Buttrose v The SENIOR'S Choice (Australia) Pty Ltd
[2013] FCCA 2050
•5 December 2013
FEDERAL CIRCUIT COURT OF AUSTRALIA
| BUTTROSE & ANOR v THE SENIOR'S CHOICE (AUSTRALIA) PTY LTD & ANOR | [2013] FCCA 2050 |
| Catchwords: CONSUMER LAW – Breach of Act – passing off. PRACTICE & PROCEDURE – Judgment – summary judgment entered for Applicants. |
| Legislation: Copyright Act 1969, ss.36, 32, 35(5), 31(1) Federal Circuit Court of Australia Act 1999, s.17A |
| Stolt-Nieslen Pty Ltd & Anor v Ausstar Commodity & Marketing Pty Ltd [2013] FCCA 602 Henderson v Radio Corporation Pty Ltd (1960) 60 SR NSW 576 Pacific Dunlop Ltd v Hogan & Anor [1959] FCA 185 Thompson v Australia Capital Television Pty Ltd (1996) 186 CLR 574 Sydneywide v Red Bull (2002) 55 IPR 354 BM Auto Sales Pty Ltd v Budget Rent A Car System Pty Ltd (1977) 51 ALJR 254 Global Sportsman Pty Ltd v Mirror Newspapers Pty Ltd (1984) 2 FCR 82 Riley McKay Pty Ltd v Bannerman (1977) 15 ALR 561 |
| First Applicant: | ITA BUTTROSE |
| Second Applicant: | ITA BUTTROSE PTY LTD |
| First Respondent: | THE SENIOR'S CHOICE (AUSTRALIA) PTY LTD |
| Second Respondent: | ANDREW PHILPOT |
| File Number: | MLG 1053 of 2013 |
| Judgment of: | Judge Jones |
| Hearing date: | 11 November 2013 |
| Date of Last Submission: | 11 November 2013 |
| Delivered at: | Melbourne |
| Delivered on: | 5 December 2013 |
REPRESENTATION
| Counsel for the Applicants: | Mr Rivette |
| Solicitors for the Applicants: | Hunt & Hunt |
| Mr Philpot appeared for the First Respondent. |
| Mr Philpot appeared in person. |
THE COURT DECLARES THAT:
The conduct of the Respondent, whether by themselves, their directors, officers, employees or agents or otherwise, constitutes:
(a)A contravention of sections 18 and 29 of Schedule 2 of the Competition and Consumer Act 2010.
(b)An infringement under section 36 of the Copyright Act 1968 of the copyright in the photographic work described in paragraph 15 of the Statement of Claim.
(c)Passing off.
THE COURT ORDERS THAT:
Judgment be entered for the First and Second Applicant (“the Applicants”) with damages to be assessed.
The Respondents, whether by themselves, their directors, officers, employees or agents or otherwise, are restrained by injunction from using the name, image or likeness of the First Applicant, or any names, images or likenesses that are misleading or deceptively similar to the name image or likeness of the First Applicant in the course of trade on or in relation to any goods or services not emanating from the Applicants or either of them.
The Respondents, whether by themselves, their directors, officers, employees or agents or otherwise are restrained by injunction from:
(a)selling, or by way of trade offering or exposing for sale; or
(b)by way of trade exhibiting;
reproductions of the photograph work or substantial part of it, without the licence or authority of the Applicants, or either of them, or otherwise procuring or inducing any other person to do any of the acts specified in this order.
The Respondents, whether by themselves, their directors, officers, employees or agents or otherwise, are restrained by injunction from engaging in conduct that is likely to lead members of the trade or public into the false belief that:
(a)the First and/or Second Respondent’s goods and/or services:
(i)are created with the authority of or approval of the First and/or Second Applicant; and
(ii)have the sponsorship, approval or endorsement of the First and/or Second Applicant.
(b)the First and/or Second Respondents have the sponsorship of the First or Second Applicant or is affiliated with the First or Second Applicant, and thereby creating the false belief that:
(i)the First and/or Second Respondents’ business practices align with those of the First Applicant;
(ii)the values or products or services of the First and/or Second Respondent offered align with the values of the First and/or Second Applicant; and
(iii)the First and/or Second Applicant endorses the goods and services offered by the First Respondent, including the sale of franchises of its business.
The Respondent, whether by themselves, their directors, officers, employees or agents or otherwise be restrained by injunction, from passing off, continuing to pass off and threatening to pass off:
(a)the goods or services of the First and/or Second Respondent as and for:
(i)goods and services which, are manufactured by or under the authority of the Applicants, or either of them;
(ii)goods or services which have the sponsorship or approval of the Applicants, or either of them ; and
(b)the Respondents, and either of them, as being the First or Second Applicant or being approved by or connected or associated or affiliated with the First or Second Applicant;
by using in any manner whatever the First Applicant’s name, image or likeness, or any names, images or likenesses that are misleadingly or deceptively similar to the name image or likeness of the First Applicant in the course of trade on or in relation to any good or services not emanating from the Applicants or either of them.
An injunction under section 232 of the “Australian Consumer Law”, as amended, requiring the First and Second Respondents to carry out corrective measures in respect of the conduct complained of in the Statement of Claim by publishing such corrective advertising as to the Court shall deem fit.
The Respondents delivery, up on oath, to the Applicants, or its duly authorised agents, for destruction, all goods or items in the possession, power, custody or control of the First Respondent, or its directors, officers, employees or agents, or the Second Respondent, or its servants or agents, to which the First Applicants’ name, image, or likeness has been applied without licence or authority of the First or Second Applicant.
The Respondents delivery, up on oath, to the Applicants, or their duly authorised agents, for destruction under supervision, all signs, posters, branding, promotional and advertising material, catalogues, price lists, brochures and other documents and materials in the possession, power custody of the First Respondent or its directors, officers, employees or agents, or the Second Respondent, or its servants or agents, bearing the First Applicant’s name, image or likeness, or any names, images or likenesses that are misleadingly or deceptively similar to the name image or likeness of the First Applicant.
The Defence dated 12 September 2013 filed on behalf of the First and Second Respondents be placed in a sealed envelope on the Court file and not be made available for inspection by any person who is not a party to the proceedings.
Pursuant to section 45 of the Federal Circuit Court of Australia Act 1999 the Court declares that it is appropriate to allow discovery.
The Applicants file and serve by close of business on Wednesday, 13 November 2013 a list of documents that they require the Respondent to discover.
The Respondent file and serve a list of documents in response to order 12 herein by 25 November 2013 with inspection to be as agreed between the parties but no later than 20 December 2013.
The matter be listed for hearing on 3 March 2014 (for an estimated one day hearing) to determine quantum of loss and damage.
Costs of this day be reserved.
| FEDERAL CIRCUIT COURT OF AUSTRALIA AT MELBOURNE |
MLG 1053 of 2013
| ITA BUTTROSE |
First Applicant
| ITA BUTTROSE PTY LTD |
Second Applicant
And
| THE SENIOR'S CHOICE (AUSTRALIA) PTY LTD |
First Respondent
| ANDREW PHILPOT |
Second Respondent
REASONS FOR JUDGMENT
Introduction
The application before me for determination is an Application in a Case filed by the applicants pursuant to s.17A of the Federal Circuit Court of Australia Act 1999 (“the FCC Act”) or r.13.07 of the Federal Circuit Rules 2001 (“the FCC Rules”) for summary judgment against the respondents for the following claims:
a)Infringement of copyright under s.36 of the Copyright Act 1969 (Cth) (“the Copyright Act”);
b)Passing off; and
c)Breach of ss.18 and 29 schedule 2 of the Competition and Consumer Act 2010 (Cth) (“the CC Act”).
In essence, under both provisions of the FCC Act and the FCC Rules, if there is evidence of fact on which the claim is based and the Court is satisfied that the respondent has no reasonable prospect of successful defending the claim, then judgment may be given on that claim.
The applicants seek summary judgment on liability and declaratory and injunctive orders, with quantum of loss and damage being assessed following discovery of various financial records and at a subsequent hearing.
In support of the application, the applicants rely on the affidavits of:
a)Winston Franklin Elliott Broadbent sworn 16 October 2013 (“the Broadbent affidavit”);
b)Maria Nemeth sworn 16 October 2013 February 2012 (“the first Nemeth affidavit”) and 18 November 2013 February 2012 (“the second Nemeth affidavit”)
The respondent’s defence filed 11 September 2013 contained, in general, bare denials with no particulars. The Broadbent affidavit which set out the evidence of fact that the applicants primarily rely on was filed subsequent to the filing of the defence. Mr Philpot was self-represented and had been given leave by Judge O’Dwyer, at a previous return date, to appear on behalf of the first respondent. In these circumstances, I asked Mr Philpot a series questions in relation to the evidence of fact upon which the applicants’ claim was based and largely contained in the Broadbent affidavit. Mr Philpot’s responses to these questions, albeit not on oath but in my view given honestly, together with the affidavits of the applicants referred to above formed the factual basis against which the Court determined whether to grant the applicants’ application for summary judgment.
At the completion of the hearing I informed the parties I had decided to grant summary judgment and would issue orders forthwith. With no objections from the parties, I stated I would issue my reasoning and decision in due course.
Background
The second applicant holds the rights to exclusively exploit the name, image and likeness and trademarks and other marks of the first applicant for fee or reward under condition that the first applicant has final approval of any association or endorsement.
The first applicant’s achievements during her career in media, business and charitable activities relevantly includes the following:
·National President of Alzheimer’s Australia, Patron of the Macular Disease Foundation and Emeritus Director of Arthritis Australia;
·an officer of the Order of Australia for services to the community especially in the field of public health education;
·a recipient of an OBE for services to journalism;
·a recipient of the Centenary Medal for leadership to Australian society; and
·2013 Australian of the year.
Mr Broadbent is Managing Director of Saxtons Speakers Bureau (“Saxtons”). Saxtons is an agent for the first and second applicants and this involves it and, in particular, Mr Broadbent in the negotiations of commercial arrangements on behalf of the applicants. Since about
24 September 2009, Mr Broadbent has been involved in negotiating commercial associations and endorsements for the applicants. The negotiations and finalisation of any commercial arrangements involving associations and endorsements of the applicants in which the name, image or likeness of the first applicant has been used for such purposes has been subject to the approval of the first applicant.
I am satisfied having regard to the achievements of the first applicant, the first applicant has a substantial reputation amongst the business community and general public in Australia and that corporations and businesses have paid licencing and other fees for, inter alia, the use of the first applicant’s name, image and likeness and/or the first applicant’s sponsorship or endorsement of their products or services.
The first respondent is engaged in the business of providing in-house services for the elderly and the selling of licence/distribution agreements for the provision of in-house services to the elderly. The second respondent is a director of the first respondent. There is another director, Mr Con Barris. However, Mr Barris plays a largely peripheral role in the business. Mr Philpot states that the first respondent was created by him. Mr Ashley Wilson, Operations Manager, who is involved in its day to day operations would go to him to talk about the business.
Mr Broadbent deposes that on 28 September 2012 he received a telephone call from Mr Philpot who explained that he was one of the owners of the first respondent and inquired how an endorsement would work with the first applicant. Mr Philpot agreed that he had conversation with Mr Broadbent and that, “we approached them in relation to Ita making a television ad for us – 30 second television ad and: And the – we actually – we were understood to believe that Winston was a – represented a number of people, a commission agent, as such and the, in fact, actual manager of Ita Buttrose was Harry M. Miller in Sydney. We, then – he, then, mentioned that, you know, that if Ita was to get involved with your company and endorse your service it would be for a period of 12 months and she would be able to do radio interviews, press interviews, product launches, you know, whatever television ads you want her to make and the amount of money – well, we didn’t have that sort of money, your Honour.”[1]
[1] Transcript of proceedings, p.28, line 20
Mr Philpot agrees that he received an email from Mr Broadbent dated 1 October 2012 (Annexure WB-01, Broadbent affidavit) referring to the conversation and requesting from Mr Philpot background on the first respondent. Mr Philpot agrees that he sent an email on the same day to Mr Broadbent directing him to view the first respondent’s website, for any background on the first respondent and himself and stating:
“…I am having a meeting with stakeholders this week, to discuss this matter and how much we really can afford to put into TV advertising. Our margins are low, and we only operate in Melbourne at this stage, at this point in time we use to obtain new leads for our Business, as this is very cost effective ($300 a week to be number 1 on a search) and people searching google are ready to act/buy now as opposed to someone who may watch a tv ad and respond that way…which is a very expensive lead!
I will contact you soon as i have an outcome” (Annexure
WB-02, Broadbent affidavit)Mr Philpot agreed that he was sent an email dated 2 October 2012 from Mr Broadbent (Annexure WB-03, Broadbent affidavit) which set out how an endorsement for the first applicant might work and attached a profile of first applicant which included a photograph of the first applicant which Mr Broadbent states, and I accept, was in digital electronic form. This photograph is a “headshot” of the first applicant and shall be referred to in this decision as “the photographic image.”
Mr Broadbent deposes that the photographic image of the first applicant was taken by a Mr Ross Coffey, employed by Ross Coffey Photography Pty Ltd. The photographic image was commissioned and paid for by the second applicant. A Deed of Assignment was entered into between Ross Coffey Photography Pty Ltd and the second applicant on 14 May 2013 confirming that copyright in the work vested in the second applicant at the date of the commission. (Annexure WB-09, Broadbent affidavit)
Mr Broadbent deposes that he did not hear from the second respondent after sending the email dated 2 October 2012. However, in or about
17 April 2013, he was informed by a third party that the first respondent was using a photographic image of the first applicant together with a link to an interview which the first applicant conducted on ABC radio (“the ABC interview”) on their website. Mr Broadbent deposes that he then searched the website of the first respondent, discovered that they had used the image of the first applicant which was identical to the photographic image sent in the email dated 2 October 2012 and that that image was used in conjunction with a link to the ABC interview during which the first applicant spoke about dementia. Mr Broadbent states that he did not keep a copy of the website on that day.
The second respondent stated in relation to these matters deposed by Mr Broadbent:
“MR PHILPOT: Your Honour, after our discussions with Mr Broadbent we couldn’t go any further, mainly because of the costs, and our Ashley, our operations manager, said “I’ve just gone to Google and I’ve clicked on an interview that Ita Buttrose has done about dementia but with the ABC”. And that link is put onto the Senior – well, it was actually emailed and then put on – it was put on the Senior’s Choice website and it was there for several days.
HER HONOUR: The interview?
MR PHILPOT: The interview with Ita Buttrose and the ABC and there was an image of Ita next to the – and I’m presuming that the ABC put that material on the internet. That link was taken and put onto a home page of the Senior’s Choice and it was there for several days…”[2]
[2] Transcript of proceedings, p.33, line 45 & p.34 lines 5 & 10
Mr Broadbent stated that the respondents were not given permission by the applicants or Mr Broadbent, acting on their behalf, to post the image of the first applicant. Mr Philpot also stated that Mr Ashley Wilson, the Operations Manager of the first respondent, “run it past me. I’m a Director. I take responsibility.”[3]
[3] Transcript of proceedings, p.34 line 25
On the basis of this material, the Court is satisfied that a link to an ABC interview with the first applicant together with the photographic image of the first applicant was posted on the website of the first respondent and that this was done with the knowledge and authorisation of the second respondent but without the permission or authorisation of the applicants. The Court accepts Mr Philpot’s statements that it was unintentional, as it seemed to him, the information was on the public domain.
Mr Broadbent deposes that on 17 April 2013 he sent an email to the respondents advising that he had been made aware that the first applicant’s image was displayed on their website without approval and demanding that it be removed immediately (WB-05, Broadbent affidavit). Mr Broadbent deposes that he attempted to contact the second respondent by telephone on 17 April 2013 unsuccessfully and subsequently on the same date sent an email to the respondents stating that they were using an image of the first applicant on their website without approval or permission and to remove it immediately and that if, “if we have not heard as to its removal by 12 noon tomorrow then we will pursue further action.” (WB-06 Broadbent affidavit) Mr Philpot denies that he received the email dated 17 April 2013.
Mr Broadbent deposes that on 19 April 2012 (sic) he undertook another internet search and found Google images and two posts on Facebook, both of which showed the image of the first applicant had been used. The first page of annexure WB-04 of the Broadbent affidavit shows the results of Google search for, “theseniorschoice.com.au” which displays various images including the photographic image of the first applicant. The second page of WB-04 contains a copy of a Facebook posting dated 16 April 2013 which commences with, “Here is a disgusting ad for Nursing Home. there is then the photographic image of the first applicant and alongside that is the following:
“The Senior’s Choice (Australia) Pty Ltd
care, home care, respite care, homecare services, home care worker, home instead, care for elderly, home care options, home health care australia (sic)”
There follows a number of comments which can only be described as adverse.
The third page of WB-04 also contains a Facebook posting which commences, “This ad is disgusting it needs to be taken off the air, isnt Ita buttrose australian (sic) of the year? what a disgrace.” There the follows the photographic image of the first applicant and along aside that the following:
“The Senior’s Choice (Australia) Pty Ltd
care, home care, respite care, homecare services, home care worker, home instead, care for elderly, home care options, home health care australia (sic)”
There then follows what can only be described as adverse comments posted on that Facebook posting regarding the advertisement and the connection of the first applicant with that advertisement. For example one comment states, “Ita Buttrose, author of ‘A Guide to Australian Etequette’ ! So much for courtesy and good manners Ms Buttrose, there isn’t a shred of either in the seniors advert.”
Mr Philpot stated that whilst the image of the first applicant is apparent on the Google search of the first respondent’s website, the respondents know nothing about it and did not post it. In relation to the evidence of the Facebook postings, Mr Philpot conceded that there is an image of the first applicant on the first respondent’s website but that if it got there he did not know how it got there.[4]
[4] Transcript of proceedings, p.27 – line 5-35
Mr Broadbent deposes that on 23 April 2013 he undertook a further search of the worldwide web and became aware that the Senior’s Choice was using the photographic image of the first applicant on the Seek.com website to promote its business and sale of business franchises by first respondent. WB-07 of the Broadbent affidavit sets out copies of the Seek advisements using the first applicant’s photographic image.
The contents of WB-07 contain four advertisements posted on the Seek.com website which follow the same structure. Firstly, there is a heading that states, “The Federal Government has made this the fastest growing business in Australia!”. Then there is the photographic image of the first applicant and under that image the following:
“At The Senior’s choice we provide In-Home care/support Australia-wide, enabling people to live independently in their own Home, and retain their dignity…
Licence / Distribution
posted: 16 Apr 13
$75,000
Sydney
The Seniors Choice”
The only differences in the four advertisements are the references to the capital city. There is one each for Sydney, Melbourne, Brisbane and Perth.
Mr Philpot conceded that the advertisements contained in WB-07 were placed by the first respondent without the authority of the applicants, that the photographic images of the first applicant that appeared on the first respondent’s home page appear on the Seek.com advertisements.[5]
[5] Transcript of proceedings, p.32 – line 30-40
Summary judgment – legal principles
Section 17A of the FCC Act provides:
“(1)The Federal Circuit Court of Australia may give judgment for one party against another in relation to the whole or any part of a proceeding if:
(a)the first party is prosecuting the proceeding or that part of the proceeding; and
(b)the Court is satisfied that the other party has no reasonable prospect of successfully defending the proceeding or that part of the proceeding.
(2)The Federal Circuit Court of Australia may give judgment for one party against another in relation to the whole or any part of a proceeding if:
(a)the first party is defending the proceeding or that part of the proceeding; and
(b)the Court is satisfied that the other party has no reasonable prospect of successfully prosecuting the proceeding or that part of the proceeding.
(3)For the purposes of this section, a defence or a proceeding or part of a proceeding need not be:
(a) hopeless; or
(b) bound to fail;
for it to have no reasonable prospect of success.
(4)This section does not limit any powers that the Federal Circuit Court of Australia has apart from this section.”
In Stolt-Nieslen Pty Ltd & Anor v Ausstar Commodity & Marketing Pty Ltd [2013] FCCA 602, Judge O’Dwyer set out, with respect, a helpful summary of the applicable principles, in particular regarding the expression, “no reasonable prospect of success” at [33] to [35] (footnotes omitted):
“33.There is now much authority as to the interpretation and application of the expression “no reasonable prospect of success”, both as it is used in the FCC Act and the FCC Rules, but also in respect of s.31A of the Federal Court of Australia Act 1976 (“the FCA Act”) which has a like provision.
34.A useful summary of the present law can be found in the High Court's consideration of s.31A of the FCA Act in Spencer v The Commonwealth of Australia. In this decision, the majority of the Court observed that a power under s.31A of the FCA Act (in this instance, s.17A of the FFC Act or r.13.07 of the FCC Rules) may be exercised if:
a)the Court is satisfied that the defence has no reasonable prospect of success;
b)the power to dismiss an action summarily is not to be exercised lightly;
c)the legislative intent of the provision will be defeated if its application is read as confined to cases of the kind which fell within an earlier, different procedural regime;
d)it is not necessary to demonstrate certainty of failure (in the sense of the defence being hopeless or bound to fail) in order to show that the defence has no reasonable prospect of success, and in that respect there is now a less demanding assessment of the merit of a defence; and
e)the Court should nevertheless proceed with caution on an application for summary judgment.
35.In respect of s.31A of the FCA Act, the Federal Court has observed that:
a)a Court must be satisfied that the Respondent has no reasonable prospect of successfully defending the claim;
b)the Court need not be satisfied that the defence is hopeless and bound to fail;
c)Parliament’s intention of introducing the provisions concerning summary judgment was to lower the bar for obtaining summary judgment (including summary dismissal) below that previously fixed by authorities like Dey v Victorian Railways Commissioners and General Steel Industries Inc v Commissioner for Railways (NSW) and others which required that the allegations/defences to be so clearly untenable that they could not possibly succeed;
d)there was not an intention on Parliament’s part to remove the bar completely, and the Court must be very cautious not to do a party an injustice by summarily dismissing proceedings or, in this case, summarily entering judgment;
e)evidence of an ambivalent character will usually be sufficient to amount to a reasonable prospect of success in a case where evidence can give colour and context to allegations. Where questions of fact and degree are important, a Court should be more reluctant to dismiss a proceeding (or enter judgment) on the face of the pleading;
f)it is not Parliament’s intention to require a Court to engage in lengthy and elaborate trials on an interlocutory basis for the purposes of determining whether or not a proceeding has no reasonable prospect of success. It may be necessary for opposing parties to provide more than an outline of evidence, sufficient to show that there is a genuine dispute, to prevent the summary application before a trial;
g)if there is a real issue of fact or law to be decided, and the rights of the parties depend upon it, it is obviously appropriate that the matter goes to trial. It cannot be said, where there is a real factual dispute and that factual dispute must be resolved to determine whether the claim succeeds, that there is “no reasonable prospect of success;”
h)in determining if there are real issues of fact in dispute so as to preclude summary judgment, the Courts must draw reasonable inferences in favour of the non-moving party;
i)a summary judgment proceeding ought not be used to shut out proceedings where, like propositions of law, there may be real doubt; questions of law, and enquiry as to the merit, should not be for the purpose of resolving them and also not simply to determine whether the argument is hopeless, but in order to decide if it is sufficiently strong to warrant the trial;
j)the mere presence of a trifling, implausible, tenuous or tangentially relevant factual controversy is not a bar to the exercise of summary dismissal power; and
k)what is required is a prediction of the outcome of the trial on its merits, but not an actual adjudication of those merits such that a court ought not dismiss a claim based on a predictive assessment of prospects, where it is possible that if the claim went to trial, it may succeed.”
Issue to be determined
The issue to be determined is whether the respondents have no reasonable prospect of successfully defending any of the following claims pleaded against them in the Statement of Claim:
a)An infringement under s.36 of the Copyright Act of the copyright in the photographic work described in paragraphs 15 of the Statement of Claim;
b)Passing off; and
c)A contravention of ss.18 and 29 of Schedule 2 of the CC Act.
Consideration
Copyright Act
The second applicant claims copyright in the photographic image of the first applicant, as an artistic works under s.32 of the Copyright Act.
Section 213(5) of the Copyright Act provides:
“5.Where, in the case of a work being a photograph, portrait or engraving:
(a)a person made, for valuable consideration, an agreement with another person for the taking of the photograph, the painting or drawing of the portrait or the making of the engraving by the other person; and
(b) the work was made in pursuance of the agreement;
the first‑mentioned person is the owner of any copyright subsisting in the work by virtue of Part III.”
I am satisfied that in the circumstances, the photographic work was an artistic work and that copyright of the photographic image vested in the second applicant.
Section 31(1)(b) of the Copyright Act sets out the exclusive rights of owners of copyright in original artistic works as being:
“(b)in the case of an artistic work, to do all or any of the following acts:
(i) to reproduce the work in a material form;
(ii) to publish the work;
(iii) to communicate the work to the public; and”
Under section 36(1) of the Copyright Act,[6] the rights of the copyright owner are infringed where another person who “not being the owner of the copyright, and without the licence of the owner of the copyright, does in Australia, or authorizes the doing in Australia of, any act comprised in the copyright”.
[6] Reproduced in Schedule A
Mr Philpot says that the first respondent placed the link to the ABC interview together with the photographic image on the Seniors Choice Website. He also says that the Seek.com advertisements, using the photographic image, were also placed by the first respondent.
In these circumstances, I am satisfied the first respondent has no reasonable prospect of successfully defending the claim that it has infringed the second applicant’s reproduction right; publication right and communication rights under section 31(1)(b) of the Copyright Act.
The applicants’ claim that the second respondent has no reasonable prospect of successfully defending the claims for liability as a joint tortfeasor for the infringement of the copyright or for authorising the infringement.
It is unnecessary to consider the second respondent’s liability as tortfeasor, it being sufficient to say that on the material before the Court, the second respondent has no reasonable prospects of defending the applicant’s claim Mr Philpot has breached s.101 of the Copyright Act.
Section 101 of the Copyright Act relevantly provides:
“(1)Subject to this Act, a copyright subsisting by virtue of this Part is infringed by a person who, not being the owner of the copyright, and without the licence of the owner of the copyright, does in Australia, or authorizes the doing in Australia of, any act comprised in the copyright.
(1A)In determining, for the purposes of subsection (1), whether or not a person has authorised the doing in Australia of any act comprised in a copyright subsisting by virtue of this Part without the licence of the owner of the copyright, the matters that must be taken into account include the following:
(a)the extent (if any) of the person’s power to prevent the doing of the act concerned;
(b)the nature of any relationship existing between the person and the person who did the act concerned;
(c)whether the person took any other reasonable steps to prevent or avoid the doing of the act, including whether the person complied with any relevant industry codes of practice.”
The second respondent appears to be the guiding mind of the business and appears to have control of the company, and although there is another director by the name of Con Barris, the weight of the information before me, is to the effect that the second respondent runs and controls the business.
Mr Philpot said that he authorised the action of Mr Ashley in placing the link to the ABC interviews, together with the photographic image of the first respondent’s website. There is no doubt that, as the controlling mind of the business, Mr Philpot would have no reasonable success in defending his liability, for the actions of the first respondent in placing the Seek.com advertisements, under s.101 of the Copyright Act.
Passing Off.
I am satisfied that the following extract from the applicant’s written submission fairly set the applicable law at [23] to [30] (footnotes omitted):
“28.Briefly, the law of passing off can be summarised in one short general proposition – no man may pass off his goods as those of another. That is, a trader is not permitted to use names, marks or other indicia so as to induce purchasers to believe that the goods which he is selling are the goods of another person, or authorised by that other person.
29.Historically passing off required that the applicant and respondent had to be in a “common field of activity.” However, a case dealing with the unauthorised appropriation of personality through the use of a photographic image, Henderson v Radio Corporation, removed the requirement, extending passing off to protect persons who were not in trade in the traditional sense, thereby opening the way for passing off to be used as an effective cause of action for the misappropriation of personality.
30.The “classical trinity” of elements to establish a passing off claim are:
(a)a reputation in the applicants products or image or personality;
(b)a misrepresentation by the respondent’s use of the same or a similar get-up, or the applicant’s image or personality to indicate that the respondent’s products are the same as the applicant’s products or licensed, authorised or endorsed by the applicant;
(c) damage flowing from such misrepresentation.”
As stated earlier I am satisfied that the first applicant has a valuable reputation.
Further, I accept the submission of the applicants that the fact of Mr Philpot contacting Mr Broadbent to enquire as to the terms and cost of an endorsement by the first applicant, is evidence that the respondents themselves were aware of the first applicant’s valuable reputation, and the benefit to their business, products and services of her endorsement.
As to the second limb, there is no requirement that the applicants prove subjective intention to mislead or actual deception.[7] The misrepresentation need only be likely to lead the public to believe that the goods are those of the applicant/owner or are endorsed by the first applicant.
[7] Sydneywide v Red Bull (2002) 55 IPR 354 at [62] per Weinberg and Dowsett JJ; BM Auto Sales Pty Ltd v Budget Rent A Car System Pty Ltd (1977) 51 ALJR 254 at 258 per Gibbs J.
It is evident in relation to the Facebook postings referred to at [21] to [24] above that members of the public believed the advertisements of the first respondent were endorsed by the first applicant.
The second respondent stated that the first respondent placed the Seek.com advertisements. It was a deliberate action, which I can infer, was intended to lead the public into believing the first applicant endorsed the product (the licence/distribution agreement) being sold. As Mr Philpot says the respondents were not authorised to use the photographic image, the logical conclusion is that the conduct constituted actual deception.
I am satisfied the placing of the photographic image on the respondent’s website and on Seek.com would lead the public, including those members inquiring about a licence/distribution agreement, to believe the first applicant endorsed the first respondent’s business.
As to damage flowing from misrepresentation, in Henderson v Radio Corporation Pty Ltd[8] Manning J held (at p.603) that the plaintiffs had acquired a reputation (as ballroom dancers) which placed them in the position to earn a fee from any recommendation they might give to aid the sale of recorded dance music of the type in question. His Honour stated (at p.603):
“The result of the defendant's action was to give the defendant the benefit of the plaintiffs' recommendation and the value of such recommendation and to deprive the plaintiffs of the fee or remuneration they would have earned if they had been asked for their authority…”
[8] (1960) 60 SR NSW 576
In Pacific Dunlop Ltd v Hogan & Anor [1959] FCA 185, Beaumont J observed at [42]:
“…The cause of action for passing-off is complete as soon as the relevant misrepresentation is made, even though no actual deception and damage to the plaintiff can be shown to have resulted from it…”
However, in this present case, there is direct evidence of actual damage, in this case the fee typically charged by the applicants for endorsement of a product or service.
As stated earlier the second respondent was the controlling mind of the business and authorised the conduct of his employee in posting the image of the first applicant on the first respondent’s website.
In Thompson v Australia Capital Television Pty Ltd (1996) 186 CLR 574 at 580-581, the majority (Brennan CJ, Dawson and Toohey JJ) said:
“As was said in The Koursk for there to be joint tortfeasors “there must be a concurrence in the act or acts causing damage, not merely a coincidence of separate acts which by their conjoined effect cause damage.” Principal and agent may be joint tortfeasors where the agent commits a tort on behalf of the principal, as master and servant may be where the servant commits a tort in the course of employment. Persons who breach a joint duty may also be joint tortfeasors. Otherwise, to constitute joint tortfeasors two or more persons must act in concert in committing the tort.”
I am satisfied there is no reasonable prospect of the first respondent successfully defending the claims in passing off. Further, I am satisfied there is no reasonable prospect of the second respondent successfully defending the claims for liability as a joint tortfeasor in passing off.
Competition and Consumer Act 2010.
Section 18
Section 18(1) of Schedule 2 of the CC Act provides:
“18(1)A person must not, in trade or commerce, engage in conduct that is misleading or deceptive or is likely to mislead or deceive.”
I accept the following extract from the applicants written submissions as a correct summary of the applicable principles in relation to s.18:
“40.Under the CCA, when determining whether particular conduct was, or is, likely to mislead or deceive it is unnecessary to prove that anyone was actually misled or deceived.[9] The test is objective, and the Court must determine the question for itself.[10] Conduct is likely to mislead or deceive if there is a real and not remote possibility that it will do so, and it is not necessary to establish that the degree of likelihood exceeds 50%.[11]
41.Nor is it relevant whether the first respondent was acting honestly and reasonably or that it thought that it was entitled to do what it did. It is simply a question of whether potential customers (which include the astute and the gullible, the intelligent and the not so intelligent, and the well educated and the poorly educated) are at serious risk of being misled or deceived.”[12]
[9] Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191 at 198.
[10] Taco Company Australia Inc v Taco Bell Pty Ltd (1982) 42 ALR 177 at 202.
[11] Global Sportsman Pty Ltd v Mirror Newspapers Pty Ltd (1984) 2 FCR 82 at 87.
[12] au Domain Administration Ltd v Domain Names Australia Pty Ltd (2004) 207 ALR 521 at [12]–[15] and National Exchange Pty Ltd v ASIC (2004) 49 ACSR 369.
I am satisfied that the first respondent was engaged in trade and commerce. The business involved both the provision of in-house care to the elderly and selling licence/distribution agreements for $75,000.00. Advertisements for the licence/distribution agreements were placed on Seek.com using the photographic image of the first applicant to promote the business and the sale of the licence/distribution arrangements.
I am satisfied the conduct of the first respondent in using the photographic image of the first applicant without permission on its website and in its Seek.com advertisement would be likely to deceive and mislead members of the trade, business or public to believe that the services offered by the first respondent had the endorsement or approval of the first applicant or were sponsored by her.
The evidence of the reaction of the public, (see at [21] to [24]), enables an inference that there is a real and not remote possibility that the conduct is likely to mislead or deceive.[13]
Section 29
[13] Global Sportsman Pty Ltd v Mirror Newspapers Pty Ltd (1984) 2 FCR 82.
Section 29 (1) of Schedule 2 of the CC Act relevantly provides:
“A person must not, in trade or commerce, in connection with the supply or possible supply of goods or services or in connection with the promotion by any means of the supply or use of goods or services:
(e)make a false or misleading representation that purports to be a testimonial by any person relating to goods or services; or
(f) make a false or misleading representation concerning:
(i) a testimonial by any person; or
(ii) a representation that purports to be such a testimonial;
relating to goods or services; or
(g)make a false or misleading representation that goods or services have sponsorship, approval, performance characteristics, accessories, uses or benefits; or
(h)make a false or misleading representation that the person making the representation has a sponsorship, approval or affiliation.”
The representation in this case is the conduct involving the use of the photographic image on the first respondent’s website and on Seek.com such as to convey to the public that the first applicant endorsed or approved of the services offered by the first respondent. It is not necessary for there to have been an intention to make a false or misleading representation.[14]
[14] Riley McKay Pty Ltd v Bannerman (1977) 15 ALR 561.
I am satisfied there is no reasonable prospect of the first respondent successfully defending the claims for breach of ss.18 & 29 of Schedule 2 of the CC Act.
Section 75B(1)(c) of the CC Act relevantly extends liability for contravention of a provision of the Act to a person who:
“…
(c)has been in any way, directly or indirectly, knowingly concerned in, or party to, the contravention; or
…”
For the reasons set out earlier in this decision, I am satisfied that the second respondent falls within the scope of s.75B(1)(c).
Consequently, I find that there is no reasonable prospect of the second respondent successfully defending the claims for breach of ss.18 & 29 of Schedule 2 of the CC Act.
Conclusion
Summary judgment shall be entered in favour of the first and second applicant, and the non monetary orders sought in the application made.
The determination of any quantum of damages shall be determined at a further hearing and order as to discovery shall be made for that purpose.
I certify that the preceding seventy (70) paragraphs are a true copy of the reasons for judgment of Judge Jones
Associate:
Date: 5 December 2013
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