Perkins and Talmax Pty Ltd v Telstra Corporation Ltd

[1996] QCA 412

IN THE COURT OF APPEAL

SUPREME COURT OF QUEENSLAND	Appeal No. 2983 of 1996
Brisbane
[Talmax P/L & anor. v. Telstra Corp.]
BETWEEN:

TALMAX PTY LTD

(First Plaintiff) First Appellant

AND:

KIEREN JOHN PERKINS

(Second Plaintiff) Second Appellant

AND:

TELSTRA CORPORATION LIMITED

(Defendant) Respondent

FITZGERALD P.
DAVIES J.A.

MOYNIHAN J.

Judgment delivered 25/10/1996

JUDGMENT OF THE COURT

Appeal allowed with costs to be taxed. granted against the respondent, which is also ordered to pay damages of $15,000.00 and the appellants’ taxed costs of and incidental to the action, including reserved costs.

Order for costs made below set aside.

CATCHWORDS:	CIVIL - MISLEADING AND DECEPTIVE CONDUCT - The respondent used the second appellant’s photograph in advertising with the respondent’s name and logo prominently displayed - whether the respondent’s publication misrepresented that the second appellant was sponsored by it, had consent to the use of his name, image and reputation in the respondent’s advertising and that he had endorsed or supported the respondent - whether contravention of s. 52 of the Trade Practices Act 1974 - appellant’s sought an injunction, damages and costs - s. 82 of the Trade Practices Act.
Counsel:	Mr D.F. Jackson Q.C., with him Mr P.R. Dutney Q.C. for the Appellants Mr P.A. Keane Q.C., with him Mr N.J. O’Bryan for the Respondent
Solicitors:	Biggs and Biggs for the Appellants Freehill Hollingdale & Page for the Respondent
Date(s) of Hearing:	15 October 1996
IN THE COURT OF APPEAL	[1996] QCA 412
SUPREME COURT OF QUEENSLAND	Appeal No. 2983 of 1996
Brisbane
Before	Fitzgerald P. Davies J.A. Moynihan J.

[Talmax P/L & anor. v. Telstra Corp.]

BETWEEN:

TALMAX PTY LTD

(First Plaintiff) First Appellant

AND:

KIEREN JOHN PERKINS

(Second Plaintiff) Second Appellant

AND:

TELSTRA CORPORATION LIMITED

(Defendant) Respondent

REASONS FOR JUDGMENT - THE COURT

Judgment delivered 25/10/1996

This is an appeal against a judgment of a Judge of the Trial Division on 14 March 1996 dismissing an

action brought by the appellants against the respondent. The appellants seek an injunction, damages

and costs. It is convenient to postpone consideration of the terms of the injunction sought until later.

It is also convenient to discuss the dispute as one between the first appellant, Kieren John Perkins, and

the respondent; in their oral submissions before this Court, neither party was concerned to differentiate

between Mr Perkins and the first appellant, Talmax Pty Ltd, which the trial judge described as “a management company formed to take advantage of opportunities to commercially exploit [his] name,

image and reputation”.[1] His Honour added that the respondent admitted that Mr Perkins “is a well-

[1]             In its written argument, the respondent submitted that an agreement between the appellants dated 30 October 1992 did not assign to Talmax any property right recognised by Australian law, and hence it had no cause of action against the respondent. However, the effect of these propositions, if correct, was simply that any right to relief rests with Mr Perkins, not Talmax. The appellants did not dispute this contention, which accordingly need not be further considered.

known and respected sporting identity whose face and name was widely recognised throughout

Australia and Queensland in particular”, and that he “has gained recognition for his numerous, significant

achievements in swimming at a world class level, including several world records and medal-winning

performances at Olympic Games and Commonwealth Games”.

The dispute arose out of a colour supplement “Telecommunications ‘94" inserted in the Courier-Mail

newspaper of 12 March 1994 on behalf of the respondent. The lefthand side of the front page of the

supplement was concerned with “Preselection”, a process which was to allow telephone users to

determine whether to continue with the respondent or to select a competitor about to enter the market

as “the carrier they want to provide their long-distance and international telephone calls”, and the

supplement promoted the selection of the respondent. The other side of the front page included the

material complained of by the appellants at the top of the page and, below that, an index of what was

to be found inside the supplement and an advertisement for an advertising agency. The material

complained of by the appellants consisted of a large colour photograph of Mr Perkins at the end of a swimming pool, quite obviously at the finish of a race, and the text set out below. In the photograph,

Mr Perkins was wearing a swimming cap on which the respondent’s logo and a dolphin were clearly

visible, and a large advertisement for the respondent on part of the end of the pool could also be plainly

seen. The text underneath the photograph was as follows:

“Kieren leads charge by Telecom Dolphins
Brisbane’s favourite son Kieren Perkins returns to the famous Chandler Aquatic Centre next week for the Telecom Australian Open Swimming Championships, which Australian Swimming believes will be the biggest and the best ever staged.
Kieren, who has been training hard this season, is looking forward to showing off his
remarkable talents in front of his home crowd.
Although Kieren has admitted he may not be in world record-breaking shape, Chandler remains one pool in which he would dearly love to break a world record - the Telecom Australia Open Championships is a golden opportunity.
Other key members of the Telecom-sponsored ‘Dolphins’ will also compete at
Chandler.
Kieren has set world marks in Barcelona, Edmonton, Auckland, Canberra, Blacktown and Warringah Aquatic Centre over three years which have seen him climb to the top of the international swimming ladder.
Two other goals remain in Perkins’ sights and if he continues on his winning way he’ll surely achieve them - to win Commonwealth Games gold in Victoria and to win World Championship gold in Rome in September.
Perkins was recently named the Telecom Australian Swimmer of the Year and received

a Yamaha Jet-ski.” ü

The trial judge rejected a submission that the publication conveyed the impression that Mr Perkins

“endorsed or supported the respondent, generally or in its competition ... for subscribers”. His Honour

tested this issue by considering the meaning which the material complained of would convey to a “careful

reader” who undertook on “analysis of the supplement” and “would have observed a contrast with other

articles which clearly were endorsements”. That was an incorrect approach in circumstances in which

the material complained of was an advertisement directed to the general public by inclusion in a

newspaper with a wide circulation; the “target” readership accordingly included “the astute and the

gullible, the intelligent and the not so intelligent, the well educated as well as the poorly educated, men and women of various ages pursuing a variety of vocations”, and the appellants could rely on any

meaning which was reasonably open to a significant number of the newspaper readership.[2]

[2]          Taco Co of Australia Inc v. Taco Bell Pty Ltd (1982) 42 A.L.R. 177, 202; cf. Siddons Pty Ltd v. The Stanley Works Pty Ltd (1991) 29 F.C.R. 14, 20; see also Morgan v. Odhams Press Ltd [1971] 1 W.L.R. 1239; F.A.I. General Insurance Co. Ltd v. RAIA Indusrance Brokers Pty Ltd (1992) 14 ¶A.T.P.R. 41-176, at pp. 40,409-40,410.

The trial judge also made another critical error. At the material time, the respondent had a sponsorship

agreement with Australian Swimming Incorporated, the controlling body of the sport of swimming in

Australia. Pursuant to that agreement, the respondent was the sponsor of the forthcoming “Telecom

Australian Open Swimming Championships”, which were referred to in the “article” which concerned

Mr Perkins. Further, the respondent had “naming rights” to the “National Swim Squad”, which was

agreed to be known as the “Telecom Dolphins Swim Squad”, and, with specified exceptions, “to any

team representing Australia in international competition ...” and “any team that swims as the ‘Australian

Team’ in domestic competition”, each of which was agreed to be known as the “Telecom Dolphins”.

The appellants’ final statement of claim alleged that there was no “association” between Mr Perkins and

the respondent, i.e., at the time when the advertising supplement was published. In its defence, the

respondent asserted that Mr Perkins was “a member of Australia’s national swimming squad”, which

“has been and is publicly known by the name ‘Telecom Dolphins’ ”. There was no suggestion by either

pleading that there was at the time of the publication, or would be at the time of the “Telecom Australian Open Swimming Championships”, an “Australian [Swimming] Team”, or that Mr Perkins was or would

be a member of such a team. Mr Perkins gave evidence, and the trial judge found, that he had never

been a member of the “National Swim Squad”. Mr Perkins’ evidence in chief also included the

following:

“MR DUTNEY: From time to time you have been a member of Australian swimming
teams; is that correct?-- It is.

For the purpose of becoming a member of an Australian swimming team in recent years has it been necessary to sign an agreement with Australian Swimming?-- Yes.

Prior to March 1994 what was the nearest in date of Australian teams you were a member of?-- It was the 1993 Pan Pacific team which swam in August of 1993.

Would you have a look at this document? Is that a copy of the team agreement you signed for the Pan Pacific in 1993 with cover letter from your solicitors under which it was sent to Australian Swimming?-- Yes, it is.”

While the first question and answer were relevant to establishing Mr Perkins’ standing, the other

questions and answers were not related to any issue raised by the pleadings, and no cross-examination

was directed to any aspect of this segment of Mr Perkins’ evidence. In the circumstances, it was

incorrect of the trial judge to hold that “[i]t was not proved that Perkins was not a member of an

Australian team on 12 March 1994 [the date of publication]. ... Perkins was not asked whether he was

a member of an Australian team during March”. His Honour went on to erroneously hold that

“although the photo and article represent that Perkins was a member of the Telecom Dolphins on 12

March 1994, this representation is not shown to have been false ...”.

By mis-stating that Mr Perkins was a member of the “Telecom Dolphins”, which it was expressly stated

were “Telecom-sponsored”, the respondent plainly misrepresented that, at the time, Mr Perkins was

a member of a group which it sponsored. That false impression was quite deliberately fostered by the use of Mr Perkins’ photograph with the respondent’s name and its logo (on Mr Perkins’ swimming

cap) prominently displayed. Further, the article attributed attitudes and aspirations to Mr Perkins. The

respondent submitted that there was no evidence that Mr Perkins did not express the views attributed

to him, but that is of little consequence in the circumstances. There was no suggestion that there had

been any communication between the respondent and either appellant prior to publication, and the

judgment below records that the respondent admitted that it did not seek permission for the publication

from either appellant.

However, the trial judge held that the publication did not misrepresent that Mr Perkins had consented

to the respondent’s association of his name, image and reputation with its advertising. His Honour held

that a reader of the publication could not have legitimately inferred such a consent on the basis that the

publication would otherwise have been unlawful because the law is otherwise.[3] It was said that “[s]uch

a mistake could not convert the article into conduct contravening s. 52[4]” [of the Trade Practices Act

[3]             Reference was made to Sony Music Australia Ltd v. Tansing (1993) 27 I.P.R. 649, 653-654, 656 and J.G. Fleming, The Law of Torts, 8th ed. (1992) pp. 718-719. Earlier, his Honour had said: “The plaintiffs disclaimed reliance on United States cases concerning protection against misappropriation of the personality of a celebrity: see, generally, J. Thomas McCarthy, The Rights of Publicity and Privacy, (1987); Restatement of the Law 3d on Unfair Competition (1995) §46; cf. the Canadian cases discussed by Robert G. Howell, “Character Merchandising: The Marketing Potential Attaching to a Name, Image, Persona or Copyright Work”, (1991) 6 Intellectual Property Journal 197, 203ff.”

[4]             cf. Hogan v. Koala Dundee (1988) 20 F.C.R. 314, 325; S.G. Corones, “Basking in Reflected Glory: Recent Character Merchandising Cases”, (1990) 18 Australian Business Law Review 5, 22.

1974 (Cth)]. The appellants did not challenge that finding before this Court.

The judgment then continued:

“The next question is whether readers would have assumed that, in accordance with
decency or usual practice, permission would have been given.[5]

[5]             cf. Hogan v. Pacific Dunlop Ltd (1988) 83 A.L.R. 403, 425.

By swimming at an international event wearing a cap carrying the Telecom Dolphins’ logo, and by accepting the award as Telecom Swimmer of the Year, Perkins had very publicly associated himself with Telecom and its sponsorship of Australian swimming. That being so, readers are unlikely to have considered that common decency or usual practice required Telecom to obtain a consent before proclaiming the extent of its support for Australian swimming and Perkins in an advertisement. It is more likely that readers would have supposed that that public affiliation with Australian swimming in general and Perkins in particular entailed a liberty in Telecom to publicize it. In other words, if they reflected on the matter at all, readers are likely to have regarded an entitlement to publish the article and photo as a benefit incidental to the sponsorship and the award. And, in my opinion, intuitive or subconscious reactions would not have resulted in a different state of mind in a significant number of readers.

In short, given the association with Telecom which Perkins chose to accept, it seems unlikely that many readers would have thought or assumed that ordinary practices or the proprieties required Telecom to obtain consent before including the article and photo in the supplement”

His Honour added that the article and photo in the supplement “did not amount to an approbation of

Perkins by Telecom”; it will be necessary to come back to that issue, but it is desirable to observe at

this juncture that the trial judge’s opinion on the point was based on the application of an erroneous test,

as has earlier been noted.

Finally, in dealing with the question whether the publication misrepresented that Mr Perkins had

consented to it, his Honour said:

“This brings me to the more difficult issue whether, in all the circumstances, the text an impression:

impliedly asserts permission to use the name and image.
The style of the article suggests that it could be the report of an interview with Perkins.

‘Kieren, who has been training hard this season, is looking forward to shape, Chandler remains one pool in which he would dearly love to break a world record - the Telecom Australia Open Championships is a golden opportunity.’

showing off his remarkable talents in front of his home crowd.

Perkins is referred to by his first name in the headings of the article and in another paragraph of it, as well as in these two paragraphs. These references tend to reinforce the impression of a personal interview.

As the case was fought, it does not matter whether Perkins talked to someone from Telecom or to anyone at all, saying he had been training hard, was looking forward to showing off his talents, was not in world-record breaking shape, and wanted to break a world record at Chandler. The only significance of such words lies in any potential they had to lead readers to suppose that Perkins had permitted his name and image to be associated with the advertisement.

Perceptions of readers will have been influenced by a variety of experiences and outlooks. And readers cannot be expected to pause and carefully think about whether the impression this sort of article immediately creates is logically appealing. But, on balance, it is hard to imagine that many readers would have derived from the article a representation of assent to the association of Perkins with the advertisement. The text does not suggest, for example, that the words attributed to Perkins were spoken to a Telecom representative. And, once again, Telecom’s sponsorship is a complicating factor, colouring the way in which messages could have been received.

Some cases evidence a ready judicial inclination to find a misrepresentation of consent where, without their authority, celebrities are associated with promotions of goods and services.[6] However, in this case, in my opinion, it is not proved that a significant number of readers would have inferred that Perkins or Talmax had consented to the publication. I doubt that many readers would have reacted, consciously or subconsciously, in that way. So it is not surprising that not a single reader testified to having understood the article as implying assent by Perkins or Talmax to the publication.”

[6]             See the analysis by Robert G. Howell, “Personality Rights: A Canadian Perspective: Some Comparisons with Australia”, (1990) 1 Intellectual Property Journal 212, 216-221.

It is significant that, in that passage, it is stated that “readers cannot be expected to pause and carefully think about whether the impression this sort of article creates is logically appealing”, whereas in earlier

rejecting another element of the appellants’ case his Honour had done so by reference to an “analysis”

of the supplement by a “careful reader”. It is convenient to return immediately to the issue then under

consideration.

As previously mentioned, the appellants submitted that the material complained of conveyed that Mr

Perkins supported the respondent in the “preselection” process. The trial judge found that “Perkins did

not in fact commend Telecom, its products or services”, but, as earlier stated, applied the wrong test

concerning whether the publication was relevantly misleading. His Honour held that, while “the article

and the photograph were included in the supplement to influence customers to choose Telecom in the

[preselection] ballot ... by associating Perkins, a popular, successful, local, sporting celebrity, with

Telecom”, its emphasis was “on the material support Telecom has given to Australian swimming and the

benefits Perkins had derived through that sponsorship ...”. The judgment continued:

“... The article aims to entice readers to support Telecom because Telecom has supported Australian swimming and Kieren Perkins. That is the plain thrust of the presentation.

The article and photo are not an implied representation that Perkins supports or has supported Telecom; and, in my opinion, it is unlikely that readers would have thought otherwise.”

The respondent argued, correctly, that the trial judge’s conclusions were based upon an “impression”

of the effect of the publication, and submitted that an appellate court should not set aside such a finding

merely because it disagreed, and that demonstrated error by the primary judge was necessary before

the appeal court would substitute its different impression. Whatever the general validity of such

propositions, they have no present significance because of the trial judge’s mistaken approach which plainly must have influenced his view of the impression to be gained from the publication. It is, therefore,

appropriate for this Court to form its own impression.

As has been said, the trial judge accepted that “the article and the photo were included in the

supplement to influence customers to choose Telecom in the [preselection] ballot”. His Honour was

also correct, in our opinion, that for that purpose emphasis was given to “the material support Telecom

has given to Australian swimming and the benefits Perkins has derived through that sponsorship ...”.

However, to our mind, it attributes far too much subtlety to both the publication and the respondent’s

motives to find a distinction in what was conveyed in the article between the respondent’s support for

Australian swimming and Mr Perkins and his support for the respondent. We are of opinion that the

ordinary reader would have gained the impression that Mr Perkins supported the respondent in the

“preselection” process by the respondent’s use of its association with Perkins in that context. We are

fortified in this conclusion by the circumstance that it is an obvious inference that such an impression was

the manifest purpose of the offending material.[7]

[7]             Compare Gould v. Vaggelas (1985) 157 C.L.R. 215.

Once this point is reached, while it seems of less importance whether there was a misrepresentation that

Mr Perkins consented to the publication, a conclusion that such an impression was not created by the

offending material could not be reached without considerable difficulty. In our opinion, taken as a whole, the material complained of gives a clear impression that the respondent had Mr Perkins’ consent

to what was published.

In his reasons for judgment, the trial judge also rejected a conclusion that the publication misrepresented

that Mr Perkins endorsed or supported Telecom “generally”. That point was not relitigated on appeal.

In summary, therefore, we are of opinion that the respondent’s publication misrepresented that Mr

Perkins was sponsored by it, had consented to its use of his name, image and reputation in its

advertising, and supported it in the forthcoming “preselection” process. It was not in dispute that such

misrepresentations would have contravened s. 52 of the Trade Practices Act. Although the appellants

also asserted a cause of action in passing-off, no suggestion was made that the relief claimed on that

basis was different from that which can be granted under the Trade Practices Act.

The respondent did not submit that an injunction in appropriate terms should not be granted against it

in these circumstances.[8] Its conduct on this occasion was exacerbated by the fact that, some months

[8]          Trade Practices Act, s. 80.

earlier, it had apologised for using Mr Perkins’ image in an advertisement without his consent, and

asserted that it had “instituted processes to ensure that there is no repeat of this incident ...”.

Under s. 82 of the Trade Practices Act, the respondent is also liable to either appellant for loss or damage suffered by its misrepresentations in contravention of s. 52. The trial judge did not assess

damages, and there is little material upon which this Court can do so.

No suggestion was made that any of the misrepresentations adversely affected Mr Perkins’ reputation.

Broadly stated, the damages claim was based upon the premise that the publication diminished the

opportunity to commercially exploit his name, image and reputation. In general terms, it was said that

it is disadvantageous to expend celebrity in promoting an entity, product or service on a single occasion;

each association to which a famous person lends himself or herself utilises a part of his or her

“credibility” for advertising purposes. More specifically, the misrepresentation of an association

between Mr Perkins and the respondent eliminated or diminished the prospect of an association

between him and some other prospective “clients”. No attempt was made to prove a particular lost

opportunity, but some evidence was led which indicated that (i) Mr Perkins “had already done some

appearances” for the respondent’s competitor in the preselection process and (ii) he received

substantial, but extremely variable, amounts for permitting the use of his name, image and reputation.

It is not possible to determine any specific amount as having present relevance.

Nor is it necessary to do so. Loss of an opportunity to exploit commercial advantage is “loss or

damage” within sub-s. 82(1) of the Trade Practices Act,[9] and so, logically, is diminution of such

[9]          Sellars v. Adelaide Petroleum N.L. (1994) 179 C.L.R. 332.

opportunity. What is called for in the present circumstances is an assessment of the possible extent to

which Mr Perkins’ commercial advantage was generally diminished and of the possibility that he lost the chance of a particular opportunity of exploitation of that advantage.[10] “[W]here there has been an actual

[10]         Sellars at pp. 355-356 per Mason C.J., Dawson, Toohey and Gaudron JJ.

loss of some sort, the common law does not permit difficulties of estimating the loss in money to defeat

an award of damages”.[11] On our assessment, the damages related to the possibilities to which reference

[11]         Sellars at p. 349.

has been made should be set at $15,000.00.

We would therefore allow the appeal with costs to be taxed, and set aside the order for costs made

below. An injunction, in terms to be agreed or decided after further written submissions, should be

granted against the respondent, which should also be ordered to pay damages of $15,000.00 and the

appellants’ taxed costs of and incidental to the action, including reserved costs.