FEDERAL COURT OF AUSTRALIA

T R Flanagan Smash Repairs Pty Ltd v Jones [2000] FCA 625

COPYRIGHT – literary work – compilation – whether copyright can subsist in information contained in a motor vehicle database and motor vehicle parts database – where a substantial portion of the information contained was available in the public domain – whether the compilation involved sufficient skill, judgment and labour in the selection of descriptions and codes for each vehicle/vehicle part – where the codes were often based upon simple acronyms or shorthand abbreviations - where there was previously a diversity of terminology used for each part within the industry – where the compilation included development of a ‘crash sequence’ which provided a checklist for parts damaged in a collision – where the information was updated at regular intervals – whether copyright subsisted in information which could be added to, deleted or altered by the customer – whether there is merit or ingenuity in the selection or compilation

TRADE PRACTICES – Fair Trading Act 1987 (NSW) s 42 – whether advertisement for respondent’s computer program contained representations which were likely to mislead or deceive – whether the representation implied a connection that did not exist - whether the representations were an exaggeration or distortion of the facts

Copyright Act 1968 (Cth)

Fair Trading Act 1987 (NSW) ss42, 65

Data Access Corporation v Powerflex Services Pty Ltd (1999) 45 IPR 353cited

Victoria Park Racing and Recreation Grounds Co Ltd v Taylor (1937) 58 CLR 479 cited

Apple Computer Inc v Computer Edge Pty Ltd (1994) 53 ALR 225 applied

Collis v Cater, Stoffell, & Fortt Ltd (1898) 78 LT 613 referred to

Waterlow Directories Ltd v Reed Information Services Ltd [1992] FSR 409 referred to

University of London Press Ltd v University Tutorial Press Ltd [1916] 2 Ch 601 referred to

Kalamazoo (Aust) Pty Ltd v Compact Business Systems Pty Ltd (1985) 5 IPR 213 referred to

Ladbroke (Football) Ltd v William Hill (Football) Ltd [1964] 1 WLR 273 referred to

Express Newspapers PLC v Liverpool Daily Post & Echo PLC [1985] 1 WLR 1089 referred to

Harpur v Lambourne (1999) 45 IPR 213 cited

Independent Television Publications Ltd v Time Out Ltd [1984] FSR 64 referred to

Olympic Amusements Pty Ltd v Milwell Pty Ltd (1998) 81 FCR 403; upheld on appeal (1999) 85 FCR 436 referred to

Autocaps (Aust) Pty Ltd v Pro-Kit Pty Ltd (1999) AIPC 91-516 cited

A-One Accessory Imports Pty Ltd v Off Road Imports Pty Ltd (1996) 65 FCR 478 cited

Acohs Pty Ltd v R A Bashford Consulting Pty Ltd (1997) 144 ALR 528 applied

Ibcos Computers Ltd v Barclays Mercantile Highland Finance Ltd (1994) 21 FSR 275 cited

T R FLANAGAN SMASH REPAIRS PTY LTD & ANOR v BRUCE JONES

N 993 OF 1999

HELY J

16 MAY 2000

SYDNEY

THE COURT ORDERS THAT:

1.                  The respondent, whether by himself or through others acting on his behalf or on his instructions or with his encouragement, be restrained from reproducing, in any form, or publishing the whole or a substantial part of the:

(a) Auto-Quote Vehicle Directory (a reference copy of which is the annexure “A” to the affidavit of Terrence Rodney Flanagan sworn 7 September 1999); or

(b) Auto-Quote Parts Database, being a compilation comprising the fields: “Code”, “Description” and “Part No” (a reference copy of which is the Exhibit TRF-1 to the affidavit of Terrence Rodney Flanagan sworn 3 May 2000).

2. The respondent deliver up to Timothy Daley, Solicitor C/- Colin Daley Quinn at 11 Montgomery Street, Kogarah NSW all copies of the whole or substantial part of the Auto-Quote Vehicle Directory and the Auto-Quote Parts Database as remain in the respondent’s possession, custody or power at the date of making this order.

3. The respondent make, file and serve an affidavit setting out the following information:

(a) the number of copies (if any) of the whole or substantial part of the Auto-Quote Vehicle Directory and the Auto-Quote Parts Database in the respondent’s possession, custody or power at the date of making this order;

(b) the number of copies referred to in paragraph (a) above published by the respondent prior to the date of this order;

(c) the names and business addresses of those businesses, corporations or persons to whom the copies referred to in paragraph (b) above were published prior to the date of this order.

4. The respondent, whether by himself or through others acting on his behalf or on his instructions or with his encouragement, be restrained from representing, in the course of trade or commerce, that:

(a) FoxQUOTE is Auto-Quote for Windows;

(b)               The respondent designed and programmed Auto-Quote 1987-1994.

5. The respondent pay the applicant’s costs of these proceedings.

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

REASONS FOR JUDGMENT

1                     The first applicant, trading under the name of Auto-Quote (hereinafter referred to as “Auto-Quote”) has developed a computer software package for use in the motor vehicle panel beating industry. Auto-Quote granted the second applicant a licence to enter into licence agreements with approved licensees permitting them to use the Auto-Quote software. More than 1,000 such licences have been granted.

2                     The respondent (“Mr Jones”) was employed by Auto-Quote from 17 August 1987 to 16 December 1990, and again from 8 April 1991 to 5 April 1994. Mr Jones was employed as a programmer to continue the development of the Auto-Quote software system and to implement enhancements to the system along with other programmers. At the time of Mr Jones’ initial engagement, Auto-Quote had already sold 250 Auto-Quote software systems to members of the panel beating industry in Australia, the United Kingdom and USA.

3                     The Auto-Quote software system consists of a number of elements, including an operating program, a motor vehicle database (“AQVD”) and a motor vehicle parts database (“AQPD”). This case is concerned with AQVD and AQPD. Auto-Quote alleges that AQVD and AQPD are literary works and that Auto-Quote is the owner of the copyright subsisting in those works. Auto-Quote alleges that in August 1999 Mr Jones infringed the copyright in those works in three ways:

(i)                  by reproducing the works or a substantial part thereof in a material form,

(ii)                by publishing the works or a substantial part thereof, and

(iii)               by selling or offering for sale by way of trade a computer package styled “FoxQUOTE 2000” which included the literary work comprised in AQVP and AQPD, or a substantial part thereof. FoxQUOTE 2000 is the name given by Mr Jones to his computer program, which performs a similar function to the Auto-Quote program.

4                     The applicant also alleges a contravention of s 42 of the Fair Trading Act 1987 (NSW) arising out of an advertisement placed by Mr Jones in the August 1999 edition of Motor Equipment News. That advertisement included statements that:

- “FoxQUOTE 2000 is Auto-Quote for Windows”

-                     “Jones designed and programmed Auto-Quote 1987-1994.”

Similar, but more qualified statements were made in a letter which Mr Jones sent to a panel beater, John Spiteri on 10 August 1999. Auto-Quote alleges that each of the representations is false.

5                     The Amended Statement of Claim raises other issues, but these were abandoned by the applicant’s counsel in opening.

AQVD

6                     AQVD is a list or compilation of motor vehicle models and descriptions arranged by manufacturer. In about 1980 Mr Flanagan compiled a handwritten list of motor vehicles in which he described, in his own terms, key model elements and wrote a list of alphanumeric codes to identify each motor vehicle on the list. The list was updated thereafter by Mr Flanagan and by Auto-Quote employees employed for that purpose. There are currently seven people employed by the second applicant for the specific purpose of updating AQVD and AQPD, and keeping those directories current. The handwritten lists were reproduced in typed form, and when the applicant obtained a computer in about 1980, the data was entered into the computer.

7                     Each line in the AQVD is arranged into two fields, code and description, totalling a maximum of 40 characters. The description of the vehicle is restricted to 32 characters, and the code to 8.

8                     The description and codes for the vehicles were devised by Mr Flanagan, or by employees working under his direction. Motor vehicle manufacturers publish their own lists of models, and Auto-Quote has recourse to those lists for the purpose of compiling its AQVD. By way of example, Ford publishes a list of its motor vehicles which includes:

-         298 Cougar;

-         161 Laser KA/KB, Meteor GA/GB.

The AQVD for Ford has no entry for Cougar. Thus there is an element of selection involved in the compilation of AQVD. Line 161 in the Ford list is transmogrified in the AQVD into the following:

Code Description

FLKA Ford Laser KA 3D/5D 81-82

FLKB Ford Laser KB 3D/5D 82-85

FMGAGB Ford Meteor GA/GB 82-85

There is some skill and effort in the translation of the line in the Ford directory into the corresponding lines conveying similar information in AQVD with the addition, in the case of FLKA and FLKB, of the number of doors. The entry in AQVD often contains more information than is to be found in the manufacturer’s list, suggesting that the additional information either came from other information supplied by the manufacturer, from Auto-Quote’s general knowledge or from some other source. The code and vehicle descriptions were devised by Auto-Quote, although at least some part of the description contains material which originated in the manufacturer.

9                     In some cases the selected code is an obvious abbreviation or acronym for the motor vehicle which it describes. Thus, “DA” is the code for Daihatsu Applause 5D 89-91. But the code selected for Daihatsu Applause 5D 91-92 is “DA691”, the “6” having no readily apparent connection with the description of the motor vehicle. Toyota Camry Sed 97 has the alphanumeric code TC97, Toyota Celica ST18# 89-93 has the code TC184 and Toyota Cressida 84-88 has the code TC84. “TC” is an obvious and unimaginative abbreviation for the three different models, but there is some skill and judgment in the selection of different numerical values which would be acceptable as signifying the three different vehicles as part of the overall scheme. The numbers are not chosen at random, because a unique description is required for each vehicle.

AQPD

10                  AQPD is a compilation of motor vehicle replacement parts and related information. AQPD contains 770 files. Mr Flanagan’s evidence (T 75/23) is that there is three weeks work to build each file. Some of the information contained in this directory was devised by Auto-Quote; other parts of the information have been derived from other sources. The alphanumeric code and the motor vehicle part description were devised by Auto-Quote. The manufacturer’s part number, and the fields in the directory which contain price information, are obtained from the manufacturer. No claim for copyright protection is made in relation to the fields in the directory which contain price or labour information. The claim is confined to a compilation comprising the fields “code”, “description” and “part no”.

11                  The code was devised so as to be unique for the part, and, as far as possible, to be easily recognisable as relating to a particular motor vehicle body part. Thus the code for front bumper is FB.

12                  The terminology for the description of the part was based on the vernacular of local panel beaters and standardised. There is a diversity of motor parts terminology across manufacturers. This is illustrated by the following table:

“AUTO-QUOTE radiator support ass[embl]y; code: RSA

Ford (Falcon AU series) crossmember front

Holden (Commodore VT series) panel as[se]m[bly] – front

Toyota (Camry 97 sedan) radiator support sub-ass[embl]y

Mitsubishi (Magna 99 sedan) headlamp support ass[embl]y”

It is not obvious that the part to which Ford refers as “crossmember front” corresponds with the Mitsubishi equivalent “headlamp support assy”. In AQPD each is designated by the code “rsa” and the description “radiator support assy”.

13                  Other changes were made to the manufacturer’s description of parts. Both Holden and Ford used and continue to use R to denote “right” and L to denote “left”. Mr Flanagan considered that the sides of the vehicle were better described as OFF SIDE (0/S) and NEAR SIDE (N/S). Thus the part which Holden describes as “fender/panel (R/H)”, Auto-Quote codes as OFG, and describes the part as O/S/F/Guard. Auto-Quote uses the letters “R” and “L” to signify rear and lower, rather than right and left.

14                  In AQPD, parts are listed in a sequence so that parts which could be expected to be damaged in a collision are grouped in the sequence in which they are located in the vehicle. This arrangement is termed the “crash sequence”. Arranging parts in “crash sequence” involved the application of Mr Flanagan’s experience, skill and understanding as a panel beater, of the arrangement of various body components in the motor vehicle, and the sequence of their removal from a damaged vehicle for the purpose of repair.

15                  The “crash sequences” in the AQPD are arranged to commence from eight directions around the motor vehicle. These “crash sequences” of parts are readily accessed by commencing the enquiry with the code for the outermost part from the direction of the damage: FB – (front bumper bar) for a front collision damage; NFD (near side front door) for near side front collision damage, and so on. The “crash sequence” arrangement of parts provides a convenient checklist to ensure that all parts which could have been damaged in the collision have been inspected and assessed by the panel beater for damage and need of replacement or repair.

Development of AQVD and AQPD

16                  Auto-Quote was using and distributing a complete Auto-Quote software program before Mr Jones commenced his employment with Auto-Quote in 1987. As stated earlier, at that time Auto-Quote had already sold 250 Auto-Quote software systems to members of the panel beating industry in Australia and overseas. The original Auto-Quote software was designed by Mr Flanagan, and the initial programming was undertaken by John Sappupo, Dave Bell, Allan Moore and Michael Sang. Thereafter, there were a number of programmers working on the enhancement of the software system, including Mr Jones. Mr Flanagan’s affidavit of 17 February 2000 (Annexure A) is a list which contains enhancements made to one of the components of the system, and the initials of the programmer responsible for the making of those enhancements. Most, but not all of the entries on that list, are attributed to Mr Jones. I accept that during the term of his employment Mr Jones was responsible for, or involved in, most of the improvements which were made to the system. But other programmers were involved as well. I accept that Mr Jones was responsible for, or involved in, about 80 percent of the improvements which were made to the system during his term of employment.

Alterations to the directory

17                  Auto-Quote regularly updates the AQVD and AQPD, and provides these updates for a fee to the licensed users of the Auto-Quote software.

18                  The software includes a maintenance or update program called CODE.EXE. This program enables a user to change or alter or delete or add to any of the information contained in the AQVD or AQPD. Thus it cannot be postulated that at any particular point in time the version of these directories maintained by a particular customer would necessarily be the same as the version of the directory maintained by Auto-Quote, or by any other customer.

Copying

19                  Auto-Quote currently licenses Wilsons Holden Pty Ltd to use the Auto-Quote software. The terms on which it does so include the following:

“It is against the law ... to copy the software in this package on magnetic tape, disk or any other medium for any purpose other than backing up your software.

...

The user hereby agrees to hold ... the software in the strictest confidence and not to:

(a)               divulge it or any part of it to any person, or;

(b)               to make use of it in any way not expressly authorised by Auto-Quote.”

20                  Mr Jones accepts that he has reproduced the AQVD and AQPD licensed to Colin Wilson in its entirety at the request of Colin Wilson. He has filed an affidavit in which he admits that the files in question were “converted/transferred” from the Auto-Quote format into the FoxQUOTE format during the course of 1999. There is independent evidence which would justify a conclusion of copying, but as I have said, copying is not denied. It is also clear that, unless restrained, Mr Jones would intend to copy the Auto-Quote AQVD and AQPD files, if requested by a licensee to do so. This is due to his contention that Auto-Quote does not have any copyright protection in relation to the files and that a customer who wishes to change from Auto-Quote to FoxQUOTE is entitled to do so.

21                  Mr Jones contends that he was merely providing a service to Mr Wilson by reproducing the contents of AQVD and AQPD in FoxQUOTE format, as illustrated by Annexure A to Mr Flanagan’s affidavit of 17 September 1997. The information remained on Mr Wilson’s computer files. Mr Jones does not intend to resell the information to anyone else, nor does he assert any entitlement to do so.

22                  Assuming this to be so, it does not negate infringement if copyright in the copied material subsists in Auto-Quote. Mr Wilson acquired AQVD and AQPD, and I assume that he paid Auto-Quote for the privilege of doing so. As an acquirer he is entitled to use AQVD and AQPD. However, if copyright subsists in the works, he is not entitled to reproduce them, or to authorise others to do so. Auto-Quote’s rights and entitlements in that regard are reinforced by the terms of its licence agreement referred to in par [19] above.

Subsistence of copyright

23                  The grounds upon which Mr Jones contends that copyright does not subsist in the AQVD or the AQPD are:

1.                  the files do not and cannot maintain any original form once they have been distributed to customers. The CODE.EXE program as supplied in association with the files allows the customer to add to, delete or modify the contents of the files in any way. The files are in a “read and write” file access mode, as distinct from a “read only” mode. Had they been supplied on CD-ROM, then their original form would have been maintained. The ability of the customer to alter the files negates the subsistence of copyright in them.

2.                  Both the AQVD and AQPD contain material which is freely available to anyone in the public domain, or which has been copied or derived from such information and which mimics the English language by the use of simple acronyms or shorthand abbreviations for which, in many cases, there is no other sensible, logical or practical alternative.

3.                  The compilation did not involve the application of the requisite degree of skill and judgment which is necessary in order to give rise to copyright protection.

Original form

24                  Neither AQPD nor AQVD is a “computer program” as defined in the Copyright Act 1968 (Cth) (“the Act”). However, copyright may nonetheless subsist in the directories if they are otherwise within the definition of “literary work”: Data Access Corporation v Powerflex Services Pty Ltd (1999) 45 IPR 353; Ricketson, The Law of Intellectual Property: Copyright, Designs and Confidential Information at [7.285].

25                  No authority was cited for the proposition that the ability of the customer to alter the files negates the subsistence of copyright in them, assuming copyright would otherwise subsist. Nor am I aware of any authority to that effect. The law of copyright is not directed to the protection of ideas, but their expression. It may be inherent in that notion, that the work must exist in a material form that is capable of reproduction if it is to be entitled to copyright protection. In Victoria Park Racing and Recreation Grounds Co Ltd v Taylor (1937) 58 CLR 479 the display of the result of a race by placing the placegetters’ numbers on a board for a few minutes was too insubstantial an expression of thought as to give rise to copyright protection.

26                  Even assuming that to be so, AQPD and AQVD exist in material form. If unchanged, they are capable of reproduction in the form which they took when supplied by Auto-Quote. I cannot see how the ability of a customer to make changes to the compilation can negate the existence of copyright in Auto-Quote in the unchanged compilation, assuming copyright would otherwise subsist.

27                  If the customer in fact made changes to the work so as to create something different, then that may involve the creation of an original work in which the customer would have copyright. If the work was totally changed, then Auto-Quote would not have any residual rights in relation to the changed product.

28                  However, if elements of the selection and arrangement of the material for which Auto-Quote is responsible survive any changes which are made to the material, and those elements are reproduced, then it seems to me that Auto-Quote would be entitled to maintain proceedings for infringement. Questions of degree may be involved, but, in my opinion, it cannot be said that the fact that the customer deletes a line, adds a line or alters a line, destroys rights which Auto-Quote would otherwise have in relation to the residue of the material.

Compilation copyright

29                  Copyright may subsist in compilations that consist entirely of existing material, that is material not original to the compiler. In such compilation, originality may be found, and copyright may therefore subsist, by reason of the selection or arrangement of material, provided that sufficient skill, judgment and labour was involved. Whether the amount of skill, judgment or labour that was involved is sufficient to impart to the compilation the quality of originality is a question of fact and degree in each case. Some effort must be involved, even though it need not be great. In Apple Computer Inc v Computer Edge Pty Limited (1994) 53 ALR 225 at 234.29 Fox J said:

“There is no necessity for a literary work to be of any literary quality. It is accepted that the term includes mathematical tables, codes, and, in general, alphanumerical works. One limit doubtless is that it needs to be a ‘work’ and to have some skill, even if very small, applied to its preparation. Meaningless rubbish would be plainly excluded.”

And at 259.05 Lockhart J said:

“‘Originality’ means that the author’s own skill and labour must be involved, though the degree of such skill and labour required is slight.”

30                  The applicant’s counsel supplied the following tabulation of compilations in which copyright has been held to subsist:

31                  In A-One Accessory Imports at p 487, Drummond J said:

“So far as compilations that consist entirely of existing material, that is, material not created by the compiler, are concerned, Ladbroke (Football) Ltd is authority that originality may be found, and a claim of copyright may therefore subsist, by virtue of selection alone. See at 277-278; 469-470, per Lord Reid, at 286-287; 476-477 per Lord Hodson, at 289-290; 478-479 per Lord Devlin and at 292, 293; 480, 481 per Lord Pearce. In Collis v Cater, Stoffell & Fortt Ltd (1898) 78 LT 613, a decision that has ‘never been doubted’ (Ladbroke (Football) Ltd at 290; 479) copyright was held to exist in a chemist’s catalogue ‘although it contained ‘nothing whatever but a simple list’ of drugs, etc with names and prices which the plaintiff kept in stock or could obtain to order’: Ladbroke (Football) Ltd at 278; 470. That copyright can exist in such a mundane compilation of information readily available to all shows why the skill, judgment and labour in selecting what to include in a trade catalogue will be as relevant as the often very limited skill, judgment and labour involved in putting that selection into written form, in determining whether the compilation has sufficient ‘originality’ to attract copyright.

In considering whether a compilation that wholly consists of or that includes existing material is itself an original work, the question is whether the compilation, looked at as an entity, is original: it is not proper to dissect the work into its parts, and by determining that the individual parts lack originality, to deny originality to the whole work.”

To similar effect is the decision or Bergin J in Harpur v Lambourne (see table) in which her Honour held that copyright can subsist in a compilation even though it draws upon material which is in the public domain. It is not the source of the material, but the method of its expression, which is primarily relevant for copyright purposes.

32                  In Autocaps (see table) copyright was found to subsist in a listing of radiator caps which was no more complex than the listings in the present case. In Acohs Pty Ltd v R A Bashford Consulting Pty Ltd (1997) 144 ALR 528, Merkel J held that in determining whether a work is original, an assessment is to be made of the “merit” or “ingenuity” of a selection or compilation, or of the quality of an alteration or embellishment of work in relation to a work which has been compiled from another. One has to determine the extent and nature of the efforts of the compiler.

33                  I will deal with specific points made by Mr Jones shortly. However, my general conclusion, based on the evidence of Mr Flanagan (which, on this point, I accept) is that the steps taken to compile AQVD and AQPD in terms of the codes, vehicle description, and parts description are sufficient to justify copyright protection, in relation to those works. That is most obviously so in terms of devising a uniform terminology for naming vehicle parts, and the arrangement of those parts in a “crash sequence” which will be useful to users, but it is an observation which holds good generally. The fact that information included in the vehicle description in AQVD (eg, as to the number of doors possessed by particular models) could be obtained by “a phone call” to the manufacturer, as Mr Jones submitted, does not negate the proposition that there is at least effort, and perhaps some skill, in deciding to include that information, and ascertaining and expressing what it is that should be included.

34                  Mr Jones’ submissions were based upon a number of misconceptions. “Original” does not mean newly invented. Copyright may consist in a compilation such as those under consideration even if, for example, it was Ford which devised the name “Laser”. Nor does it matter that the information which is included in AQVD and AQPD is in the public domain, or that it would only take a keyboard operator a short time to compile a particular file, depending on the rate at which he or she is able to type. It is not effort in the copying, but skill and effort applied to the selection and arrangement of the material in the first place, which attracts copyright protection: see Acohs at p 541.

35                  Mr Jones also made the point that the concept of parts groupings is not novel, the naming of the headings in AQPD are not novel, and that one can see examples in other publications where similar headings have been used. Thus heading A can be found in publication Y, and heading B can be found in publication Z. Sometimes more than one heading can be found in the same publication. However, the focus of the enquiry is not with concepts, but with their expression, and the requisite originality must exist in relation to the compilation as a whole, rather than with respect to all of its constituent elements. The codes and descriptions adopted by the applicant are not the only codes and descriptions which could be devised for that purpose. In any event there is danger in the proposition that “if there is only one way of expressing an idea, that way is not subject to copyright”: see Ibcos Computers Ltd v Barclays Mercantile Highland Finance Ltd (1994) 21 FSR 275, 290-291.

36                  I have covered the substantial points which Mr Jones made. For the reasons given, in my view Auto-Quote has copyright in AQVD and AQPD, and Mr Jones has infringed and threatens to infringe Auto-Quote’s rights in that respect. During the course of submissions Mr Jones indicated that he would offer an undertaking to run a FC.EXE program before converting Auto-Quote files to FoxQUOTE. That program would show whether changes had been made to the Auto-Quote file, and if the file was in an unchanged condition, he would not reproduce it. The applicant declined to accept that undertaking, and in my view, it is not sufficient to protect Auto-Quote’s legal entitlements.

Fair Trading Act

37                  Mr Jones established by his cross examination of the applicant’s witnesses that there is a convention in the industry that when, for example, a Lotus program is adapted for Windows, it would be referred to as “Lotus for Windows”. The respondent did not follow that convention because it described its programming as “Auto-Quote Imaging”, rather than “Auto-Quote for Windows”. However, it seems to me that when Mr Jones published an advertisement which stated that FoxQUOTE 2000 is Auto-Quote for Windows, he was misrepresenting the facts. There is simply no connection between FoxQUOTE 2000 and Auto-Quote, and the advertisement wrongly conveys that there is.

38                  Mr Jones says that he did not intend to mislead, that he would not do it again, and that the fault in some way lies with the magazine for accepting the advertisement, when others would not. None of these contentions negate contravention of the Fair Trading Act.

39                  Further, the advertisement conveys that in the period 1987-1994, Mr Jones designed and programmed Auto-Quote. That is, at best, a half truth. The facts are that Auto-Quote was up and running when Mr Jones’ employment began, and that he was the person mainly responsible for enhancements made to the program in the period 1987-1994. The advertisement is an exaggeration or distortion of the facts, and is thus likely to mislead or deceive people who read it into believing that Mr Jones played a greater role in the development of Auto-Quote than is the fact.

FoxQUOTE

40                  Mr Jones seeks a variety of orders against Auto-Quote upon the basis that he has a well-founded fear that Auto-Quote may seek to exploit his FoxQUOTE software for their own benefit. He also seeks an order that Auto-Quote pay a fair and proper fee for its evaluation of the FoxQUOTE program.

41                  In November 1998 Mr Jones installed or attempted to install his FoxQUOTE program on a computer in Auto-Quote’s premises. The initiative for the installation of the FoxQUOTE program came from Mr Jones, as he was endeavouring to persuade Mr Flanagan to purchase the program from him. There is a significant dispute between Mr Jones and Mr Flanagan as to the circumstances surrounding that installation, Mr Jones asserting that he successfully installed the program and that Mr Flanagan made flattering remarks in relation to it, whereas Mr Flanagan asserts that the attempt to install the program was totally unsuccessful; no screens could be called up and no screens have since been called up.

42                  It is not necessary for me to resolve this factual dispute in order to determine whether Mr Jones is entitled to the relief which he claims, and I shall, for this purpose, assume that Mr Jones’ version of the events accords with the fact. Mr Jones accepts that Mr Flanagan told him that he did not want to buy the FoxQUOTE from him. In his affidavit of 17 September 1999 Mr Jones states:

“Flanagan then told me that he ‘could use’ some of my screen designs and layouts and that he would pay me for this.”

43                  At the end of November 1998 each party required the other to sign a form of statutory declaration and agreement in relation to the others’ program, and neither was prepared to do so. On 4 January 1999 Mr Jones wrote to Auto-Quote revoking “the evaluation licence” immediately. He demanded that Auto-Quote delete all copies of the FoxQUOTE program from Auto-Quote computers and backup media. He required payment of $5,000 as an evaluation fee. There was no response to this letter which Mr Flanagan ignored.

44                  On 6 April 1999 Mr Jones wrote to Mai Nhan and Dennis Lai, computer programmers employed by Auto-Quote, warning them not to copy the FoxQUOTE program. No reply to those letters was sent.

45                  There the matter rested until these proceedings were instituted by Auto-Quote by an application filed on 7 September 1999. Mr Jones countered by seeking relief against Auto-Quote in relation to the FoxQUOTE program.

46                  On 20 September 1999 I heard and determined claims for interlocutory relief. So far as the FoxQUOTE program is concerned my decision includes the following:

“The document which I have referred to as ‘Short Minutes of Order’, in addition to raising the three defamation claims, outlines a further claim based upon the installation by Mr Jones of his FoxQUOTE program on the applicant’s computers. I gather from evidence which Mr Jones filed on 17 September 1999 that the case which he wishes to put is that this program was installed on the applicant’s computers for a limited purpose and for a limited time, each of which has now expired. On 6 April 1999 he wrote to computer programmers employed by the applicant notifying them that the FoxQUOTE program should have been deleted from all Auto-Quote computers by 29 November 1998, and counselling them against reproducing matter included in that program or copying ideas derived from the program.

In response to that claim, Mr Gelbart stated on behalf of the applicant in Court this morning that if the FoxQUOTE program has not already been deleted from those of the applicant's computers with respect to which it was installed, it will be deleted forthwith, and any hardcopy reproductions of the material contained in that material will be delivered forthwith to Mr Jones.

I am not prepared upon the basis of the materials before me to make any further orders at this particular point in time in relation to the FoxQUOTE program. I direct that if Mr Jones wishes to propound a claim in relation to the installation of that program, he should file and serve a cross-claim by Wednesday 29 September 1999 setting out the precise claim which he wishes to make, because again that may raise issues as to the jurisdiction of this Court and the extent of its accrued jurisdiction.”

On 20 September 1999 I noted an undertaking by the applicant to delete from any of its computers the FoxQUOTE program. I also noted an undertaking by the applicant to deliver any hardcopy reproductions of the FoxQUOTE program (and material contained therein) to the respondent forthwith.

47                  On 27 September 1999 Mr Lai deleted the FoxQUOTE program from the computer. Both Mr Flanagan and Mr Lai gave evidence that neither of them has ever copied the Fox Quote program, nor printed it out, nor made use of any information contained upon it. Whilst I think Mr Flanagan has a high degree of animosity towards Mr Jones I accept the evidence which he and Mr Lai gave in this respect. I am not satisfied that the failure to delete the program from the Auto-Quote computers until September 1999 has the sinister significance which Mr Jones attributed to it. A reflection of the animosity which Mr Flanagan bears for Mr Jones is that he treated Mr Jones’ demands in a dismissive fashion, but I am not satisfied that his failure to accede to those demands reflects an intention to exploit the FoxQUOTE program for an illegitimate purpose. Accordingly, I am not satisfied that Mr Jones has made out a case for the injunctive relief he seeks.

48                  Nor has Mr Jones made out an entitlement to receive the sum of $5,000, or any other sum, in relation to the evaluation of the computer. The evidence does not establish any contractual obligation upon the part of Auto-Quote to pay Mr Jones for acceding to his request to permit the installation of the FoxQUOTE program onto the Auto-Quote computer. The passage from Mr Jones’ affidavit extracted above reflects a promise to pay for screen designs and layouts if Auto-Quote used them. I accept that these things were never used, hence the payment obligation never arose.

Miscellaneous

49                  Mr Jones claims that he has been unfairly treated, that he has been denied the opportunity of competing on equal terms with Auto-Quote and that people are reluctant to deal with him because he is engaged in litigation in the Federal Court with the market leader. None of these claims are relevant to the question of infringement of copyright or a contravention of the Fair Trading Act, and I am satisfied for the reasons which I have given, that Auto-Quote has made out its claims in that respect. Mr Jones also sought the vacation of a costs order made against him when I dismissed an application for leave to appeal against the interlocutory injunction which I granted. The basis on which revocation of that order is sought is not entirely clear, but it seems to be that Mr Jones was induced to seek leave to appeal either by wrong advice given by registry staff, or by a failure on his part to correctly understand whatever information was given to him. I have no material before me which establishes that “wrong advice” was given by registry staff to Mr Jones in this respect, but even if it were so, it would not provide any or any sufficient reason for discharging the order which I made.

Conclusion

50                  I propose to make the following orders:

1.                  An order that the respondent, whether by himself or through others acting on his behalf or on his instructions or with his encouragement, be restrained from reproducing, in any form, or publishing the whole or a substantial part of the:

(a) Auto-Quote Vehicle Directory (a reference copy of which is the annexure “A” to the affidavit of Terrence Rodney Flanagan sworn 7 September 1999); or

(b) Auto-Quote Parts Database, being a compilation comprising the fields: “Code”, “Description” and “Part No” (a reference copy of which is the Exhibit TRF-1 to the affidavit of Terrence Rodney Flanagan sworn 3 May 2000).

2.                  An order that the respondent deliver up to Timothy Daley, Solicitor C/- Colin Daley Quinn at 11 Montgomery Street, Kogarah NSW all copies of the whole or substantial part of the Auto-Quote Vehicle Directory and the Auto-Quote Parts Database as remain in the respondent’s possession, custody or power at the date of making this order.

3.                  An order that the respondent makes, files and serves an affidavit setting out the following information:

(a)                the number of copies (if any) of the whole or substantial part of the Auto-Quote Vehicle Directory and the Auto-Quote Parts Database in the respondent’s possession, custody or power at the date of making this order;

(b)               the number of copies referred to in paragraph (a) above published by the respondent prior to the date of this order;

(c)                the names and business addresses of those businesses, corporations or persons to whom the copies referred to in paragraph (b) above were published prior to the date of this order.

4.                  An order pursuant to s 65 of the Fair Trading Act 1987 (NSW) that the respondent, whether by himself or through others acting on his behalf or on his instructions or with his encouragement, be restrained from representing, in the course of trade or commerce, that:

(a)                FoxQUOTE is Auto-Quote for Windows;

(b)               The respondent designed and programmed Auto-Quote 1987-1994.

5. That the respondent pay the applicant’s costs of these proceedings.

Associate:

Dated: 16 May 2000