Shoshana Pty Ltd & Anor v 10th Cantanae Pty Ltd

[1988] HCATrans 77

IN THE HIGH COURT OF AUSTRALIA

Office of the Registry

Sydney No Sl34 of 1987

B e t w e e n -

SHOSHANA PTY LIMITED and

SUE SMITH

Applicant

and

10TH CANTANAE PTY LIMITED, HEATHCLIFF GEORGE TEAL and

CONCORD ADVERTISING AND

MARKETING PTY LIMITED

Respondents

Application for special

leave to appeal

MASON CJ

WILSON J

Shoshana
MR J. GARNSEY:	May it please the Court, I appear with my

BRENNAN J

TRANSCRIPT OF PROCEEDINGS

AT SYDNEY ON FRIDAY, 22 APRIL 1988, AT 10.49 AM

Copyright in the High Court of Australia

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learned friend, MISS M. WINGERT, for the applicants.

(instructed by Gillis Delaney)

MR D. CATTERNS:  May it please the Court, I appear with my

learned friend, MRS I. RYAN, for the respondents.

(instructed by Moore & Bevins)

MR GARNSEY:  If Your Honours please, could I hand up an outline

of submissions we would make to Your Honours.

MASON CJ: Yes, Mr Garnsey?

MR GARNSEY:	If Your Honours please, this case concerns the extent to which a real person who is a well-known
personality can exploit her reputation by licensing
the use of her name. The reputation of the second
applicant was proven by extensive evidence and found by both the trial judge and on appeal by all Their Honours to exist and it was not challenged that she was an
extremely well-known personality or that her reputation
had been developed over some 20 years.

The evidence did not establish that her reputation

was comprised in one clearly identified image fixed at

any particular point of time. The learned trial judge,
and on appeal His Honour Mr Justice Gunnnow, considered

the evidence establishing her reputation and took into

account in determining the extent and nature of that

reputation that the relevant members of the public
likely to be deceived or misled, for the purpose
of section 52, comprised persons who would not have a
precise visual recollection of the second applicant

but who would know the name of the second applicant,

have recollection of her activities and who would,

by reference to the advertisements of which complaint

was made and, in particular, the most prominent part of

those which was the headline using her name, would

think that she had lent her name for reward in those

advertisements.

In reaching those conclusions, the learned trial

judge Mr Justice Burchett, and Mr Justice Gunnnow

considered very carefully the law relating to

types of persons who should be included in the relevant

class of persons.

WILSON J: Is there an internal contradiction in that concept

of a class of people of imperfect recollection? The

more imperfect their recollection of the lady's appearance,

would that not be accompanied by a more imperfect

recollection or significance of her name when they saw

it - "Sue Smith"?

MR GARNSEY:	With respect, no, Your Honour, not if, as was found, she had an extensive reputation in her name.	The fact
that people well know her name -
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WILSON J: But she is a television performer, is she not?

I hope "performer" is not derogatory, but a television

personality?

MR GARNSEY:  Yes, Your Honour, she has appeared on television

over some 20 years in various programmes and dressed

in various fashions, as one would expect, with various types of

hair-styles but, so far as one can tell from the evidence,

with hair of the one colour.

WILSON J: You say you can logically draw the distinction

between appearance and name in the case of a television

personality?

MR GARNSEY: If Your Honour pleases and, with respect, common

experience suggests that if one is asked to describe

the news -reader one saw on the television last night one

might have to think carefully, Your Honour.

WILSON J: Well, if the name of the news-reader was not in

question and well known to you, you might not be able

to describe him but you might recognize him if you saw

him.

MR GARNSEY:  Yes.

WILSON J: But, still, I should not detain you.

MR GARNSEY: Yes. Well, Your Honour, it is always difficult to

mention personalities but if one knows the name of

Mr James Dibble who has now retired, so I guess I can

mention that, and one would, no doubt, commence the

description by commenting on his lack of hair but after

that it might be more difficult, if Your Honour pleases.

WILSON J:  But the point with that: you do not have to

describe it, you have to recognize i½which is a very

different thing.

MR GARNSEY: If Your Honour pleases.

WILSON J: But I think you have answered my question.

MR GARNSEY:	I was attempting to indicate the reasoning of Federal Court reaching the conclusions they reached.	the trial judge and the dissenting member of the Full
Your Honour,  the majority of the Full Federal Court
did  not find that a relevant misrepresentation was
conveyed by the advertisements either for the purposes of sections 52 or 53 of the TRADE PRACTICES ACT or for the purposes of passing off and in reaching those
conclusions it is our submission that they made various errors of law contrary to well-established authority.
Those errors were, as I submitted, various. There were two principal errors: one, we would respectfully submit, made by Mr Justice Wilcox in relation to the
matter that I have just been submitting to Your Honours, that is the composition of the relevant class of persons
to the public; the other by Mr Justice Pincus whose
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judgment, when considering passing off, appears to, with

respect, ignore the precise words of the statement of this Court in MOORGATE TOBACCO V PHILIP MORRIS, which

His Honour quotes, and limits the sort of representation permitted in cases such as this to representations which

would exclude the application of cases such as RADIO

CORPORATION OF AUSTRALIA V HENDERSON. And that view then

appears to have influenced His Honour when looking at the

application and the construction of the advertisement in

relation to sections 52 and 53 of the TRADE PRACTICES ACT.

An error which is common to Mr Justice Wilcox and

Mr Justice Pincus is one which suggests that the applicant

was claiming a monopoly in the protection of a name in gross
and that error, we submit, comes from Their Honours

ignoring what had been found by the trial judge and set

out at length in his judgment and,which is discussed

by His Honour Mr Justice Gummow, the extensive factual

reputation of the second applicant. And Mr Justice Gummow

in his judgment at page 94 of the application book and

following refers to what are, with respect, well-established

matters to show that there is no question of any absolute

monopoly or claim to the right of a name in gross

when one is seeking to protect use of that name by

reference to passing off or sections 52 and 53 of
the TRADE PRACTICES ACT.

A second error which is common, with respect, to hr Justice Wilcox and Mr Justice Pincus is the postulation

that there are some names which, for the purposes of sections 52 or 53 or passing off, are common names

names that required some special circumstances before

they can be protected. Mr Justice Wilcox refers to
this Court's decision in the HORNSBY BUILDING INFORMATION

CENTRE case and suggests that connnon proper names are

in the same position as descriptive words in relation to

this area of the law. That, with respect, is an error

stennning, we would respectfully suggest, from ignoring

again the reputation and the nature of the reputation

which had been established and it is an error which

can lead to difficulties. As the learned trial judge

pointed out, one really cannot say, if one is talking about

a misrepresentation founded upon an established

reputation that one name is common and needs special

consideration and another name is not. For instance,

the name "Dick Smith", if used in an advertisement would,

the learned trial judge suggested, mean one clearly
identified person. It is very difficult to categorize

the types of names as connnon or unconnnon for this purpose.

If one looks, with respect, at the Federal Court, one might

summize that Mr Justice Pincus and Mr Justice Gummow, in

that circumstance, would have had to show special

circumstances according to Mr Justice Wilcox but

Mr Justice Wilcox's name is one about which there might be a little more debate.

If Your Honours please, in relation to

Mr Justice Wilcox's decision concerning the class of members of the public and the contents of the class to be considered,

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His Honour's reasoning commences at the top of page 58

of the application book and His Honour there refers to

the relevant facts found by the trial judge at line 8.

He refers at line 14 to Ms Smith being well known to the public. And then at line 21 says that he cannot accept

the trial judge's process of reasoning which begs the

critical question:

The reasoning commences by assuming what

is to be demonstrated: that there existed at the date of the advertisement a body of readers who would associate the second

respondent with the "Sue Smith" of the
advertisement. The argument recognizes
that the person depicted in the
advertisements differs in appearance from

the second respondent but, having made the

first critical assumption, it copes with

the difference in appearance by further

assuming the existence of some readers, who

knew the second respondent and who had

already associated her in their minds with
the Sue Smith of the advertisement, but who

w3re confused about, or forgetful of, her

appearance. I cannot accept this latter

assumption. Whatever may be the position

regarding those who are well known by name

and reputation but not by appearance, it is

difficult to divorce the reputation of a

television personality from his or her

appearance. _For the average viewer, the

television personality exists only on the

screen; or perhaps in magazine or newspaper

articles, where photographs are commonly

inserted. The effect of the assumption is

to confer upon Ms Smith a monopoly of the

use of the name "Sue Smith", at least in

the absence of an explicit disavowal of

any connection with her or of material

identifying the "Sue Smith" of the

advertisement as someone else, and thus

implicitly excluding her. Although, as I

have indicated, I would not be sorry to see

ss.52 and 53 of the TRADE PRACTICES ACT,

and the law of passing off, used in

appropriate cases in such a manner as to
protect well known people from the

unauthorized exploitation of their identities,

it is another matter to confer upon them

an exclusive right to use a particular name.

Now, His Honour agreed with Mr Justice Pincus in relation

to Mr Justice Pincus' comments on the trial judge's

factual findings in this matter but Mr Justice Pincus

and Mr Justice Wilcox do not, in that passage, consider -

they only consider part of those findings and none of the

law or reasoning in relation to the law or further finding

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as to the practice of character merchandizing made

by the learned trial judge in his judgment and

that is a passage which appears at pages 27 to 29

of the application book.

If I could perhaps take Your Honours back to

page 22 just to point out a passage beginning at line 16

down to the end of the page - is the passage cited

by Mr Justice Pincus in His Honour's judgment at

page 70 from the judgment of Mr Justice Burchett and

appears to be the part of the judgment of Mr Justice Pincus
with which Mr Justice Wilcox is expressing agreement.

Now, Mr Justice Pincus, while referring to the

findings of the trial judge, on page 22, ignored the
subsequent relevant reasoning and findings of the trial

judge at pages 27 to 29 of the application book. Now,

at page 27 Mr Justice Burchett refers to, in the first

independent paragraph:

The possibility that publication of

fictitious material, which includes by

chance the name of an actual person, may
incur liability is not at all novel in

the law.

And refers to the defamation case - identification case of

ARTEMUS JONES. Then at line 14, His Honour continues:

In the present case, the respondents say that the name Sue Smith is too connnon to

permit a reader of the advertisement to

identify it with the name of the second

applicant. At the same time, it is said

that the viewers of Miss Smith's programmes

would realize that the Sue Smith pictured

in the advertisement must be someone else.

I think this argument fails to recognize

sufficiently the weight of a widespread

reputation, and inappropriately focuses

upon the attentive reader of the

advertisement. In my opinion, there would

be likely to be many readers who would

associate an advertisement concerned with

television, and picturing an attractive

brunette, with the well known television

image of Sue Smith, without subjecting the

advertisement to the kind of analysis that

might introduce doubt.

If I could pause there, Your Honour: there was no evidence

at the trial and no argument at the trial or on appeal

that the image of Sue Smith was fixed in a particular

manner at any particular point of time and there was no

finding that it was.

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MASON CJ: But does this not rather emphasize that the ultimate

decision in this case depends upon what view you take of

the evidence in terms of making a finding of fact?

MR GARNSEY:  Your Honour, yes, there is necessarily at the end

of the day a finding of fact.

MASON CJ:  And that is where the majority disagreed with the

primary judge. Now, it may be, one will assume in your

favour, that there may be some errors of law on the

way but you still come to a critical issue of fact on
which the majority disagreed with the primary judge.

MR GARNSEY: 

But, with respect, we submit that the reasoning

of each of the members of the majority embraces so many
errors of law which lead them to apparently ignore
a great amount of evidence, that the importance of the

case is in the way they reached their final view and

that the errors are various but serious and are

errors which amount to heresies and if uncorrected by

this Court can be used in many subsequent cases to

read down or avoid decisions of this Court and of the
Full Federal Court.

MASON CJ: Well, that is not true of the error that you have

ascribed to Mr Justice Pincus, is it? Assuming that the error you have ascribed to him in paragraph 3 of

your outline is an error or law, he is alone in holding

that view of the four judges who have looked at this

matter?

MR GARNSEY:  Your Honour, he is expressly alone in holding

this view. Mr Justice Wilcox, at the beginning of

His Honour's judgment appears to make some general

statements which are not of that view but if one looks

at the result of His Honour's judgment, His Honour does

seem, as a matter of reasoning, to confine the sort of

representation that he is prepared to uphold in this

area to the type of representation that Mr Justice Pincus

says is the only permissible representation.

Your Honour, Mr Justice Pincus, in my submission - I was not only submitting that he had ignored what was

on page 27 of Mr Justice Burchett's judgment, but that

His Honour ignored what followed on page 28, referring

to the "reasonable members of the class" of persons,

and PARKDALE V PUXU, and at line 26:

only at readers who would not be deceived.

And then the matter appearing on page 29 which disposes

of an argument as to erroneous preconception.

BRENNAN J:  Mr Garnsey, at the end of the day it comes to this,

does it: does the advertisement assert or convey that

your client endorsed the product?

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MR GARNSEY:  If Your Honour pleases, yes, not giving any

specifically limited meaning to "endorse".

BRENNAN J: No. Well now, if that is the question, there is

two pieces of evidence that might bear upon it: one

is the face of the advertisement itself and the second

is the reputation which your client has in the public

mind.

MR GARNSEY:  And thirdly, if Your Honour pleases, the evidence

of personality merchandizing as a commercial practice of
which there was reasonably extensive evidence at the

trial which was not in dispute and which is referred to

by -

BRENNAN J: Well, even if one allows that, that is because

to some minds, I suppose, it might be thought that if

ever a name or a face appears in an advertisement it is

personality merchandizing.

MR GARNSEY:  If ever a name or a face which the - for a person

who has a reputation with the reader - - -

BRENNAN J: Yes. Well now, given those pieces of evidence, the

end question is did it convey to some persons - and let

us leave aside for the moment what the class is - that

your client had endorsed the product? Now, there can be

one question of fact in that, that there may be a mistake
in law if one makes a mistake about how many people or

what class of people.

MR GARNSEY:  Yes, Your Honour.

BRENNAN J: Is that the mistake that you arrive at?

MR GARNSEY: That is the first mistake, we respectfully submit,

Mr Justice Wilcox made. His Honour expressly said

that at page 58, and .. why it does not strike the eye
is His Honour did not refer to any cases which had been

argued, if Your Honour pleases, but - - -

BRENNAN J:  But all the cases must proceed upon their own

individual advertisements or representations,whatever

they may be~and the problem in this case seems to me

that you have got this particular one that uses a

familiar name, uses a particular photograph of a woman
and your client happens to enjoy the same name and is a

woman with a reputation.

MR GARNSEY:  With respect, Your Honour, our case is that it

uses a familiar name and that the name is familiar

because of the reputation. There is no such thing

relevant to this area of the law as a name inherently

familiar or inherently unfamiliar and that is, in itself,

an independent error of law.

BRENNAN J: One hesitates these days to propound familiar names

but the name "Smith" is certainly familiar; the name

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"Sue" is certainly familiar, and the combination,

i would have though4 was fairly familiar.

MR GARNSEY: Well, Your Honour, the interesting thing on the

evidence was - and my friend did attempt to prove

whether Sue Smith was a name familiar to the relevant

class of persons. Of course, it is easy to prove

there are a lot of "Smiths" around, and one can even

go further with the electoral rolls and say there

are "Suzannes" or "Susans" but one cannot, with respect,

infer from that that there are a large number of people commonly known as "Sue Smith". All one has - the most,

in my respectful submission, one could take as permissible

knowledge,outside the evidence, is that "Smith" is a

common surname and "Susan" is a well-known christian name,

sometimes shortened to "Sue". But to go further and say

that they are per se familiar or unfamiliar names

is, with respect, to enter into speculation as opposed

to permissible inference.

Your Honour, the evidence at the trial which was

argued on appeal but is not referred to in Their Honour's

judgment, would not permit such an inference and, indeed,

the author of the advertisement who has said in an

affidavit that - I forget the precise terms of his

evidence but it was to the effect that Sue Smith is a

common name, when asked how many Sue Smiths he had known

over the preceding ten years, honestly answered, "None."

BRENNAN J:  That may be so but if you saw an advertisement

which said, "Bill Smith is favourably impressed with

his hammer", you would not think that that is personality

advertising, would you?

MR GARNSEY:  That is because you do not readily think of a

personality called "Bill Smith", with respect, Your Honour.

That is not because of any inherent quality of the name,

one would not think, with respect. If one said,

"Mr Justice Gummow is favourably impressed with his

Commonwealth Law Reports-",well, I suppose that is the other way because people would know that he was a

justice of the Federal Court but if one said, "Mr Gummow

was favourably impressed with his Toyota" one would not	draw anything from that either but not because the name
is familiar or unfamiliar, with respect, it is because

T4	there is no relevant reputation. And, with respect, that
is an error which appears in the judgments of both
Mr Justice Wilcox and Mr Justice Pincus, and it is an
error connected with their equating fictional characters with real persons, to some degree, because here, in the case of a real person, there is shown evidence to be a
real long-standing extensive reputation and that reputation
is in the name and it is a reputation gained from work -
and I have been reminded not only in television but over
radio and from mentions in the press - over many years.
With respect, Your Honours, both Mr Justice Wilcox,at
references I have given in paragraph 5 of the outline of
submissions, and Mr Justice Pincus refer to"Sue Smith" as a common name as something that can be assumed or given

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and in that there are, we submit, two errors; one of fact

in a particular case on which I have addressed Your Honours

as to the evidence, the other of law, to suggest that

there is a concept of a cormnon name which can be considered

as a cormnon name irrespective of reputation.

Your Honours, Mr Justice Gummow in His Honour's

dissenting judgment considered the findings of the

trial judge as to reputation and then the relevant law,
and this was not done, with respect, by the majority.

His Honour's consideration cormnences at page 84 of

the application book and he refers to the second

applicant as an interviewer and presenter since about

1970 on television and on radio, what_ she had presented.

And down at the bottom of the page to:

cormnent, news items and articles in the press.

And they are in evidence. And then the unchallenged

finding that she had a name which was well known

throughout Australia and of value to advertisers.

The press articles, if I may say, Your Honour, as

Mr Justice Gummow mentions on line 2 on page 85,

extend over the period 1970-1983. Mr Justice Gummow

then, on page 86, refers to the finding of "modern

advertising practice" is cormnonly known as "character

merchandising". And then at the bottom of page 86

says:

These are important findings of fact, for

they provide .~he setting in which the conduct

complained of is to be assessed.

Then His Honour refers to the dicta of Sir Owen Dixon
in RCA V DISNEY which, we would submit, is out of date.

That was a case, in any event, where His Honour did

refuse to join with the other members of the Court in
refusing registration of a trade mark because of the
possibility of confusion or deception and refers to

CHILDRENS' TELEVISION WORKSHOP V WOOLWORTHS, the MUPPET case, and HENDERSON V RCA and NOSTAC V NEW CONCEPT

and TOLLEY V FRY.

His Honour then deals with the impact of the

advertisements and at page 88 refers to Mr Justice Burchett's
findings and the arguments that there were dissimilarities.

Then at page 89 at line 5 refers to, as Mr Justice Burchett said:

the nature of glossy advertisements of

this kind, that they create an impression

and evoke a response which does not proceed

from a discerning analysis -

and refers to a decision of this Court in MARK FOY'S

V DAVIES COOP, and then says:

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I also agree that the readers of the advertisement must include many who,

by reason of the wide publicity given

to Sue Smith's name in the press and

on television, would innnediately associate

the heavy print of the headline of the

advertisement with the well known

television personality even though,

had it not been for the presence of the
headline, they would not have ,._
recognised either photograph in the

advertisement as that of Sue Smith.

No doubt there would have been a number

of careful and attentive readers with - - -

MASON CJ: This is rather taking us through His Honour's

view of the facts.

MR GARNSEY:  Yes, Your Honour, and perhaps I will not r~ad

any more. I was really trying to indicate, Your Honour,

what the majority appear not to have considered in

their judgments.

MASON CJ: But, again, that would not concern us if it is only

a matter of fact.

MR GARNSEY:  No, Your Honour, but it is not only a matter of

fact because Mr Justice Wilcox so took the view that

as a matter of law only careful and attentive readers

could be considered.

BRENNAN J: Why do you say it is a matter of law7 He thought that 7

MR GARNSEY: Well, Your Honour, putting it another way, that inattentive and careless readers must be excluded and

we submit that that is a matter of law because this

Court, to some extent in PUXU V PARKDALE, the then

Chief Justice referred to the class of persons, while

being reasonable persons, as including the astute and

the gullible. The Federal Court in TACO BELL in the

joint judgment of Mr Justice Deane and

Mr Justice Fitzgerald, in a passage at page 202 of

the report in the Australian Law Reports, expressly

approves the statement of Mr Justice Lockhart in the

Federal Court in PUXU V PARKDALE, that:

once the relevant section of the public

is established, the matter is to be

considered by reference to all who come
within it, "including 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".

Now, Your Honours, Mr Justice Gummow, having referred

to those facts, up to pages 90 of the application book,

in His Honour's judgment, then refers to passing off

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cases and the class of persons in SAVILLE PERFUMERY

V JUNE PERFECT and NORMAN KARK V ODHAMS PRESS and then

to certain decisions under section 80 of the TRADE

PRACTICES ACT for contravention of section 52 -

Mr Justice Franki in WEITMANN V KATIES and SNOID V

HANDLEY.

BRENNAN J:  Mr Garnsey, can I just take you back again for

a moment because the proposition that is puzzling me

at the moment is this: you said the majority came to

a wrong conclusion about what the advertisement would

be understood to convey?

MR GARNSEY:  Yes.

BRENNAN J: And you say you came to that as a result of an error

of law?

MR GARNSEY:	Yes.
BRENNAN J:	Now, what is the error of law?
MR GARNSEY:	Your Honour, the errors of law are four-fold.

There is one error in Mr Justice Wilcox's judgment

which is what I am attempting to make submissions to

Your Honour at the moment. That is in relation to

"the exclusion from the relevant class of persons of

careless and inattentive readers and persons of

imperfect recollection in relation to the reputation

and image of Sue Smith. "

The second error of law is Mr Justice Pincus'

interpretation of the passage that His Honour cites

from MOORGATE TOBACCO V PHILIP MORRIS;

that the relsrant representation for the purposes

of passing of£- •ll'D.lSt · involve a misrepresentation

of a.eAm:acteristic in relation to the

characteristics of goods or services -

and I have not come to make submissions in detail to

Your Honours on that point.

BRENNAN J:  No. I was concerned only with the question of

whether or not that it said your client had endorsed

the product and whether that finding had been affected

by errors of law.

MR GARNSEY:  I am sorry, Your Honour. There are two further errors

ot law that have affected that finding and they are common

to each of Mr Justice Wilcox and Mr Justice Pincus.

The first is that the plaintiff's claim that there was a misrepresentation that she had endorsed the product

was an attempt to obtain a monopoly in a name or to

protect a name in gross.

BRENNAN J: That has got nothing to do with the finding of fact.

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MR GARNSEY:  Your Honour, it appears to have influenced

Mr Justice Wilcox, if one reads the judgment, and

in this respect, because at page 59 His Honour says:

I cannot accept this latter assumption.

That is the assumption that the readers would include readers who knew of Ms Smith and had:

associated her in their minds with the

Sue Smith of the advertisement, but who

were confused about, or forgetful of, her

appearance.

That is at lines 3 to 8. And then His Honour says, "No":

the television personality exists only

on the screen -

and His Honour then ignores what we say - makes an

error in relation to a particular case, that is, that

there was never any case, evidence or argument to show

there was any particular image in relation to Ms Smith

and then says:

The effect of the assumption is to confer upon
Ms Smith a monopoly of the use of the name

" ..... Smith".

Now, Your Honour, we say - - -

BRENNAN J: In connection with endorsements, that would be

right as a matter of fact, would it not? If you do

not have to worry about the appearance, then you have

got "Sue Smith endorses" -

MR GARNSEY:	No, Your Honour, not in an absolute sense, for the reasons conveniently explained by Mr Justice Gummow
at page 94 of the application book; Your Honour,
first because of the well-developed body of law relating to the rights of persons to carry on business
under their own names whether or not there is a well-known
personality; secondly, because passing off is concerned
with, basically, the protection of business or connnercial
interests, not with invasion of privacy, and there may
or may not be other remedies available in respect of
that; thirdly, that the plaintiff's right to protection
cannot survive the life of this goodwill, if Your Honour pleases; and fourthly, Your Honour, that there are cases
in which "concurrent us.er" is permitted both in passing
off under the TRADE PRACTICES ACT and one of them is
PETER ISSACS PUBLICATIONS V NATION WIDE NEWS which was
a Northern Territory case in which two rival newspaper
proprietors were permitted to bring out, on the same day, two newspapers each entitled "The Sunday Territorial"
for various reasons set out in that case.

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MASON CJ:	Mr Garnsey, can I interrupt you at that stage to take up one of the matters that has already been referred
to by Justice Brennan. If you look at page 57 His Honour
poses the correct question at line 20 for decision
and following that His Honour then proceeds to review
the facts with a view to indicating that he does not
agree with the conclusion reached by the primary judge
on the critical finding of fact. Now, if you look at page 59, connnencing at line 7 are two sentences
which, according to you, constitute a critical, if not,
the most critical error of law:

Whatever may be the position regarding those who are well known by name and reputation but not by appearance, it is difficult to divorce the reputation of a television personality from his or her appearance. For the average viewer, the television personality exists

only on the screen; or perhaps in

magazine or newspaper articles, where

photographs are colillilonly inserted.

Now, how does that amount to an error of law?

l:1R GARNSEY:  Because His Honour says, with respect, that

you must exclude people of imperfect recollection with

respect to appearance. His Honour says that at line 5.

His Honour does not refer to the cases to the contrary.

Now, His Honour then - - -

MASON CJ:	I follow that His Honour is not referring to the cases but what His Honour is saying in this particular
melior of colillilunication,appearance is everything,
and that seems to me to be a proposition of fact. You
may not agree with it.
l:1R GARNSEY:	Your Honour, I do not agree with it, if Your Honour

pleases.

MASON CJ: No. Well, at least you have made that clear.

l:1R GARNSEY:  But with respect, Your Honour, His Honour reaches

that factual conclusion by excluding, as a matter of

law, a class of viewers.

MASON CJ: The difficulty I have at the moment is seeing how

he does that as a matter of law. It seems to me

His Honour arrives at that conclusion because of his

appreciation or assessment of television and the impact

that it creates in the mind of a viewer who is alleged

to have a recollection of a personality on television.

l:1R GARNSEY:  But what His Honour is saying, with respect,

Your Honour, is that the viewer is not permitted to

be confused about or forgetful of Ms Smith's appearance

as a matter of law.

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BRENNAN J:  How can that be in the light of the critical

question to which the Chief Justice is drawing your

attention at page 57? It is not a question of what

the viewer is permitted to do, it is a question of

whether the subject advertisement made any statement

about the second respondent.

11R. GARNSEY:  Yes. Because, Your Honour, we say that in

answering that question one looks at the people to

whom the statement is made, that is including people
confused about or forgetful of Ms Smith's appearance,
to give the content of the misrepresentation and that
is why there are the cases in trade mark law for

passing off and why there are the cases under the

TRADE PRACTICES ACT discussing whether the relevant

class of persons include people with imperfect

recollection, the gullible and the astute, the less

well educated or the well educated and, with respect,
what Mr Justice Wilcox says is the viewers only include persons who have perfect recollection and a fixed image in their mind, as a matter of law, and to say otherwise -

which reinforces that it is a matter of law because

His Honour is excluding the members of the class,

we submit - - -

MASON CJ:  Come back to the earlier sentence, the one that

commences at the foot of page 58. His Honour is

there referring to the assumption:

that there existed -

some readers who knew the second respondent and who had

already associated her in their minds with the "Sue Smith"

of the advertisement but who were confused about or

forgetful of her appearance. Now, His Honour does not

say, "I'm excluding them as a matter of law", what

His Honour is saying: "Those people don't exist." and

that is a matter of fact.

11R GARNSEY: Well, with respect, it is not a matter of fact

because one is talking about the typesof persons

that the court is permitted to take into account to

decide whether there is actual or likely a misleading

and deceptive conduct under section 52 or whether there is a misrepresentation in relation to passing off. And that is a question for the Court which has made clear,

in cases which are referred to in the judgments, if

Your Honour pleases, and one is not obliged to have,

for instance, evidence of actual deception or confusion

or of intention to deceive or confuse. And, the courts,

with respect, have established those principles in

order to answer that question which may involve an

ultimate finding of fact but at the end, we would

respectfully submit, a conclusion probably of mixed fact

and law.

If Your Honours please, why I have taken Your Honours, I hope, not improperly to the judgments of

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Mr Justice Burchett and Mr Justice Gummow was an

endeavour to show what we submit is the proper approach

in applying correct principles of law to reach the

ultimate conclusion.

MASON CJ: Yes, I follow that and I am not suggesting that the

principles of law enunciated by Mr Justice Burchett or
Mr Justice Gummow are wrong but it seems to me that inherent
in your approach is to regard some of these statements
as legal absolutes that domt give way to a proper

consideration of the evidence and an analysis of that

evidence in terms of producing ultimately a factual

conclusion.

MR GARNSEY:	Yes, Your Honour.
MASON CJ:	Now, that, it seems to me, is perhaps one of the

problems inherent in the case that you are trying to
present. It is basically a choice between looking at

the judgment of Mr Justice Wilcox on pages 57 to 59

as a process of reasoning in relation to assessment of

evidence on a factual basis or a matter of looking

at it, as you contend it is, as a process of reasoning

that exhibits errors of law.

MR GARNSEY: If Your Honour pleases. And, Your Honour, with

respect, the mere fact that His Honour does not mention

any cases does not mean - - -

MASON CJ:  - - - indicates that surely he is reasoning in a

factual way.

MR GARNSEY: With respect, no, Your Honour.

MASON CJ:	Why?
MR GARNSEY:	Because His Honour talks, with respect,

at the beginning of the passage which Your Honour the

Chief Justice has referred, to an assumption of the

trial judge. Now, the trial judge, with respect, made

no assumption. What the trial judge did was reason -

he made certain findings of fact about reputation,
about the advertisement.	He then looked at the law

as to what classes of persons he should consider for

the purpose of reaching his conclusion and reached his

conclusion accordingly. Mr Justice Wilcox, when

forcing on the trial judge what His Honour refers to
as an "assumption" is, with respect, referring to
the trial judge's consideration of the proper principles

of law as to what classes of persons he should include

and - - -

MASON CJ:  Mr Garnsey, we really have spent a good deal of time

on this and I will conclude the discussion on this

aspect of the matter as far as I am concerned by saying

to you that the critical passage which we have been

debating commences with a statement of what was the

correct question at the foot of page 57 and concludes

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with a restatement of that question at the foot of

page 59, so that His Honour clearly had in his mind

from the beginning to the end of this discussion what

the issue presented was and the question then is,

was he reasoning,as an exercise in fact or was he

reasonin~ having regard to principles of law?

MR GARNSEY: 

And, Your Honour, my answer to that - and it is the only

one I can give - I have given it and I will not tire
Your Honour any further - is to say that His Honour

is clearly referring, when he refers to the assumption

of Mr Justice Burchett, to the full complex of

His Honour's reasoning which expressly included people

confused or forgetful of Sue Smith's appearance and did
so by reference to authority as a proper class of persons,

whether or not they were shown to have existed in fact,

which the court said that the court should take into

account in determining the ultimate question of mixed

fact and law in relation to sections 52 and 53, and

that assumption is expressly rejected at line 6 of

Mr Justice Wilcox's judgment on page 59.

With respect, Your Honours, that judgment which

is a judgment on appeal in which Mr Justice Burchett's

judgment was fully considered and which a dissenting

member of the court fully considered Mr Justice Burchett's

judgment as well, that judgment cannot, with respect,

be limited to a purely factual solution.

:MASON CJ: Well, you have made that point.

MR GARNSEY:  I am sorry, Your Honour.

Your Honour, if I could briefly make the next point and I think this is a little shorter.

Mr Justice Pincus at page 67 referred to MOORGATE V

PHILIP MORRIS and cited part of a passage from that

case which appears in the judgment of Mr Justice Deane,

a judgment in which the other members of the Court

agreed, at pages 445 to 446. Could I hand Your Honours

four copies just of that short passage in full, if

Your Honour pleases?

Your Honours, I have handed Your Honours the

passage in full because it was the passage by which

the Court explained why it did not propose to find

that there was an independent tort of unfair

competition or -

a general action for "unfair competition"

or "unfair trading" -

and that was because the action for passing off contained

enough scope for development within itself as to remove

the need for any such tort even if one could properly

be held to exist. And express reference was made to

the ADVOCAAT case in WARNINK V TOWNEND and the shared

reputation, and also to HENDERSON V RCA, a personality

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merchandizing case, and His Honour Mr Justice Pincus

then, at page 67, cited part of that passage - did

not refer to the cases which were expressly proved -

and says at line 20:

It should be noted that the apparent approval,
in this passage, of the expansion of the tort

of passing-off does not go beyond instances

in which people are led to believe that

certain goods or services have a characteristic

belonging to other goods or services; the

question whether the law of passing-off gives

protection to the alleged proprietary right, "in

gross", in the use of a well-Known name, is

left open.

Now, Your Honours, to say that that passage does not

go beyond misrepresentation as to characteristics is,
with respect, to ignore the plain word "association"

the record cover and it was found that that

in it and the reference to HENDERSON V RADIO CORPORATION

contained representation that they had endorsed
in the sense of lending their name for reward to the
record cover. There was evidence in that case of
experts in the commercial field which the majority of

the Full Court of the State Supreme Court accepted

and relied upon, in part, to accept a misrepresentation -

that it was a sufficient misrepresentation to say that
the Hendersons had endorsed the record and that

representation was sufficient for passing off.

There was no, with respect, requirement that

there be a misrepresentation of any more limited kind

which His Honour Mr Justice Pincus would seem to

envisage. And that, with respect, is important because

and is an important error because this Court did not

think it appropriate to find a general action for

unfair - to hold that there was a general action for
unfair competition expressly because it said the

action for passing off covered this very situation.

If Your Honours please, I have already made my

submissions as to the error in relation to the

monopoly of a name or a name "in gross".

MASON CJ: Yes, you have.

MR GARNSEY:	And also as to - - -
MASON CJ:	- - - common names.
MR GARNSEY:	Common names, if Your Honour pleases. Mr Justice Wilcox,

at' page 61, briefly relied on JONES V DUNKEL and His Honour

said that there was an inference that the respondents:

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did not have available as witnesses people

who could depose to having been misled -

because there had been - people C01Ilillented on the

advertisements to the second applicant and these -

people apparently saw the advertisement

but were not misled.

So, His Honour relied positively upon the absence of

evidence of actual deception and said an inference

could be drawn by reason of JONES V DUNKEL. And

the subsequent sentence, the sentence after the

reference to JONES V DUNKEL, if Your Honours please,

makes it clear that His Honour is using JONES V DUNKEL

to say that he should infer that there was no evidence

of actual deception as a positive matter which could

be used against the applicants.

If Your Honours please, I must say JONES V DUNKEL

was not argued on the appeal. The first mention

of it in this case is in His Honour's judgment.

Your Honours, we would submit that His Honour was in error because he was using JONES V DUNKEL to convert

conjecture and suspicion into inference; that it was

a decision which should not be applied because it was

not a case where an applicant is obliged to explain

the absence of the relevant witness. There is no

requirement that as a necessary condition for

success under section 52 of a passing off that evidence

of actual deception or of intention to deceive be led;

and thirdly, if Your Honours please, it really is

using JONES V DUNKEL to require cumulative evidence

and is a serious error if allowed to remain, even only
in one judgment, because it will require those in this

field to consider whether, on the basis of this

passage in Mr Justice Wilcox's judgment, it is necessary

in all cases of this nature under sections 52 and 53
of the TRADE PRACTICE ACT on passing off to adduce

evidence of actual deception or confusion or actual

misleading... and deceptive conduct.

of the Full Court, in relation to section 52 - of the If Your Honours please, we submit that the reasoning majority of the Full Court with the various errors

can be seen to stem from a failure on the part of that

majority to give a proper effect to the words in
section 52 of likely to deceive or mislead, words

which are expressly added to prevent the section being

confined to cases where deception or misleading conduct,

in fact, only could be proven and which make it clear

that section 52 is not a mere question of fact but a

mixed question of fact and law for the Court.

If Your Honours please, we submit that the

decision of the majority of the Federal Court is so

permeated by clear errors in the respects that I have

submitted that if it is allowed to remain it will be a

fertile breeding grmmd for further errors and further applications

to Your HD!1ours. If Your Honours please.

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MASON CJ:	Thank you, Mr Garnsey.	We need not trouble you,

Mr Catterns.

The fundamental issue in this case was an issue

of fact and the Court is not persuaded that the decision
of the majority of the Full Court of the Federal Court
on that issue was attended with sufficient doubt to

justify the grant of special leave to appeal.	The
application is therefore refused.

MR CATTERNS:  Would the Court make an order for costs,

Your Honour?

MASON CJ:	You do not resist that, Mr Garnsey?
MR GARNSEY:	No, Your Honour.
MASON CJ:	The application is refused with costs.

AT LL.55 AM THE MATTER WAS ADJOURNED SINE DIE

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