Newton-John, O. v Scholl-Plough (Australia) Ltd

[1986] FCA 221

Re: OLIVIA NEWTON-JOHN
And: SCHOLL-PLOUGH (AUSTRALIA) LIMITED
No. NSW G208 of 1986
Section 52 Trade Practices Act 1974

COURT

IN THE FEDERAL COURT OF AUSTRALIA

NEW SOUTH WALES DISTRICT REGISTRY
GENERAL DIVISION
Burchett J.

CATCHWORDS

Section 52 Trade Practices Act 1974 - Passing off - Application for interlocutory injunction - Alleged appropriation of well known singer's name - Circumstances in which there was no deception - Injunction refused.

Trade Practices Act 1974, s. 52, s. 53

Radio Corporation Proprietary Limited v. Disney (1937) 57 C.L.R. 448 Nostac Enterprises Pty. Ltd. v. New Concept Import Services Pty. Ltd. (1981) 3 A.T.P.R. 43, 133 M.K. Hutchence et Ors. (trading as "INXS") v. South Seas Bubble Company Pty. Limited (Trading as "Bootleg T-Shirts") (1986) A.T.P.R. 40-667

HEARING

SYDNEY

#DATE 29:5:1986

ORDER

The application be dismissed.

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

JUDGE1

Having had the benefit of the very careful argument that Mr. Tobin has put to me, I am able to give judgment at once. I take as the test whether there is a serious question to be tried. The applicant's argument is that certain advertisements - and there are some advertisements in evidence of which I think one can be taken as typical since variations are quite slight - convey for the purposes of sections 52 and 53 of the Trade Practices Act 1974 a representation which she says is misleading, and she also says that the advertisements convey a message which would involve passing off.

1. The advertisement in question, taking, as I have said, one example, contains a colour photograph of a young lady who is said to bear a considerable likeness to the applicant, Olivia Newton-John, and who, on the applicant's case, came to do this advertisement by virtue of herself answering an advertisement for an Olivia Newton-John look-alike. At the top, in very large and striking letters, are the words: "Olivia? No, Maybelline]" There is down one side, in much less striking lettering, such as one might read if one actually read through the advertisement rather than stopping at the words that would strike one on first seeing it:
   
   

"Maybelline makes anything possible. Whatever the look you are looking for, Maybelline

cosmetics will help you make it."

Then there are some further comments about the virtue of the cosmetics, and then:

"For the 'Olivia Look' use 'Blooming Colours' Neapolitan Frosts eyeshadows",

followed by further comments.

1. There is then a picture of what are represented as being Maybelline cosmetic items, and at the bottom again the words:
   
   

"Maybelline makes anything possible."

The applicant suggests that the prominent photograph, and it is extremely prominent in the advertisement, would arrest a significant number of people as being a photograph of Olivia Newton-John, although in fact it is not, and although the bold words I have already referred to make it clear that it is not.

1. The applicant submits that from the appearance of someone who obviously is intended to look like Olivia Newton-John, combined with the reference to her name twice in the advertisement elsewhere, the inference could be drawn that she is in some way associated with the advertisement. It is conceded it would be a matter of speculation how she is associated, but it is suggested that consumers would make that association, and some reliance is placed on a passage from a judgment of Dixon J. as he then was, in Radio Corporation Proprietary Limited v. Disney (1937) 57 CLR 448 at 457, which is quoted in Nostac Enterprises Pty. Ltd. v. New Concept Import Services Pty. Ltd. (1981) 3 ATPR 43, 133 at 43, 137, a decision of Ellicott J

2. In that citation, Dixon J. referred to representations, by a trader, of Mickey Mouse, and made the comment:
   
   

"No doubt this means that the trader makes use of elements which belong to the reputation

and fame of Disney's creations, and it may be that in some vague way the buyer supposes

that Disney must have sanctioned it."

It seems to me that, in the present case, the inference clearly arises that there has been an appropriation of the appearance of the applicant, and it is suggested that in some subliminal way this may be a means of deception. The difficulty, as I see it, is that this advertisement tells even the most casual reader, at even the first glance, that in fact it is not Olivia Newton-John who is represented in the advertisement.

1. If the reader gets so far as to observe that the advertisement relates to Maybelline, it seems to me he must also inevitably get far enough to perceive that it does not relate to Olivia Newton-John. That is the difficulty in the applicant's case. One can either take the very casual reader, or one can take a reader who reads more carefully, but in either event, it seems to me the reader will not be deceived into seeing a connection between Olivia Newton-John and the product. If he reads more carefully, it will be certainly clear that the message, which probably like the message in the Disney case, is a little vague, can at any rate go no further than that a person who has the appropriate general appearance would find this cosmetic suitable for making her achieve the desirable characteristics of the look of the applicant.

2. I would think that is as far as a reasonably careful reader could be expected to find some association with the applicant, and I do not think that is far enough for the purposes of the applicant's case. On the other hand, if the reader is much more casual, and the submission about the subliminal effect would look to such a reader, I think it is clear the reader would have to go beyond the mere picture that looks like Olivia to give the applicant any case at all. The applicant has to postulate a reader who appreciates that the advertisement is concerned with Maybelline, and such a reader could not avoid discovering at the same time that it is not, in fact, Olivia Newton-John who is pictured.

3. It seems to me that the antithesis between a look-alike, and the person whose resemblance is imitated by the look-alike, immediately negatives the association which the applicant is seeking to show is suggested. I think the casual reader would get the impression that indeed the advertiser had made use of Olivia Newton-John's reputation to the extent of gaining attention, but not to the extent of making any suggestion of an association. Indeed, the direct words: "No, Maybelline" negative such an association. They put the product and the applicant on the opposite sides of the street.

4. I accept that it is legitimate to employ the argument from the subliminal effect of an advertisement, and I accept that an advertisement may be deceptive even without making any untrue statement, but that does not excuse the Court from the requirement of being able to find some indication that in fact the subliminal effect would be conveyed. It is not enough to talk about subliminal effects. It is necessary to be able to see that the case in question poses a real, not remote, prospect that this effect would indeed occur.

5. The applicant says that nothing that has occurred can displace the very great impact which the applicant argues has been made by her reputation in the entertainment world over some years now, and certainly at the present time; but accepting that the respondent, in a not particularly praiseworthy way, is taking advantage of her name and reputation to obtain attention to his message, it seems to me that, having got the attention, he is making it perfectly clear that his product does not have any relevant association with the applicant.

6. Reference was made to the necessity, where a reputation is taken advantage of, for the respondent to show clearly that any connection has been negatived. In this regard, reliance was placed on M. K. Hutchence et Ors. (trading as "INXS") v. South Seas Bubble Company Pty. Limited (trading as "Bootleg T-Shirts"), (1986) ATPR 40-667, a decision of Wilcox J delivered on 28 February last. I accept the proposition in that decision but I think that this case is one where the connection has been negatived.

7. Reliance was also placed on the doctrine of passing off, but in that regard it was submitted that Henderson's Case, 60 S.R.(N.S.W.) 576 correctly states the law, and that case of course proceeded from a starting point of the establishment of a passing off by virtue of deception, and proceeded from that point to consider the consequences. It is really the threshold question which is the problem here, and it is not suggested that that threshold can be avoided by virtue of the doctrine of passing off, any more than under section 52. For those reasons I must reject the applicant's application.