Knight v Beyond Properties Pty Ltd & Ors

[2009] HCATrans 51

[2009] HCATrans 051

IN THE HIGH COURT OF AUSTRALIA

Office of the Registry
  Sydney  No S625 of 2007

B e t w e e n -

ANDREW KNIGHT

Applicant

and

BEYOND PROPERTIES PTY LTD

First Respondent

BEYOND INTERNATIONAL LTD

Second Respondent

DISCOVERY COMMUNICATIONS INC

Third Respondent

THE SPECIAL BROADCASTING SERVICE CORPORATION

Fourth Respondent

FOXTEL MANAGEMENT PTY LTD

Fifth Respondent

BEYOND PRODUCTIONS PTY LTD

Sixth Respondent

Application for special leave to appeal

GUMMOW J
HEYDON J

TRANSCRIPT OF PROCEEDINGS

AT SYDNEY ON FRIDAY, 13 MARCH 2009, AT 11.56 AM

Copyright in the High Court of Australia

__________________

MR J.J.J. GARNSEY, QC:   May it please the Court, I appear with my learned friends, MS S. CHRYSANTHOU and MR R.M. HIGGINS, for the applicant.  (instructed by the applicant)

MR D.K. CATTERNS, QC:   May it please the Court, I appear with my learned friends, MS S.J. GODDARD, SC and MS H.P.T. BEVAN, for the respondent.  (instructed by DLA Phillips Fox)

GUMMOW J:   Are you still under orders elsewhere?

MR CATTERNS:   No, I am not, your Honour, thank you.  I am very grateful for the Court’s indulgence though.

GUMMOW J:   Yes, Mr Garnsey.

MR GARNSEY:   Your Honours, in this decision, the subject of this application, the Full Federal Court, notwithstanding a finding of reputation of the applicant in the name marked Mythbusters in relation to the applicant’s Mythbusters books, upheld a decision of the trial judge that that the respondent’s use of the name Mythbusters in relation to its television ‑ ‑ ‑

GUMMOW J:   Is your client the litigant in Knight v Beyond Properties Pty Ltd [2007] FSR 813?

MR GARNSEY:   Yes, your Honour.  That, I think, was a trial which took place after the trial in this matter but before the appeal.

GUMMOW J:   Yes, judgment was delivered on 24 May 2007 in the United Kingdom.

MR GARNSEY:   Fortunately or unfortunately in time for the appeal, if your Honour pleases.  Your Honour, the Full Court came to the conclusion by upholding the trial judge’s findings and reasoning that because of the greatly different content and format between the applicant’s Mythbusters books and the respondent’s Mythbusters TV show, an impossible misapprehension on the part of the class of too many viewers who knew of the applicant’s books ‑ ‑ ‑

GUMMOW J:   Do you not have to focus first on your difficulties with reputation?

MR GARNSEY:   Yes, the reputation was found in relation to books in Australia.  The trial judge found that there was reputation in the applicant in relation to books, but his Honour then ‑ ‑ ‑

GUMMOW J:  Looking at paragraph 13 of the Full Court’s reasons which were reported in 242 ALR 586:

no business records were produced on which reliable calculations of actual sales . . . could be made, and that no convincing explanation was offered for the absence of this evidence.

MR GARNSEY:   Yes, your Honour.  Now, we accept that, but the fact is that the Full Court proceeded on the basis that the trial judge had found a reputation, queried the strength of it in relation to the applicant’s Mythbusters books and then proceeded to say that, notwithstanding that reputation and notwithstanding that the relevant class to be considered for television viewers who knew of the Mythbusters books, there was ‑ ‑ ‑

GUMMOW J:   What is the relevant class of people for the reputation?

MR GARNSEY:   Those who knew of the Mythbusters books and the Full Court makes that clear in its reasons at paragraph 51, that is on page 85 of the print of the application book, lines 30 to 50.  Looking at line 33, about three lines down paragraph 51:

The better approach in our view is to address the composite question, namely, whether the respondents’ conduct was misleading or deceptive in relation to a reasonable member of the public who watches television and who is familiar with Mr Knight’s Mythbusters Books –

and the reference is then made to Campomar.  Above at paragraph 50 their Honours say or refer to his Honour:

Having separated the issues of selecting the proper class of addressees . . . found that, even assuming that Mr Knight established a sufficient reputation, the respondents’ conduct was not misleading or deceptive.

Can I then take your Honours to the trial judge’s judgment and the print in the application book begins at page 41, paragraph 174 in relation to his Honour’s reasoning.  His Honour did refer to Taco Bell and to Campomar and then in paragraph 174, the last three lines says:

I may turn to deal, then, with my assessment of the perceptions to be objectively attributed to the members of the television viewing public in general, putting aside for this purpose the evidence I have referred to above.

And then at the top of page 42, paragraph 175 his Honour says:

I read the Mythbusters books and watched Mr Knight’s demonstration video.  I studied the ‘bible’ . . . I watched the first episode of the Mythbusters TV show as shown on Foxtel –

that is the respondents –

and three others supplied in evidence as later shown on, and sold by, SBS.

In my view an ‘ordinary’ or ‘reasonable’ member of the public familiar with the Mythbusters books, or even the content proposed by Mr Knight for his own TV show, would not linger under any misapprehension that the books or his proposals were in any way related to the Mythbusters TV show for longer than a few seconds.

Then his Honour refers to an analysis of the first episode and then Mr Knight’s endeavours.  Then at paragraph 179 notes that:

it was clear that Mr Knight could not, and did not, suggest that the content and style of the Mythbusters TV show was suggestive of his own work.  It clearly is not.  The only thing in common between the two concepts is the name.  It was the use of the name that was at the heart of Mr Knight’s case.

And in paragraph 180:

However, any misconception or confusion which might arise from the name itself would, in my view, or at least should, be immediately dispelled on actually watching the Mythbusters TV show.  Even from those witnesses who knew Mr Knight –

who made certain concessions and, your Honour, disregards that evidence.  Then his Honour concludes at paragraph 189:

there was no likelihood of deception amongst the group made up of TV broadcasters and television production executives.

At paragraph 186 on page 44 of the application book:

no realistic possibility of any confusion concerning the possibility of an association between Mr Knight and the Mythbusters TV show.

Now, your Honours, the only evidence his Honour relied on and accepted for that conclusion was his Honour’s examination of the Mythbusters books followed by his Honour’s examination and viewing of the television shows and his Honour’s comparison and analysis of them.  There was no other evidence at trial as to viewer behaviour in relation to this sort of program.  There was simply no other evidence to support his Honour’s conclusion, apart from that judicial examination of particular evidence, the proximate recollection, analysis and comparison.

The Full Court accepted that, when it concluded in relation to misleading and deceptive conduct, that the trial judge’s reasoning was correct.  They said in paragraph 58 of the Full Court decision which is also reproduced on page 88 of the application book that:

When characterising a course of conduct as misleading or deceptive, the practical consequences and effect which the conduct is likely to have must be taken into account.

Then their Honours set out or expanded on that and in the last four lines said:

Put another way, if the conduct only produces the effect of misleading a person for a transient period and to an insubstantial extent, as it did in this case –

that is accepting the findings –

then this indicates that the conduct is not likely to be misleading or deceptive in any commercially significant sense.

In the previous paragraph 57, which I shall not read, their Honours referred to the details of the trial judge’s reasoning and the evidence on which the trial judge relied.

HEYDON J:   Is that not a different point?  Does not that reasoning assume, as it were (a) that there was sufficient reputation and (b) that it might be a misleading or deceptive consequence?  That reasoning says, assuming those things, if that momentary misapprehension is instantly corrected, then it is not contrary to section 52.  Are there not independent earlier findings (a) denying reputation and (b) denying any causal link between the applicant’s behaviour and the decision to show the television programs?

MR GARNSEY:   No, with respect, to the contrary.  It depends what one categorises as findings or holdings, if your Honour pleases.  If your Honour looks at the finding, the trial judge’s finding is, after considering the evidence ‑ ‑ ‑

GUMMOW J:   Which paragraph?

MR GARNSEY:   Paragraph 154 of the trial judge’s judgment, page 37 of the application book, and his Honour finds:

In my view he succeeded in establishing that he has a reputation in Australia as the author of children’s books bearing the name ‘Mythbusters’.

Now, as I understand the reasoning of the Full Court and, indeed, of his Honour, his Honour then went on to say that because of the difference ‑ ‑ ‑

GUMMOW J:   The question is, what was the relevant class of persons?

MR GARNSEY:   Exactly, if your Honour pleases.  The trial judge dealt with that a little ambiguously.  At one stage he put the Campomar formulation which the Full Court accepted.  After that his Honour appeared to deal with television viewers generally, not those who knew of the applicant’s books.  Ms Chrysanthou reminds me of paragraph 161, page 38 of the application book.  The trial judge did find that:

Mr Knight had the requisite reputation with a sufficient number of . . . TV broadcasters and television production executives.

HEYDON J:   You have to put them on one side, do you not?

MR GARNSEY:   I do, because it is not in the ‑ ‑ ‑

GUMMOW J:   They are not going to be misled by anybody.

MR GARNSEY:   Your Honour, there is a lot of evidence behind that point and I would not dare raise it on this application.  But, your Honours, what his Honour, the trial judge and the Full Court appear to do is saying we accept or find reputation in the name Mythbusters in relation to children’s books in the applicant, but then because of the difference in format or subject matter between the books and the Mythbusters television shows of the respondents there is no sufficient reputation to result in misleading and deceptive conduct.  Now, we say that is erroneous for a number of reasons, but first it presupposes acceptance of a novel doctrine, that is the doctrine of perfect quasi judicial recollection, a sort of inversion of the well‑known doctrine of imperfect recollection often used in passing off cases and in some respects to registered trade mark law.

That, with respect, is directly contrary to Campomar.  The ordinary or reasonable member of the class – a hypothetical construct in this case – the class being television viewers who knew of the Mythbusters books, is supposed not to have been misled and deceived in any commercially significant or detrimental sense because the ordinary or reasonable viewer would apparently sit down, read the books just before watching the television programs, look at the television programs, analyse and compare them as a judge would, assisted by counsel, and say, “Goodness gracious, that cannot possibly be the applicant’s program or a program associated with the applicant”.

With respect, that is a reaction which is fanciful or extreme within the discussion in Campomar and could not be as a matter of law a reaction of the relevant class of persons.  What the Full Court and the trial judge held was that the ordinary and reasonable television viewer who knew of the applicant’s books would have just that fanciful or extreme reaction and would say somehow or other, “Heavens, I have got this realisation having just read the books.  I will turn off and away we go”. 

The second matter, if your Honours please, in relation to that is that their Honours, though their Honours talk about the impact of conduct and events subsequent to showing whether it is substantial or insubstantial or significant or commercially significant, do not take into account when, where, under what circumstances a viewer would turn off, or they seem to

assume that all viewers would turn off having had this perfectly obtained recollection and they do not consider at all any members of the class who may well remain there and keep watching the program even though they think, well, perhaps it does not have anything to do with the applicant exposed to advertising on other television channels.  With respect, the commercial significance or insignificance is very hard to determine and, indeed, is a little bit of speculation. 

Your Honours, we respectfully submit that the decision of the Full Court, and to the respects of which the trial judge was upheld in the light of the findings of reputation and the reasoning, raise significant questions of general importance; to what extent is it proper to take into account the impact of conduct which would otherwise be misleading or deceptive as requiring a significant, commercial or other detriment; what is meant by significant; whether particular viewers who are attracted to a particular program by reason of misrepresentation would subsequently turn off have not been misled and deceived?

Your Honours, the way it is put also apparently overlaps too the question of whether in the hypothetical class of this sort of case there must be a significant number or a not insignificant number of persons who are misled and deceived.  That difference in phraseology has been recently considered in the Full Court of the Federal Court in Hansen Beverage Company v Bickfords (Australia) Pty Ltd which is amongst the materials for your Honour.  Two of the justices preferred significant, Justice Siopis preferred not insignificant.  The paragraphs are in paragraphs 46 and 66 and 59.  Reference was made to this case, although the logic in relation to the number of persons within the class who should be misled or deceived was not really considered.

Your Honours, we respectfully submit that the approach of the respondents has a certain deceptive simplicity, as does the reasoning of the trial judge in the Full Court, and when examined it contains very significant errors which, if not corrected, will be of serious effect in the very many cases in which section 52 is relied upon.  Unless there are any other matters, they are the matters I seek to put to your Honours.

GUMMOW J:   We do not need to hear from you, Mr Catterns.

There are insufficient prospects of success for the applicant in overcoming the degree of adversity in the findings at trial and in the Full Court concerning the lack of the necessary reputation with the relevant class of persons to warrant a grant of special leave and the entertainment of the issues which the applicant seeks to bring before this Court.  Accordingly, special leave is refused with costs.

We will adjourn to reconstitute.

AT 12.18 PM THE MATTER WAS CONCLUDED