Yellow Pages, Books and Ducks.

The owners of the Yellow Pages hard copy and online directory of that name were disturbed to find what appeared to be copies of their directories on the websites www.yellowbook.co.nz and yellowduck.co.nz.

They sued for infringement of copyright, and breach of the Fair Trading Act, which prohibits misleading and deceptive conduct in the course of trade.

The first defendant is a company incorporated in Australia and sought leave to allow a director to represent the company in court. The High Court rejected the application on the basis that the rules are clear that while individuals may represent themselves, companies must be represented by counsel. The second and third defendants were individuals and could therefore represent themselves.

The defendants also sought to argue that the New Zealand courts had no jurisdiction or alternatively were forum non conveniens and the dispute should be heard in Australia. The court rejected both of these arguments. The judge found that because the defendants’ websites were available in New Zealand they had chosen to act in such a way as to bring themselves within New Zealand law. Further, Australian courts have no jurisdiction to hear a dispute about infringement of rights held in New Zealand.

The Yello Pages companies (the plaintiffs) successfully showed an arguable case of copyright infringement despite the defendants’ claims that they had compiled their own directory.

The judge then turned to consider trade mark infringement. The judge agreed with the plaintiffs’ submission that YELLOW PAGES and YELLOW BOOK are confusingly similar. Relevant factors included:

  • BOOKS and PAGES have a similar idea or meaning
  • Consumers are likely to recall the marks by the word YELLOW 
  • YELLOW is an essential feature of both marks
  • The first plaintiff has an extremely strong reputation in the name YELLOW PAGES

The judge had no difficulty in finding an arguable case of trade mark infringement. The same was true of the claim under the Fair Trading Act for misleading and deceptive conduct in the course of trade.

The balance of convenience also favoured the plaintiffs. There was no evidence the defendants could pay damages. Given that they submitted they could not afford legal representation, and the second defendant was bankrupt, this is no surprise. The plaintiffs on the other hand, have significant businesses in New Zealand.

The judge issued orders restraining the defendants’ from hosting business directories at www.yellowbook. co.nz and www.yellowduck.co.nz. The plaintiffs also attempted to restrain the defendants’ use of the colour yellow and any use of the word “Yellow”. The judge refused stating that the plaintiffs’ case was not run on any basis which would justify such restraints.

The judge directed the matter be set down for trial without delay.