Pacific Dunlop Limited v Hogan - [1989] HCATrans 306

IN THE HIGH COURT OF AUSTRALIA
Office of the Registry

Sydney No S62 of 1989
B e t w e e n -
PACIFIC DUNLOP LIMITED

Applicant

and
PAUL HOGA.i.~, RIMFIRE FILMS LIMITED
and BURNS PHILP TRUSTEE COMPANY
LIMITED

Respondent

Application for special leave to
appeal

MASON CJ BRENNAN,_J
McHUGH J
TRANSCRIPT OF PROCEEDINGS
AT SYDNEY ON FRIDAY, 8 DECEMBER 1989, AT 9.37 AM
Copyright in the High Court of Australia

SlT 1/1/RB 1 8/12/89

Pacific

MR J.McL. EMMERSON, QC: If the Court pleases, I appear with my
learned friend, MR J.E. MIDDLETON, for the applicant.
(instructed by Freehill Hollingdale & Page)

MR J.P. HAMILTON, QC: If the Court pleases, I appear with my
learned friend, MR P. CAMPBELL, for the
respondents. (instructed by Henry Davis York)

MASON CJ: Mr Emmerson.

MR EMMERSON: If the Court pleases, this is a case concerning
what is known as character merchandising and it
raises the issue of what are the rights and
obligations of persons who seek to engage in this
type of merchandising.
The problem arises as follows: for any advertising

it is necessary for the person making the advertisement
to somehow attract the attention of the proposed
customer; in the case of television advertisements,

the attention of the viewer. To do that it is usual
to have what is called a hook or a grab, something
which attracts the attention of the viewer and,with
any luck, also puts the viewer in a good frame of mind.
The hook or the grab need not necessarily have anyth:ing

much to do with the subject-matter that is being
advertised. Its purpose is one of attracting attention.
Now one can, of course, use a variety of hooks or
grabs; some of them, on any view, are matters which

could be said to be in the public domain. You can have
a picture of seaside or Sydney Harbour Bridge or
anything else which you hope will serve your purpse.
In the case of character advertising, what you

seek to do is attract attention with the aid of
some image which suggests a particular character, in
this case the character of Mick Dtmdee. Now, it has
become common for there to be character merchandising
and persons who have rights in respect of characters

sometimes license those rights for reward and they

can become valuable. Now, the rights that they have
had in the past have been such rights as copyright,
trademark and matters of that sort, where there is
an identifiable right which is licensed or,
alternatively, what has been licensed is the actual
services of someone who is known and recognized by
the public.
The question raised in this case is whether, even
if there are no such rights, nevertheless persons who
are associated with the particular character have a
right to prevent others from using that character in
advertisements without permission or without paying

such sums of money as are required. Now, in our
submission, this is a case where the question…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [1989] HCATrans 306
Decision Date

CaseChat Overview and Summary

Pacific Dunlop Limited sought special leave to appeal to the High Court of Australia from a decision of the Full Federal Court concerning character merchandising. The dispute arose from a television advertisement created by Pacific Dunlop which, while not infringing copyright or using the likeness of actor Paul Hogan, was a parody of a scene from the film *Crocodile Dundee*. The advertisement relied on its resemblance to the film to attract viewer attention.

The central legal issue before the High Court was whether individuals associated with a particular character, such as the actor who portrayed them, possess a right to prevent others from using that character in advertisements without permission or payment, even in the absence of established rights like copyright or trademark. This question was framed as arising in a "sharp form" due to the trial judge's findings that no such background right was infringed.

The High Court considered the nature of character merchandising, where rights in characters are often licensed for reward. It was noted that such rights have traditionally been based on identifiable legal rights like copyright or trademark, or the licensing of an individual's services. The Court was asked to determine if a right could exist independently of these established categories, based solely on the use of a character's recognisable attributes to attract attention in advertising. The case involved a consideration of how such a right might be constructed, with reference to different judicial approaches in related matters.

Orders