real difficulties with it. The defendant's submissions have far more substance.
67 It is important as a matter of the matrix of facts, against which this judgment is being delivered, that it be recognised that the defendant's strength clearly reposes in the obvious fact that the Pacific Publications remains the proprietor of the relevant registered trademarks and the registered proprietor of a number of business names incorporating the word " Logies ".
68 It seems to be common ground that the third defendant Pacific 878 and not the second defendant [one must be careful because the third defendant in its previous life was known as " Pacific Publications "], has an extant agreement with 9 Network Australia for the telecast rights of the TV Week Logie Awards for the five years 2001 up to 2005 [cf tab 8 of exhibit R2]. A problem for Pacific 878 may very well be that paragraph 3 of the Letter Agreement of 11 April 2000 provides that it will not, during the five-year term of that Agreement, involve TV Week in any other Australian television industry award ceremony.
69 Likewise and possibly yet a further problem may appear to exist by paragraph 7 which imports the schedule to the Letter Agreement which in turn identifies the contribution of the Pacific 878 as including a number of matters which, presumably without some arrangement between it and ACP Magazines, could not be carried out, such as, for example, a six-week editorial campaign promoting the public voting process through TV Week magazine and the TV Week website.
70 Pacific Publications entered into a Letter Sponsorship Agreement with Crown Limited on 11 February 2002 in connection with the staging of the 2002 TV Week Logie Award ceremony and in respect of several subsequent years, the staging of such ceremonies. That Agreement includes a number of references to TV Week as, for example, an obligation in Pacific Publications to provide Crown logo recognition on voting forms in TV Week during each six-week campaign on the " TV Week.com.au " voting site.
Balance of Convenience
71 Where then does the balance of convenience lie in terms of the proper exercise of the Court's discretion?
Status Quo
72 Both sides claim the benefit of the status quo but they have diametrically opposite submissions as to what the status quo is. The defendants submit that it is incorrect to say that the status quo is that the " Home of the Logies " logo has always appeared in the TV Week magazine. On the defendants' submission, a dimensional shift occurred when settlement took place on 24 July 2002 and a change in ownership of the magazine took place. The proposition is that seen from the defendants' perspective, the status quo was that the defendants published a magazine in which they deployed their own trademark and that the plaintiff, having in accordance with its legal entitlement, commenced to publish the magazine, had simply not consulted Pacific Publications and had not obtained any relevant agreement with the registered proprietor of the relevant trade marks to permit them to be deployed by the plaintiff. Further, the submission draws attention to what was earlier described as the " schism submission ", namely the distinction between on the one hand, Pacific Publications' legal title to the trade marks and on the other hand, the obligations of Pacific Publications pursuant to the March 2002 settlement deed whereunder Pacific Publications agreed that it would do all things necessary and provide all assistance required to ensure that Southdown 266 complied with its obligations under the 1980 deed. Here again the defendant's submission prima facie appears to me to have some real substance.
73 My first impression in relation to the interlocutory application was that at the level of balance of convenience, a continuance of the connection between, on the one hand the Logies' logo and the words " Home of the Logies " and on the other hand, the TV Week magazine, would likely determine the issue, for the simple reason that that connection had been the case for very many years up to this point in time and that the detriment to the plaintiff, if the injunctions were to be ordered but such order be overturned at final hearing, would likely upon a full examination of all the facts, matters and relevant circumstances, outweigh the detriment to the second defendant if the injunctions be now refused but it be held upon final hearing that the second defendant had in fact been entitled to the injunction.
74 During the course of the argument it became clear to me that it may very well be the case, notwithstanding that this Court is extremely likely to grant expedition and to permit an early final hearing as soon as practicable, that the exigencies of a trial judge having to deliver a judgment and the clear possibilities of the appeal processes being invoked may very well lead to the interlocutory regime now being put into place continuing for a reasonably extended period.
75 If the Court were to refuse to grant the injunctive relief, there is absolutely no assurance that the relevant defendants will refrain from continuing to mobilise in the marketplace, what they claim to be their clear intellectual property rights, including of course, what they claim to be their trade mark rights; rights in respect of which they clearly have legal title. Indeed counsel for the defendants took pains at the bar table to stress this very point.
76 If the Court was to grant the injunctive relief, then certainly the benefit of the continued connection in the minds of the subscribers will, during the period until final determination of the proceedings, suffer. As against that consideration there is the consideration that if there be imposed, as a condition of the making of the order, a restraint upon the defendants, until final determination of the proceedings, from using or deploying in any fashion the trademarks or other intellectual property rights in respect of which the defendants claim to have both a legal as well as an equitable entitlement, neither party will be in a position to further blur or colour the marketplace perception or to interfere in the market place with one another's actual or perceived rights.
77 Interlocutory injunction applications such as the application presently before the Court commonly require, following the delivery of reasons by the Court, a careful examination as to the precise period for which an injunction should be granted. Notwithstanding the above comments, it seems to me that following the handing-down of these reasons it will remain appropriate to permit further submissions from both parties as to the precise period of time for which the injunction, which I propose to grant, should operate.
78 It does seem to me that the dispute, in essence and as a matter of common sense , really involves, or at least if and to the extent the plaintiff's pleading does not presently already tender these issues, will in all probability extend to embrace the issue as to which person or entity, if any, may lay claim to an exclusive entitlement to hold the Logie Awards and by what colour of legal right. That is clearly a pivotal matter falling for determination.
79 One thing is very clear. That is, that the subject areas of dispute are complex and I very strongly suspect that they must shortly be determined over a range of issues, not all of which appear to me yet to be treated with by the opposing claims to relief now pressed in these proceedings and certainly not as, it seems to me, yet fully comprehended by the complex of facts, matters and circumstances leading to the instant application for injunctive relief.
80 Ultimately, however, the application falls for determination on the narrower field of inquiry earlier identified.
81 In all of the circumstances and bearing in mind the entitlement of the Court in exercising the discretion and in considering the question of balance of convenience, as contemplated in the Eng Mee Yong and the American Cyanamid cases, to weigh as part of the twofold process, the relative apparent strength of each party's case, having carried out that exercise and having taken care to closely consider the balance of convenience, having considered each parameter and to the extent that they are interrelated, having considering both parameters together, I have reached the clear conclusion that the proper exercise of the Court's discretion is to grant the injunctive relief sought but conditionally upon the above-described restraint upon Pacific Publications.
82 I have taken into account and am of the view that there is very real substance in Pacific Publication's submission that the conduct sought to be restrained, if permitted to continue, carries a clear risk of diluting the trademarks in the sense of breaking the association between the proprietor of the trade marks and the use of the marks and the proprietor's control over that use. It seems to me that quantifying that dilution must be an extraordinarily difficult task, if at all a Court was ever able, with any real confidence, to identify a figure by way of that quantification.
83 It seems to me that one must clearly bear in mind that the parties elected to proceed through to the 24 July 2002 settlement, each content to rest upon their legal rights. It would not be a proper exercise, as it seems to me, of the discretion of the Court, to permit either party to steal a march upon the other by reference to obtaining extremely significant commercial advantages over what is likely to be a reasonably extended period where the detriment to the other is likely to be very real and where the problems of quantifying that detriment are so very real.
84 The fact is that the prospects of Pacific Publications succeeding, on my assessment, albeit at this interlocutory level, on the construction issues which have been raised are sufficiently high in this case, and in the circumstances when weighed with the balance of convenience, to warrant an exercise of the discretion in its favour by the grant of the injunctive relief. Clearly also the corollary is the case. That is to say, the prospects of the plaintiff succeeding, on my assessment, albeit at an interlocutory level, on the construction issues which have been raised, are insufficient in this case and in the circumstances when weighed in the light of all of the factors relevant to the balance of convenience exercise, to warrant an exercise of the discretion in favour of refusing the injunctive relief sought.
85 An undertaking as to damages will require to be given to the Court and has already been offered by the plaintiff as a matter of course and as a matter of the well-established procedure of the Court. The balance of convenience is simply not in favour of what might at first blush appear to have been the obvious balance in terms of a refusal of the injunctive relief.
86 Of course each party has legal rights and upon a final hearing those rights will ultimately be pervasive.
87 This is a very particular and unusual set of circumstances and case in which the very close attention indeed has required to be given to a proper application of the principles earlier set out.
88 As Meagher, Gummow and Lehane have said, what is meant by saying that the Court must take into account the balance of convenience and the question of hardship is that it must consider carefully what effects the granting of an injunction will have on both parties and, in particular, whether to grant one would cause hardship to the respondent or to refuse one would cause hardship to the applicant. And as was pointed out by Lord Diplock in American Cyanamid and repeated by McClelland J in Appleton , the object of an interlocutory injunction is to protect the applicant against injury by violation of its right for which it could not be adequately compensated in damages recoverable in the action if the uncertainty were resolved in its favour at the trial; but the applicant's need for such protection requires to be weighed against the corresponding need of the respondent to the application to be protected against injury resulting from its having been prevented from exercising its own legal rights for which it could not be adequately compensated under the applicant's undertaking in damages if the uncertainty were resolved in the respondent's favour at the trial.
89 Pacific Publications has proved that it has a serious and not a speculative case which has a real possibility of ultimate success. It has proved that it has property and other interests which will be jeopardised if no interlocutory relief were granted. It has become a matter of seeing whether in all of the circumstances of the case the Court should nonetheless exercise its discretion by giving or declining to issue an interlocutory injunction.
90 Each case falls for determination upon its own facts. The relative apparent strength of each party's case is a relevant matter in precisely the manner in which McClelland J treated with the position in Appleton . Notwithstanding the obvious significance of the period of time which will likely elapse during which ACP Magazines will not be entitled to infringe the injunctions and effectively will not be entitled to promote in TV Week that it is the home of the Logies or to use the logo of the Logie, the mere fact that such benefit of the association as will be interrupted may prove to be extremely expensive as a matter of circulation sales and in other ways does not here outweigh the counterbalancing factors earlier referred to and does not tip the balance of convenience in favour of refusing the injunctive relief.
91 Ultimately the very confused state of the rights of both parties has to a certain extent been treated within this judgment. The important point is that there are particular legal rights which have been thrown up for consideration, albeit at an interlocutory level on the application for injunction. They have been carefully considered and ultimately the decision is that it is just and convenient to grant interlocutory relief in order to protect the second defendant against injury by a violation of its rights for which it could not be adequately compensated in damages recoverable in the proceedings if the second defendant was ultimately successful.
92 One of the second defendant's obvious rights is to the benefit, in a commercial sense, of being in a position to utilise its property in many ways, including of course to seek to negotiate in relation to those rights, where those rights are not, whether by curial process or otherwise, perceived to be eroded or hampered. Whilst the plaintiff's conduct continues the inherent value of those defendants' rights are eroded.
93 To allow a continuance of the plaintiff's conduct now sought to be restrained would in all of the circumstances be an incorrect exercise of the Court's discretion in the administration of justice.
94 There are many parameters which the continuance of the plaintiff's conduct would involve. Its prima facie case is insufficiently strong and the second defendant's prima facie case is correlatively sufficiently strong to justify, at least at the interlocutory level, the exercise of the Court's discretion in favour of the making of the injunctive orders sought.
95 Ultimately, and although this is not in any sense determinative of the subject application, the parties will be in a position in which, by failing to have worked through these issues before the settlement, they may have expected to have been in following settlement. The so-called " accident waiting to happen ", which appears to have been in all likelihood clearly recognised by both parties, having now happened, neither party will be entitled to lay claim to the disputed rights until determination by curial process following the injunctive regime to be determined by curial process of those rights.
96 This Court will expedite the hearing upon appropriate application to the extent practicable, depending upon the Court's list, and it is to be hoped that the several levels in the event of appeals of curial process can be mobilised reasonably swiftly for very obvious reasons.