FEDERAL COURT OF AUSTRALIA

Bob Jane Corporation Pty Ltd v ACN 149 801 141 Pty Ltd [2016] FCA 1129

ORDERS

THE COURT ORDERS THAT:

1.    The applicant’s interlocutory application dated 23 October 2015 be dismissed.

2.    The applicant pay the fourth respondent’s costs of and incidental to the interlocutory application, including any reserved costs, to be taxed if not agreed.

3.    If either party wishes to seek a variation of the costs order, the party may give written notice to the Court and the other party within two business days.

Note:    Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

REASONS FOR JUDGMENT

MOSHINSKY J:

Introduction

1    By interlocutory application dated 23 October 2015, the applicant (Bob Jane Corporation) seeks a declaration that the fourth respondent, Mr Robert (Bob) Jane (Mr Jane) is guilty of contempt of court for failure to comply with order 3 of orders made by the Court on 26 November 2013 (the November 2013 Orders) following the trial of this proceeding.

2    Order 3 was relevantly in the following terms:

The respondents (and each of them) be restrained, whether by themselves or by their servants or agents or howsoever otherwise, from trading as a business under any name that is (or includes) JANE or … under or by reference to any … trade mark that is substantially identical with or deceptively similar to the applicant’s trade marks …

The expression “the applicant’s trade marks” was relevantly defined as meaning trade mark No. 929097 for the mark BOB JANE (the BOB JANE mark).

3    Bob Jane Corporation’s allegation that Mr Jane is guilty of contempt of court by failing to comply with order 3 of the November 2013 Orders is set out in its amended statement of charge (the Statement of Charge). In summary, Bob Jane Corporation alleges that, knowing of the November 2013 Orders, and in breach of those orders, Mr Jane has:

(a)    commenced trading as a business under the name BOB JANE INTEGRITY INSURANCE, which name includes JANE;

(b)    commenced trading as a business under or by reference to a trade mark (namely, BOB JANE INTEGRITY INSURANCE) that is substantially identical with or deceptively similar to the BOB JANE mark; or

(c)    commenced trading as a business under or by reference to a trade mark (namely a logo that includes the words BOB JANE, INTEGRITY INSURANCE and CHOICE OF REPAIRER (the BJII Logo)) that is substantially identical with or deceptively similar to the BOB JANE mark.

4    In the particulars set out in the Statement of Charge, Bob Jane Corporation relies on:

(a)    Mr Jane giving an interview to a Fairfax journalist which led to an article being published in the Australian Financial Review on 26 September 2015 headed “Bob Jane in bid to create new motor vehicle insurer” (the Fairfax Article) and the statements made in that article;

(b)    Mr Jane giving an interview to a journalist which led to an article being published on the Australian Sponsorship News website on 29 September 2015 (the ASN Article) and the statements made in that article;

(c)    Mr Jane participating in a segment on Channel Nine’s A Current Affair program (the ACA Segment) on 9 October 2015 and the statements made during the segment;

(d)    the reservation with the Australian Securities and Investments Commission (ASIC) of the names “Bob Jane Integrity Insurance Limited” and “Bob Jane Integrity Limited” as potential company names; and

(e)    the incorporation of a company called “Bob Jane Integrity Insurance Pty Ltd”.

5    It is well established that elements of a contempt charge, whether it be civil or criminal, must be proved beyond reasonable doubt.

6    For the reasons that follow, Bob Jane Corporation has not established beyond reasonable doubt that Mr Jane is guilty of contempt of court by failing to comply with order 3 of the November 2013 Orders. If Mr Jane was trading as a business, it is clear that this was under a name that includes JANE, namely BOB JANE INTEGRITY INSURANCE. However, Bob Jane Corporation has not established that Mr Jane was “trading as a business”. My reasons, in summary, are as follows:

(a)    It is worth noting at the outset that many of the usual indicia of a business, or trading as a business, were not present. The evidence adduced by Bob Jane Corporation relates to an alleged business of providing motor vehicle insurance. But no motor vehicle insurance policy was sold or even offered for sale. Nor did the infrastructure that one would expect to see in such a business yet exist: there was no office, no telephone number, and no website. No employees had been engaged.

(b)    In construing the expression “trading as a business” it is appropriate to start with the ordinary meaning of the words. The ordinary meaning of the word “trading” in this context is the action or activity of buying and selling goods or services. It may also include offering to do so. The word “business” when used in a context such as this generally means a commercial enterprise in the nature of a going concern. As the terms of order 3 make clear, the injunction is directed, not merely at trading under a name that is or includes JANE, but trading as a business under a name that is or includes JANE. The expression “trading as a business” is a composite expression in which the words “trading” and “business” are mutually reinforcing and suggest transactional activity as a going concern.

(c)    Assuming that a business was in existence at the relevant time, it is not established to the requisite standard that there was trading as a business. It is established that a number of promotional activities took place. It is also established that some preparatory steps took place. But these did not constitute trading as a business as that expression is used in order 3. They did not involve any transactional activity as a going concern. No goods or services were bought or sold, or offered to be bought or sold.

(d)    Further and in any event, for it to be established that Mr Jane breached order 3, it would need to be shown that Mr Jane was trading as a business. However, it is not established that Mr Jane had any ownership or financial interest in the business or proposed business that is the subject of the Fairfax Article, the ASN Article and the ACA Segment. Thus, even if there was trading as a business, it is not established that Mr Jane was trading as a business.

7    It follows that Bob Jane Corporation has not established that Mr Jane breached order 3 of the November 2013 Orders. Its contempt application is to be dismissed.

Applicable principles

8    I set out below a brief statement of relevant principles, drawn from my judgment in Australian Competition and Consumer Commission v ACN 117 372 915 Pty Limited (in liq) (formerly Advanced Medical Institute Pty Limited) [2015] FCA 1441.

9    This Court’s power to punish for contempt of its power and authority is contained in s 31(1) of the Federal Court of Australia Act 1976 (Cth). The power is the same as that of the High Court to punish for contempt of that Court. The High Court’s power in this regard is the same as that of the Supreme Court of Judicature in England at the commencement of the Judiciary Act 1903 (Cth): s 24 of that Act.

10    An application by a party who alleges a contempt of court is governed by Div 42.2 of the Federal Court Rules 2011. If a party alleges that a contempt has been committed by a person in connection with a proceeding in the Court, an application for punishment for the alleged contempt is to be made by the party by interlocutory application in the proceeding: r 42.11(1). An application that a contempt has been committed must be accompanied by a statement of charge, specifying the contempt with sufficient particularity to allow the person charged to answer the charge, and the affidavits on which the person making the charge intends to rely to prove the charge: r 42.12.

11    A distinction is drawn between civil and criminal contempt. An alleged breach of a court order generally falls to be considered under the principles applicable to civil contempt. Deliberate conduct which is in breach of a court order will constitute wilful disobedience of the order, and therefore a civil contempt, unless the conduct is casual, accidental or unintentional: see Australasian Meat Industry Employees’ Union v Mudginberri Station Pty Ltd (1986) 161 CLR 98 at 113 per Gibbs CJ, Mason, Wilson and Deane JJ; Hurd v Zomojo Pty Ltd [2015] FCAFC 148 at [90]-[91] and [97]-[101] per Besanko and Gilmour J, at [164] per Beach J. Whether the charge be for civil or criminal contempt, it must be proved beyond reasonable doubt: Witham v Holloway (1995) 183 CLR 525 at 534 per Brennan, Deane, Toohey and Gaudron JJ; Construction, Forestry, Mining and Energy Union v Boral Resources (Vic) Pty Ltd (2015) 320 ALR 448 at [42] per French CJ, Kiefel, Bell, Gageler and Keane JJ, at [59] per Nettle J.

12    In Advan Investments Pty Ltd v Dean Gleeson Motor Sales Pty Ltd [2003] VSC 201, Gillard J set out the elements necessary to establish a civil contempt involving a breach of an order of the court. His Honour said (at [31]):

In order to prove a civil contempt of court involving a breach of an order of the court, the plaintiff has to prove the following:

(i)    that an order was made by the court;

(ii)    that the terms of the order are clear, unambiguous and capable of compliance;

(iii)    that the order was served on the alleged contemnor or excused in the circumstances, or service dispensed with pursuant to the Rules of Court;

(iv)    that the alleged contemnor has knowledge of the terms of the order;

(v)    that the alleged contemnor has breached the terms of the order.

13    An issue that has arisen in relation to the construction of court orders is whether, and if so the circumstances in which, regard may be had to the reasons of the court for making the orders. In Yates Property Corporation Pty Ltd v Boland (1998) 89 FCR 78, a Full Court of this Court, albeit not in a contempt context, held that in interpreting an order of a court framed in unambiguous language, regard should still be had to the reasons given by the court for making the order, because they form part of the context in which the order was made; and that this approach applies a fortiori where there is any suggestion that the order may be expressed in unclear terms. See also Australian Energy Ltd v Lennard Oil NL (No 2) [1988] 2 Qd R 230; Tarrant, “Construing undertakings and court orders” (2008) 82 ALJ 82. In the context of contempt proceedings, some care must be taken in going beyond the terms of the order itself because it is important that the party bound should know what it is required by the court order to do or refrain from doing. Nevertheless, it seems to me that even in the context of contempt proceedings, in an appropriate case, regard may be had, in construing the order, to the reasons given by the court for making the order. See Athens v Randwick City Council (2005) 64 NSWLR 58 at [27]-[36] per Hodgson JA, at [129]-[140] per Santow JA, at [141] per Tobias JA.

The November 2013 Reasons and Orders

14    The November 2013 Orders were made following the trial of the proceeding. The reasons for judgment following the trial are: Bob Jane Corporation Pty Ltd v ACN 149 801 141 Pty Ltd (2013) 97 ACSR 127 (November 2013 Reasons). I will outline briefly the nature of the proceeding and refer to the reasons for judgment, before setting out the November 2013 Orders.

15    In the proceeding, Bob Jane Corporation claimed injunctive, declaratory and other relief against the respondents. The basis of Bob Jane Corporation’s claims were alleged infringements of its trade marks, passing off, alleged misleading or deceptive conduct in contravention of s 18(1) of the Australian Consumer Law, being Sch 2 to the Competition and Consumer Act 2010 (Cth) (Australian Consumer Law) and alleged misrepresentations in relation to the supply or possible supply of goods and services in contravention of s 29(1)(g) of the Australian Consumer Law. The corporate respondents were alleged to be directly liable in relation to the causes of action pleaded against them and the respondents who were natural persons were alleged to be liable as joint tortfeasors and as persons involved in the contraventions under the Australian Consumer Law.

16    The proceeding had a long history, as set out in the November 2013 Reasons at [14]-[32]. None of the respondents appeared at the trial of the proceeding on 2 September 2013 or on the following day when the trial continued. The trial proceeded in their absence: November 2013 Reasons, [33]. Although the proceeding was not contested, it was necessary for the trial judge to make findings of fact on the balance of probabilities and to determine if it was appropriate to make the orders sought having regard to the relevant legal principles: November 2013 Reasons, [36].

17    After setting out his findings of fact, the trial judge dealt with the alleged infringement of Bob Jane Corporation’s trade marks at [103]-[128], concluding that the various infringements of Bob Jane Corporation’s trade marks had been established and that they were likely to continue unless restrained. The trial judge considered Bob Jane Corporation’s further claims of passing off and contraventions of the Australian Consumer Law at [129]-[134], concluding that these claims were established. The trial judge considered the liability of Mr Jane at [140]-[147], concluding that he was liable as a joint tortfeasor. The trial judge made orders substantially in the form sought by Bob Jane Corporation: see the November 2013 Reasons, [100], [135], [147].

18    I now set out the November 2013 Orders. They are set out in full, so that order 3 can be seen in context. The orders were:

THE COURT ORDERS THAT:

1.    The applicant be granted leave to change the name of the first respondent to ACN 149 801 141 Pty Ltd.

2.    The applicant be granted leave to change the name of the second respondent to Bob Jane Southern Motors Pty Ltd.

3.    The applicant be granted leave to change the name of the third respondent to Calder Park Promotions Pty Ltd (in liq).

4.    The applicant be granted leave to proceed against the third respondent pursuant to the provisions of the Corporations Act 2001 (Cth).

FINAL RELIEF

THE COURT DECLARES THAT:

1.    By the respondents making representations in:

(i)     an email sent by the fourth respondent to the applicant's suppliers on 5 May 2011;

(ii)    advertisements placed on the Google search facility between 8 June 2011 and 25 October 2011,

that the products available from the respondents are “30% to 50% cheaper” than those of the respondents’ competitors, when such representation does not take into account the cost of:

(a)    freight;

(b)    delivery to store;

(c)    removal of the old tyre;

(d)    fitting of the new tyre, including a new valve;

(e)    wheel balancing;

(f)    disposal of the old tyre,

the respondents have engaged in conduct that is misleading or deceptive or likely to mislead or deceive in contravention of s 18 of the Australian Consumer Law.

AND THE COURT ORDERS THAT:

1.    The respondents (and each of them) be restrained from, whether by themselves or by their servants or agents or howsoever otherwise, selling, supplying, offering for sale or supply, or advertising or promoting for sale or supply, in Australia:

(a)    tyres for motor vehicles;

(b)    wheels for motor vehicles;

(c)    batteries for motor vehicles;

(d)    accessories for auto motive vehicle parts (including tyres and wheels);

(e)    services relating to the installation and fitting of vehicle wheels, tyres, batteries and other vehicle parts and fittings,

(the “respondents’ goods and services”),

bearing or under or by reference to the following marks (or any of them):

(f)    the mark “BOB JANE”;

(g)    the mark “BOB JANE GLOBAL”;

(h)    the BOB JANE device depicted in Section 1 of Annexure A hereto or any other mark substantially identical with or deceptively similar to the BOB JANE device;

(i)    the device depicted in Section 3 of Annexure A hereto,

(the “respondents’ marks”)

or bearing or under or by reference to any other trade mark that is substantially identical with or deceptively similar to either of:

(j)    trade mark No. 929097 for the mark “BOB JANE”,

(k)    trade mark No. 919561 for the mark “BOB JANE T-MARTS” and device,

(the “applicant’s trade marks”).

2.    The respondents (and each of them) be restrained from, whether by themselves or by their servants or agents or howsoever otherwise, selling, supplying or offering for sale or supply or advertising or promoting for sale or supply, in Australia, the respondents’ goods and services, bearing or under or by reference to the following marks (or any of them):

(a)    the mark “JANE TYRES”;

(b)    a mark that includes the term “JANE TYRES”,

(the “respondents’ JANE marks”),

or bearing or under or by reference to any other trade mark that is substantially identical with or deceptively similar to either of:

(c)    trade mark No. 1102780 for the mark “JANE FLEET” and device;

(d)    trade mark No. 1124705 for the mark “JANE FLEET” and device,

(the “applicant’s JANE FLEET trade marks”).

3.    The respondents (and each of them) be restrained, whether by themselves or by their servants or agents or howsoever otherwise, from trading as a business under any name that is (or includes) JANE or a name that is substantially identical with or deceptively similar to the respondents’ marks or the respondents’ JANE marks, or under or by reference to any other trade mark that is substantially identical with or deceptively similar to the applicant’s trade marks or the applicant’s JANE FLEET trade marks.

4.    The second respondent and sixth respondent forthwith change its company name to a name that does not include JANE or any of the applicant’s trade marks or the applicant’s JANE FLEET trade marks and which is not substantially identical with or deceptively similar to any of applicant’s trade marks or the applicant’s JANE FLEET trade marks.

5.    The first, fourth and seventh respondents forthwith change the signage of the premises located at 509 King Street, West Melbourne, Victoria so as to cease using as a trade mark any of the applicant’s trade marks or the applicant’s JANE FLEET trade marks, or any mark that is substantially identical with or deceptively similar to any of the applicant’s trade marks or the applicant’s JANE FLEET trade marks.

6.    The respondents (and each of them) be restrained from, whether by themselves or by their servants or agents or howsoever otherwise, representing that the products available from the respondents are “30% to 50% cheaper” than those of the respondents’ competitors, when such representation does not take into account the cost of:

(a)    freight;

(b)    delivery to store;

(c)    removal of the old tyre;

(d)    fitting of the new tyre, including a new valve;

(e)    wheel balancing;

(f)    disposal of the old tyre.

7.    The respondents forthwith deliver up on oath to the applicant all of the respondents’ goods and advertising and promotional material bearing the respondents’ marks or the respondents’ JANE marks or bearing or under or by reference to any other trade mark that is substantially identical with or deceptively similar to applicant’s trade marks or the applicant’s JANE FLEET trade marks.

8.    The respondents forthwith transfer to the applicant registration of the:

(a)    bobjaneglobal.com domain name; and

(b)    janetyres.com domain name,

and any other domain name that is substantially identical with or deceptively similar to the applicant’s trade marks or the applicant’s JANE FLEET trade marks.

9.    The cross-claim commenced by Notice of Cross-Claim dated 2 August 2011 be dismissed.

10.    The respondents pay the applicant’s costs of the proceeding (including reserved costs) on an indemnity basis from 2 February 2012, and otherwise on a party/party basis.

19    It will be observed that while the injunctions in orders 1 and 2 relate to certain categories of goods or services, the injunction in order 3, in relation to trading as a business, is not limited to particular categories of goods or services.

The Statement of Charge

20    By interlocutory application dated 23 October 2015, Bob Jane Corporation seeks a declaration that Mr Jane is guilty of contempt of court for failure to comply with order 3 of the November 2013 Orders. The interlocutory application seeks orders that Mr Jane be punished for contempt of court by a fine in an amount to be fixed by the Court, and imprisonment if Mr Jane fails to pay any fine imposed by the Court. The interlocutory application was accompanied by a statement of charge. Subsequently, Bob Jane Corporation was granted leave to amend, and amended, the statement of charge. As noted above, the amended statement of charge is referred to in these reasons as the Statement of Charge.

21    The substance of the charge is contained in paragraphs 2.1 and 2.2 of the Statement of Charge which are in the following terms:

2.1    Knowing of the November 2013 Orders, and in breach of those orders, the fourth respondent has, whether by himself or by his servants or agents or howsoever otherwise:

(a)    commenced trading as a business under a name, specifically BOB JANE INTEGRITY INSURANCE, that includes JANE;

(b)    further and alternatively, commenced trading as a business under or by reference to a trade mark, specifically BOB JANE INTEGRITY INSURANCE, that is substantially identical with or deceptively similar to the applicant’s trade mark No. 929097 for the mark “BOB JANE”.

Particulars

A.    The existence and nature of the business is to be inferred from the following matters:

i.    The identification in each of the ACA Segment, Fairfax Article and ASN Article (as each is defined below) of an insurance business, called Bob Jane Integrity Insurance, being launched by Mr Jane in association with Mr Manny Stamatopoulos and Mr Tony Murdaca.

ii.    The presence of a logo that includes the words “BOB JANE”, “INTEGRITY INSURANCE” and “CHOICE OF REPAIRER” (“New Business Logo”) on signage featured in the ACA Segment.

iii.    Mr Jane standing in front of signage featuring the New Business Logo at the start of the ACA Segment and stating, “Ladies and gentlemen of Australia, Bob is back!”

iv.    The other statements made by Mr Jane during the ACA Segment as set out in paragraph C below.

v.    The statement by Mr Stamatopoulos during the ACA Segment that “Bob Jane’s an Australian legend, he’s a trusted name” (after a statement by the presenter that “Manny Stamatopoulos, one of Bob’s partners, says the founder of Bob Jane T-marts is the perfect driver for the new venture”).

vi.    Mr Jane and Mr Murdaca giving a joint interview to a Fairfax journalist on or about 29 September 2015 for the purposes of promoting the business (as described in paragraph B below).

vii.    The statement in the Fairfax Article that Mr Jane and Mr Murdaca are “teaming up to create a listed insurance company specialising initially in motor vehicle cover”.

viii.    The statement in the Fairfax Article that Mr Jane and Mr Murdaca are “spruiking their new venture to smash repairers, and are conducting their third meeting with prospective shareholders this Thursday”.

ix.    The description in the Fairfax Article of the business as a “joint venture”.

x.    The statement in the Fairfax Article that:

“Mr Murdaca and Mr Jane will be on a board of the listed company. They are combing the market for a chairman to lead Bob Jane Integrity Insurance. The pair have engaged Minter Ellison as the company’s legal representative, and ShineWing Australia (ShineWing) as its adviser.”

xi.    Mr Jane and Mr Murdaca giving a joint interview to a journalist from Australian Sponsorship News on or about 29 September 2015 for the purposes of promoting the business (as described in paragraph B below).

xii.    The statement in the ASN Article that “Bob Jane Integrity Insurance is aiming to list on the Australian Securities Exchange in December”.

xiii.    By 19 October 2015, the reservation with ASIC of the names “Bob Jane Integrity Insurance Limited” and “Bob Jane Integrity Limited” as potential company names.

xiv.    The incorporation on 17 December 2015 of a company called “Bob Jane Integrity Insurance Pty Ltd”, the registered office of which is the business address of ShineWing.

B.    On or before 29 September 2015, the fourth respondent (with Mr Murdaca) spoke with journalists at Fairfax Media (publisher of the Australian Financial Review, The Age and the Sydney Morning Herald) and Australian Sponsorship News in order to promote the BOB JANE INTEGRITY INSURANCE business and with a view to having articles published in those publications concerning the BOB JANE INTEGRITY INSURANCE business.

Following the giving of those interviews, around 29 September 2015 an article titled “BOB JANE INSURANCE WANTS YOUTH PLATFORMS” was published in Australian Sponsorship News (ASN Article), and an article titled “Bob Jane in bid to create new motor vehicle insurer” was published in Fairfax publications (Fairfax Article). A copy of each of those articles is annexed to the affidavit of Richard Hoad dated 23 October 2015 and filed in these proceedings.

C.    On or before 9 October 2015, the fourth respondent appeared in a segment to be broadcast on the Nine Network’s A Current Affair program (“ACA Segment”) to promote the BOB JANE INTEGRITY INSURANCE business. The ACA Segment was subsequently made available for viewing online at the following internet address:

http://aca.ninemsn.com.au/article/9039360/bob-jane-insurance.

During the ACA Segment, Mr Jane made statements, including:

i.    “Ladies and gentlemen of Australia, Bob is back” (while standing in front of a large sign depicting the New Business Logo, as defined above).

ii.    “Under 25, over 25, health, travel, life insurance” (after a statement by the presenter that “Pretty soon the Australian racing legend will be putting the bite on us – for our insurance business”).

iii.    “I have 3 million customers in the T-mart system: they love me and trust me” (in response to the question, “Are the people of Australia going to cop you?”).

iv.    “My name, the Bob Jane name is very strong with consumers because they trust the name, and that’s something you can’t buy today. Trust” (immediately following a statement by the interviewer that the Fourth Respondent has “retained, he says, his most valuable asset”).

v.    “We are going to shake up the insurance industry, big time.”

vi.    “I’m Bob Jane and I’m back.”

D.    By emails and letters dated 13 October 2015, the applicant’s solicitors separately wrote to the fourth respondent and two solicitors who have previously acted for the fourth respondent demanding (inter alia) that the fourth respondent undertake not to be involved in any way with any business trading under the name BOB JANE INTEGRITY INSURANCE. Notwithstanding the November Orders and the applicant’s demands, the fourth respondent has not provided the undertakings sought by the applicant.

2.2    Further and alternatively, knowing of the November 2013 Orders, and in breach of those orders, the fourth respondent has, whether by himself or by his servants or agents or howsoever otherwise, commenced trading as a business under or by reference to a trade mark, specifically the New Business Logo, that is substantially identical with or deceptively similar to the applicant’s trade mark No. 929097 for the mark “BOB JANE”.

Particulars

The applicant refers to the particulars subjoined to paragraph 2.1 above at paragraphs A, C and D therein.

The hearing of the contempt application

22    The hearing proceeded on the basis that the nature and quantum of any penalty to be imposed would be deferred to be dealt with later, if necessary.

23    Bob Jane Corporation called evidence from the following witnesses:

(a)    Mr Simon Canning, a journalist and the author of the ASN Article. He prepared an affidavit and was cross-examined by video-link.

(b)    Ms Ruth Liew, a journalist and the author of the Fairfax Article. She was subpoenaed to give evidence. Her evidence in chief was given orally and she was cross-examined.

(c)    Mr Richard Hoad, a partner of the firm of solicitors acting for Bob Jane Corporation. He prepared two affidavits and was cross-examined.

24    Each of the above three witnesses gave credible evidence which was consistent with the objective evidence such as contemporaneous documents. I accept their evidence.

25    In addition, certain documents produced on subpoena by ShineWing Australia (ShineWing), a firm of accountants, were tendered by Bob Jane Corporation.

26    Mr Jane called evidence from the following witnesses:

(a)    Mr Peter Martin, who engaged ShineWing to incorporate a company under the name “Bob Jane Integrity Insurance Pty Ltd”. He prepared an affidavit and was cross-examined.

(b)    Mr Menelaos (Manny) Stamatopoulos, who appeared with Mr Jane on the ACA Segment. He prepared an affidavit and was cross-examined.

(c)    Mr Antonio (Tony) Murdaca, who participated with Mr Jane in an interview for the Fairfax Article, and was also interviewed for the ASN Article. He prepared an affidavit and was cross-examined.

27    Mr Stamatopoulos presented as a reliable witness. He made sensible concessions and his evidence did not appear to be designed to help Mr Jane’s case. I generally accept his evidence. I deal with the evidence of Mr Martin and Mr Murdaca, where relevant, below.

28    Bob Jane Corporation did not rely on Jones v Dunkel (1959) 101 CLR 298 in relation to Mr Jane (or any other person) not giving evidence: cf Jones v Australian Competition and Consumer Commission (2010) 189 FCR 390 at [34]-[35] per Keane CJ, Dowsett and Reeves JJ.

The evidence

29    In this section I set out a summary of the evidence arranged in chronological order of the events. In the following section, I set out my factual findings.

30    On 26 September 2015, the Fairfax Article, written by Ms Liew, was published in the Australian Financial Review. Given the significance of the article to the issues in dispute, I set out the article in full:

Bob Jane in bid to create new motor vehicle insurer

Prominent smash repair businessman Tony Murdaca and former tyre king Bob Jane are teaming up to create a listed insurance company specialising initially in motor vehicle cover as they seek to boost competition in the multi-billion dollar repair industry.

Mr Murdaca, who has been in the repair sector for more than 40 years and Mr Jane, the founder of tyre retailer Bob Jane T-Marts, have bought a shell company on the Australian Securities Exchange and are looking to list Bob Jane Integrity Insurance during the first two weeks of December.

“We’re trying to change the current situation with insurance companies and panel beaters,” Mr Murdaca, who runs the International Vehicle Integrity Centre in Victoria, told Fairfax Media. He argues that large insurers have been squeezing out smaller operators in the repair space, and businesses such as panel beaters were increasingly skirting around proper repairs to save costs.

“We’re inviting the smash repair industry to participate in the initial float, we’d like them to be part of the company. It’s a new insurance brand … built around the repair industry to better educate [smash repairers] how to repair cars with guarantees.”

Mr Murdaca and Mr Jane are in talks with a Chinese insurer to take on the underwriting risk of Bob Jane Integrity Insurance, which will be rolled out throughout Australia next year. The company will focus initially on motor vehicle cover including commercial policies, before branching out into other sectors such as property.

The pair have been spruiking their new venture to smash repairers, and are conducting their third meeting with prospective shareholders this Thursday. The company is looking to unveil its prospectus in about six weeks.

Mr Jane, a former race car driver and four-time winner of the Armstrong 500 race, argued that Australians’ safety was increasingly compromised as corners were cut to meet deadlines and cost pressures mount in the repair industry. The venture was aimed at addressing some of these issues, he said.

“We’ve been working on it for the past four years,” Mr Jane said. “We’ll start slow, see how we go with the repairers, but this brand will be different.”

“We want a different underwriter that’s not in the current [mix of insurers in the Australian market], otherwise we won’t be any different to anyone else.”

Mr Jane and Mr Murdaca’s joint venture come[s] at a time of consolidation and cost-saving measures in Australia’s smash repair and panel-beating industries. Large insurers such as Suncorp Group have been increasingly taking their smash repairs in house in an effort to dial down costs.

The $15.7 billion Queensland headquartered insurer recently flagged it was consolidating its smash repair centres. Suncorp, the owner of brands such as AAMI and GIO, had made it clear to the market and shareholders that it was streamlining the way it ran its smash repair operations to seek cost savings and improve profit across the group.

Mr Murdaca is no stranger to being in the legal and media limelight. He has been outspoken against the dominance of large insurers in the smash repairs industry, and has been in lawsuits against insurers.

Meanwhile Mr Jane, who is in his 80s, has also been in the legal limelight in recent years. Last year, the former tyre king was fined for breaching a court order relating to using his name to promise (sic) his businesses.

In 2013, he lost a $3 million lawsuit against his son amid a family feud.

Mr Murdaca and Mr Jane will be on the board of the listed company. They are combing the market for a chairman to lead Bob Jane Integrity Insurance. The pair have engaged Minter Ellison as the company’s legal representative, and ShineWing Australia as its adviser.

Mr Murdaca said the company would list at a minimum of 20¢ a share.

“Eighty to 100 repairers will be attending the meeting [on Thursday],” Mr Murdaca said. “Consumers will have a choice with their repairer, we will not steer the jobs into any particular shops. We want to be different.”

(Emphasis added.)

31    In relation to this article, Ms Liew gave evidence in chief that on 25 September 2015 she sent a text message to Mr Murdaca seeking to set up an interview with him and Mr Jane; a telephone interview with Mr Murdaca and Mr Jane took place the day before the article was published; both Mr Murdaca and Mr Jane were on the phone at the same time and both participated in the conversation; Ms Liew typed notes of the conversation while it was taking place; she alone wrote the Fairfax Article; the article was based on the conversation she had with Mr Murdaca and Mr Jane. In cross-examination, Ms Liew gave evidence that during the interview she spoke mostly with Mr Murdaca; she accepted that “basically the article was about what Mr Murdaca told [her]”; she accepted that Mr Jane did not speak for a very long period of time during the interview; she accepted that she was not too sure what Mr Jane’s role would be in relation to any insurance company. Ms Liew’s notes from the telephone interview were in evidence. I note that they do not record Mr Murdaca or Mr Jane referring to Mr Jane’s role as that of an “ambassador” for the insurance business (a matter referred to in other evidence, discussed below).

32    In relation to the Fairfax Article, Mr Murdaca gave evidence in his affidavit that Ms Liew telephoned him to conduct the interview; he put the phone on speaker phone; she spoke to him for the entire conversation save for approximately one minute when she spoke to Mr Jane; Mr Jane was present during the conversation “but he was napping now and then”. Mr Murdaca also stated in his affidavit that during the conversation he spoke about the need for a new brand, as all insurers operate in the same way, and Mr Jane conveyed that he liked the integrity part of the business at the International Vehicle Integrity Centre (IVIC) (checking cars for safety and quality) and for that reason had offered to assist as an ambassador or patron “if and when it gets off the ground”. Mr Murdaca accepted in cross-examination that he agreed to participate in the interview because he thought it would help promote the insurance business. Mr Murdaca said during cross-examination that he told Ms Liew that Mr Jane wanted to be an ambassador of the insurance brand; the statement in the article that he and Mr Jane had bought a shell company on the Australian Stock Exchange was not correct – they were merely aware that a company was available; when he used the word “we” in statements he made which were quoted in the article, he was not referring to himself and Mr Jane but rather himself and others; the statement in the article that he and Mr Jane were in talks with a Chinese insurer was not correct – he (Mr Murdaca) had had talks with an agent or broker of a Chinese insurer who lives in Melbourne. Mr Murdaca accepted that he did not complain or seek a correction to the Fairfax Article. (As noted below, he did seek a correction to a later article.)

33    In relation to the Fairfax Article, Mr Stamatopoulos gave evidence during cross-examination that he read the article and he did not think that anything in the article was incorrect. In relation to the acquisition of a shell company on the Australian Stock Exchange, he said, “We had the company”. He said it was correct that Minter Ellison had been engaged, and that “I actually was the one that retained them”. He confirmed that ShineWing had been engaged as commercial advisers. As to who would be paying Minter Ellison and ShineWing, he said, “We would, as a … group, individually. Tony [Murdaca], myself, other people that had an interest in us moving forward with it”. In re-examination, Mr Stamatopoulos was asked what Minter Ellison was engaged to do. He said they were “checking on everything and advising us step-by-step what needed to be done” in relation to registering the insurance company and the ASX guidelines for the public company.

34    On 29 September 2015, the ASN Article, written by Mr Canning, was published on the Australian Sponsorship News website. The article was as follows:

BOB JANE INSURANCE WANTS YOUTH PLATFORMS

29 September 2015 3:52pm

Plans by former touring car champion Bob Jane and Victorian smash repair businessman Tony Murdaca to launch a rebel auto insurance brand are expected to see the pair focus on sponsorship of sports and youth events to promote the concept.

Bob Jane Integrity Insurance is aiming to list on the Australian Securities Exchange in December. Jane and Murdaca told Sponsorship News that the consolidation of the smash repair industry under the big insurers was squeezing independent repairers out of business and cost cutting by repairers to win business was becoming a safety issue.

Jane said the new insurance brand would address that problem and would also give smash repairers a chance to hold equity in the company by taking up shares in the IPO.

Jane confirmed that sponsorship would plan (sic) a key role in promoting the concept and building brand recognition and engagement.

“Tony and I have been talking about this for four years,” Jane told Sponsorship News. “Without being big-headed, I have a brand already and people trust my name. Sponsorship has been an important part of building that brand.”

Smash repairers are being courted to take part in the initial public float and then their customers will become the initial database for the business.

Murdaca said that one of the growth areas for the business would be the youth market, where the cost of insurance for young drivers was becoming prohibitive.

“We will be looking at the 17-25 market and taking our message to those kids and their parents,” Murdaca said. “Sponsorship in that area is something we will be looking at in the new year. We are looking to shake things up.”

(Emphasis added.)

35    In relation to the above article, Mr Canning gave evidence in his affidavit that on or around 29 September 2015 he saw the Fairfax Article; he then contacted Mr Jane by telephone to discuss his business venture and for the purpose of writing and publishing an article in Australian Sponsorship News; his telephone call with Mr Jane lasted a few minutes; he took notes (by hand) during the telephone call; he then called and spoke with Mr Murdaca; he then wrote the ASN Article; the quotes attributed to Mr Jane and Mr Murdaca in the ASN Article are a true record of statements made to him by each of them during the telephone calls; to the extent that the ASN Article includes other information it was based directly on statements made either by Mr Jane or Mr Murdaca during the telephone calls. Mr Canning maintained in cross-examination that what was attributed to Mr Jane in the article was exactly what Mr Jane said to him.

36    On 9 October 2015, the ACA Segment was broadcast on Channel Nine. Mr Jane and Mr Stamatopoulos appeared in the segment. A copy of the video was in evidence, together with a transcript of the video. I have watched the video. Given the significance of the segment for the issues to be considered, I set out the transcript in full:

Transcript of Video from A Current Affair – Friday 9th October

Presenter: Now Bob Jane has lived a life of incredible highs and lows most of them splashed across the headlines. But at 85 he is not only surviving he’s thriving, out of retirement and taking on big business.

BJ: “Ladies and gentlemen of Australia Bob is back.” “There’s life in the old dog yet!”

VO: And pretty soon the Australian racing legend will be putting the bite on us for our insurance business.

BJ: “Under 25 over 25, health, travel, life insurance.”

MK: “That’s not bad.”

BJ: “Bloody good mate!”

VO: From the King of Tyres to the King of Insurance.

MK: “Are the people of Australia going to cop you?”

BJ: “I think so, I mean I have 3 million customers in the T-mart system they love me and trust me.”

VO: From December Bob Jane Integrity Insurance hits the market. There’s even a plan to list on the Australian Stock exchange.

MK: “What are the numbers you’ve been crunching?”

MS: “We’re looking at a minimum of a million policies in our first 12 months.”

VO: Manny Stamatopoulos, one of Bob’s partners, says the founder of Bob Jane T-marts is the perfect driver for the new venture.

MS: “Well Bob Jane’s an Australian legend, he’s a trusted name.”

MK: “Do you think the big insurance companies are worried?”

MS: “We know that they certainly are. They’ve contacted a number of people, who have contacted us.”

VO: It’s been a chequered life for the 85 year old. The King of Tyres made and lost a fortune. De-throned by his son Rodney. He’s lost Court battles, wives, had two strokes, survived cancer but retained he says his most valuable asset.

BJ: “My name, the Bob Jane name is very strong with the consumers because they trust the name, and that’s something you can’t buy today. Trust.”

CM: “I guess my first reaction is surprised. Bob at his age, and I guess his health history, his personal history, his business history recently hasn’t been that great so I was a bit surprised to hear that Bob was going to go back for another go.”

VO: Still, says Collin McLeod, a start-up business specialist and marketing expert, never dismiss a champion.

MK: “Do we need another insurance company?”

CM: “I think what we need is people who can do things differently. So we see the rise of companies like UBER and Air BNB. I’m not suggesting that Bob Jane’s new business will be one of those but it just shows if people can come in with a better way of doing business then people will go to it.”

BJ: “We are going to shake up the insurance industry big time!”

VO: And in pole position, says Bob Jane, is car insurance. He says far too many cars aren’t repaired properly. Because insurance companies crunch panel beaters on cost.

MK: “So Bob what are you saying that some insurance companies would fix a car like this and it would be road worthy but it wouldn’t be crash worthy.”

BJ: “That’s right.”

MK: “Like it wouldn’t survive a second crash.”

BJ: “No that’s right.”

MK: “Because it would be dangerous.”

BJ: “It would be dangerous, the cell is compromised for all time.”

MK: “So the car’s lost its integrity.”

BJ: “It has absolutely. Yes.”

MK: “So what’s this going to do [to] the insurance industry?”

MS: “It’s going to turn it on its head. That’s what it’s going to do.”

VO: Manny runs IVIC, the International Vehicle Integrity Centre. They test cars after they’ve been repaired by insurance companies.

MS: “The end job is short cuts. And short cuts lead to problems which lead to vehicles coming to us for inspection and then most of them are either re-repaired or written off.”

MK: “So what are you saying unsafe cars?”

MS: “I’m saying death traps.”

MK: “Do you have the repairers on board because that’s very important?”

MS: “Absolutely, they have been telling us that this is what they have been waiting for, for many years. We’re happy to give it to them. We’re happy to give them a life again, we’re happy to give them a business and we’re happy to support them to repair vehicles correctly.”

MK: “Will this make you a rich man?”

BJ: “I’m still rich. I’m rich and happy. If you look at this car closely …”

MK: “This isn’t about money?”

BJ: “No. It’s not.”

MK: “What’s it about?”

BJ: “It’s about helping Australians.”

CM: “I’m going to take a bit of a bet each way on this one because I think there’s already plenty of people offering insurance. I think there’s already plenty of opportunities for people to buy those sorts of products. But having said that looking at Bob Jane’s history I’m not sure I’d ever bet against him.”

MK: “Bob you’re 85 years old, why don’t you retire and enjoy your life?”

BJ: “I don’t want to Martin, I want to keep working. I’ve got ambition and drive to keep going.”

MK: “What keeps you going though? What have you got in you that keeps you boxing on?

BJ: “I don’t know what it is Martin, but I’ve had it for 70 years, 80 years, and it’s still there. I’m Bob Jane and I’m back.”

Key:

BJ = Bob Jane

MK = Martin King

MS = Manny Stamatopoulos

CM = Collin McLeod

37    The BJII Logo was displayed many times during the ACA Segment. The logo featured the words BOB JANE and INTEGRITY INSURANCE in front of two racing flags. The words A SURE WINNER appeared across the top and the words CHOICE OF REPAIRER across the bottom of the logo.

38    In relation to the ACA Segment, Mr Stamatopoulos gave evidence in his affidavit that he attempted to obtain publicity for the insurance business concept including by the ACA Segment, and that he did not see or approve the ACA Segment before it was aired. Mr Stamatopoulos gave evidence during cross-examination that he was approached by Mr Jane about doing the segment. Mr Stamatopoulos accepted that he agreed to appear on the program with Mr Jane to promote the Bob Jane Integrity Insurance business. Mr Stamatopoulos said that they taped for one and a half days and the final segment was only three or four minutes; he could not, therefore, remember everything that he or Mr Jane said during taping. It was put to Mr Stamatopoulos that by this stage – by the time he was going on A Current Affair and getting publicity in a national newspaper – this was “more than an idea” and was a business. He rejected this and said that “it was still an idea”. He said:

I mean we haven’t registered a company. We haven’t collected the – the requisite funds that are required to – to set up an insurance company. There’s – there’s a lot of things that needed to be done before it was a business or an insurance company. It was still fundamentally an idea. I mean, like I said, we still hadn’t registered the business, the company. …

39    In re-examination, Mr Stamatopoulos said that, as at the date of the ACA Segment, there was no capacity to issue policies and there was no capacity to accept money from investors.

40    On 19 October 2015, the company names “Bob Jane Integrity Insurance Limited” and “Bob Jane Integrity Limited” were reserved with ASIC. The documents tendered by Bob Jane Corporation include an email from ShineWing to Mr Stamatopoulos dated 27 October 2015. The email confirmed that ShineWing received instructions from Mr Stamatopoulos in September 2015 to reserve the name “Bob Jane Integrity Insurance Limited”. The email confirmed that the company name had been reserved and attached a copy of the reservation. A handwritten note on the document is to the effect that the reservation subsequently lapsed without the company being established. Mr Stamatopoulos gave evidence in his affidavit that he reserved the name “Bob Jane Integrity Insurance Limited”; that he was not instructed to reserve the name for or by Mr Jane; he did not reserve the name “Bob Jane Integrity Limited”; and he did not incorporate a company under either name. Mr Stamatopoulos said during cross-examination, “Bob Jane wasn’t doing it. I was”.

41    Documents tendered by Bob Jane Corporation as business records indicate that, in September and October 2015, Bob Jane Corporation was contacted by a small number of people who mistakenly assumed that there was a connection between the business or proposed business the subject of the Fairfax Article or the ASN Article, on the one hand, and Bob Jane Corporation, on the other.

42    Mr Stamatopoulos, Mr Jane and Mr Murdaca held a number of meetings with motor vehicle repairers in late 2015. Mr Stamatopoulos said during cross-examination that there were 10 to 12 such meetings in the period up to December 2015, and accepted the description “roadshow” for such meetings. He said that over 100 repairers attended the first meeting. He gave evidence during cross-examination as follows:

We put newsletters out to the repair industry in Victoria, and we advised them that we were holding, on a weekly basis, afterhours meetings to discuss our proposal for this particular insurance company in relation to the motor vehicle side of things, and whether they had an interest to attend in order to understand our concept and what we wanted to achieve and whether they would be interested as repairers to become investors within the insurance company and take part ownership of the company.

43    Mr Stamatopoulos gave evidence during cross-examination that Mr Jane presented at the meetings; Mr Murdaca attended most of the meetings; the meetings sought equity investments from repairers; and a number of repairers committed to investing in the company. Later in his evidence he said that “expressing an interest doesn’t necessarily mean that at the end of the day they’re going to put their hand in their pocket and actually invest”. In re-examination, Mr Stamatopoulos said that no funds were actually raised and that “[w]e didn’t accept any moneys”.

44    On 17 December 2015, a company called “Bob Jane Integrity Insurance Pty Ltd” was incorporated. A copy of the ASIC extract for the company was in evidence. This indicates that the sole director and secretary of the company is Mr Martin. The registered office of the company as shown in the company extract is the same as the Melbourne business address of ShineWing. Mr Martin gave evidence in his affidavit that he incorporated the company and annexed a copy of an engagement letter that he had received from ShineWing in relation to the incorporation of the company. Mr Martin also stated in his affidavit that the company “has never traded, raised capital (save for the original shareholder), brought (sic) or sold goods or services and has always been dormant”. In cross-examination, Mr Martin gave evidence that he was not aware that ShineWing had previously applied to reserve the name “Bob Jane Integrity Insurance Limited”; he did not speak to Mr Jane about using his name as part of the company name; there had been “banter around the office about this Bob Jane Integrity Insurance concept”; then, “all of a sudden it had changed names to, I think, Integrity Insurance Australia”; he was at ShineWing one day in December and asked if the name was available and was told that it was; so he made a decision to “take it”. He said that he did not receive any direction from Mr Murdaca, Mr Stamatopoulos or Mr Jane to incorporate the company.

45    On 10 February 2016, a second article was published online by the Australian Financial Review. This article is not referred to in the Statement of Charge and therefore is not directly relevant to the issues to be determined. Nevertheless, I briefly mention the evidence in relation to this article for completeness. The article was written by Ms Liew and another journalist, Ms Jemima Whyte. It was headed “Insurance float is the latest Bob Jane family legal smash” and commenced by stating that the “planned float of Bob Jane Integrity Insurance has been delayed, as the mooted initial public offering has become the latest battleground for the former tyre king and his estranged son”. The article stated that the company, which initially said it would list through a shell on the Australian Stock Exchange by December, had rebranded as “Integrity Insurance Australia”. Subsequently, a correction to the article was published which stated:

The article “Insurance float is the latest Bob Jane family legal smash” on February 11 said Bob Jane is an investor in Bob Jane Integrity Insurance. Mr Jane’s partner, Tony Murdaca, said yesterday Mr Jane is an ambassador in the company, not an investor.

46    In relation to the February 2016 article, Ms Liew gave evidence in chief that, after she received a subpoena to attend court in this proceeding, “as a journalist, I did my job and did a bit of digging and followed up with the next article”; for this purpose, she spoke with Mr Murdaca and Mr Jane; she then prepared the February 2016 article; after the article was published, Ms Liew received a call from Mr Murdaca in which he stated that he was quoted incorrectly and that Mr Jane was an ambassador of the company, not an investor; an editorial decision was made to publish the correction set out above.

47    Mr Stamatopoulos gave evidence in his affidavit that Mr Jane did not own or have any interest in the insurance business concept and he was not promised and he did not receive any remuneration. Mr Stamatopoulos also gave evidence in his affidavit that he abandoned the concept as a result of the conduct of Bob Jane Corporation’s lawyers and “thus the concept has never traded, brought (sic) or sold goods or raised any capital”. During cross-examination, Mr Stamatopoulos said that the reference in his affidavit to the conduct of Bob Jane Corporation’s lawyers was to a letter he received from them. He said he decided to change course after receiving the letter. He also gave evidence during cross-examination that “[t]here was never any intent for Bob [Jane] to be anything but an ambassador to the company” and said:

Bob doesn’t have any money to invest, cannot commit to working eight-hour days. The – he was – he was going to be an ambassador, and that’s why I wanted to use the name Bob Jane, because people knew it, and Bob would have been there with us, and it just would have made life easy in terms of trading and – and moving this company on. I mean, I can’t employ Bob as a CEO or – or something like that and expect him to work eight, 10, 12 hours a day. It just can’t be done.

48    It was put to Mr Stamatopoulos that Mr Jane was going to be involved in the business “in a real way, not simply as an ambassador”. He rejected this. Mr Stamatopoulos maintained during cross-examination that Mr Jane had no financial interest in the business.

49    Mr Murdaca gave evidence in his affidavit that Mr Jane did not own or have any interest in the insurance business concept and he was not promised and he did not receive any remuneration. Mr Murdaca also stated that the concept was abandoned as a result of pressure from Bob Jane Corporation’s lawyers and “thus the concept never traded, brought (sic) or sold goods or raised any capital”. In cross-examination, Mr Murdaca was asked what he meant by “pressure” and responded that he was referring to this proceeding being brought. I take this to be a reference to the contempt application.

Findings of fact

50    On the basis of the evidence summarised above, and bearing in mind that the onus is on Bob Jane Corporation to make out the contempt charges beyond reasonable doubt, I make the following factual findings:

(a)    Mr Murdaca and Mr Jane together participated in a telephone interview with Ms Liew in September 2015 for the purpose of her writing an article to be published in the Australian Financial Review about a proposed new motor vehicle insurance venture. This led to Ms Liew writing and the Australian Financial Review publishing the Fairfax Article. I accept Ms Liew’s evidence about the interview as set out in [31] above and prefer it to the evidence of Mr Murdaca to the extent of inconsistency. There were aspects of Mr Murdaca’s account of the interview which were implausible given the text of the Fairfax Article and Ms Liew’s contemporaneous notes. I accept that the Fairfax Article is an accurate reflection of the substance of what Mr Murdaca or Mr Jane (mostly Mr Murdaca) said during the interview, and that the direct quotations of Mr Murdaca and Mr Jane accurately reflect what each of them said. (Mr Jane’s statements are highlighted in the article as set out above.) That said, Ms Liew accepted during cross-examination that she was not too sure what Mr Jane’s role would be in relation to any insurance company.

(b)    While I have found that Mr Murdaca and Mr Jane were correctly quoted in the article, it does not necessarily follow that their statements accurately reflected the facts as they stood; it is of course possible that they sought to embellish the facts to portray the proposed business as more advanced than it was. There is an inconsistency in the evidence as to whether a shell company had in fact been acquired. The article states that they had bought a shell company on the Australian Stock Exchange, and this was Mr Stamatopoulos’s evidence as well. But Mr Murdaca’s evidence was that they had not acquired the company but merely identified that it was available. Given the conflict in the evidence, I am not satisfied to the requisite standard that a shell company had been acquired.

(c)    Further, there is a conflict between the statement in the article and Mr Murdaca’s evidence regarding talks with a Chinese insurer. The article stated that Mr Murdaca and Mr Jane were in talks with a Chinese insurer to take on the underwriting risk. Mr Murdaca’s evidence was that he had had talks with an agent or broker of a Chinese insurer who lives in Melbourne. Given this evidence, I do not think it is established to the requisite standard that Mr Jane had talks with a Chinese insurer.

(d)    Although the article stated that Mr Murdaca and Mr Jane had engaged Minter Ellison, the evidence of Mr Stamatopoulos is that he engaged the firm. In light of this evidence, it is not established to the requisite standard that Mr Jane engaged Minter Ellison. This also casts doubt on the statement in the article that Mr Murdaca and Mr Jane had engaged ShineWing as adviser. I do not think it is established to the requisite standard that Mr Jane engaged ShineWing.

(e)    Mr Jane and Mr Murdaca each spoke by telephone with Mr Canning in September 2015 for the purpose of his preparing an article for Australian Sponsorship News. This led to Mr Canning writing and Australian Sponsorship News publishing the ASN Article. I accept Mr Canning’s evidence in relation to his preparation of the ASN Article as set out in [35] above. He maintained his position during cross-examination. There was no contrary evidence. I accept that the article accurately reflects what Mr Canning was told by Mr Jane or Mr Murdaca, and that the direct quotations are an accurate reflection of what each of them said. The direct quotations of Mr Jane are highlighted in the article as set out above.

(f)    Mr Jane and Mr Stamatopoulos participated in the ACA Segment. The statements made by each of them during the segment (set out in the transcript) can be taken to fairly reflect statements that each of them made. There was no evidence of specific statements having been taken out of context. Nevertheless, I accept that Mr Jane and Mr Stamatopoulos would have made other statements in the course of the recording of the segment which were not included in the finished product, and this needs to be borne in mind.

(g)    In October 2015, the company names “Bob Jane Integrity Insurance Limited” and “Bob Jane Integrity Limited” were reserved with ASIC. The evidence establishes that Mr Stamatopoulos reserved the name “Bob Jane Integrity Insurance Limited”. It does not establish who reserved “Bob Jane Integrity Limited”. Insofar as the name “Bob Jane Integrity Insurance Limited” is concerned, in light of Mr Stamatopoulos’s evidence, it is not established that the name was reserved by or on behalf of Mr Jane.

(h)    In late 2015, Mr Stamatopoulos, Mr Jane and (in most cases) Mr Murdaca conducted about 10 to 12 ‘roadshow’ meetings with motor vehicle repairers. Over 100 repairers attended the first meeting. Mr Jane presented at the meetings. It seems that the meetings were designed to promote the proposed venture generally, as well as to generate interest in investing in the venture. While Mr Stamatopoulos at one point in his evidence said that a number of repairers committed to investing, the overall effect of his evidence was that expressions of interest rather than binding commitments were obtained. Further, I accept his evidence that no funds were actually raised from repairers.

(i)    In December 2015, a company named “Bob Jane Integrity Insurance Pty Ltd” was incorporated. The company was incorporated by Mr Martin. Although I find aspects of Mr Martin’s evidence relating to the incorporation of this company implausible, the evidence does not establish that Mr Jane had any role in relation to the incorporation of this company or any ownership or financial interest in the company. I accept Mr Martin’s evidence that the company has not raised any additional capital beyond that raised from the original shareholders, and that it has been dormant.

(j)    It is not established that Mr Jane had any ownership or financial interest in the business or proposed business that was the subject of the Fairfax Article, the ASN Article and the ACA Segment. (I consider below whether it is established that a business was in existence.) The evidence of Mr Stamatopoulos and Mr Murdaca is to the effect that Mr Jane had no such interest. While this was challenged in cross-examination, they maintained their position. In these circumstances, and notwithstanding that a contrary impression was conveyed by Mr Murdaca, Mr Jane and Mr Stamatopoulos in the Fairfax Article, the ASN Article and the ACA Segment, it is not established to the requisite standard that Mr Jane had any ownership or financial interest in the business or proposed business. I note for completeness that the evidence to the effect that it was always intended that Mr Jane would have an “ambassadorial” role does not sit easily with the Fairfax Article, the ASN Article and the ACA Segment. I suspect that this way of characterising his role only occurred to Mr Murdaca and Mr Stamatopoulos later. Be that as it may, there is a general lack of clarity around Mr Jane’s role in relation to the business or proposed business and, as indicated above, it is not established that he had any ownership or financial interest.

(k)    On the basis of the evidence of Mr Stamatopoulos and Mr Murdaca, and in the absence of any contrary evidence, I accept that the business or proposed business has not bought or sold goods, or raised any capital. Further, there is no evidence to suggest that the regulatory approvals necessary to conduct an insurance business had been applied for or obtained.

Disposition of the contempt charges

51    There is no dispute that the November 2013 Orders were served on Mr Jane. Nor is there any dispute that the elements identified in paragraphs (i), (ii) and (iv) in the extract from Advan set out in [12] above are established. The issue to be determined is whether Mr Jane has breached the terms of order 3 of the November 2013 Orders.

52    Bob Jane Corporation contends that Mr Jane has breached order 3, and thereby is in contempt of court, in three ways:

(a)    first, by trading as a business under a name that includes JANE;

(b)    secondly, by trading as a business under or by reference to a trade mark that is deceptively similar to the BOB JANE mark, specifically BOB JANE INTEGRITY INSURANCE;

(c)    thirdly, by trading as a business under or by reference to a trade mark that is deceptively similar to the BOB JANE mark, specifically the BJII Logo.

53    Bob Jane Corporation made clear at the hearing that it does not contend that Mr Murdaca, Mr Stamatopoulos or any other person was acting as the servant or agent of Mr Jane; the allegations it makes against Mr Jane are in relation to his conduct in his own right.

54    If Mr Jane was trading as a business, it is clear that this was under a name that includes JANE, namely BOB JANE INTEGRITY INSURANCE.

55    However, the issue that arises (in connection with all three ways in which Bob Jane Corporation puts its case) is whether it is established that Mr Jane was “trading as a business”.

56    Bob Jane Corporation’s submissions in relation to whether Mr Jane was “trading as a business” can be summarised as follows:

(a)    The word ‘business’ has been described as an “etymological chameleon” which takes its meaning from the context in which it appears: Town Investments Ltd v Department of the Environment [1978] AC 359 at 383; Murphy v Victoria (2014) 45 VR 119 (Murphy) at [47]. Here, the words “trading as a business” are to be construed in the context of order 3 generally.

(b)    Of note, order 3 was made by the Court following its findings of trade mark infringement and misleading conduct on the part of Mr Jane and the other respondents, and was made to protect Bob Jane Corporation’s common law and registered rights in relation to the trade marks in suit. The concept of “trading as a business” draws its meaning accordingly.

(c)    In those circumstances, “trading as a business” must be given a wide meaning, and includes conduct that is preparatory to active trading. The scope of activity described by that phrase was canvassed at the previous hearing of contempt charges against Mr Jane: Bob Jane Corporation Pty Ltd v ACN 149 801 141 Pty Ltd [2014] FCA 637 at [30].

(d)    Activities designed to promote a business to be launched in the near future equally can constitute “trading as a business”, especially where (as in the present case) that promotional activity was directed towards generating interest in a new business and encouraging consumers to avail themselves of its services, once available.

(e)    The application of a broad approach to the concept of “trading” is consistent with the approach taken by the courts to construing the notion of conduct in “trade or commerce” for the purposes of s 18 of the Australian Consumer Law (the contravention of which was the driver for order 3). See, eg, Re Ku-ring-gai Co-op Building Society (No 12) Ltd (1978) 36 FLR 134 at 167; Murphy at [53].

(f)    In the Fairfax Article, the ASN Article and the ACA Segment, numerous representations were made as to the steps that had, by that stage, been undertaken in relation to the new business. Viewed objectively, those statements can have had no purpose other than to promote the new business and generate interest in it, and convey to consumers that the new business was well advanced and not merely conceptual. So, for example, according to the articles and the ACA Segment: the new business had been four years in the making; Mr Jane and Mr Murdaca had acquired a shell company on the Australian Stock Exchange; Mr Jane and Mr Murdaca would serve on the board of the new business and were seeking a chairman; Mr Jane and Mr Murdaca had been “spruiking” the new business to smash repairers at a series of meetings, with a view to such repairers being the initial shareholders in the new business; Minter Ellison had been engaged as the new business’s legal representative and ShineWing had been engaged as an adviser; Mr Jane and Mr Murdaca were in talks with a Chinese insurer to act as underwriter for the new business; the new business was looking to unveil a prospectus around late November 2015 with a view to listing on the Australian Stock Exchange in December 2015; and the new business was due to be rolled out throughout Australia in 2016. In the circumstances, Mr Jane’s conduct properly characterised was “trading as a business” within the meaning of order 3.

57    In my view, for the reasons that follow, Bob Jane Corporation has not established beyond reasonable doubt that Mr Jane was “trading as a business”.

58    First, it is worth noting at the outset that many of the usual indicia of a business, or trading as a business, were not present. The evidence adduced by Bob Jane Corporation relates to an alleged business of providing motor vehicle insurance. But no motor vehicle insurance policy was sold or even offered for sale. Nor did the infrastructure that one would expect to see in such a business yet exist: there was no office, no telephone number, and no website. No employees had been engaged. The regulatory approvals necessary to conduct an insurance business had not been applied for or obtained. No funds to conduct such a business had been raised. While the absence of these features does not of course preclude the existence of a business, or a conclusion that Mr Jane was “trading as a business”, it is as well to emphasise how far removed the facts are from a straightforward case of breach of the order.

59    Secondly, in construing the expression “trading as a business” it is appropriate to start with the ordinary meaning of the words. The ordinary meaning of the word “trading” in this context is the action or activity of buying and selling goods or services: see Macquarie Dictionary (6th ed, 2013), p 1555 (“trade”). It may also include offering to do so. The word “business” when used in a context such as this generally means a commercial enterprise in the nature of a going concern: see Hope v Bathurst City Council (1980) 144 CLR 1 at 8-9 per Mason J (Gibbs, Stephen and Aickin JJ agreeing); Macquarie Dictionary, p 206. As the terms of order 3 make clear, the injunction is directed, not merely at trading under a name that is or includes JANE (or under or by reference to certain marks), but trading as a business under a name that is or includes JANE (or under or by reference to certain marks). The expression “trading as a business” is a composite expression in which the words “trading” and “business” are mutually reinforcing and suggest transactional activity as a going concern.

60    Bob Jane Corporation submits that, in construing order 3, the expression “trading as a business” should have the same meaning as the expression “carrying on a business”. It is submitted that, just as preparatory steps may constitute “carrying on a business” (see Murphy at [49]-[50], [53], [56], [59]-[60] per Nettle AP (as his Honour then was), Santamaria and Beach JJ), so too they may constitute “trading as a business”. However, the context in which courts have considered whether the expression “carrying on a business” includes preparatory steps is important (see Murphy at [52]-[53]). And in any event, I think the difference in language is significant. Given the familiarity of the expression “carrying on a business” in the context of the issues considered in the November 2013 Reasons, I infer that the words “trading as a business” were intended to refer to a different and particular concept. This is reinforced when one considers the otherwise expansive terms of order 3, which, unlike orders 1 and 2, is not confined to particular categories of goods and services. Further, there may be circumstances in which the carrying on of a business (for example, where it involves merely taking preparatory steps) does not involve misleading or deceptive conduct, or passing off, of the kind that was the subject of the proceeding at trial. This supports the inference that the expression “trading as a business” was not intended to be synonymous with “carrying on a business”.

61    Thirdly, assuming that a business was in existence in the period September to December 2015 (as to which, see below), it is not established to the requisite standard that there was trading as a business in this period. It is established that a number of promotional activities took place, for example the interviews which led to the Fairfax Article and the ASN Article and participation in the ACA Segment. To these may be added preparing the BJII Logo. It is also established that some preparatory steps took place: Mr Stamatopoulos, Mr Jane and Mr Murdaca conducted meetings with repairers; Mr Murdaca spoke with an agent or broker of a Chinese insurer; Mr Stamatopoulos engaged Minter Ellison; ShineWing were engaged as advisers; Mr Stamatopoulos reserved a company name; Mr Martin incorporated a company. In some of these cases, the evidence is that the step was taken by an individual and it is unclear whether it is to be attributed to any business. But even if it be assumed that these activities were undertaken as part of a business, they did not constitute trading as a business as that expression is used in order 3. They did not involve any transactional activity as a going concern. No goods or services were bought or sold, or offered to be bought or sold.

62    Fourthly, and in any event, for it to be established that Mr Jane breached order 3, it would need to be shown that Mr Jane was trading as a business. However, as discussed in [50](j) above, it is not established that Mr Jane had any ownership or financial interest in the business or proposed business that is the subject of the articles and the ACA Segment. Thus, even if there was trading as a business, it is not established that Mr Jane was trading as a business.

63    While I have assumed, above, that a business existed in the relevant period, I note for completeness that the position on this issue is not straightforward. On the one hand, a number of promotional activities and preparatory steps took place which might, depending on the circumstances, be sufficient to support a conclusion that a business existed. On the other hand, there is an issue whether the activities and steps were too preliminary to constitute a business. I note Mr Stamatopoulos’s evidence at [38] that “it was still an idea”. The lack of clarity about the arrangements between the individuals tends to reinforce the preliminary nature of the activities. If it were necessary to reach a conclusion on this point, I would conclude that it is not established beyond reasonable doubt that a business existed.

64    In light of the conclusion that Mr Jane was not “trading as a business”, it is unnecessary to consider the additional elements of the second and third ways that Bob Jane Corporation puts its case, as set out in [52] above.

Conclusion

65    For the reasons set out above, Bob Jane Corporation has not established that Mr Jane has breached order 3 of the November 2013 Orders. Accordingly, its contempt application is to be dismissed. There is no apparent reason why costs should not follow the event. I will therefore make an order that Bob Jane Corporation pay Mr Jane’s costs of the contempt application. However, as the matter of costs was not the subject of submissions, if either party wishes to seek a variation of the costs order, it may give written notice to the Court and the other party within two business days.

Associate:

Dated:    15 September 2016

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