FEDERAL COURT OF AUSTRALIA

Australian Competition and Consumer Commission v Chen [2003] FCA 897

TRADE PRACTICES – Application for a declaration that the respondent engaged in conduct in contravention of the Trade Practices Act 1952 (Cth) – respondent outside Australia - respondent operated and maintained unauthorised “imitation” Sydney Opera House website and associated sites – declaration appropriate to mark the Court’s disapproval of conduct.

TRADE PRACTICES – Application under s 80 of the Trade Practices Act 1952 (Cth) for injunctive relief – respondent outside Australia – evidence of international co-operation to curb fraudulent or misleading cross-border conduct – appropriate to take into account not only formal enforcement mechanisms, but likely response of administrative agencies in foreign country – grant of injunction not futile

Trade Practices Act 1952 (Cth), ss 6, 51A, 52, 53, 55A, 80, 87

Federal Court of Australia Act 1976 (Cth), s 21

Federal Court Rules,  O 7 r 9, O 8 r 2

Foreign Judgments Act 1991 (Cth)

Foreign Judgments (Reciprocal Enforcement) Act 1933 (UK)

Australian Competition and Consumer Commission v The Shell Company of Australia (1997) 72 FCR 386 cited

Dow Jones & Company Inc v Gutnick (2002) 194 ALR 433 cited

Australian Competition and Consumer Commission v Hughes [2002] ATPR 41-863 cited

Tobacco Institute of Australia Ltd v Australian Federation of Consumer Organisations Inc (No 2) (1993) 41 FCR 89 cited

Australian Competition and Consumer Commission v The IMB Group Pty Ltd (In Liq) [1999] ATPR 41-688 cited

ICI Australia Operations Pty Ltd v Trade Practices Commission (1992) 38 FCR 248 cited

National Australia Bank v Dessau [1988] VR 521 cited

Helicopter Utilities Pty Ltd v Australian National Airlines Commission (1961) 80 WN(NSW) 48 cited

Australian Competition and Consumer Commission v Purple Harmony Plates Pty Ltd (No 3) (2002) 196 ALR 576 cited

Re Liddell’s Settlement Trusts [1936] Ch 365 cited

Castanho v Brown & Root (UK) Ltd [1981] AC 557 cited

Hope v Hope (1854) 4 De G M & G 328; 43 ER 534 cited

Locabail International Finance Ltd v Agroexport [1986] 1 WLR 657 cited

ICF Spry, The Principles of Equitable Remedies (6^th ed, 2001)

P E Nygh and M Davies, Conflict of Laws in Australia (7^th ed, 2002)

D Harland “The Consumer in the Globalised Information Society – The Impact of International Organisations” (1999) 7 Comp & Cons LJ 1

D Ali, “Cross Border B2C Disputes” [2002] NZLJ 31

AUSTRALIAN COMPETITION AND CONSUMER COMMISSION v CHEN

N 1039 OF 2002

SACKVILLE J

SYDNEY

27 AUGUST 2003

THE COURT:

DIRECTS the Applicant to bring in short minutes of order consistent with these reasons for judgment within 7 days.

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

REASONS FOR JUDGMENT

The Proceedings

1                     The applicant, (“ACCC”) seeks declaratory and injunctive relief against the respondent in respect of conduct that is said to be misleading and deceptive, in contravention of s 52 and other provisions of the Trade Practices Act 1974 (Cth) (“TP Act”).  The proceedings, which were commenced on 3 October 2002, have been undefended.

2                     The ACCC complains that the respondent, who is a resident of the United States, has engaged in misleading and deceptive conduct over the Internet, to the detriment of Australian consumers.  One question in the proceedings is whether the Court should grant an injunction to restrain the respondent’s conduct, having regard to the conceded fact that there is no mechanism available for the registration or enforcement of any such injunction in the courts of the United States, federal or state.

3                     The conduct of which the ACCC complains, in substance, is the operation from early 2002 until at least October 2002 of three Internet web sites.  According to the ACCC’s amended statement of claim, the three Internet web sites (to which I refer collectively as “the Sites”) are as follows:

• a web site entitled “sydneyopera.org” (the “Imitation Site”), which at the relevant times could be accessed by the domain name “www.sydneyopera.org”;
• a web site entitled “Witestar” (the “Witesar Site”) which could be accessed by the domain name “www.witestar.com”;
• a web site entitled “The World’s Box Office” (the “WBO Site”), which could be accessed by the domain names “www.worldsboxoffice.com” and “www.scholarscircle.com”.

(A domain name is essentially an easy to remember name for a host web server, corresponding to an Internet protocol (“IP”) number.)

4                     According to the ACCC, the respondent falsely represented that the Sites were affiliated with the Sydney Opera House Trust (“the Trust”), a body constituted under the Sydney Opera House Trust Act 1961 (NSW), and that the sale of tickets to events at the Opera House through the Sites was approved or permitted by the Trust.  The Trust is the registrant of five official domain names, namely

• www.sydneyoperahouse.com;
• www.sydneyoperahouse.net;
• www.sydneyoperahouse.com.au;
• www.soh.nsw.gov.au; and
• www.sydneyoperahouse.nsw.gov.au.

Each of these domain names provides access to the Sydney Opera House’s official web site. 

5                     The ACCC, despite extensive investigations, has never succeeded in serving the respondent personally with any documents or, indeed, definitively ascertaining his whereabouts at any particular time.  However, the evidence indicates that he is a resident of the United States and that at some time in 2002 he probably resided in an apartment located at 400 West 119^th Street, New York City, while more recently he has probably resided in Westmont, Illinois.

6                     It also appears from recent inquiries undertaken by the ACCC that, although the Sites continue to exist and to be accessible from Australia, they no longer contain any information or make any representations relating to the Trust or to events at the Sydney Opera House.  This seems to have been the case since no later than 25 February 2003.  The likelihood is that the change came about, partly at least, because the ACCC vigorously pursued the matter with United States service providers that host the Sites and also with its regulatory counterpart in that country, the Federal Trade Commission (“FTC”).  Even so, the respondent appears to retain a link to the WBO Site, since his name is recorded as the “administrative contact” for the internet domain name “worldsboxoffice.com”.  Although it is not entirely clear, the respondent probably also retains a link to the Witestar Site, as the administrative and technical contact for the domain name “witestar.com”.  The registration of the domain name “sydneyopera.org”, appears to have expired on 17 January 2003.  A new registration record was created on 25 February 2003, with a new registrar and registrant.  The evidence suggests that the new registrant is not connected to the respondent, although the possibility of a connection cannot be ruled out.

7                     The ACCC seeks declarations that the respondent, in connection with the Imitation Site, the Witestar Site and the WBO Site

• engaged in conduct that was misleading or deceptive or was likely to mislead or deceive, in contravention of s 52 of the TP Act;
• made false or misleading representations in contravention of s 53(c) and (d) of the TP Act; and
• engaged in conduct that was liable to mislead the public in relation to services in contravention of s 55A of the TP Act.

8                     The ACCC also seeks injunctions pursuant to s 80 of the TP Act

• requiring the respondent to take all steps to remove and prevent access to the Sites by persons or computers within Australia (whether or not that requires the entire removal of the Sites);
• restraining the respondent from publishing, operating or maintaining the Sites or any similar Internet web site in circumstances where the sites are accessible by persons or computers within Australia; and
• restraining the respondent from publishing, operating or maintaining the Sites or any similar Internet web site so as to engage in misleading or deceptive conduct in contravention of the TP Act.

9                     The application further seeks an order pursuant to s 80 of the TP Act requiring the respondent to provide details of all persons within Australia who have purchased tickets through the WBO Site since January 2002 and to refund all payments made to the purchasers.  However, Mr McClintock addressed no argument specifically to this proposed order and I did not understand him to press for this form of relief.

10                  On 8 October 2002, Conti J made an order pursuant to Federal Court Rules (“FCR”) O 8 r 2 that the ACCC be granted leave to serve the originating process outside the Commonwealth on terms and conditions that the ACCC employ private agents in the United States to effect personal service.  (FCR, O 8 r 2(2) provides that the Court may grant leave to serve process outside the jurisdiction if certain conditions are satisfied.)  His Honour made orders requiring the respondent to take all steps to remove the Sites from the World Wide Web so that they cease to be and until further order remain inaccessible to persons or computers within Australia.  His Honour also restrained the respondent, until further order, from publishing, operating or maintaining the Sites in circumstances where they are accessible to persons or computers within Australia.

11                  The ACCC was unable to serve the originating process on the respondent personally.

12                  On 8 November 2002, on the application of the ACCC, I made an order pursuant to FCR, O 7 r 9(1), for substituted service of the initiating process on the respondent.  I did so on the basis that the ACCC had shown that it was “impracticable to serve [the process] in the manner set out in the Rules”.  The orders required a variety of steps to be taken, both in relation to hard copies and electronic versions of the originating process, in order to bring the proceedings to the respondent’s attention.  The ACCC duly complied with those orders.

13                  As I have noted, the respondent has played no part in the proceedings.  Nonetheless, I am prepared to infer from the evidence relating to the respondent’s involvement in the Sites and the many steps taken, particularly by electronic means, to bring the proceedings to his attention that he has been made aware of these proceedings and of the relief sought against him in this Court.

The Legislation

14                  Section 52(1) of the TP Act provides that a corporation shall not, in trade or commerce, engage in conduct that is misleading or deceptive or is likely to mislead or deceive.  Section 53 of the TP Act provides that a corporation shall not, in trade or commerce, in connection with the supply or possible supply of goods or services or in connection with the promotion by any means of the supply or use of goods and services:

“(c)     represent that goods or services have sponsorship, approval, performance characteristics, accessories, uses or benefits they do not have;

(d)       represent that the corporation has a sponsorship, approval or affiliation it does not have”.

Section 55A of the TP Act prohibits a corporation, in trade or commerce, engaging in conduct

“that is liable to mislead the public as to the nature, the characteristics, the suitability for their purpose or the quantity of any services”.

15                  Section 51A(1) of the TP Act applies where a corporation makes a representation with respect to a future matter.  If it does not have reasonable grounds for making the representation, the representation is taken to be misleading.  In relation to a representation as to a future matter, the corporation, unless it adduces evidence to the contrary, shall be deemed not to have reasonable grounds for making the representation: TP Act, s 51A(2).

16                  Section 6 of the TP Act, among other things, gives Part V of the TP Act (which includes ss 51A, 52, 53 and 55A) an extended operation.  By s 6(2), Part V has the effect it would have if any references to trade or commerce were confined to trade or commerce “between Australia and places outside Australia” and a reference to a corporation included a reference to a person not being a corporation: see s 6(2)(a)(i), (h).  By s 6(3), provisions of Part V also have the effect they would have if

“(a)     those provisions…were…confined in their operation to engaging in conduct to the extent to which the conduct involves the use of postal, telegraphic or telephonic services…; and

(b)             a reference in those provisions to a corporation included a reference to a person not being a corporation”.

17                  Section 80(1) of the TP Act empowers the Court, on the application of the ACCC (or any other person, if satisfied that a person has engaged, or is proposing to engage in conduct that constitutes or would constitute a contravention of a provision of Part V, to grant an injunction on such terms as the Court determines to be appropriate.  Section 80(4) provides as follows:

“The power of the Court to grant an injunction restraining a person from engaging in conduct may be exercised:

(a)     whether or not it appears to the Court that the person intends to engage again, or to continue to engage, in conduct of that kind;

(b)     whether or not the person has previously engaged in conduct of that kind; and

(c)        whether or not there is an imminent danger of substantial damage to any person if the first-mentioned person engages in conduct of that kind.”

Section 80(5) contains similar provisions concerning the Court’s power to grant mandatory injunctions.

18                  Section 80(6) of the TP Act dispenses with the usual requirement of an undertaking as to damages as a condition of granting an interlocutory injunction, where the applicant is the ACCC or the Minister.

19                  Section 87(1A)(b) of the TP Act states that, without limiting the generality of s 80, the Court may, on the application of the ACCC, on behalf of persons who have suffered loss or damage by the conduct of another person in contravention of Part V, make orders designed to compensate the persons for the loss or damage.  An application by the ACCC under s 87(1A)(b) can be made, however, only if the persons who have suffered loss or damage consent in advance to the application: s 87(1B).  The ACCC has not sought relief in these proceedings under s 87(1A)(b), although it might be able to do so in the future: cf Australian Competition and Consumer Commission v The Shell Company of Australia Ltd (1997) 72 FCR 386, at 391, per Drummond J.

Findings

20                  Senior counsel for the ACCC, Mr McClintock SC, who appeared with Mr Tonking, read no fewer than fifteen affidavits in support of the ACCC’s case.  Despite this volume of material, none of the affidavits was specifically devoted to the workings of the Internet and the World Wide Web.  However, there is sufficient in the evidence, especially that of Mr Sefton, a solicitor who has expertise in computer science, to draw inferences as to how the Internet operates.

21                  In this respect, it is convenient to adopt the helpful summary in the joint judgment of Gleeson CJ, McHugh, Gummow and Hayne JJ, in Dow Jones & Company Inc v Gutnick (2002) 194 ALR 433, at 437-438, [14]-[16], which is consistent with Mr Sefton’s evidence:

“One witness … described the Internet as ‘a telecommunications network that links other telecommunication networks’.  In his opinion, it is unlike any technology that has preceded it.  The key differences identified … included that the Internet ‘enables inter-communication using multiple data-formats … among an unprecedented number of people using an unprecedented number of devices [and] among people and devices without geographic limitation’.

The World Wide Web is but one particular service available over the Internet.  It enables a document to be stored in such a way on one computer connected to the Internet that a person using another computer connected to the Internet can request and receive a copy of the document.  …  The terms conventionally used to refer to the materials that are transmitted in this way are a ‘document’ or a ‘web page’ and a collection of web pages is usually referred to as a ‘web site’.  A computer that makes documents available runs software that is referred to as a ‘web server’; a computer that requests and receives documents runs software that is referred to as a ‘web browser’.

The originator of a document wishing to make it available on the World Wide Web arranges for it to be placed in a storage area managed by a web server.  This process is conventionally referred to as ‘uploading’.  A person wishing to have access to that document must issue a request to the relevant server nominating the location of the web page identified by its ‘uniform resource locator (URL)’.  When the server delivers the document in response to the request the process is conventionally referred to as ‘downloading’.”

22                  It is not necessary to examine the voluminous and sometimes repetitive evidence in detail.  It is sufficient for present purposes to record the significant findings justified by the evidence.

23                  From at least January 2002 until October 2002, a person in Australia (or elsewhere) who typed into his or her computer the address “www.sydneyopera.org” would reach the Imitation Site.  Search engines would also direct persons seeking information on the Sydney Opera House to the Imitation Site.  When downloaded onto the person’s screen, the front page in this Site appeared to be identical to the front page of the official Sydney Opera House site.  The remaining web pages on the Imitation Site were, however, completely different from those on the official site.

24                  The Imitation Site contained a separate “pop-up window” displaying the contents of the Witestar Site.  This, in turn, contained a link to the WBO Site.  The WBO Site advised a person gaining access to it that he or she could purchase tickets, by use of a credit card, for performances at any of a number of opera houses, including the Sydney Opera House.  A person accessing the Imitation Site could also reach the WBO Site by clicking on the “Box Office” link of the Imitation Site.  The WBO Site displayed the contents of a different web site, located at domain name “site.netopia.com/scholarscircle” by a process known as “framing”.  (Framing allows a web page to display the contents of another web page, usually without this fact being apparent to the Internet user.)

25                  Each of the four domain names which provided access to the Sites during the relevant period can be linked in various ways to the respondent.  I am prepared to infer that the respondent caused all four domain names to be registered with a United States Internet domain name registrar, NameSecure Inc.  I am also prepared to infer that the respondent was responsible for operating and maintaining each of the Sites during the relevant period in 2002, although it is quite possible that other persons were also involved.

26                  As Mr McClintock accepted, the evidence suggests that the web servers on which the Sites were stored were located in the United States, probably in New York and Illinois.  A person in Australia who wished to gain access to one of the Sites (or who was directed to one of the Sites by a search engine) would issue a request to the host server by nominating the location of the relevant Site or web page.  The server would then deliver the document in response to the request (the process known as downloading).

27                  The Trust has never authorised the operators of the Sites to reproduce any part of its official web site.  Nor has it approved or endorsed those Sites or the material contained on them.  In short, there was no connection between the Sites and the Trust or the official Sydney Opera House site during the relevant period.

28                  There is evidence that during 2002 a number of persons used their credit cards to purchase tickets for Sydney Opera House events by transactions effected through the Imitation and WBO Sites.  Typically, the consumer was initially directed to the Imitation Site through a search engine.  The consumer believed that he or she was dealing with the official Sydney Opera House site.  The prices charged for tickets to performances were about double the prices charged through the official site.  In most cases referred to in the evidence, the consumer subsequently found that no bookings had been made for the performance.  It would seem that most, if not all, of those consumers whose complaints were subsequently investigated by the ACCC ultimately received refunds from their credit card providers.  Of course, this does not necessarily mean that all consumers who were misled into purchasing tickets have received refunds.

29                  The consumers who made complaints to the Sydney Opera House or the ACCC mostly seem to have booked and paid for tickets by accessing the WBO Site from outside Australia (that is, they made the bookings in anticipation of visiting Australia).  In at least one case, however, a complainant booked tickets in Australia by processing the transaction through the WBO Site.  Moreover, the evidence shows that ACCC investigators made “bookings” for Sydney Opera House events by accessing the Imitation and WBO Sites in Australia.  I am prepared to infer that some Australian consumers have been misled in much the same way as consumers from other countries.  If consumers actually received tickets to Sydney Opera House events after making reservations through the WBO Site, they would have paid considerably more for the tickets than if they had acquired them through the official web site for the Sydney Opera House.

30                  I am satisfied, on the balance of probabilities, that the respondent, by operating and maintaining the Sites, made the representations alleged by the ACCC.  That is, the respondent represented that

(a)           the Imitation Site was the Sydney Opera House official site;

(b)          the Imitation Site or its operators were affiliated or associated with the Sydney Opera House or the Trust;

(c)           the Imitation Site or its operators were sponsored or approved by the Trust;

(d)          the WBO Site was part of or connected with the Sydney Opera House official site;

(e)           the WBO Site or its operator were affiliated or associated with the Sydney Opera House official site or the Trust;

(f)            the WBO Site or its operator were sponsored or approved by the Trust;

(g)           the sale of tickets to Sydney Opera House events through the WBO Site was approved by or permitted by the Trust;

(h)           the operator of the WBO Site would supply tickets to Sydney Opera House events purchased through the WBO Site;

(i)             persons would receive tickets to Sydney Opera House events purchased through the WBO Site;

(j)            the Witestar Site was part of or connected to the Sydney Opera House official site;

(k)          the Witestar Site or its operator was affiliated or associated with the Sydney Opera House or the Trust; and

(l)             the Witestar Site or its operator were sponsored or approved by the Trust.

31                  I accept the ACCC’s submission that representations (h) and (i) were representations as to future matters within s 51A of the TP Act and that the respondent had no reasonable grounds for making those representations.  I also accept the ACCC’s submission that, having regard to the evidence to which I have referred, the other representations were misleading and deceptive, insofar as they were made to members of the public in Australia. 

32                  The ACCC identified the “services” for the purposes of the application of ss 53(c) and 55A of the TP Act as the offer made by the respondent on the WBO Site to provide booking facilities for events at the Sydney Opera House.  Although the respondent is not a corporation, the TP Act applies to his activities, at least insofar as they affect consumers in Australia.  This is so because he has engaged in conduct over the Internet which has involved the use of telephonic services (s 6(3)) or, alternatively, which has taken place in trade or commerce between Australia and the United States (s 6(2)): see Australian Competition and Consumer Commission v Hughes [2002] ATPR 41-863, at 44,792 per Allsop J.  Accordingly, in my view, the ACCC has established that the respondent contravened ss 52, 53(c) and 55A of the TP Act by reason of his activities in relation to the Sites between January and October 2002.  Mr McClintock did not explain how the respondent’s activities constituted a contravention of s 53(d) of the TP Act and I am not inclined to think that they did.  That conclusion, however, makes no substantial difference to the outcome of the proceedings.

relief

the accc’s submissions

33                  Mr McClintock acknowledged that the respondent is resident in the United States and that he has no known connection with Australia, other than through the Sites.  Mr McClintock also acknowledged that there is no mechanism for the registration or enforcement in the United States of an injunction granted against a United States resident by an Australian court under the TP Act. He accepted that the strong likelihood is that no injunction could be enforced against the respondent through the United States courts if he chose simply to ignore the orders.  Mr McClintock also accepted that this Court should take into account, in determining what relief is appropriate, the fact that the Sites have ceased to refer to the Sydney Opera House and no longer purport to offer a facility for purchasing tickets to events at the Opera House.

34                  Nonetheless, Mr McClintock submitted that in the circumstances of the case it is appropriate to grant both declaratory and injunctive relief.  He pointed to evidence showing the prevalence of cross-border consumer fraud or deception and the need to protect the public from exploitation.  He contended that there is a utility in making declarations or orders which mark the Court’s disapproval of the conduct and vindicate the public interest in taking all available measures to curtail misleading or deceptive conduct.  He also relied on evidence suggesting that regulatory authorities in the United States, particularly the FTC, are more likely to co-operate in protecting Australian consumers from cross-border fraud if an Australian court has made formal orders restraining the offending conduct or requiring remedial action.

the principles

Declaratory Relief

35                  Section 21(1) of the Federal Court of Australia Act 1976 (Cth) (“Federal Court Act”) confers power on the Court in any matter in which it has original jurisdiction to make binding declarations of right, whether or not consequential relief is claimed.  In Tobacco Institute of Australia Ltd v Australian Federation of Consumer Organisations Inc (No 2) (1993) 41 FCR 89, the Full Court held that the Court has power under s 21 of the Federal Court Act to make a declaration of right in proceedings for injunctive relief bought under s 80 of the TP Act, regardless of whether injunctive relief is granted.  The declaration, if made, is a declaration of right because the right declared is a public right, namely the right of the public not to be misled or deceived by misrepresentations: at 98, per Sheppard J; at 110, per Hill J.  Sheppard J specifically recognised (at 100) that the policy of the TP Act, concerned as it is with the public interest, warrants the Court, in an appropriate case, exercising its power to grant declaratory relief to mark its disapproval of particular conduct contravening the TP Act.

36                  Hill J in the same case rejected an argument that a declaration should not be made to the effect that the publication of an advertisement relating to passive smoking contravened s 52 of the TP Act because to do so would be futile.  His Honour considered (at 107) that it was in the public interest that the Court indicate the result of the case by making an order binding on the parties:  see, too, at 106, per Foster J; Australian Competition and Consumer Commission v The IMB Group Pty Ltd (In Liq) [1999] ATPR 41-688, at 42,803-42,804, per Drummond J.  On this reasoning, it is open in the present case to grant an appropriately framed declaration to mark disapproval of the respondent’s conduct whether or not injunctive relief is granted to restrain repetition of that conduct.

Injunctive Relief

37                  The ACCC relies on s 80 of the TP Act as the source of power to grant injunctive relief in the present case.  The section has been described as “essentially a public interest provision”, a proposition said to be exemplified by the sort of conduct in relation to which the Court may exercise its powers and the fact that s 80(1) grants the ACCC or “any other person” right to apply for an injunction: ICI Australia Operations Pty Ltd v Trade Practices Commission (1992) 38 FCR 248 (“ICI v TPC”), at 255 per Lockhart J (with whom French J agreed).

38                  As Gummow J pointed out in ICI v TPC, at 266-267, there are distinctions between the remedy provided for in s 80 of the TP Act and the traditional injunction granted by courts of equity in aid of legal or statutory rights.  The differences include the broadening of locus standi by s 80(1); the categories of conduct which may be enjoined by an injunction granted under s 80; the authority granted to the Court by s 80(3) to rescind or vary not only an interim injunction, but a final injunction; the removal by s 80(6) of the usual requirement for an undertaking as to damages where the ACCC or the Minister is an applicant for an interlocutory injunction; and the terms of s 80(4) and (5), which permit the Court to grant prohibitory and mandatory injunctions, whether or not there is any threat of a further infraction of the law or any imminent danger of substantial damage by the respondent’s act or omission.

39                  As to the last of these, Lockhart J in ICI v TPC observed (at 256) that s 80(4) and (5) are designed to ensure that once the condition precedent to the exercise of the discretion to grant injunctive relief has been satisfied, the Court should be

“given the widest possible injunctive powers, devoid of traditional constraints, though the power must be exercised judicially and sensibly”.

Nonetheless, his Honour considered that the likelihood of future contraventions by the respondent is a factor relevant to the exercise of the statutory discretion.  Gummow J also thought that the matters referred to in s 80(4) and (5) are relevant to the exercise of the Court’s discretion.  However, his Honour perhaps went a little further, expressing agreement (at 266) with the view of J D Heydon, Trade Practices Law, par 18.740, that

“whilst in concept the statutory remedy provided for in s 80 of the Act is different from the equitable remedy of injunction as administered in the inherent jurisdiction of courts of equity, nevertheless ‘in many practical respects, it is not…fundamentally distinct from the equitable remedy’”.

40                  Mr McClintock submitted that the Court has power under s 80 of the TP Act to grant an injunction requiring a person to do or refrain from doing something outside Australia.  He supported that contention by reference to the well established proposition that, apart from a few exceptional cases such as those relating to title to foreign land:

“a court of equity will not consider itself to be debarred from interceding, if it is otherwise appropriate to do so, merely because it appears that the property to which the claims of the plaintiff relate is situate abroad or that the acts he seeks to have performed or enjoined, as the case may be, will, if they take place at all, take place outside the jurisdiction”:

I C F Spry, The Principles of Equitable Remedies (6^th ed, 2001), at 36.  As was said by Brooking J in National Australia Bank Ltd v Dessau [1988] VR 521, at 522, the

“jurisdiction is grounded not on any pretension to the exercise of judicial power abroad but on the circumstance that the defendant, being amenable to the Court’s jurisdiction, can be personally directed to act or not to act”.

See, too, Helicopter Utilities Pty Ltd v Australian National Airlines Commission (1961) 80 WN (NSW) 48, at 51, per Jacobs J.

41                  The issue, however, is not the scope of the jurisdiction of a court of equity acting in personam, but the extent of the power conferred on the Court by s 80 of the TP Act.  The language of s 80(1) is broad: once the Court is satisfied that one of the preconditions has been met, it “may grant an injunction in such terms as the Court determines to be appropriate”.  There is nothing in this language that imposes an implied territorial limitation on the power of the Court.  On the contrary, not only is the language of s 80(1) broad enough to permit the Court to prohibit or mandate acts abroad, but there is good reason to interpret it in this way. 

42                  Section 6(2) of the TP Act extends the application of Part V (and other provisions) to conduct in trade or commerce between Australia and places outside Australia.  In enacting this provision, Parliament has relied on the trade and commerce power conferred by s 51(i) of the Constitution.  The extended application of the TP Act has the effect that a person outside Australia (but subject to the jurisdiction of the Court under provisions such as FCR, O 8 r 2) might well contravene provisions of the Act and thereby enliven the power conferred on the Court by s 80(1).  In these circumstances, in my opinion, s 80 should be read as contemplating that an injunction may be granted prohibiting or requiring the performance of acts outside Australia.  I should add that the Court may have a similar power pursuant to s 23 of the Federal Court of Australia Act 1976 (Cth), but it is not necessary to pursue that possibility in the present case: cf Australian Competition and Consumer Commission v Purple Harmony Plates Pty Ltd (No 3) (2002) 196 ALR 576, at 589 [42]-[44], per Goldberg J.

43                  Of course, the fact that the respondent is outside Australia and, for that reason, any order might be difficult or impossible to enforce, may be a relevant consideration in determining whether a Court should grant injunctive relief.  In this respect, courts of equity have expressed divergent views: see NAB v Dessau, at 523, per Brooking J; Spry, supra, at 41-42.  Some courts have taken the robust approach that

“[i]t is not the habit of this Court in considering whether or not it will make an order to contemplate the possibility that it will not be obeyed.”

In re Liddell’s Settlement Trusts [1936] Ch 365, at 374, per Romer LJ, cited with approval by Lord Scarman (with whom Lords Wilberforce, Diplock, Keith and Bridge agreed) in Castanho v Brown & Root (UK) Ltd [1981] AC 557, at 574.  Other authorities suggest that a court should not put itself in the position of making an order that it cannot enforce: Hope v Hope (1854) 4 De G M & G 328, at 347-348; 43 ER 534, at 542, per Cranworth LC; Locabail International Finance Ltd v Agroexport [1986] 1 WLR 657, at 665, per Mustill LJ (a case in which a mandatory interlocutory injunction was sought).

44                  I think that Dr Spry is correct to suggest (at 42) that the preferable position, as a matter of principle, is that

“the precise probability that the particular order in question will be obeyed has more or less weight according to the other circumstances and is taken by the court into account in exercising its discretion, together with such other matters as the degree of injury or inconvenience that will be suffered by the plaintiff if he does not obtain relief.”

45                  It seems to me that this approach is also appropriate in determining whether or not to grant an injunction pursuant to s 80 of the TP Act.  The fact that an order is likely to prove difficult or even impossible to enforce is not necessarily a bar to the grant of relief, although it is a material consideration to be weighed against other circumstances relevant to the exercise of the Court’s discretion.

should a declaration be granted?

46                  The declaration sought by the ACCC is in the following terms:

“that the respondent, in connection with the Imitation Site, the Witestar Site and the WBO Site (as those terms are defined in the accompanying Statement of Claim):

(a)               engaged in conduct that was misleading or deceptive or was likely to mislead or deceive in contravention of section 52 of the Trade Practices Act 1974 (Cth);

(b)               made false or misleading representations in contravention of sections 53(c) and 53(d) of the Trade Practices Act 1974 (Cth);

(c)               engaged in conduct that was liable to mislead the public in relation to services in contravention of section 55A of the Trade Practices Act 1974 (Cth).”

In my opinion, it is appropriate to make a declaration in these terms, subject to the qualification that, as I have previously indicated, the reference to s 53(d) of the TP Act should be omitted.

47                  I have taken into account the fact that the Sites no longer contain information relating to the Sydney Opera House and no longer purport to provide a facility for booking tickets at the venue.  I have also taken into account that the current registrant of the domain name “sydneyopera.org” appears to have no connection with the respondent.  However, I do not infer from these facts that there is no threat that the respondent will not resume his pattern of blatantly misleading and deceptive conduct in relation to the Sydney Opera House.  The respondent has not appeared in the Court to explain what has happened in relation to the Sites and, of course, no undertakings have been given to refrain from misleading conduct in the future, either to this Court or to the United States authorities.  The respondent appears still to be associated with at least two of the Sites and, given the pattern of misleading and deceptive conduct revealed in the evidence, there can be no assurance that the respondent will not use the Sites or create other web sites to convey misleading information to Australian consumers (and consumers elsewhere) about the availability and sale of tickets to Sydney Opera House events.

48                  As the Full Court recognised in Tobacco Institute v AFCO, the public interest in protecting Australian consumers from misleading conduct often warrants the making of a declaration.  A declaration also marks the Court’s disapproval of the respondent’s conduct and, if appropriate, can be used to inform consumers of the dangers posed by the respondent’s operation of the Sites.  I think that these considerations justify making a declaration in the present case in the terms to which I have referred.

should an injunction be granted?

49                  The question of injunctive relief is more difficult.  I have explained the obstacles in the path of enforcing in the United States any injunction granted by the Court.  In general, a court will be loath to make orders affecting conduct outside Australia in circumstances where direct enforcement of those orders is difficult or impossible.  It is also true that the offending conduct has ceased and that the respondent no longer appears to be associated with the domain name “sydneyopera.org”.  These are powerful considerations militating against the grant of an injunction.

50                  I have, however, formed the view that, in the special circumstances of the present case, it is appropriate to grant an injunction, although I think any injunction should be framed more narrowly than the ACCC proposes.  There are three factors which suggest to me that an injunction should be granted notwithstanding cogent considerations pointing to a different conclusion.

51                  First, for the reasons I have given, this is not a case where it can be definitively concluded that the respondent does not intend to resume misleading and deceptive conduct aimed (among others) at Australian consumers.  There is a risk that the respondent may resume the misleading and deceptive conduct that has characterised his operations in the past, although I cannot say that it is probable that he will.

52                  Secondly, the ACCC adduced evidence showing that cross-border fraud and misleading conduct, particularly through the Internet, is a growing problem for the international community.  The problem has prompted consumer protection and law enforcement agencies from many countries, as well as international agencies, to establish mechanisms for international co-operation to protect consumers.  For example:

• On 11 June 2003, the Council of the Organisation for Economic Cooperation and Development (“OECD”) adopted Guidelines for Protecting Consumers from Fraudulent and Deceptive Commercial Practices Across Borders that had been developed by the OECD’s Committee on Consumer Policy.
• The ACCC, the FTC and agencies from thirty other countries are parties to the Memorandum on the Establishment and Operation of the International Consumer Protection and Enforcement Network (“ICPEN Memorandum”).  The main “common objective” of ICPEN is “to encourage practical action to prevent cross-border marketing malpractice” and its long term goals include taking action to combat cross-border breaches of consumer protection laws and to facilitate effective cross-border remedies.
• In July 2000, the ACCC and the FTC entered into an Agreement on the Mutual Enforcement Assistance in Consumer Protection (“Co-operation Agreement”).  The Co-operation Agreement recognises “the challenge posed by cross-border Internet fraud and deception” and records that

            “the Parties intend to assist one another and to cooperate on a reciprocal basis in providing or obtaining Evidence that could assist in determining whether a person has violated or is about to violate their respective Consumer Protection Laws, or in facilitating the administration or enforcement of such Consumer Protection Laws.”

            The assistance contemplated by the Co-operative Agreement includes, in appropriate cases, “co-ordinating enforcement against transborder violations of the Parties’ respective Consumer Protection Laws”.

53                  This evidence suggests that the Court should take into account, in determining what relief should be granted in respect of cross-border misleading conduct, the growing scale of the problem, particularly over the Internet, and the desirability of fashioning remedies that can reasonably be expected to discourage, if not entirely prevent such activities.

54                  Thirdly, evidence was given by Mr Sitesh Bhojani, a member of the ACCC and Chair of its Enforcement Committee, that the ACCC would bring any orders made in these proceedings to the attention of the FTC and request its assistance in relation thereto pursuant to the Co-operation Agreement and in accordance with the ICPEN Memorandum.  As I pointed out in argument, Mr Bhojani’s affidavit might have been more specific in detailing the assistance that would be sought from the FTC and the terms on which it is likely to be provided.  Nonetheless, I am prepared to infer that the FTC is more likely to institute action against the respondent to curtail misleading or deceptive conduct in the United States which affects Australian consumers (should such conduct be repeated) if an Australian court grants injunctive relief than if it does not.

55                  The extra-territorial enforcement of federal orders is ordinarily a matter for the domestic law of the country in which the orders are sought to be enforced.  At common law, four conditions must be satisfied if a foreign judgment is to be recognised by an Australian court (P E Nygh and M Davies, Conflict of Laws in Australia (7^th ed, 2002), at 169):

“(a) the foreign court must have exercised a jurisdiction which Australian courts will recognise; (b) the foreign judgment must be final and conclusive; (c) there must be an identity of parties; and (d) if based on a judgment in personam, the judgment must be for a fixed debt.”

(As to defences to enforcement, see P E Nygh and M Davies, at 188ff.)

56                  The Foreign Judgments Act 1991 (Cth) now provides a mechanism for the registration and enforcement of overseas judgments, on the basis of “substantial reciprocity of treatment” (s 5(1)).  The legislation follows the patterns of the Foreign Judgments (Reciprocal Enforcement) Act 1933 (UK) and similar State and Territory legislation.  To date the legislative scheme applies only to an “enforceable money judgment”, although there is provision for the scheme to be extended by regulation to non-money judgments of a reciprocating country: s 5(6).

57                  If the Australian rules governing the enforcement of foreign judgments are similar to those in force in other countries, there will rarely be a direct mechanism available for the extra-territorial enforcement of an injunction granted by an Australian court.  This might suggest that an order requiring or prohibiting conduct in a foreign country can be seen as an act of futility.  But the emergence of international co-operation to curb fraudulent or misleading trans-national conduct gives rise to alternative possibilities.  In assessing whether the grant of injunction is futile, it seems to me to be appropriate to take into account not only formal enforcement mechanisms, but the likely response of administrative agencies in the foreign country.  If, for example, an agency such as the FTC in the United States is likely to initiate measures designed to curb misleading and deceptive conduct affecting Australian consumers because that conduct is the subject of a prohibitory injunction issued by an Australian court, I would not characterise the grant of such relief as an act of futility, notwithstanding that the injunction itself cannot be directly enforced through the courts of the United States.

58                  In the present case, an injunction granted by this Court restraining the respondent from resuming his misleading and deceptive conduct is likely to improve materially the chances of the ACCC obtaining the support of the FTC to take measures under the law of the United States to curb that conduct (should it recur).  As I have said, I do not think it likely that the respondent will resume his activities to the detriment of Australian consumers, but there is a risk that he may do so.  If he does, Australian consumers are likely to be adversely affected.  In these circumstances, in my opinion, the making of an appropriately framed injunction against the respondent cannot be characterised as futile.

59                  For the reasons I have given, an injunction should be granted against the respondent, but in more limited terms than the relief sought by the ACCC.  The application seeks orders, in effect, requiring the respondent to prevent access to the Sites by persons or computers within Australia, even if that requires removal of the Sites.  But there is no evidence that the material on the Sites, other than that material relating to the Sydney Opera House, was or is misleading or deceptive.  Nor does the evidence allow me to infer that the FTC would be prepared to take action to close down the Sites, as distinct from responding favourably to a request to take measures under United States law to prevent the respondent publishing misleading or deceptive material relating to the Sydney Opera House.

60                  Accordingly, I think that any injunction should be limited to restraining the respondent (by himself, his servants or agents) from publishing on the Sites, or any similar Internet Site accessible in Australia, information or material relating to the Sydney Opera House, or events at the Sydney Opera House, that is misleading or deceptive or is likely to mislead or deceive consumers in Australia.  I shall direct the ACCC to bring in short minutes of order to that effect.

61                  I add this comment.  While domestic courts can, to a limited extent, adapt their procedures and remedies to meet the challenges posed by cross-border transactions in the Internet age, an effective response requires international co-operation of a high order.  As the evidence in this case shows, some steps have been taken to secure that co-operation: see, too, D Harland “The Consumer in the Globalised Information Society – The Impact of International Organisations” (1999) 7 Comp & Cons LJ 1; D Ali, “Cross Border B2C Disputes” [2002] NZLJ 31 (“B2C” refers to “transnational business to consumer”).  Clearly enough, much more needs to be done if Australian consumers are to be adequately protected against fraud or misleading conduct perpetrated over the Internet.

CONCLUSION

62                  The ACCC has made out its claim to declaratory and injunctive relief by reason of the respondent’s contraventions of the TP Act, although the form of the injunction I propose to grant is narrower than that sought by the ACCC.  I shall direct the ACCC to bring in short minutes of order consistent with these reasons.

Associate:

Dated:              27 August 2003