Radio Corporation Pty Ltd v Disney

[1937] HCA 38

57 CLR 448

CORPORATION

PROPRIETARY LIMITED

DISNEY AND OTHERS Trade Mark- Words likely to deceive-Disentitled to protection in a court of justice-

Names of characters with world-wide reputation in cinematograph pictures-Trade mark sought with respect to radio receiving sets by person other than inventor MELBOURNE,

of names-Refusal of registration-Trade Marks Act 1905-1934 (No. 20 of May 18, 19.

1905-No. 45 of 1934), sec. 114. SYDNEY,

Two fantastic characters, Mickey Mouse" and " Minnie Mouse, invented Aug. 4.

by D. had acquired a world-wide popularity in cinematograph pictures. The names and figures had been applied by traders under licence from D. and his assigns to many classes of goods other than films as an aid to selling them. The appellant, which had no connection with, or licence from, D., applied for registration as trade marks of the words "Mickey Mouse and Minnie Mouse " in respect of radio receiving sets.

Held that registration should be refused :- By Latham C.J., Rich and McTiernan JJ., on the ground that the words were SO closely associated in the public mind with the name of D. that their use by the appellant as trade marks would be likely to deceive.

By Dixon J., on the ground that the use by the appellant of the marks was disentitled to protection in a court of justice within the meaning of sec. 114 of the Trade Marks Act 1905-1934.

Eno v. Dunn, (1890) 15 App. Cas. 252, applied.

APPEAL from the Registrar of Trade Marks.

The Radio Corporation Pty. Ltd. applied to register the words " Mickey Mouse " and "Minnie Mouse" as trade marks in respect

57 CLR 449

of radio receiving sets and kits. The application was opposed by Walter E. Disney, Walt Disney Productions Ltd., Walt Disney Enterprises and Walt Disney Mickey Mouse Ltd., on the ground that the words were SO closely associated with the opponents that their use by the applicant was calculated to deceive and cause confusion in trade and in the public mind.

The cinema characters "Mickey Mouse" and "Minnie Mouse' were invented by Walter E. Disney. Their names and the figures which represent their characters were extensively known, and were well known throughout Australia. After these characters attained celebrity through the moving pictures they were turned to account in publications of many kinds and there was a large output in many countries of printed matter, including cartoons, strips and other forms of advertisement. In all this the name of Walter E. Disney was kept before the public, and his responsibility for the characters and for their persistence was a matter of common know- ledge or general belief. Another important application of the names and figures of Disney's characters concerned the retail sale of various kinds of goods. In the use of the characters as an aid to selling goods, their author and the other respondents found a valuable source of revenue. An extensive system of licensing had been set up, under which manufacturers or traders paid for permis- sion to use the names or the figures in connection with their goods, and in Australia licences had been granted for goods of different descriptions produced by numerous manufacturers. No registration had been obtained in Australia in respect of the words or figures, either as trade marks or designs or under the Copyright Act, but in Great Britain and other countries the words were registered as trade marks for picture films and publications and for various kinds of goods.

The Registrar of Trade Marks refused the application, and from that decision the applicant appealed to the High Court.

Dean, for the appellant. The only subject matter of the appeal is the right of the appellant to use the words "Mickey Mouse " and

Minnie Mouse" in respect of its goods. The appellant was entitled to use these words. It merely took the name of a character

57 CLR 450

in fiction in which no one had any trade mark interest, and the owner of the copyright in the pictures had no trade mark rights and no copyright in the name. Disney has no trade mark rights in the name at all and none in respect of these goods. There is no proof that Disney had any copyright whatever in Australia in the figures or in the words. With regard to the words, there cannot be copyright in the two words, and, even if Disney had copyright in them in the Commonwealth, that is no ground for refusing regis- tration of the trade mark. The respondents do not use the words as trade marks at all; the words are used to describe characters in their various forms of fiction and to describe the contents of films etc. The goods on which the words are used by the respondents are unlike the goods in respect of which registration is sought. Their extensive licensing system shows that the respondents have not treated the words or figures as trade marks and the words, therefore, cannot distinguish the goods of any person. The respondents' licensing system negatives the possibility of any deception. Disney is attempting to use the trade-mark law to support his copyright claims. The respondents are not entitled to copyright in Australia, as America is not a member of the copyright union (Copinger on the Law of Copyright, 7th ed. (1936), pp. 277, 314, 365). There cannot be copyright in a mere name or title (Copinger on the Law of Copyright, 7th ed. (1936), pp. 56, 57; Schove v. Schmineki 1 Maxwell v. Hogg 2; Mathieson v. Sir Isaac Pitman &Sons Ltd. 3 O'Gorman v. Paramount Film Service Ltd. 4 ). Even if the respondents have a copyright in Australia and even if it can exist in the words in question, there is no reason for refusing registration as a trade mark. The respondents do not use the words as a trade mark in the way in which a trade mark is generally used, viz. to distinguish the respondents' goods from the goods of other people and, in any event, the goods to which the appellant wishes to apply the mark are quite distinct from the pictures of the respondent and there is no likelihood of deception (Kerly on Trade Marks, 6th ed. (1927), p. 260; Lever Bros. Ltd. v. Abrams 5; Robert Harper &

1(1886) 33 Ch. D. 546. 2(1867) 2 Ch. App. 307. 3(1930) 47 R.P.C. 541. at p. 549. 4(1937) 2 All E.R. 113. 5(1909) 8 C.L.R. 609 57 CLR 451

57 C.L.R.]

OF AUSTRALIA. Co. Pty. Ltd. v. A. Boake Roberts &Co. Ltd. 1; Eno v. Dunn 2;

W ilson v. Hecht 3 In the Matter of Lake &Elliott's Application 4 ).

Fullagar K.C. (with him O'Bryan), for the respondents. Actually this is an application by the appellant to the exclusive right against all the world to the use of the words Mickey Mouse " and Minnie Mouse," and the only real question is whether they have satisfied the registrar or this court that there is no reasonable possibility of deception arising. The four essential facts in this case are that Walter E. Disney made a drawing and gave it an appropriate name, and the drawing and the name have won world-wide fame and popularity. The name "Mickey Mouse" is inseparably associated in the public mind with the drawing or figure. The words suggest the picture and vice versa. Both the name and the character are, by reason of the use made of them, in the public mind inseparably associated with Walter E. Disney. The name has been in fact used by Disney as a trade mark in respect of films and books. It is not suggested that the intention of the appellant is to steal the existing trade of the respondents, but it is suggested that the name has been chosen to obtain the popularity enjoyed by that amusing figure. Those are the essential features of the facts in this case, and the burden is thrown on the appellant of showing that there is no possibility of deception (Eno v. Dunn 5 ). These words and figures were never used by the respondents as a trade mark; and the licences which they gave were to enable people to use the device as an ornament only and not as a mark to identify the goods. If the figure and name are allowed to be put on goods as a trade mark, there is a danger of people thinking that the goods are connected with Disney. The device has not been used in Australia on goods of the character of the appellant's. The granting of the licences has not prejudicially affected the respondents, who have a trade mark in respect of films and similar goods. The licensing system has built up a connection between Walter E. Disney and

Mickey Mouse," which name has not previously been used in Australia on wireless sets. The respondents have trade-mark rights,

1(1914) 17 C.L.R. 514. 2(1890) 15 App. Cas. 252. 3(1915) Copyrigt Decisions. 4(1903) 20 R.P.C. 605. 5(1890) 15 App. Cas., at pp. 260, 57 CLR 452

and, although the respondents have copyright in the words, the material necessary to determine the question of copyright is not before the court. The facts in this case show that " Mickey Mouse has gone far beyond a mere character in fiction. There is a Mickey DISNEY.

Mouse business." A "Mickey Mouse" film indicates a distinctive type of film. The only question that arises is Has the likelihood of deception or confusion been negatived? (Eno v. Dunn 1 The connection between "Mickey Mouse" and Walter E. Disney is

SO close and SO widely known that the nexus of similarity is unim portant, but there is a nexus of similarity between sound films and wireless sets by the mechanical reproduction of sound, electrical reproduction and electrical recording. The producer of the one is likely to produce the other.

Dean, in reply. The only question is Has the appellant satisfied the court that there is no likelihood of deception? A wireless set could not be supposed to be a product of Walter E. Disney. The goods are completely distinct. The skill of the producers is entirely distinct and the trade is entirely distinct (Walter v. Ashton 2 ). There must be the possibility of deception in respect of the goods with reference to which registration is sought. The licensing system enables the device to be used as a trade mark and the appellant has discharged the onus of showing that there is no possibility whatever of deception (Ashburner, Principles of Equity, 2nd ed. (1933), pp. 372-375 In the Matter of a Trade Mark "Pup" 3 ).

The following written judgments were delivered :-

LATHAM C.J. Some years ago Walter E. Disney invented two fantastic and amusing cinema characters-Mickey Mouse and Minnie Mouse. They have become very popular throughout the world. Their names and the very distinctive figures which represent or possibly constitute their personality are almost universally familiar-certainly they are very widely, if not universally, known throughout Australia.

1(1890) 15 App. Cas. 252. 2(1902) 2 Ch. 282. 3(1933) 50 R.P.C. 198. 57 CLR 453

57 C.L.R.]

OF AUSTRALIA. The Radio Corporation Pty. Ltd. (which has no connection whatever with Walter E. Disney) made applications for the use of

Mickey Mouse " and "Minnie Mouse" as trade marks in respect of radio receiving sets and kits. Walter E. Disney and companies associated with him opposed the applications. The opposition was successful and an appeal is now brought to this court.

The Trade Marks Act 1905-1934, sec. 114, is in the following terms: No scandalous design, and no mark the use of which would by reason of its being likely to deceive or otherwise be deemed disentitled to protection in a court of justice, or the use of which would be contrary to law or morality, shall be used or registered as a trade mark or part of a trade mark."

The opponents have, in my opinion, shown that the names and the figures are SO closely associated in the public mind, in Australia and elsewhere, with Walter E. Disney and his activities, that the use of either the names or the figures in connection with any goods at once suggests that the goods are "in some way or other connected with Walter E. Disney (See, per Lord Macnaghten, Eno v. Dunn 1 ). This, the evidence shows, would be the case whatever the nature of the goods to which the names were attached. It is very seldom indeed that there can be a world-wide association of ideas in con- nection with a particular name or figure, but the evidence shows that this association does exist in the present case. A proposed trade mark should not be registered if it involves "a misleading allusion or a suggestion of that which is not strictly true " (Eno V. Dunn (1) ). Thus, in my opinion, these marks should not be registered.

I do not decide this appeal upon the basis that the opponents have any exclusive right of any kind to the use of the words and figures in question whether by way of trade mark or under a copy- right or otherwise. My opinion is based solely upon the ground that, as against the public, the applicants should not be granted the exclusive right to use the words in connection with any goods for the reason that the use of the words by them as a trade mark would be likely to deceive (sec. 114).

The appeal should be dismissed.

1(1890) 15 App. Cas., at p. 263. 57 CLR 454

RICH J. The appellant company applied to register as trade marks the words "Mickey Mouse" and "Minnie Mouse." The registrar, in the exercise of the discretion conferred on him by sec. 33 (3) of the Trade Marks Act 1905-1934, refused the application DISNEY.

That sub-section reads as follows Subject to this Act the registrar may either accept the application, with or without modifications or conditions, or refuse it." It must always be remembered that the burden of proof is on the applicant, who must negative all likelihood of deception or confusion (Standard Paint Co. v. Hales Ltd. 1 ). When the discretion of the registrar has been exercised against the applicant, the court pays attention to his view as that of an experienced officer upon whom the primary duty of deciding the matter is imposed. This increases the burden the applicant must sustain. In the present case it does not appear that the registrar misdirected himself or that his discretion was guided by wrong principles. It is therefore necessary for the applicant company to satisfy us in a special degree that the mark for which it seeks registration is open to no objection under secs. 25 or 114. It cannot be denied that the opponents have obtained great reputation or notoriety for the form and name of Mickey Mouse and Minnie Mouse, his feminine counterpart. But it is said that that reputation is unconnected with the sale or handling of goods and is analogous rather to the fame of some personage of fiction or history. In matters such as this we are dealing with the vague and indefinite impressions of the great mass of the public who neither are required nor desire to refine upon distinctions of this sort. To them it is shown that the name "Walt Disney" summons up a picture of "Mickey Mouse" and the picture of Mickey Mouse reminds them of "Walt Disney." The foundation of this is authorship no doubt. But somehow or other, how, it is fruitless to inquire, they connect the appearance on an article of the name or form of " Mickey Mouse " with 'Walt Disney." This being so, it is, I think, impossible for the appellant to negative all likelihood of confusion. It is no part of our duty to state in definite terms precisely how the public will be misled or what kind of connection they will impute. Con- fusion involves indefiniteness of ideas. It is enough that they have

1(1920) 27 C.L.R 350, at pp. 353, 354. 57 CLR 455

failed to satisfy first the registrar and then the court that any confusion is improbable.

In my opinion the appeal should be dismissed.

DIXON J. This is an appeal from a decision of the Registrar of Trade Marks refusing to register as trade marks in respect of radio receiving sets and kits the words "Mickey Mouse " and the words

Minnie Mouse." The successful opponents were Walter E. Disney, the author of the figures called by those names, a corporation incorporated in the United States, two companies incorporated in the United Kingdom and a société anonyme formed in France, bodies all promoted for the purpose of exploiting in various ways the public interest in the two figures. After Disney's conceptions attained celebrity through the moving pictures they were turned to account in publications of many kinds, books, pictures, songs and even music. There has been a large output in very many countries of printed matter, including cartoons, strips and other forms of advertisement. It is said too that now a talking picture concerning one or other or both of the figures is produced almost every fort- night. In all this the name of Walt Disney has been kept before the public, and his responsibility for the conceptions and for their persistence is a matter of common knowledge or general belief. In these operations, which, of course, are conducted on a large commercial scale, the corporate bodies who join in the opposition have played different parts, but I do not think that it is material to distinguish among them.

Another very important application of the names and figures of Disney's conceptions concerns the retail sale of all kinds of goods. Presumably because of the attraction which the figures and their fictional activities have for SO many people, traders of all sorts desire to affix representations of them to their goods or use the figures or their names in connection therewith. In the use of the conceptions as an aid to selling goods, their author and the trading bodies he has promoted have found a valuable source of revenue. An elaborate and extensive system of licensing has been set up. Under it manufacturers or traders pay for permission to use the names or the figures in connection with their goods. In Australia

57 CLR 456

alone licences have been granted for all sorts and descriptions of goods produced by numbers of unconnected manufacturers. The articles bearing representations of or called by the names of Disney's conceptions have no characteristic in common. They go from canned soups to cotton undershirts and from bridge scorers to boys' braces. Here no registration has been obtained in respect of the words or figures, either as trade marks, designs or under the Copyright Act 1912. But in Great Britain the words are registered as trade marks for picture films and for publications. There are registrations of much the same kind in Canada and the United States, and in Germany and in France the words are also registered as trade marks for a long catalogue of articles.

The opponents claim that they are or one of them is entitled in Australia to copyright in the representations of the conceptions and their names. The basis of the claim was not explained. But, in any case, in the present proceedings no attempt has been made to establish its correctness.

The applications for the trade marks now before us are made by complete strangers to the opponents. The applicants have obtained no licence, and have acquired from the opponents no right of any sort, actual or supposed. Their case is that the words "Mickey Mouse " and "Minnie Mouse" are simply the well-known names of highly popular characters in the fiction of the cinema and its adjuncts and that no one possesses an exclusive right to their use and no objection can exist to applying the names to goods unconnected with films or their exhibition.

On the other hand, the opponents contend that the present question is not whether they or any of them have an exclusive right to the words, but whether, in the language of sec. 114 of the Trade Marks Act 1905-1934, the use by the applicants of a mark consisting in the words would, by reason of its being likely to deceive or other- wise, be deemed disentitled to protection in a court of justice.

Upon the facts I have stated the question may naturally be asked, in what respect will the buyers of the applicant's radio sets be misled if they bear as a trade name the words " "Mickey Mouse" If to the public the use of the words or the figures upon or in connection with goods meant that the goods were produced, selected,

57 CLR 457

certified, or dealt in by Disney or his companies, the licensing system so extensively practised would be indefensible. In any case, the system is SO widespread and covers SO many unrelated classes of goods that the use of the words or figures cannot at this stage have the significance of a trade mark belonging to the opponents. To begin with, the figures had no connection in the public mind with trading in goods. Their celebrity and that of their author arose in the cinema and it was fostered and spread by that means and by publications based upon a notoriety SO obtained. It is not easy to say what, if any, connection is thought to exist between Disney and his companies on the one hand, and, on the other hand, the manufacturer or seller of goods, when a representation of Mickey Mouse or the name is seen upon goods exhibited for sale.

The registrar thought radio receiving sets and films for talking pictures were so much mixed up in the interests and modes of dealing of people as to raise a sufficient doubt whether the use of the words 'Mickey Mouse" on a receiving set would not lead to a belief that it had the same origin as the films for talking pictures produced by the opponents. In connection with such films it seems that the words are used by the opponents as a trade mark, a fact which apparently entered into the decision of the registrar.

I find it hard to believe that the use of the words on or in connection with a radio receiving set would produce any other impression than in the case of most of the other almost innumerable classes of articles to which the name or the representation of Mickey Mouse has been applied. That impression does not, I think, primarily relate to the origin, selection or treatment of the goods. The reason for using the names is to attract the attention of members of a public that has found pleasure and amusement in the grotesque forms and absurd antics of Disney's creatures, and at the same time to give to the goods a name or means of description at once familiar and pleasing or interesting to the possible buyer. 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.

57 CLR 458

To my mind the question upon which the matter turns is whether because of this kind of unauthorized diversion to the applicant's use and advantage of part of the public reputation and interest PTY. LTD.

which Disney has created for himself and his figures, registration can be refused under sec. 114. It was not argued that the words were incapable of distinguishing the goods. And for the reasons I have stated I am unable to regard the possibility of a belief arising that Disney or any other of the opponents has produced or distributed the goods as a probability. I think it is most unlikely that anyone would suppose it.

In the well-known case of Eno v. Dunn 1, an important state- ment is made by Lord Macnaghten. Dunn had applied to register as a trade mark a label representing a woman holding up a dish of cakes with the words "Dunn's Fruit Salt Baking Powder. The Cook's Best Friend." The proprietor of Eno's fruit salt objected. The objection failed before the Court of Appeal, but in the House of Lords it was upheld by Lord Watson, Lord Herschell and Lord Macnaghten against the dissent of Lord Halsbury and Lord Morris. The passage in Lord Macnaghten's opinion is as follows :- The learned judges who were in favour of Mr. Dunn in the court below seem to have come to the conclusion that Mr. Dunn's object was to obtain the benefit of the celebrity which the name adopted by Mr. Eno has acquired, but that it was not his object to steal Mr. Eno's trade. So far I am disposed to agree; but I do not think that those propositions cover the real question. The question is one between Mr. Dunn and the public, not between Mr. Eno and Mr. Dunn. It is immaterial whether the proposed registration is or is not likely to injure Mr. Eno in his trade. Equally immaterial, as it seems to me, is the fact that for a considerable time Mr. Eno had on the register, as his trade mark, the words

' Fruit Salt.' Mr. Eno may have gained some advantage to which he was not properly entitled; but that is hardly a reason for permitting Mr. Dunn to practice a deception upon the public 2

In the present case it is the same intangible advantage arising from public celebrity, widespread fame and interest, that the applicants seek. It is not a diversion of trade, custom or profit.

1(1890) 15 App. Cas., at p. 263. 2(1890) 15 App. Cas., at pp. 263, 264 57 CLR 459

Except for the refusal to pay licence fees, the continued use of the trade mark by the applicants will not affect any of the commercial operations of the opponents. It is clear, I think, that the opponents could on their part obtain no injunction for the protection of such an interest as that arising from the mere celebrity or reputation of Disney's productions. Further, in selling, SO to speak, the advantage of that celebrity to traders as the opponents have done under their licensing system, they have done much to destroy the significance which they now seek to ascribe to it, namely, the significance of trade reputation based upon a mark. But these are matters which do not make it less right to keep off the register a mark improperly adopted by the applicants. If the circumstances are such that its adoption will give the applicants no right to protection by injunction or other remedy under the general law, then it should be kept off the register. This is what Lord Macnaghten means. Further, the burden of establishing that the mark is free from this disqualification lies on the applicants.

On the whole, I think there are present elements which leave them unable to discharge this burden. Those elements are, first, the belief which many people are not unlikely to hold that in some way or another Disney, or one of his companies has permitted, if not procured, the application of the name Mickey Mouse to the radio sets in connection with which it is used and, second, the unauthorized diversion to their own purposes on the part of the applicants of the celebrity and reputation obtained by the various activities of the opponents in relation to Mickey Mouse. The latter may give no cause of action but I think that, at any rate in conjunction with the former element, it would be enough to deprive the proposed mark of protection.

I think the appeal should be dismissed.

McTIERNAN J. I agree that the appeal should be dismissed. The present case must be dealt with under sec. 114 of the Trade Marks Act 1905-1934, which casts upon the appellant the duty of justifying the registration of the words "Mickey Mouse " and

Minnie Mouse as trade marks for use on its radio sets and kits

57 CLR 460

OF by showing affirmatively that such use is not calculated to deceive

The use which the respondents make of the fantastic figures which PTY. LTD.

go by the names which the appellant seeks to register need not be again discussed. The appellant relies broadly upon the allegation that the respondents do not use either name as a trade mark or as part of the get-up of their goods or otherwise to distinguish their goods or in connection with any goods between which and the appellant's radio sets and kits there is any nexus of similarity The proof of these allegations would no doubt go far to discharge the onus imposed by sec. 114. But to accept that particular proof as a complete satisfaction of the requirements of the section would be unduly to narrow its scope. Speaking of a similar enactment. sec. 73 of the Patents, Designs, and Trade Marks Act 1883, Lord Macnaghten said in Eno v. Dunn 1 :- It declares that it is not lawful to register as part of or in combination with a trade mark any words, the exclusive use of which would, by reason of their being calculated to deceive, be deemed disentitled to protection in a court of justice. It seems to me that in registering trade marks the principle to which the enactment SO plainly refers ought to be applied without any qualification whatever, and that the comptroller. to whom in the first instance is committed the discretionary power,' as it is termed in the Act (sec. 94), of registering a trade mark ought to reject words which involve a misleading allusion or a suggestion of that which is not strictly true, as well as words which contain a gross and palpable falsehood." His Lordship proceeded to say that to prevent the registration of words as a trade mark it was enough that they would lead the ordinary run of persons to suppose that the applicant's goods were in some way or other connected with " the opponent's preparation. He added

The object I think was

to induce people to buy under an impression 'not founded in truth," and not perhaps the less misleading because it is vague and indefinite, and incapable, it may be, of bearing the very slightest examination."

Taking into consideration all the facts of the present case, the appellant has not in my opinion shown that there is no likelihood

1(1890) 15 App. Cas., at p. 263. 57 CLR 461

of the public being deceived in the sense intended by the section by the use of either the name Mickey Mouse" or Minnie Mouse " " as a trade mark on the appellant's goods.

Appeal dismissed with costs. Solicitors for the appellant, Herman &Coltman. Solicitors for the respondents, Owen Jones &Co.

[HIGH COURT OF AUSTRALIA.]

THE PRESIDENT, COUNCILLORS AND

RATEPAYERS OF THE SHIRE OF MULGRAVE

THE COMMISSIONERS OF THE STATE

RESPONDENT.

SAVINGS BANK OF VICTORIA

ON APPEAL FROM THE SUPREME COURT OF Local Government-Water supply-Water supplied by measure-Waterworks under

control of council-Charges for excess water-Unpaid charges-Not due " in respect of any property -Not a charge on land-Power to withhold supply during non-payment-Local Government Act 1928 (Vict.) (No. 3720), secs. 197 (1) (iv ), 385 (1), 651-653.*

Unpaid charges for excess water supplied by measure to land by a municipal council which has accepted the management and control of the waterworks within its municipal district under secs. 651-653 of the Local Government Act The Local Government Act 1928

rates and other moneys due to any (Vict.) provides -Sec. 197 (1): Sub-

municipality on the twenty-ninth day ject to the provisions hereinafter con-

of December, in the year One thous- tained by-laws may be made for any

and eight hundred and ninety-one, municipality

under any Act for the time being following

(iv) Regulating the

in force relating to local govern- supply and distribution of water from

ment in respect of any property by the waterworks under the management of

owner of such property, and all rates the council." Sec. 385 (1): " All

and other moneys which have there-