Brown v Village Roadshow Corporation Limited

[1999] NSWSC 516

CITATION:	BROWN v VILLAGE ROADSHOW CORPORATION LIMITED & ORS [1999] NSWSC 516
CURRENT JURISDICTION:	Equity Division
FILE NUMBER(S):	2483/98
HEARING DATE(S):	13/04/99 and 03/05/99
JUDGMENT DATE:	2 June 1999
PARTIES :	ADAM WADE ASHBY BROWN v VILLAGE ROADSHOW CORPORATION LIMITED & ORS
JUDGMENT OF:	Master Macready at 1

COUNSEL :	Mr A.W.A. Brown in person Mr R.A. Dick for the defendants
SOLICITORS:	Plaintiff was unrepresented Clayton Utz for the defendants
CATCHWORDS:	Practice. Summary dismissal. One of three causes of action propounded in Statement of Claim struck out. No matter of principle.
DECISION:	Paragraph 49

19

IN THE SUPREME COURT
OF NEW SOUTH WALES
EQUITY DIVISION

MASTER MACREADY

Wednesday 2 June 1999

2483/98 ADAM WADE ASHBY BROWN v VILLAGE ROADSHOW CORPORATION LIMITED AND ORS

JUDGMENT

1 MASTER MACREADY: This is the hearing of a Notice of Motion filed by the first, second, third, fifth, sixth and eight defendants on 4 February 1999. It seeks that the Amended Summons and Amended Statement of claim be struck out in whole or in part. The applicants contend that no cause of action is disclosed.
2 The matter has some history in respect of an earlier Statement of Claim. However, the one with which I am concerned is an Amended Statement of Claim which was filed on 20 October 1998. That Statement of Claim is drafted by the plaintiff who appears in person and it sets out in reasonable detail in an acceptable form the basis of the claim which the plaintiff makes. The claim made falls into three particular areas.
3 The first is a copyright claim, the second is a trademark claim based upon a trade mark of which the plaintiff is the registered proprietor and the third claim is a claim for breach of confidential information. Particulars have been supplied in respect of some matters in the Statement of Claim and it will be useful to refer to those shortly. The claim arises out of the work which the plaintiff did in preparing a proposed CD entitled “Futureman” The proposed CD in its jacket cover sets out the basis of a story and songs concerning events surrounding “Futureman” and inter alia a lady known as “Star Machine”. In February 1995 the plaintiff caused to be left with the 8th defendant, Roadshow Entertainment Pty Limited, a mock up of that CD and a folder containing the information in the CD in somewhat larger format. Those materials are comprised in exhibit A on the application before me. On 29 August 1996 the plaintiff became registered in respect of a trademark for a period of ten years commencing 12 August 1996 which was registered for the following goods and/or services.
“Amusement apparatus adapted for use with television receivers only, amusement machines, automatic and coin operated, animated cartoon, cinematographic films, compact discs, compact discs read only memory, computer programmes, computer software, computers and phonograph records being goods in class 9.”
4 The material which was left with the 8th defendant was left for a period of some weeks and was returned under cover of a letter from the 8th defendant dated 2 March 1995. In that letter Mr G. Schlein, the National Sales Manager, Roadshow New Media, said the following:-
“As you will be aware Roadshow New Medial are currently acting as distributors for several overseas suppliers and at this stage are not producing and publishing product. This is a possibility in the future. Having seen your “Futureman” in the early stage of its development there is undoubtedly great potential in the blossoming interactive program/games market. We would most definitely be interested in distributing the product but do need to see finished or near finished product before committing to a distribution arrangement. Please keep me informed as development continues.”
5 The actual trade mark was the word, “Futureman”. In April 1997 a sculpture entitled “Future Man” was erected at two new cinema complexes. The first one was the Village Casino cinema in Melbourne and the other one was at a Sunshine cinema also in Victoria.
6 As I have mentioned it is useful to deal with what is said to be in respect of the copyright claim the work which is said to have been infringed. In his Amended Statement of Claim the plaintiff described the nature of the work as:-
“The ‘Work’ means deduced in hand form as ‘artistic works’ and ‘other subject matter’ as ‘CD’ and compilation under the title of FUTUREMAN of the plaintiff.”
7 By way of particulars the plaintiff has identified the artistic work as:-

1. The material which appears on an Internet site the detail of which material is set out in an affidavit of Mr O’Leary’s of 9 April 1999. That material which is Annexures A, B, C and D to that affidavit sets out copies of Web pages which include a symbol of “Futureman”, details of Episode 1 which refers to the story and song tracks and also a reference to the CD to which I have earlier referred.
2. The cover on the CD which is part of Exhibit A before me.
3. The general use of the word and concept “Futureman”.

8 This is a summary dismissal application and, of course, the types of cases which will attract the Court’s intervention at a summary stage are very limited.
9 In Dey v Victorian Railways Commissioners (1949) 78 CLR 622 Dixon J as he then was said:-
“A case must be very clear indeed to justify the summary intervention of the court to prevent a plaintiff submitting his case for determination in the appointed manner by the court with or without a jury. The fact that a transaction is intricate may not disentitle the court to examine a cause of action alleged to grow out of it for the purpose of seeing whether the proceeding amounts to an abuse of process or is vexatious. But once it appears that there is a real question to be determined whether of fact or law and that the rights of the parties depend upon it, then it is not competent for the court to dismiss the action as frivolous and vexatious and an abuse of process.”
10 Reference was also made as is usual in a case of this nature which extended into a second day’s hearing to the proposition referred to by Barwick CJ in General Steel Industries Industries Inc v Commissioner of Railways (NSW) (1964) 112 CLR 125 at 130 that a conclusion proceedings should be dismissed may be reached by a Court after argument “perhaps even of an extensive kind may be necessary to demonstrate that the case of the plaintiff is so clearly untenable that it cannot possibly succeed”.
11 The applicants to the motion suggest that this is one of those cases as it is clear because of the particularisation of the case that the factual background is well known at this stage. It is submitted that at this stage the plaintiff’s case would not improve through the further processes of preparation for trial.
12 Before dealing with the more detailed basis of the claim I should note the position of the different defendants. The first defendant Village Roadshow Corporation Limited is the owner of trade marks. That trade mark appears to be affixed to a star on the belt of the Future Man which is erected in the two theatre complexes to which I have referred. The second defendant, Village Roadshow Limited is a company which runs and operates the Two World complexes where the two statues complained about are erected. It also advertises its films at those complexes using a photographic reproduction in its advertisements of those statues. The third defendant, Amalgamated Holdings Limited is a company which is part of what is described as the Greater Union Theatre Group and for the purposes of this application it is clear that it is a joint venture party with the second defendant and perhaps others to the Megaplex theatre operations at the two theatre complexes in Victoria. The fourth defendant is apparently an American company. The plaintiff may or may not have effectively served that company which is a United States corporation by sending the Statement of Claim or the Summons to it. In any event no appearance has been entered for that company and accordingly, under Part 10 Rule 2 leave is required before the plaintiff could proceed against that company. No leave has been obtained. There is no appearance by that company before me. The 5th defendant, Palazzo Pty Ltd, did in conjunction with its principal, Mr Hubert, design the sculptures which are complained of and erected at the two complexes. The 6th defendant, Big Fish Workshop Pty Ltd is a company which was involved with construction of the sculpture and words and marks to this effect appear on the right foot of each sculpture. The 7th defendant, Roadshow Music NSW is not an entity but is in fact a business name the proprietor of which is the 8th defendant. It was to the 8th defendant, Roadshow Entertainment Pty Limited, to whom the material was made available by the plaintiff in 1995. There does not seem to be any evidence that it has reproduced the material.
13 There is also a suggestion that there is a sculpture in Taiwan in some way associated with some of the defendants of a similar nature but somewhat larger than the two to which I have referred.
14 I turn first to the breach of copyright claim. Clearly the plaintiff founds this upon the artistic work which I have earlier identified. In submissions the plaintiff suggested that there might be other types of work involved. There is no musical work and, to the extent that there has been the commencement of an idea for a story theme, it may be said to be literary work. However, no case of reproduction of literary work is suggested.
15 I have earlier identified the exhibit which contains, so far as is in material form, what is said to be the artistic work, namely, material on the Web site and on the cover of the CD. The reproductions of the two sculptures in Victoria can best be seen on a video which is admitted as exhibit 12. The statues also feature in documents such as annual reports and a good example of the sculpture at the Crown Cinema is on page 13 exhibit 1, the Annual Report of Village Roadshow Limited for 1997. The use of that sculpture in advertising is also well shown in exhibit 9, a folder containing a number of advertisements.
16 The nature of copyright in artistic work is the exclusive right to do any or all of the following acts.

1. Reproduce the work in a material form.
2. To publish the work.
3. To include the work in a television broadcast.
4. To cause a television programme that includes the work to be transmitted to subscribers to a diffusion serve.
Section 14 is important in that it provides that the doing of an act in respect of a work in respect of a substantial part of the work is deemed to be doing it in respect of the whole work. Before considering whether there has been any reproduction by the defendants it is necessary to note some authority. In S.W. Hart & Co. Pty Ltd v Edwards Hot Water Systems (1984-5) 159 CLR 466 at 472 Gibbs CJ said the following in respect of the notion of reproduction.
“The notion of reproduction for the purposes of copyright law, involves two elements - resemblance to, and actual use of, the copyright work, or, to adopt the words which appear in the judgment of Willmer LJ in Francis Day & Hunter Ltd v Bron (1963) Ch 587 at 614, ‘a sufficient degree of objective similarity between the two works’ and ‘some causal connection between the plaintiffs’ and the defendants’ work’. Lord Reid said in Ladbroke (Football) Ltd v William Hill (Football) Ltd (1964) WLR 273 at 276:
‘Broadly, reproduction means copying, and does not include cases where an author or compiler produces a substantially similar result by independent work without copying. And, if he does copy, the question whether he has copied a substantial part depends much more on the quality than on the quantity of what he has taken.’
(See also (1964) 1 WLR at 283, 288 and 293; (1964) 1 All ER at 473, 477 and 481.) In the same case, Lord Evershed said (1964) 1 WLR at 283, ‘that what amounts in any case to substantial reproduction…cannot be defined in precise terms but must be a matter of fact and degree”.

17 The meaning of “substantial part” has been dealt with in many cases. In Dixon Investments Pty Ltd v Hall (1990) 18 IPR 490 the Court referred to the requirement that a substantial part of the work is reproduced and said:
“It is well established that the phrase, “substantial part” refers to the quality rather than the quantity of what is taken by the infringer.”
18 One can thus see that first there has to be a reproduction of a substantial part of the artistic work as well as some causal connection between the plaintiff’s and the defendants’ work.
19 It is worth noting that one cannot have copyright in a concept. Reference to this is made in Zeccola v Universal City Studios Inc 46 ALR 189 at 192 where the Full Court said:-
“In general there is no copyright in the central idea or theme of a story or play however original it may be. Copyright subsists in the combination of situations, events and scenes which constitute the particular working out or expression of the idea or theme. If these are totally different the taking of the idea or theme does not constitute an infringement of copyright.”
20 American authority is the same. In Detective Comics Inc v Bruns Publications Inc 111 F.2d 432 the Court of Appeal said when dealing with “Superman”:-
“”So far as the pictorial representations and verbal descriptions of ‘Superman’ are not a mere delineation of a benevolent Hercules, but embody an arrangement of incidents and literary expressions original with the author, they are proper subjects of copyright and susceptible of infringement because of the monopoly afforded by the act. Since the complainant is not entitled to a monopoly of the mere character of a ‘Superman’ who is a blessing to mankind (Nichols v Universal Pictures Corp., 2 Cir., 45 F.2d 119), we think the language of clause 4(c) of the decree somewhat too sweeping.”
21 It seems therefore that the plaintiff’s case to the extent that it claims that there is an artistic work in the concept of a “Futureman” would be in error.
22 The applicant’s claim that there is a core problem with the plaintiff’s approach to the case. The plaintiff’s artistic work arises from a proposed story to be accompanied by songs. The defendants’ reproduction according to the applicants is not of that nature. There is no story, no songs but in fact merely a sculpture of a particular Future Man. According to the applicants because the core qualities of the two works are different no substantial part has been reproduced. In any event that applicants submit when one looks at both the statute and the representation of Future Man on the plaintiff’s artistic work there is absolutely no similarity.
23 In submissions the plaintiff identified the similarities as being the followings:-

1. Silver armament.
2. Yellow gloves.
3. The belt.
4. A determined face.
5. Glowing eyes.
6. Leg shield.
7. Christ consciousness.

24 I deal with these in turn.

1. Silver armament.

25 One statue appears to have a gold sheen which is suggestive of armour. The other is bronze with some blue lighting effect. In the artistic work the drawings of the Future Man are variously black and purple except where the portrayal is in human form.

2. Yellow gloves.

26 One statue wears gloves which are the same colour as the rest of the statue. In the artistic work there is one representation which has a hand with what may be a yellow glove.

3. The belt.

27 The statue has a belt with a buckle with trade mark on it. No such belt appears in most of the representations in the artistic work. Such that do appear are entirely different.

4. A determined face.

28 The statue could have either an angry or determined face. In the artistic work I would describe the face (where there is one) as angry.

5. Glowing eyes.

29 The statue has glowing eyes. In the artistic work some representations of Future Man have glowing eyes.

6. Leg shield.

30 One statue has a shin guard. In the artistic work one of the reproductions of Future Man has a shin guard on the left leg. See page 2 of the CD cover.

7. Christ consciousness.

31 In its advertising some of the defendants have used a reproduction of the statue walking on water. The plaintiff suggests that in the artistic work one of the portrayals shows the Future Man in a crucifixion position. I would have likened the position to someone about to dive or spring into space. The walking on water is alleged to be a copying of what was described as Future Man’s “Christlike Consciousness”.
32 If one compares the two statues with such portrayals as appear in the artistic work there appears to be no similarity. In the artistic work Future Man is portrayed figuratively as well as in human form. There is no consistency of portrayal and it appears to me that it is the concept of a Future Man which the plaintiff wishes to protect. That is not allowable.
33 I have noted the similarities to which the plaintiff refers but I cannot see how there could be any arguable case that there is any objective similarity between the works let alone a causal connection between them.
34 I turn to the trade mark claim propounded by the plaintiff. It is apparent that the plaintiff relies on s 120(1) of the Trademarks Act 1995 to found infringement. That section is in the following terms:-
120(1) A person infringes a registered trademark if the person uses as a trademark a sign that is substantially identical with, or deceptively similar to, the trademark in relation to goods or services in respect of which the trademark is registered.”
35 I have earlier in paragraph 3 of this judgment referred to the goods and services in respect of which the trademark is registered. For convenience I repeat that reference which is follows:-
“Amusement apparatus adapted for use with television receivers only, amusement machines, automatic and coin operated, animated cartoon, cinematographic films, compact discs, compact discs read only memory, computer programmes, computer software, computers and phonograph records being goods in class 9.”
36 The trademark in respect of which the plaintiff became registered is simply the name “FUTUREMAN”. There are a number of ways in which the defendants say the plaintiff’s claim must fail. The first of these is that it is submitted that there is no use in relation to the goods or services in respect of which the trademark is registered. The only relevant use by the defendant is the erection of the statue of Future Man either at the entrance to or in the foyer of the theatre complex and reproductions of such statutes in advertisements. The statement of goods or services includes only one subject matter in which there could be any relevant connection. That is “cinematographic films”. The question really is whether that use of the statute is a use in such services or goods. Perhaps arguably it could be suggested that the use of cinematographic films requires a theatre complex for their viewing and to that extent there may be use in connection with such goods. I do not think that on a summary dismissal basis I should rely upon this ground as there may be an arguable case which might develop later.
37 The second ground upon which reliance is placed is that use of trademark as a badge of origin of the goods indicating a connection in the course of trade between the goods and the person who supplies the goods. See Johnston & Johnston v Sterling 21 IPR 1 at 10, 12 19, 24-25. It is submitted there that the use of the statue in the cinema complexes in no way indicates a badge of origin in respect of the products in the business of the second defendant, namely, films. Bearing in mind the comments I have made in respect of the first point and the use of the Future Man sculpture in advertisements it would seem to me that it would be unsafe on a summary dismissal basis to dismiss the claim on this ground.
38 The third point which arises under s 120 is whether the use by the defendant or some of them is substantially identical with or deceptively similar to the plaintiff’s trademark. Unfortunately in submissions the defendants seem to have suggested that the question is a comparison once again between the statues in the cinema complex and the material at the Internet address and in the CD. This however is not the relevant comparison because the trademark is simply the word “FUTUREMAN”. Normally the question is whether the comparison between the mark as registered and the mark sought to be argued as an infringement leads to a conclusion that the defendants’ use of the mark indicates the origin of the goods or services as being goods or services of the applicant for registration. See Mid City v Australian Tourism Co Pty Ltd 40 IPR 20, 29. In this case the defendants use the sculpture called “FUTURE MAN”. The separation into two words I would not have thought would be of great moment. Of more importance is that in advertising the defendants use their “FUTURE MAN” and the concept of taking the potential customer into the future.
39 In considering this question the matter has to be looked at fairly widely because the ultimate decision is whether the plaintiff’s mark distinguishes his goods or services from those of the defendants. It is often said that there must be use as a badge of origin. See Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd 1963 109 CLR 407 at 425.
40 A number of cases, although dealing with applications for registration, have considered the question of deception, see for example, Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1953-54) 91 CLR 592 and Australian Woollen Mills Ltd v F.S. Walton & Co (1937) 58 CLR 641 at 658-659. When considering the question of deception all the surrounding circumstances have to be taken into consideration. This includes the circumstances in which the marks will be used, the circumstances in which the goods will be bought and sold, and the character of the probable purchasers of the goods. See Southern Cross Refrigeration at 595.
41 Always in the end it becomes a question of fact for the Court to decide whether there is such a reasonable probability of deception or confusion that the use of the title should be restrained. The plaintiff is using a mark and it use is likely to be, given the nature of the material which has been advanced in the copyright claim, a use in the interactive video market. The question will be whether the defendants’ use of the word “Future Man” in its market would be likely to cause deception. Apart from the fact that the plaintiff has not yet commenced marketing the important matter is that this is a serious factual matter for determination at the trial. In my view the matter is not one where it is appropriate for there to be summary dismissal of the claim although there are many obvious difficulties in the claim which the plaintiff will have to address if the plaintiff is to succeed.
42 I turn to the use of confidential information claim.
43 In order to succeed in this action it is necessary for the plaintiff to establish a number of elements. These are:-

(a) Identification of the information claimed to be confidential.
(b) The information must have the appropriate quality of confidentiality.
(c) The information must be disclosed in circumstances which impose on the recipient an obligation to respect the confidentiality of the information.
(d) The recipient must breach the obligation to which he was subject.

44 So far as (a) is concerned, these are now clearly identified and include the CD cover with its genesis of the story and the folder which contained the same material.
45 So far as (b) is concerned, clearly at this stage on the evidence the materials that were supplied were materials created by the plaintiff. There does not seem to be any facts which would suggest that they were not his own work and thus confidential.
46 So far as (c) is concerned, the information was disclosed in circumstances where the plaintiff was seeking to encourage the 8th defendant to participate in some joint venture between them. At least at the level at which I am considering the matter one would have thought that the circumstances were sufficient to impose an obligation to respect the confidentiality of the plaintiff’s creation.
47 The matter of most probable dispute is whether there has been any breach of the obligation in respect of confidentiality. In this regard it is clear that there is a time lapse of some two years between the giving of the information and subsequent appearances of the Future Man statues in the cinema complexes. The factual material presently before the Court does not establish that the appearance of these statues is in any way linked with the providing of the confidential information to the 8th defendant. The proceeding are only just commencing and there may be many areas of evidence which may be uncovered to lead to a Court to form a view that links the supply of the material to the subsequent production of the statute. As yet there have been no interrogatories. In these circumstances I do not think that one could conclude that the plaintiff will be unable at the hearing to establish the necessary breach. Accordingly, I am not satisfied that it is appropriate to summarily dismiss the plaintiff’s claim for this matter.
48 In the result I am satisfied that the plaintiff’s claim in respect of copyright cannot succeed but the claims in respect of trademark and breach of confidential information should go ahead.
49 In these circumstances the orders that I make are:-

1. Paragraphs 3 to 10 inclusive in the Statement of Claim be struck out.
2. Plaintiff pay the defendants’ costs of the motion.

Last Modified: