Knight v Beyond Properties Pty Ltd (No 3)

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FEDERAL COURT OF AUSTRALIA

Knight v Beyond Properties Pty Ltd (No 3) [2006] FCA 193

ANDREW KNIGHT v BEYOND PROPERTIES PTY LTD & ORS

NSD 131 of 2005

LINDGREN J
10 MARCH 2006
SYDNEY


IN THE FEDERAL COURT OF AUSTRALIA

NEW SOUTH WALES DISTRICT REGISTRY

NSD 131 OF 2005

BETWEEN:

ANDREW KNIGHT
APPLICANT

AND:

BEYOND PROPERTIES PTY LTD (ACN 002 861 458)
FIRST RESPONDENT

BEYOND INTERNATIONAL LTD (ACN 003 174 409)
SECOND RESPONDENT

DISCOVERY COMMUNICATIONS INC
THIRD RESPONDENT

SPECIAL BROADCASTING SERVICE CORPORATION (SBS) (ABN 91 314 398 574)
FOURTH RESPONDENT

FOXTEL MANAGEMENT PTY LTD (ACN 068 671 938)
FIFTH RESPONDENT

BEYOND PROPERTIES PTY LTD (ACN 002 861 458)
FIRST CROSS-CLAIMANT

BEYOND INTERNATIONAL LTD (ACN 003 174 409)
SECOND CROSS-CLAIMANT

ANDREW KNIGHT
CROSS RESPONDENT

JUDGE:

LINDGREN J

DATE OF ORDER:

10 MARCH 2006

WHERE MADE:

SYDNEY

THE COURT ORDERS THAT:

1.The motion brought by the first and second respondents/cross-claimants by notice of motion filed on 17 February 2006 be dismissed.

2.The first and second respondents/cross-claimants pay the applicant/cross-respondent’s costs of the motion.

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


IN THE FEDERAL COURT OF AUSTRALIA

NEW SOUTH WALES DISTRICT REGISTRY

NSD 131 OF 2005

BETWEEN:

ANDREW KNIGHT
APPLICANT

AND:

BEYOND PROPERTIES PTY LTD (ACN 002 861 458)
FIRST RESPONDENT

BEYOND INTERNATIONAL LTD (ACN 003 174 409)
SECOND RESPONDENT

DISCOVERY COMMUNICATIONS INC
THIRD RESPONDENT

SPECIAL BROADCASTING SERVICE CORPORATION (SBS) (ABN 91 314 398 574)
FOURTH RESPONDENT

FOXTEL MANAGEMENT PTY LTD (ACN 068 671 938)
FIFTH RESPONDENT

BEYOND PROPERTIES PTY LTD (ACN 002 861 458)
FIRST CROSS-CLAIMANT

BEYOND INTERNATIONAL LTD (ACN 003 174 409)
SECOND CROSS-CLAIMANT

ANDREW KNIGHT
CROSS RESPONDENT

JUDGE:

LINDGREN J

DATE:

10 MARCH 2006

PLACE:

SYDNEY

REASONS FOR JUDGMENT (No 3)

INTRODUCTION

  1. The first respondent, Beyond Properties Pty Ltd, and the second respondent, Beyond International Ltd, being also the cross-claimants (collectively ‘Beyond’) move for an injunction restraining the applicant (‘Mr Knight’) pending the determination of this proceeding or further order, from making certain representations to persons including customers and prospective customers of Beyond, generally to the effect that Beyond has infringed Mr Knight’s rights by its use of the name ‘mythbusters’, and that if they broadcast or otherwise deal with Beyond’s ‘mythbusters’ television series, they may be joined as additional respondents in this proceeding.

    BACKGROUND

    General

  2. Mr Knight claims to be an internationally acclaimed writer and to be, and at all material times to have been, involved in the writing of novels and the development of television programs. 

  3. Beyond is involved in the production and distribution of television programs. 

  4. Mr Knight claims that since 1988 he has continuously carried on in Australia and internationally the business of, inter alia, developing, writing, producing and selling television programs, screen plays and novels, concerning the investigation of myths, under or by reference to the name and mark ‘mythbusters’.  He claims that since 1994 he has promoted a ‘mythbusters’ television series in Australia based on the investigation of myths and mysteries contained in…

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Details
Case
[2006] FCA 193
Decision Date

CaseChat Overview and Summary

The case of Knight v Beyond Properties Pty Ltd (No 3) involved a dispute between Mr Knight, an internationally acclaimed writer, and Beyond Properties Pty Ltd and Beyond International Ltd (collectively ‘Beyond’), companies involved in the production and distribution of television programs. Mr Knight alleged that Beyond had infringed his rights by using the name ‘mythbusters’ for their television series, without his authority. The case was brought before the court for declaratory and injunctive relief, as well as damages or an account of profits in respect of alleged contraventions of s 52 of the Trade Practices Act 1974 (Cth) and passing off. Beyond, in turn, filed a cross-claim against Mr Knight, alleging that he had misrepresented to customers and prospective customers of Beyond, claiming that the production or broadcast of the ‘mythbusters’ television series constituted a contravention of ss 52 and 53 of the TP Act and passing off. The court was required to decide whether Mr Knight’s representations to Beyond’s customers and prospective customers constituted a serious question to be tried and if Beyond had demonstrated that it would obtain relief on its cross-claim.

The court found that there had been no final hearing of the proceeding, and neither party had been held to be right or wrong in their claims. Beyond must show that there is a serious question to be tried that it will obtain relief on its cross-claim. The court held that Beyond's motion brought by notice of motion filed on 17 February should be dismissed with costs. The representations made by Mr Knight to Beyond’s customers and prospective customers fell into three broad categories: (a) representations that any broadcast, use, or other dealing with Beyond’s ‘mythbusters’ television series or spin-offs from the series would constitute an infringement of Mr Knight’s rights by reason of contravention of the TP Act and passing off; (b) representations that any person dealing with Beyond’s mythbusters series or any spin-off from it would be joined as a respondent to the present proceeding; and (c) representations that Beyond was ‘unreliable or untrustworthy (in some murky sense)’ or that Beyond was dealing with the mythbusters series or spin-offs from it, knowing that it was infringing Mr Knight’s rights. The court found that the particular representations Mr Knight had made fell into three broad categories and that Beyond must show that there is a serious question to be tried that Mr Knight will fail.

ORDERS:
1. The motion brought by the first and second respondents/cross-claimants by notice of motion filed on 17 February 2006 be dismissed.
2. The first and second respondents/cross-claimants pay the applicant/cross-respondent’s costs of the motion.

Orders

Orders of the court

1. The motion brought by the first and second respondents/cross-claimants by notice of motion filed on 17 February 2006 be dismissed.

2. The first and second respondents/cross-claimants pay the applicant/cross-respondent’s costs of the motion.

Background

Background to the litigation

The first respondent, Beyond Properties Pty Ltd, and the second respondent, Beyond International Ltd, being also the cross-claimants (collectively ‘Beyond’) move for an injunction restraining the applicant (‘Mr Knight’) pending the determination of this proceeding or further order, from making certain representations to persons including customers and prospective customers of Beyond, generally to the effect that Beyond has infringed Mr Knight’s rights by its use of the name ‘mythbusters’, and that if they broadcast or otherwise deal with Beyond’s ‘mythbusters’ television series, they may be joined as additional respondents in this proceeding.BACKGROUNDGeneral Mr Knight claims to be an internationally acclaimed writer and to be, and at all material times to have been, involved in the writing of novels and the development of television programs. Beyond is involved in the production and distribution of television programs. Mr Knight claims that since 1988 he has continuously carried on in Australia and internationally the business of, inter alia, developing, writing, producing and selling television programs, screen plays and novels, concerning the investigation of myths, under or by reference to the name and mark ‘mythbusters’. He claims that since 1994 he has promoted a ‘mythbusters’ television series in Australia based on the investigation of myths and mysteries contained in his ‘mythbusters’ books. Mr Knight alleges that, without his authority, Beyond has produced a television series entitled ‘mythbusters’ concerned with the investigation of myths, and that Beyond has permitted the other respondents to broadcast, or permit or procure the broadcasting of, the series in Australia and elsewhere. Mr Knight commenced this proceeding on 25 January 2005 seeking declaratory and injunctive relief as well as damages or an account of profits in respect of alleged contraventions of s 52 of the Trade Practices Act1974 (Cth) (‘TP Act’) and passing off. He did not seek interlocutory injunctive relief and still has not done so. On 27 May 2005, Beyond filed a cross-claim against Mr Knight. The cross-claim asserted that Mr Knight had misrepresented to customers and prospective customers of Beyond, including but not limited to the third, fourth and fifth respondents, to the effect that the production or broadcast of the ‘mythbusters’ television series constituted a contravention of ss 52 and 53 of the TP Act and passing off, by reason of the fact that Mr Knight was the owner of the (common law) trade mark ‘mythbusters’, and that the use of the mark in connection with the production and broadcast of the series constituted a representation of affiliation with, or connection to, Mr Knight’s business. The cross-claim asserts as particulars of falsity that Mr Knight does not own a registered trade mark of ‘mythbusters’ and has used that name only in connection with the publication of books. The cross-claim seeks, inter alia, an injunction restraining Mr Knight from making misrepresentations to Beyond’s customers and prospective customers.

Evidence

Evidence Before The Court

Full text does not contain this section.

Decision

Reasons for decision

LINDGREN J
There should be as early a final hearing as possible of this proceeding. I will have the matter listed for directions with a view to the fixing of an early hearing date.CONCLUSION Beyond’s motion brought by notice of motion filed on 17 February should be dismissed with costs.

Ratio Decidendi

Legal Principle Established

Established by: LINDGREN J

Ms Ciccocioppo replied on the same day (9 February) asserting Mr Knight’s rights.CONSIDERATION Beyond complains that by making representations to Beyond’s customers and prospective customers, Mr Knight is seeking to pre-empt the result in this proceeding and that he should be prepared to await the result. Mr Knight complains that in seeking injunctive relief, Beyond is seeking to pre-empt the result in this proceeding, and that it should be prepared to await the result. There has been no final hearing of this proceeding. Mr Knight has not been held to be right or wrong in his claims. Beyond has not been held to be right or wrong in its claims. Beyond must show that there is a serious question to be tried that it will obtain relief on its cross-claim. Yet the cross-claim is, generally speaking, defensive. It is a little odd to speak of a serious question to be tried on the cross-claim: the notion of a serious question to be tried fits more readily to the case initiated by Mr Knight. In effect, Beyond must show that there is a serious question to be tried that Mr Knight will fail. If he succeeds, we will know that he would have been entitled to write to the BBC and Qantas. Beyond submits that the particular representations Mr Knight has made fall into three broad categories: (a)representations to the effect that any broadcast, use or other dealing with Beyond’s ‘mythbusters’ television series or spin-offs from the series will constitute an infringement of Mr Knight’s rights by reason of contravention of the TP Act and passing off;(b)representations that any person dealing with Beyond’s mythbusters series or any spin-off from it will be joined as a respondent to the present proceeding; and(c)representations that Beyond is ‘unreliable or untrustworthy (in some murky sense)’ or that Beyond is dealing with the mythbusters series or spin-offs from it, knowing that it is infringing Mr Knight’s rights. Beyond accepts, as it must, that the first representation raises the very issue yet to be determined in this proceeding and that it is difficult to assess the strengths and merits of the parties’ cases at this stage because, although Mr Knight has filed his evidence-in-chief, Beyond and the other respondents are yet to file their evidence. Importantly, on the hearing of its motion, Beyond does not seek to adduce evidence going to this issue. Beyond’s submissions concentrated on the second and third alleged misrepresentations. Beyond submits that whether or not Mr Knight has threatened to join Qantas as a respondent to this proceeding is a matter of construing his letter, and that I should infer that he has no real intention of joining Qantas. Mr Knight’s letter to Qantas stated:‘I have no wish to add Qantas to the list of respondents to the proceedings and would appreciate your assurance that Qantas will accede to my request. The screening of the Offending Series by Qantas has, to my mind, already caused massive damage to the goodwill I have built in my MYTHBUSTERS brand over the past eighteen years......... ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ....For all the reasons stated above I do not wish Qantas to be joined to proceedings, however further screening of the Offending Series will continue to cause me damage. So I must request that Qantas refrains from broadcasting the Offending Series until the Court has heard this matter, or alternatively broadcast the Beyond program without using the name or mark MYTHBUSTERS.’