Lovatt, J. v Consolidated Magazines Pty Ltd

[1988] FCA 478

CATCHWORDS

TRADE PRACTICES - Contest	over use of name "Colossus" in
connection with crossword puzzles	- Puzzles compiled by
applicants and published by respondent under that name	-

Whether either party had acquired a reputation in that name

such as to constitute a use of that name	by the other an
infraction of ss.52 or 53 of the Trade Practices	Act or a

passing off - Whether s.65A provides a defence to the claim.

CONTRACT - Implied term - Whether there ought to be implied	In
the agreement between	the parties a term precluding the use of
the word "Colossus" by	the respondent in connection with

crosswords not compiled by the applicants.

Trade Practices Act 1974 Ss.52, 53, 65A.

NSW G.1116 of 1988

JAHES LOVATT & ORS V CONSOLIDATED MAGAZINES	PTY LIMITED
Wilcox J Sydney
5 September 1988
IN THE FEDERAL COURT OF AUSTRALIA	) )
NEW SOUTH WALES DISTRICT REGISTRY	) No. G.1116 of 1988
)

DIVISION GENERAL 1

BETWEEN: JAHES LOVATT

First Applicant CHRISTINE LOVATT Second Applicant WORDSMITHS PTY LIMITED

Third Applicant

AND: CONSOLIDATED MAGAZINES PTY

LIMITED

Respondent

AND BETWEEN: CONSOLIDATED MAGAZINES PTY

LIMITED

Cross-claimant

AND:  JAMES LOVATT

First Cross-Respondent

CHRISTINE LOVATT

Second Cross-Respondent

WORDSMITHS PTY LIMITED

Third Cross-Respondent

PUZZLE PRESS PTY LIMITED

Fourth Cross-Respondent

CENTURY PUBLISHING PTY
LIMITED

Fifth Cross-Respondent

CORAM:	WILCOX J
PLACE:	SYDNEY

DATE : 5 SEPTEMBER 1988

MINUTES OF ORDER

THE COURT ORDERS THAT:

1. The Application be dismissed.

2 .        The Cross-claim be dismissed.

3 .        The cross-claimant, Consolldated Magazines Pty Limlted, pay to the cross-respondent, Century

Publishing Pty Limited, its costs of the

Cross-claim.

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	) NO. G.1116 Of 1988
)

DIVISION GENERAL )

BETWEEN: JAMES LOVATT

First Applicant
CHRISTINE LOVATT
Second Applicant
WORDSMITHS PTY LIMITED

Third Applicant

AND:	CONSOLIDATED MAGAZINES PTY LIMITED
Respondent

AND BETWEEN: CONSOLIDATED MAGAZINES PTY

LIMITED

Cross-Claimant

AND: JAMES LOVATT

First Cross-Respondent

CHRISTINE LOVATT

Second Cross-Respondent
WORDSMITHS PTY LIMITED
Third Cross-Respondent
PUZZLE PRESS PTY LIMITED
Fourth Cross-Respondent

CENTURY PUBLISHING PTY

LIMITED
Fifth Cross-Respondent

CORAM :	WILCOX J
PLACE :	SYDNEY
DATE :	5 SEPTEMBER 1988

REASONS FOR JUDGMENT

The sole question which arlses in this l ,tiga ti on is

the entitlement of the various parties to use the word

"Colossus" in connection with the publication	of crossword
puzzles.
The parties and the proceedings

The first and second applicants, James and Christine Lovatt, are husband and wife. They control the third

applicant, wordsmrths Pty Limited. The	respondent,
Consolidated Magazines Pty Limited, is the publisher	of a

weekly magazine known as "People". Consolidated Magazines was
previously known as Fairfax Magazines Pty Limited, before that

as Magazine Promotions Australia Pty Limited; and before that

again as Sungravure Pty Limited. From early 1979 until July

1988 the applicants, or one of them, supplied a crossword

puzzle for publication in each issue of "People". Each of

those crosswords was compiled by Mrs Lovatt, wlth some

assistance from her husband. Each was published in "People" under the title "Colossus". A characteristic of each of the crosswords was its size. The crossword always occupied a

complete page in the magazine.

From early 1981 the crossword was always published in

a position immediately following a feature	-- containing games
and puzzles -- entitled "Games People	Play", which feature was

billed as being "compiled by Christine Lovatt". But there was
no regular attribution to MrS Lovall of the crossword itself.

From time to time collections of the crossword puzzles previously used in "People" magazine have been published in book form. The first book was entitled "People's

Colossus Crossword Book". The title page referred to the

various puzzles it contained -- not all of them crosswords --

as being "compiled by People's popular puzzllng pair Christine

and James Lovatt". Thls book was published by the respondent
and sold by newsagents and other retailers.

The respondent subsequently publlshed other books of puzzles. They were identified as "People's 2nd Colossus

Crossword Book", "People's 3rd Colossus Crossword	Book", and
so on down to the 10th	in the series. In each case the title

page named Christine and James Lovatt as the compilers of the

puzzles contained in the book.

Puzzle Press Pty Limited is a company controlled by

Mr and Mrs Lovatt and by Jules Zanetti and his wife. From

March 1978 until 1980 Mr Zanetti was the editor of "People".

Thereafter he became publisher of the magazine and subsequently the group publisher of all the magazlnes published by the Fairfax organization. That employment ceased

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in April 1988, shortly after the sale of the Fairfax magazines

I

to the Australian Consolidated Press group. Since that date

Mr Zanetti has devoted his tlme to the activities	of Puzzle
Press, which company recently produced	a book called "people's

11th Colossus Crossword Book". This book was published under
that name pursuant to an arrangement made with Australian

Consolidated Press.

The association between Mr and Mrs Lovatt and the

respondent recently ceased. The last crossword supplied by

the applicants was published in "People" on 19 July	1988. In
the following issue, of	26 July 1988, a crossword of similar

size was published under the title "Super Colossus". The

compiler of this crossword was not identified in the magazine.

Neither Mr or Mrs Lovatt had anything to	do with its
compilation. They took exception to the	use of the word
"Colossus" in connection with a crossword not compiled	by them

and, on 2 1 July, they commenced this proceeding by filing an

Application seeking various orders, including an injunction

restraining the respondent from publishing, in "People"
magazine or otherwise, any crossword puzzle the title of which
consists of, or includes, the word "Colossus" and which is not a crossword puzzle compiled by one of the applicants.

Late in June 1988 there was press publicity of an

alleged arrangement, between the applicants and company

known,as Century Publishing Pty Limited, for the inclusion in

a new magazine, to be published by that company and called

"The Picture", of crosswords supplied by the appllcants. The

;l

respondent therefore cross-claimed in this proceeding, seeking

orders restraining each of Wordsmiths, Puzzle Press and

Century Publishing from publishing in any magazine	or book any
crossword puzzle whose name is or includes	the word "Colossus"
or from using that word	in the title of any book containlng
crossword puzzles. Orders were also sought restraining	Mr and

Mrs Lovatt from being knowingly concerned in any such

publication.

The claim by the appllcants against Consolidated

Magazines is put upon two broad bases: firstly, breach of an
implied term of the contract made between Mrs Lovatt and that
company and, secondly, contraventlon of ss.52 and 53 of the
Trade Practices Act 1974 together with passing off. The
cross-claim depends upon s.52 alone.

Implied contractual term

In order to deal with the contention relating to an

implied term it is necessary to refer to the evidence

surrounding the making of the original agreement for Mrs

Lovatt t o supply crosswords to "People" magazine.	This
evidence is not in dispute.

Mr Lovatt is, by profession, a ~ournalist. He joined
the staff of "People" in 1978, being employed as a sub-editor.

Most of the contributions to the magazine were then made by

freelance journalists. At that time the magazine published a

crossword puzzle each week under the title "The People
Stopper". One of Mr Lovatt's tasks as sub-editor was to check
the crossword before publlcation. He frequently found errors

in the copy submitted. He discussed the situation with his

wife, who was a crossword enthuslast. Mr Lovatt commented	to
MC Zanetti, who was then	the edltor of the magazine, that his
wife, Christine, could do a better job on the crossword.	Mr

Zanetti invited MC Lovatt to have her submit a sample of a crossword. MC Lovatt reported this conversation to his wife.

She prepared a sample, which Mr Zanetti found acceptable.

However, MC Zanetti informed MC Lovatt that he needed to be convinced that Mrs Lovatt could produce the crosswords on a

regular basis. Mr Zanetti suggested that Mrs Lovatt should

produce six crosswords over the following six weeks and he

said that if the quality of the crosswords was good enough

then she could do the crosswords for the magazine on a

permanent basis. Once again, MC Lovatt reported this

conversation. Mrs Lovatt produced six crossword puzzles.

During the course of this task, and as a result of her own

experience and the conversations she had with her husband, Mrs
Lovatt settled upon certain characteristics which she thought

necessary for a popular crossword puzzle. As I understand the

evidence, she has adhered to these criteria ever since.

MC Lovatt took the six samples to MC Zanetti. There

followed a conversation between MC Zanetti and MC Lovatt in

the presence of MC Ralph Wragg, the then managing editor of

the magazine. Durlng the course of that conversation, Mr

Wragg informed MC Lovatt that Mrs Lovatt's crosswords "seemed

l.

to be fine". On behalf of the magazine he offered to pay $150

1. for each crossword which was published. MC Lovatt replied:

   "That will be alright for first Australian magazrne use only. We are hoping we can arrange for republication of the crosswords overseas". MC Lovatt went on: "Christine wants to call it 'The Colossus Crossword' because it suggests not only big but worldwide". MC Zanetti suggested the name "Mammoth"; but MC Lovatt rejected this name, saying that it had already been used. It was then agreed, by both Mr Zanetti and MC wragg, that the name "Colossus" would be used in the magazine.

Mr Wragg and Mr Zanetti shook hands with MC Lovatt on the

agreement, which was not confirmed in writing at that time.

The first crossword puzzle compiled by Mrs Lovatt appeared in the issue of "People" magazine dated 1 February

1979. At that time "The People Stopper" crossword was

discontinued. Mrs Lovatt's puzzle was always published under

the name "The Colossus Crossword" and a payment of $150 was

made by the magazine in respect of each crossword puzzle which

it published.

MC Lovatt left "People" in 1980. Shortly thereafter

wordsmiths was incorporated. Since that time MC Lovatt has	apparently devoted a major proportion of his time to the
business of that company, which business has included participation in the publication of the various "Colossus" crossword books previously mentioned.

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The arrangements between Mrs Lovatt and "People" magazine were renegotiated in 1981. On 17 March 1981 Mr

Zanetti wrote a letter to Mr and Mrs Lovatt referring to

discussions which had been held and stating that he was "now

in a posltion to formally offer you a flrm contract for the

supply of weekly crosswords and puzzles for a period of three years". under the heading "Colossus Crossword" the following appears:

"It is agreed that you will supply, from April

1, 1981, People Magazine with one Colossus
Crossword per week with exclusive Australasian
rights. The existing arrangement, whereby
People and your company share proceeds of the
sale of crosswords to Globe Publications in
Montreal, is to continue for the duration of

this agreement. You will be free to dispose

of the crosswords in any countries other than

Australasia, including Canada, provided such arrangement does not jeopardise the existing arrangement with Globe Publlcations.

It is further agreed that you may not supply

crosswords to other publications inside or

outside the Fairfax/Sungravure group, without

the Editor of People first authorising it.

This is designed to avold any duplication, and

to maintain	People's exclusivity.
It is further agreed that	you wrll undertake

to maintain a six-week advance supply of
crosswords, and to maintain the standard and
size of the crosswords.

It is further agreed that this three year contract, dating from April 1, 1981, covering

the crossword, is subject to People having the
option to renew	the contract for a further

three year period."

The agreement also dealt with the publication of puzzles and games supplied by Mr and Mrs Lovatt, with book

rights and with the provision of consultancy services whereby

MC and Mrs Lovatt undertook to spend a certain amount of time

each week in the "People" office to oversee the production,

revision and final check of the games and crosswords.	A
schedule of payments was specified including payment of	$175

for each two-page Colossus Crossword. The letter included
provision for an increase in the rates paid at the conclusion

of each twelve month period.

The three year period contemplated by this agreement

expired in April 1984.	There is no evidence of any subsequent
agreement between the parties.	It seems that the parties
continued to act thereafter	as if bound by the agreement,

subject perhaps to some increase in the rates of payment.

The contention of the applicants is that the

agreement made in 1978 between Mrs Lovatt, through her agent

Rr Lovatt, and the respondent included an implied term "that

the respondent would not use the word 'Colossus' as the title

or part of the title of any crossword published by it not

supplied under the terms of the said agreement". It is not

contended that there was any express agreement to that effect,

either in 1978 or in 1981.

In BP Refinery (Westernport) Pty Limited v Hastings Shire Council (1977) 52 ALJR 20 at p.26, a majority of the

Judicial Committee of the Privy Council specified five conditions necessary for a court to imply a term in a contract:

"(l) it must be reasonable and equitable;

(2) it must be necessary to give business

efficacy to the	contract, so that no term
will be implied if the contract	1s
effective without it;

( 3 ) it must be so obvious that 'it goes

without saying';

( 4 ) it must be capable of clear expression;

(5) It must not contradict any express term

of the contract."

In the present case there is no difficulty in

concluding that the term contended for by the applicants

complies with conditions (l), ( 4 ) and ( 5 ) of the above

conditions. The respondent, however, denies that a term to

the effect of that contended for by the appllcants was

necessary in order to give business efficacy to the contract

or that its inclusion in the understanding made between the

parties was so obvlous as to "go without saying". Reference

is made by counsel to the discussion	of the circumstances in
which a term may be implied which is contained in the reasons for judgment of the members of the High Court of Australia	In
Codelfa Construction Pty Limited	v State Rail Authority of New

South Wales (1982) 149 CLR 337. In particular counsel for the respondent call attention to the following passage in the judgment of Mason J at p.346:

"For obvious reasons the courts are slow to

imply a term. In many cases, what the parties

have actually agreed upon represents the

totality of their willingness to agree; each

may be prepared to take his chance	in relation
to an eventuality for which	no provision is

made. The more detailed and comprehensive the contract the less ground for there is for

supposing that the parties have failed to
address their minds to the question at Issue.

And then there is the difficulty of

identifying with any degree of certainty the

term which the parties would have settled upon
had they considered the question.
Accordingly, the courts have been at pains to

emphasize that it is not enough that	It is
reasonable to imply a term;	it must be

necessary to do so to give business efficacy

to the contract ...

The basls on which the courts	act in implying
a term was eXDKeSSed bv MacKinnon	LJ In

Shirlaw v Souihern Fouiidaries (1926), Limited 119391 2 KB 206 at ~ . 2 2 7 in terms that have been universally acGepted: 'Prima facie that which in any contract is left to be implied

and need not be expressed is something so

obvious that it goes without saying ... , SI .

Counsel for the applicants submit that the

implication of a term regarding the title of the crosswords is

necessary in Order to give business efficacy to the agreement

made between Mrs Lovatt and the magazine. They polnt out that
it was expressly agreed between the partles that the puzzles
were supplied to the magazine upon the basis that the fee
which was paid would cover the flrst Australian magazine use

only and that the respondent was informed that Mrs Lovatt

hoped to arrange for republication -- obviously for her own

benefit -- of the crosswords overseas. Counsel further point out that the name "Colossus" was suggested by MKS Lovatt, and not by anybody assoclated with the magazine, and that the word

was selected partly because of its perceived international

flavour. The limitation of "first Australian rights" would be

meaningless, say counsel, if the applicants were not free

thereafter to republish the same CrOSSWOrd puzzles under the

title "Colossus". Furthermore, counsel	submit, it must have
been obvious to the parties	that, In the course of time and
with the regular use of the title	"Colossus", the name would

acquire a conslderable goodwill value; so that it is

unthinkable that the parties would have wished	to leave
unresolved the entitlement to that value.
I see the force of the submissions put by counsel for the applicants but I am not persuaded that this	is a case in
which the Court should imply a term. It	1s true that the name

"Colossus" was suggested by firs Lovatt and that she was
influenced in that cholce by her hope that the CroSSwOrd
puzzles could be published overseas. It would be a natural
corollary of such a hope that the perceived international
connotation in the tltle could be exploited by using the same
name in any overseas publication. But It would not follow

that it would be necessary that the agreement between the

parties preclude the use	by the respondent of the title
"Colossus" in relation to crosswords not produced by	firs

Lovatt. Nothing has been put before the Court to suggest that

an overseas publisher would	be affected in any decision to use
crosswords supplied by	firs Lovatt, or to publish them under

the title "Colossus", by any contlnued publication in "People"

magazine of crosswords, not supplied	by Mrs Lovatt, under the
title "Colossus".	So far as the evidence shows, "People" is

distributed only in Australia. It is difficult to see that an

overseas publisher would be influenced in any way by a title

used in "People". Certainly this was not a matter adverted to

in the discussion between fir Lovatt, fir Zanettl and fir Wragg.

Under some circumstances an argument founded upon an

expectation of the generation of goodwill might carry weight.

If It was certain that a substantial goodwill would attach to

a title, it might be thought unlikely that the parties would have intended to leave unresolved the question of which of them was entitled to that goodwill. But I do not think that

this is such a case. At the time of the initial agreement Mrs

Lovatt had no professional experience as a crossword compiler.

This was a	new venture for her, caused by the fact that her
husband happened to	be working for a magazine in which the
existing puzzles were thought to be unsatisfactory.	No doubt
Mrs Lovatt hoped that the puzzles compiled	by her would prove
popular with readers, as on the evidence they	did, and that

the association would prosper and continue for a considerable

time. NO doubt Mr Wragg and m Zanetti hoped that MKS Lovatt

would be able to supply a continuous stream of puzzles whlch

would prove satlsfactory to the readers of the magazine. But

on neither side was there any commitment o continuity. There

is no evidence that any of the participants in the initial

discussions even contemplated the possibility that	the word
"Colossus" might generate	some independent goodwill value.

And, even if the parties did think about the possibility of goodwill, it is not obvious that they would have been of one mind as to which of them should have the benefit of that

goodwill; so that they would together have turned to the

officious bystander who reminded them that they had not

expressly dealt with the question of entitlement to use the

word "Colossus" with the testy rebuke: "Of course, that name

can only be used for Mrs Lovatt's puzzles". Mrs Lovatt was in an inferior bargaining posltion. Mr Wragg and Mr Zanetti may well have successfully insisted that, if her puzzles proved

unsatisfactory, "People" might continue to publish full-page

puzzles prepared by others under the new name.

The agreement between the parties was for the

submission, on a regular basis, of crossword puzzles in return
for a specified fee. Even if it be conceded that it was a

term of the agreement, as distinct from an lndication of	the
publisher's intention, that the puzzles	be published under the

title "Colossus", it does not follow that it was necessary to

imply a term as to the right to use that title in order to

give business efficacy to the agreement. It would be

perfectly compatible with that agreement that, if the partles'
paths diverged, Mrs Lovatt could use the word "Colossus" in
connection with her crossword puzzles published elsewhere and
that the respondent could use the word "Colossus" in
connection with puzzles devised by others. In my judgment It

cannot be said that a term in the form suggested by the

applicant is something which	was, at the time, so obvious that
"it goes without saying".

Trade Practices Act and passing off claims

I turn now to the applicants' claims under ss.52 and 53 of the Trade Practices Act and for passing off, whlch

claims may be discussed in conjunction with the respondent's

cross-claim under s.52. The claims made under s.53 were that

the respondent, in trade and commerce, falsely represented
that its crosswords were of a particular standard, quallty and
style (s.53(a)) and falsely represented that they had

sponsorship, approval or performance characteristics which

they did not in fact have (s.53(c)).

The applrcant led evidence from 16 persons who have

customarily attempted the "Colossus" crossword in "People".
Most of these people were aware that the crossword was

compiled by Mrs Lovatt; some were not. All of them spoke in

laudatory terms of the crossword. Most compared the
crosswords subsequently published in "People", under the title
"Super Colossus", unfavourably with the "Colossus" crosswords.
Several of the witnesses spoke of the distinctive style of the

"Colossus" crosswords, some having noticed the similarity

between this style and that found	in crosswords, devised by
Mrs Lovatt and published during recent years, in	"Woman's
Day".	Most of these witnesses were familiar with the

"Colossus" crossword books. All of the witnesses who had
tried the "Super Colossus" crosswords quickly realised, upon
doing so, that those crosswords were compiled by someone else.

As previously mentioned, it has not been the practlce of "People" magazine regularly to associate either Mr or Mrs Lovatt with the "Colossus" crosswords. However, upon some

occasions, the magazine has published notes or articles	in
which the compilers have been identified.	In particular, on

29 April 1981, "People" published a lengthy article about MC

and Mrs Lovatt, and their crossword-maklng technique. This
article featured a photograph of them both, toiling over a
draft crossword. From these occasional artlcles any long term
devotee of the "Colossus" crossword would be llkely to have
learned that the person identified as the compiler of the
games section was also, with her husband, the compiler of the

,.

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"Colossus" crossword. And, of course, many of such people

I

would know Mr and Mrs Lovatt from the crossword books. In

summary, it must be concluded that there exists, amongst the

readers and former readers of "People", a body of people who

would associate MC and Mrs Lovatt, or one of them, with the

name "Colossus", published in connection wlth a crossword

puzzle in that magazine, in the sense that they would know

that one or both of these people were responsible for
compiling the crosswords which had appeared under that rubric.

What proportion of the total readershlp of "People" falls into

this category it is lmpossible to say. Evidence	was called by
the respondent from nine readers of	the magazine who said that

they did not know the "Colossus" crossword other than s a

regular feature in "People". They are probably not the only readers in that position. As is obvious from its cover and

content, "People" is not only directed	at the intellect. NO
doubt many readers of "People"	buy it otherwlse than for its

crossword puzzles. They may be indifferent to the authorship
of those puzzles, perhaps even oblivious of their existence.
There may even be "Colossus" aficionados who are unaware, or

unsure, of the authorship of those puzzles.

The argument put on behalf of the applicants, in

connection with s.52, is that, once it is established that

there exists a body of people who associate the name

"Colossus" with the work of the	applicants, it is demonstrated
that the use of that name in relation	to a crossword not
compiled by them constitutes conduct which	IS llkely to

mislead members of the public. It is no answer, say counsel,

l/.

that crossword devotees would be likely to realise, upon

attempting the "Super Colossus" puzzles, that these puzzles

are not compiled by Mr and MrS Lovatt. By that time a reader

1s llkely to have purchased the magazine. The misleading

conduct, according to the argument, is to use the name "Super
Colossus" as the title of one of the regular features of the
magazine. Counsel suggest that it is significant that the
respondent chose the name "Super Colossus", rather than a

distinctively different name, for the crosswords compiled by

Mrs Lovatt's successor. In thls connection It 1s Interesting

to note that, upon the front cover of the first of the issues

carrying a "Super Colossus" crossword, the July 26 issue,

there appear the words: "New Great Crosswords.

Crlss-Crossword, 13 terrific puzzles in one! Super Colossus

bigger than everl". Upon the page where the puzzle appears

are printed, after the name "Super Colossus", the words

"bigger and bolder than ever". These captions clearly suggest

a connection between the "Super Colossus" crossword and what

has gone before, implylng that what is published	1s the same
puzzle on an	enlarged scale.
The argument for the respondent denies that there any likelihood of members of the public belng misled. Counsel	is

point out that the word "Colossus"	is an ordinary English word
prima facie available for anyone to use. They say that	he

evidence does not associate the word "Colossus" exclusively
with the Lovatts. It is a word which was used to identify a
particular feature of the magazine. The evidence, say
counsel, suggests that readers who are interested in the
crosswords published in "People" associate Mr and Mrs Lovatt

I

with a particular style of crossword, not with a particular

name. The true connectron	in the public mind, accordlng to
counsel, is between	the name "Colossus" and "People" magazine,

of which it has been a regular feature for over nine years;

hence it would constitute misleading conduct to use the name

"Colossus" in some other publication, thereby suggesting some
connection between that other publication and "People". In
particular, says the respondent, the use of the word in a

different publication would be likely to signlfy to readers of

that publication that either that publication as a whole or

the crossword puzzle itself is published by, or with the

llcence or approval of, the publisher of "People".

The latter part of this argument has only to be

stated to be rejected, and with it the cross-claim. It may be
accepted that there exists a significant number of people who

have become familiar with the use of the name "Colossus" as a

designation of the crossword which 16 a regular feature in

"People". It may also be accepted that some of those people

are unaware of the identity of the author of those puzzles.

They may be unaware that they have all come from the same

source.	They may believe that the puzzles are devised by a
multitude of people.	In short, there may be some people for
whom the word "Colossus" has	no significance except as the
title given by "People" to its weekly crossword feature.	It

may, further, be assumed that some of these people wlll come
across the name in its other context; whether "The Picture"
or otherwise. But, in doing so, those people will be aware

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that they are seeing the crossword in a dlfferent magazine.

It can hardly be contended that, by the circumstance that

these readers find in the other publication a crossword

similar in style and size to that which they know from

"People" and bearing the same name, they think that this

publication is "People" magazine. Nor, I think, can it be

said that such readers are likely to assume that the other

publication, or the crossword, is published with t e licence

or approval of the publisher of "People". The relationship could as easily be the other way around; or, perhaps more likely in the age of syndicated journalism, it might be thought that both puzzles emanate from a common outside

source. There is no evidence whatever that the word

"Colossus" has acquired a secondary meanlng amongst readers of
"People" as indicating a puzzle created by that magazine.

Of course, a reader who comes across a "Colossus"

puzzle in another publication may realise that it is a
crossword constructed upon the same principles as the
"Colossus" in "People". The reader may even deduce that it
was compiled by the same person or persons. But there would

be no error in those conclusions. To the extent that the name
"Colosnus" induces such beliefs,	it would not be misleading.

The Trade Practices Act and passing off claims made

by the applicants require more extensive discussion. Falsity

is of the essence of all	of those claims. Section 52 of the
Act proscribes conduct which is misleading or deceptive	or is
likely to mislead or deceive. Section 53 prohibits a

.. 20.

corporation making false representatlons as to particular

9

matters. And the making	of a misrepresentation 1s an
essential ingredient of the tort of passing	off: see Erven

Warnink BV v J Townend & Sons (Hull) Llmlted [l9791 AC 731 at

p.742. So the case for the appllcants, under each of these

headings, must depend upon the proposition that the

publication in "People"	of a crossword name whlch is, or
includes, "Colossus" constitutes a representation	to readers
that the crossword puzzle was devised by one or more	of the

applicants. As the name "Colossus" does not, in terms, make

any reference to the applicants, that proposition, in turn,
must depend upon the claim that the word "Colossus" has
acquired a distinctive meaning, signifylng to knowledgeable
members of the public that any crossword published under that
title was created by the applicants.

The principles applicable to such a claim were

summarized by Gummow	J in Telmark Teleproducts (Australia) Pty
Ltd v Coles Myer Ltd	( 5 August 1988, not reported). As his
Honour pointed out, although it will generally	be relevant to

consider whether a respondent has acted fraudulently or has

deliberately sought to take advantage of the applicant's name,

badge er reputation, a finding that	he respondent has so
acted is not enough to establish a case under	5.52 of the
Trade Practices Act	or a case of passing off. The same is

true of a case under s.53 of the Act. This is because of the

necessity, in each type of case, to show that the conduct of
the respondent involves the making of a mlsrepresentation.
Consequently, although I have no doubt that, in selecting the
name "Super Colossus", and in its use of the words "bigger

than ever" in the July 26 issue of "People", the respondent sought to take advantage of the high reputation of the

crosswords which	had been compiled by Mrs Lovatt and had been
previously published by It under the name	"Colossus", that

fact is not enough to ensure the success of the applicants.

They must establish that	a substantial portion of those
readers of "People"	who are interested in crossword puzzles
identify all puzzles published under	a name which is, or which
contains, the word "Colossus" as the product of one	or more of
the applicants.

I do not think that this case is made out by the

evldence.	As I have said, some	-- perhaps many -- readers of
"People" became aware that one	or both of the Lovatts	was

responsible for the compilation of the "Colossus" crosswords

published in "People" up to 19 July. But none of these

witnesses claimed that the mere word "Colossus" conveyed	to
him or her a puzzle created by the Lovatts. Each	of the
witnesses who had subsequently seen	a "Super Colossus"

crossword conceded that he or she realized from the style of

the crossword that the "Super Colossus" was compiled by

someone else. It is true that this positive realization came after the magazine was purchased; but in each case the

purchase was occasioned by the expectation of a Christlne

Lovatt crossword rather than because of the use of the name
"Super Colossus".

Reference was made, durlng the course of argument, some authorities concerning the use of pseudonyms: see to

- Landa

v Greenberq (1908) 24 TLR 441, Hines v Winnick [l9471 Ch.708,

modern Fiction Ltd v Fawcett	(1949) 66 RPC 230, Forbes v
Kemsley Newspapers Limited [l9511	2 TLR 6 5 6 , Sykes v John

Fairfax & Sons Llmited 119771 1 NSWLR 415. Those cases affirm
the general principle that a person whose work is published
under a pseudonym is entitled, subject to any agreement to the

contrary, to prevent the publisher using that same pseudonym

in conjunction with the work of another person. But	I do not
think that these cases assist the applicants	in the present

case. A pseudonym is a direct reference to the author, so

that continuity in the use	of a pseudonym tends to suggest
continuity in the identity	of the author. In contrast, the
title given to a regular feature	of a magazine or of a

newspaper is a reference to that feature. Members of the public are familiar with the notion that authorship of particular features in a magazine or In a newspaper changes

from time to time. During his or her incumbency a particular

author, or editor, of a feature may become well known to

readers; but the readers would not normally expect that the

feature will close down, or the title will be changed, if

someone else takes over responsibility for It. Successful

features, and their titles, tend to outlast their creators.

I do not go so far as to say that It 1s impossible to

envlsage a situation under whlch a particular feature In a

publication, OK its title, is so connected in the public mind

I ,

23 .

, .

with a particular person that the continuation of that feature

or title after the departure of that person, without

disclosure, amounts to a misrepresentation of fact capable of

giving rise to an action under s . 5 2 o s.53 of the - Trade

Practices Act or as a passing off. But I think that strong

evidence would be required to make	out such a case,
establishing such a connection in	the public mind between the
relevant feature or title and the person that a reference	to
the former will be taken as a reference to the latter. In	my

opinion, it is not enough to show that members of the public

are aware of the identity of the person responslble, for the

time being, for that feature or title.

Upon analysis, the evidence in the present case does

no more than make out the latter situation. My conclusion on

this aspect of the case is that, in continuing to use the name

“Colossus“ after the departure from the magazine of Mr and Mrs Lovatt, the respondent did not make any misrepresentation. It follows that each of the claims under the Trade Practices Act, and the passing off claim, must fail.

Section 65A

For the sake of completeness I should add that

counsel for the respondent submit that, in any event, the

applicants’ claim under the Trade Practices Act would be

defeated by s.65A of that Act. Sub-section (1) of that
section excludes the application of certain sections of the

Act, including ss .52 and 5 3 , to “a prescribed publication of

matter by a prescribed information provlder, other than--

(a) a publication of matter in connection with--

(i) the supply or possible supply of goods or servlces;

(ii) the sale or grant, or possible sale

or grant, of interests In land;

(iii) the promotion by any means of the

supply or use of goods	or services;
or

(iv) the promotion by any means of the sale or grant of interests in land,

whe re--

(v) the goods or services were relevant

goods or services, or the interests

In land were relevant Interests in land, as the case may be, in relation to the prescribed

information provider; or

(vi)the publication was made on behalf of, or pursuant to a contract, arrangement or understanding with--

( A ) a person who supplies goods or

services of that klnd, or who sells or grants interests in land, being interests of that

kind; or

(B) a body corporate that is

related to a body corporate

that supplies goods or services

of that kind, or that sells or

grants interests in land, being

interests of that kind; or

(b) a publication of an advertisement."

A "prescribed information provider" is a person who

carries on a business of providing informatlon. The term

"relevant goods or services" is defined to include goods or

services of a kind supplied	by the relevant prescribed
information provider.

Sub-section ( 2 ) defines the concept of "prescribed

publication".	For the purposes of s.65A a publication by a
prescribed information provider is a prescribed publication	if
the publication was made	by the prescribed Information

provider in the course of carrying on a business of providing
information or, in certain cases, was a publication by way of
a radio or television broadcast by a prescribed information

provider.

Having regard to the conclusion I have reached in connection with the applicants' claims under ss.52 and 5 3 of

the Trade Practices Act, the respondent does not need to rely

upon s.65A in this case. And, in any event, s.65A could not

afford an answer to the claim of passing off, i that clam had been made good. But, as the point has been argued, I should record my view that s.65A has no application to the

facts of this case. It may be accepted that the respondent is a "prescribed information provider" and that its publication of each of the relevant issues of "People" magazine

constitutes a publication	by a prescribed information provider
in the course of carrying	on a business of providing
information. Consequently, the publication of each of those

issues is a publication falling within the opening words of

sub-s.(l).	However, the publication of the word "Super
Colossus" was a publication of matter	in connection with the
promotion of the supply,	or possible supply, of "relevant

.. .*

h ' 26.

goods or services". The word "Colossus" was used on each occasion to Identify, and to promote the popularlty of, the

crossword, and so the sale of the magazine, both	In connection
with the Instant issue and future Issues.

In Horwltz Grahame Books Pty Limited v Performance

Publications Pty Limited [l9871 ATPR 40-764 I made reference to s.65A in the course of considering whether an interlocutory injunction ought to be made restralning the publication and distribution of a magazine said to contain matter offending s.52 of the Trade Practices Act. In that case I reached the

tentative view that none of the items complained of by the

applicant fell within the qualifications contained in

s.65A(1). I have reached the opposite factual conclusion in

this case, regarding the word "Super Colossus", but further
reflection has not caused me to resile from the approach taken

in Horwitz Grahame at p.48,275:

"It is, no doubt, true, in a general sense,

that the publisher of the magazine, in

inserting the material referred to, hopes to

interest readers in purchasing future issues.

But, I suppose, that same statement may be

made about everything which is published in a

newspaper or in a magazine, including straight

news items. Each of the items published are

intended to stimulate interest and to induce

readers to purchase future issues. I think
that the qualification	in para.(a) is intended

to relate to what might be called

advertisements for, or promotions of, future

issues; 'self-advertisements' corresponding

with advertisements published on behalf of others, which are dealt with by para.(b). It is important to note that para.(a) refers to

particular published 'matter', which matter must be 'in connection with' the supply or possible supply of goods or servlces."

.. . I

2 1 .   '.

I would only add that there is no reason t limit para.(a) to

j

the promotion of future issues of a magazine. In Horwitz

Grahame the relevant matter related to future issues. But in

some cases promotional matter may be published in such a

position as to come to the attention of potential buyers

before purchase, and	be calculated to induce purchase of that
very issue of the magazine. In such	a case, there is no
reason in principle to exclude the appllcation of	para.(a) to
that matter.

Put shortly, the intention of s.65A was to exclude

the application of the specified provisions of the Act	to
ordinary items of news and comment	bu to continue to subject

the information provider to those provisions in connection
with any items directly promoting the supply of its own goods
or services or the disposal by it of interests in land. It

was intended that, to the extent that an information provider

uses its own publication to boost its own business, it should

remain as amenable to s.52 as anyone else.

In the present case, the use of the words "super

Colossus" had no purpose other than to promote the crossword

pub1ieh.d under that name, and, consequently, present and	future sales. Therefore, the publication of that name was
excluded by para.(a) from the applrcation of s.65A(1), with
the result that s.65~ would not have afforded the respondent any defence to the applicants' Trade Practices Act claims.

.. 28.

Orders

Both the applicatlon and the cross-claim should be

dismissed.

In relation to costs, as between the applicants the respondent, I think that the appropriate course is to make	and
no order. Each side has had an equal measure of success	-- In
resisting the claim of the other	-- and of fallure -- in

making out its own claim. An alternative course would be to award each party the costs of the successful resistance of the other's claim but this would involve the taxation of two bills

of costs, the totals of whlch would almost certainly be very

simllar. Each bill would, in effect, cancel out the other. The parties should be spared this unnecessary expense.

In relation to Century Publishing there is no reason

to decline to make	an order for costs. This party has been
wholly successful in resisting the claim made against it	by

Consolidated Magazines. Accordingly, I propose to Order that

Consolidated Magazines pay the costs of Century Publishing.

I certify this and the twenty-seven	(27)
preceding pages to be a true copy	f
the Reasons for Judgment of his Honour Justice Wilcox.
Associate:
Date :	r 1988

29.   ..

.

Counsel for the Applicants
and First to Fourth

Cross-Respondents:	Mr J M Ireland and Mr R J Webb
Solicitors for the Applicants
and First to Fourth
Cross-Respondents:	Rooney & Heazelwood
Counsel for the Respondent
and Cross-Claimant:	Mr J J Garnsey and
MS A  H Bowne
Solicitors for the Respondent
and Cross-Claimant:	Allen Allen  E, Hemsley
Counsel for the Fifth
Cross-Respondent:	Mr T H Bathurst QC with Mr G O'L Reynolds
Solicitors for the Fifth
Cross-Respondent:	Minter Ellison
Date(s) of hearing:	16, 17  and 19 August 1988