Sony Music Productions P/L ACN 000 033 681 v Tansing, R.W. trading as Apple House Music

[1993] FCA 623

JUDGMENT No. ........ ........ .. ........ .pw 623 1 93

IN THE FEDERAL COURT OF AUSTRALIA)

NEW SOUTH WALES DISTRICT REGISTRY) No. NG 584 of 1993

GENERAL DIVISION 1

Between :	SONY MUSIC PRODUCTIONS PTY LTD ACN 000 033 681 First Applicant
MICHAEL JACKSON Second Applicant

And : ROBERT WILLIAM TANSING trading as APPLE HOUSE MUSIC Respondent

EX TEMPOXE JUDGMIZNT

EINFELD J SYDNEY 18 AUGUST 1993

The parent company of the applicant is Sony Music Entertainment Incorporated of the USA (Sony USA). In 1988 Sony USA acquired the business carried on by an entity that was known as CBS Records (CBS) including agreements with, amongst other people, the second applicant, Michael Jackson. It is not disputed and there is no doubt that both of the applicants have a strong and widespread public reputation in Mr Jackson's name and likeness and in the recordings of his performances as a renowned performing and recording artist. The applicants allege that as a result of its takeover of CBS, the first applicant is exclusively entitled to exploit and to license the exploitation

in Australia of Mr Jackson's sound recordings.

The respondent, trading as Apple House Music in South Australia, markets recordings of music and of performers, and has given notice of his intention, in the very near future, to produce at leastthree compact discs containingthe performing and recording of songs sung by Mr Jackson.

The applicants have approached the Court for an injunction pending the suit to prevent the marketing by the respondent of these recordings. The suit pending is for alleged breaches of the Fair Tradinq Act 1987 (SA) and of the Trade Practices Act 1974 (Cth). In addition, the applicants seek to base their case in the tort of passing off, and to establish an enforceable right of publicity of Michael Jackson's identity. In relation to this asserted right of publicity, the applicants concede that to hold that such rights exist in the common law of Australia would be to make new law. They put forward, however, that there is an arguable case that such rights exist, based upon developments in the United States and some dicta of some Judges of this Court amongst others.

whilst the applicants may be able to establish in Australian	I stated in argument, and it is appropriate now to repeat, that
courts a justiciable right of privacy or its corresponding or counternlanding concept of publicity, an urgent interlocutory application brought on at short notice and requiring by reason of the circumstances an inunediate judgment is no place for the determination of such rights, even on a prima facie or arguable basis. All I can do in present circumstances is to note that

this is an aspect of the applicants' claims which may have prospects of success but which would require detailed and careful examination and adjudication. It is not possible in the time constraints presently placed upon me to perform that task at this time. I simply express no opinion on the submission because I have not examined it. It could not form a basis for urgent interlocutory relief. I do not understand the applicants to submit otherwise.

The urgency to which I have referred includes the fact that if judgment is not given today, other commitments will of necessity cause it to be delayed for at least two weeks perhaps longer. The proposed two to three week time frame for the release of the discs will, it appears, not permit of such a delay. Hence a considerable quantity of affidavit evidence and exhibits has been placed before the Court by agreement between the parties and no cross examination was undertaken. Although objections to admissibility were taken only cursorily, based on my expression of intention to disregard whatever was irrelevant, quite a deal

the matter which has actually been litigated in the interlocutory	of the evidence, as it happens, turned out to be irrelevant to
proceedings.
The applicants' major proposition is that there is a serious question to be tried that the respondent's publication or marketing of the proposed compact discs will be misleading or deceptive conduct under the two statutes referred to, and a passing off. The case represents a next or further stage in the

development of cases, well documented in the reports, of attempts to market products which are not those of the person or entity whose name, performances or products are apparently being used.

A number of cases have dealt with the relevance and significance

of what are known as disclaimers in which the proposed presenter, publisher or marketer of a product which makes use of a name, talent or product which is not its own and in which there is no copyright, displays that the production is not that, and does not have the authority, of the person or entity concerned. I say this is another development because the proposed format under which these compact discs are intended by the respondent to be marketed, has obviously resulted from a stark, legally inspired and professionally directed effort to deal with the objections which have been taken in the past, mostly underscored by the courts, to bring the attention of the purchasing public to the non-authorised or unapproved nature of the publication or production.

It appears that while the respondent's project has been in the

process of development, a number of possible methods of

presentingthe compact discs has been considered. One set placed

in evidence contains, in respect of each of the compact discs, a very colourful front label and presentation card which substantially features an action photograph of Michael Jackson performing. Although each of these proposed labels contains three separate disclaimers, it seems to me that anyone purchasing a disc so presented would not ordinarily be attracted by the disclaimers but would be inclined to accept that it was a Michael Jackson authorised or supported presentation.

This is despite the fact that each of those presentations contains at the top the heading "The Unauthorised Series"; at the bottom "This live recording has not been authorised by the performing artist"; and in a triangle in the top left-hand corner in different colours the words "This recording and its release have not been authorised by the performing artist or artist's record company". Had the case been presented in that form, I would have had little difficulty myself in pronouncing the injunction which the applicants seek or something of the kind.

However, the respondent has presented to the Court a quite different front label as the actually intended product. Apparently, the only difference between the labels on the three compact discs will be the reference to the volume numbers 1, 2, and 3, and a change in the song titles on the reverse sides. It is useful to note that these proposed compact discs will contain a variety of Michael Jackson's songs, some composed by him, some not, and that they will contain, in total, more than one performance of more than one song.

top section going the full width of the label and 2 cms deep will	The now intended label is divided into three sections. A narrow
be coloured in red and will contain in white block letters the words THE UNAUTHORISED RECORDINGS followed by three full stops. Under it in ordinary print but again white on the red background will be the words: "This live recording and its release has not been authorised by Michael Jackson or his record company". At the bottom of the label, again going right across the full width

and l+ crns deep is another red section on which, in white block letters not quite as bold as those that appear at the top, are to be the words: THIS SOUND RECORDING MAY NOT BE OF THE SAME QUALITY AS AN AUTHORISED RELEASE.

The centre section of the label will be all in black. It will cover the whole of the label and will be 8+ crns deep. On it will first of all appear the name of Michael Jackson, printed in blue with yellow underlining. Then in smaller letters, but still in blue and between quotation marks, are the words in lower case, "The King of Pop". The volume number will come after those words, all of which will be underlined in yellow. There will then be in the centre of the label, approximately 5 crns deep by

7 crns wide a photograph of Michael Jackson. The nature of the

photograph has not been made available but no party has sought to delay the proceedings until it does. I therefore proceed upon the basis that it will be the best and most appealing photograph of Michael Jackson that will fit into that space so as to attract as many members of the public to purchase the recording as

conceivably possible.

No doubt, and I accept this not only from the evidence but from concessions from the bar table and from common knowledge, Michael Jackson's likeness is well known in the community and is certainly likely to be easily recognised by potential purchasers of discs containing his recordings. Once again, if that were the totality of the label, I would be strongly inclined to grant the injunction, for despite the disclaimers on the label that I have

described, the strong impression given by the label in that form would be that it was a recording of which Michael Jackson was at least aware and which he did not disapprove. The disclaimers would still not be likely to overbear the impression that members of the public were purchasing a true Michael Jackson disc.

In this regard, the applicantsf evidence is that a majority of the purchasers is likely to be teenagers. The respondent says that it could be anyone, that is, anyone from a child old enough to read and to engage in commercial activity at least to the point of being able to purchase a recording, up to a very elderly person. For myself, I generally accept the evidence of the applicants in this regard, that the class of persons being spoken of here is, if not teenagers alone, more likely to be young people than either children or much older people. This may well be a greater number of people than mere teenagers but so far as and to the extent that it can be relied upon at this stage of the proceedings, the evidence establishes that the section of the community involved would be likely to be people in their teen

years, or people up to their mid twenties.

However, that is not the totality of what is proposed by the respondent. For what he says he intends to do is to superimpose on the photograph, completely and diagonally across its width and beyond, the word in block red capitals, UNAUTHORISED, with straight lines on top and underneath and with a space between each of those lines and the word, so as starkly to draw attention to the word.

The case presented by the applicants is that recordings so presented to the public would represent misleading and deceptive conduct or passing off by the respondent in that they represent that these were discs with which Michael Jackson was in some way associated, if he did not directly authorise them. A second aspect of the applicants' case is that these recordings will be of inferior technical quality to those which are produced by the applicants and authorised by M r Jackson or one of his companies and would therefore harm his reputation.

I have not heard or been asked to listen to the respondent's

proposed recordings or any of the applicants' recordings but there is quite a degree of technical evidence before me as to their respective sound qualities. As this evidence has not been subject to cross-examination, themaking of particularlyinformed findings is not possible. I am however satisfied, so far as the evidence goes, that the applicants' assertion ought to be accepted, at least on a prima facie or arguable basis, that their recordings, which are of course authorised by Mr Jackson, are of

market.	a superior quality to those which the respondent intends to
For that and other reasons, there would consequently be a price differential between them. It is important to note that the case concerns what are known as albums, that is they contain multiple performances involving a number of different songs. While the recordings of the respondent were made and are of live performances at concerts in public halls or in the open air, the

applicants ' recordings, although they may be made at a number of different places, are in fact put together and produced in a studio with highly sophisticated equipment designed to produce the best possible sound and the best possible product in every respect. This no doubt creates a circumstance in which the applicants' product can be marketed at a higher price than those of inferior sound and technical quality, and according to the evidence that is what is likely to occur in this instance if the respondent is allowed to market these discs.

There is another factor of some significance. Although the respondent's proposed recordings are not described as or in terms of "The Best of Michael ~abkson", they are in fact presented in such a generic way that customers may consider that that is what they are purchasing, namely a selection of performances from different places being marketed as a "Best of" series. This is despite the fact that there will also appear on the front labels the words LIVE WORLD TOUR 1987 in volume 1, LIVE IN EUROPE 1992, Part 1 in volume 2 and LIVE IN EUROPE 1992, Part 2 in volume 3.

on the black background underneath the picture of Michael Jackson	These words will appear in smallish block capitals coloured blue
in the centre of the label. The impression might thus be given to someone seeing the words that the recordings on the discs will either be of one live concert in the places and in the years stated, or of a selection of live concerts in those years and places.
The applicants' evidence is that Michael Jackson proposes to make a tour of Australia in November this year. It is their plan to

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release either one or a series of "Best of Michael Jackson" recordings, whether called by that name or otherwise, in the period leading up to his visit here or in conjunction with the visit, no doubt for the purposes both of publicising the visit and of selling recordings in conjunction with the visit.

~ h u s the issue for decision now is whether, on an arguable or a serious question to be tried basis, the relevant section of the public interested in the purchase of Michael Jackson recordings would be likely to be misled, when picking up one or more of the respondent's proposed compact discs, into believing that Michael Jackson himself was associated in some way with the production of the discs other than as the performer whom they will present. Moreover, I am also asked to find that, when the inferior quality of the recordings is recognised, his reputation will be damaged as a consequence of having lowered his standards from previous recordings on public sale.

I do not doubt that if that were the position, the applicants

were possible or likely that someone would take the discs in that

would have an arguable case for damages at least, and that if it

light, an injunction should now be pronounced. In this regard, the applicants' first submission is that the labels and the recordings to which they will be attached is per se misleading in the respects to which I have referred. I find great difficulty in accepting this argument. On these particular labels, the word or concept "unauthorised" or "not authorised" appears four times. The most prominent is the one to which I

have referred which will be superimposed on the Jackson photograph or likeness. The second most prominent use of the word is the first thing published on the whole label, which is itself quite obvious, where the performances recorded on the discs are described as the "unauthorised" recordings. Then comes the direct statement that the recording is "not authorised". The fourth occasion draws a distinction between this possibly inferior quality recording and the quality of "authorised" recordings.

At this very late hour, it is not appropriate or necessary to refer to them by name but several well known cases have referred to the fact that courts should not contemplate members of the public buying simple relatively inexpensive consumer items on the basis that they are either particularly stupid or particularly educated. It has also been said that people should not in effect be protected from the consequences of their own folly. The problem with all the statements of principle, however, is that it often remains extremely difficult to apply them in the given

one hand, it is a strong argument to say that the use of the name

factual situation. This is one such difficult example. On the

and photograph of Michael Jackson is the most overpowering part of the label and not much else on it will be noticed or taken notice of by anybody who is keen to buy a Jackson recording. This argument says that traders wishing to profit from the use of a prominent personality's name and likeness should carry a heavy onus of showing that they are not misleading the community in their attempts to do so.

TO this can be added, although it was not specifically mentioned

in argument, that presumably sale of these discs will be preceded by a strong marketing campaign in which emphasis will be placed upon the fame and reputation of Michael Jackson and the popularity and appeal of his music to the relevant market of buyers. In this regard, the applicants rightly point to the fact that the respondent has said little about his proposed marketing plans although they have again not sought to delay the proceedings on this account or use available procedures to ascertain what is intended. The products are expected on the market in the next two weeks or so -- plans for publicity must be well advanced.

It is true that the respondent has said that his marketing will

include repetition and display of the unauthorised nature of these recordings, but I think that in the absence of any evidence identifying what that marketing is actually intended to be, I should in all commonsense proceed upon the assumption that the major emphasis in the marketing will be upon the use of Mr

Jackson's name and music, and not upon the lack of authority.

It is quite unlikely, as it seems to me, that for example media

advertising of the discs would be likely to impact on people as something over and above Mr Jackson's image and product, and that viewers would be struck in any serious or relevant sense by their "unauthorised" nature. In fact the renowned Australian sense of contrariness or argumentativeness might actually result in something "unauthorised" being more attracting than something "authorised". But that is not the point at issue here. It is

my opinion that whatever the form of advertising, the ultimate decision to purchase will be made at the time the discs are in the hands of or displayed to the interested purchasers in the stores. Their unauthorised status would then be recognised.

The applicants further argued, albeit in reply for the first time, that the word UNAUTHORISED could be mistaken for the name or title of the disc, and they drew attention to the evidence of three discs recently authorised and released by the applicants named "Bad", "Dangerous", and "Thriller". The argument goes that a person who is keen on Michael Jackson or his music and has purchased or knows of the other discs, might think that the next one in the line is called "Unauthorised".

The difficulty about that imaginative submission is that it goes against the evidence which the applicants themselves have presented. A music retail store proprietor in Brookvale, Mr Bonouvrie, has said that in his opinion the word UNAUTHORISED would convey to the majority of consumers that the particular CD

unique or rare. Further on in his affidavit, he says that	set was a limited release or, as he put it in another context,
teenagers, as the majority of the relevant consumers, would be unlikely to give any thought to the word "unauthorised" at all. He believes that the majority of purchasers would see the word as part of the marketing and not understand that it should be taken literally.
I give attention to that evidence even though it was objected to as usurping the role of the Court, but in my opinion it is not

likely to be the preponderant response of the market place. As

I said during argument, if this disclaimer is unsuccessful, it is hard to see how any disclaimer could ever be successful and the cases have continually referred to circumstances where disclaimers might and probably would be successful in permitting proposed marketing.

The respondent argued that in the absence of misleading conduct, the view should be taken that our society, and presumably the Trade Practices Act and the Fair Tradina Act, intend and seek to encourage competition in the market place provided the various rights of people are adequately protected and there is no misleading of the public. This argument was presumably put forward as some answer to the suggested right of publicity which the applicants wish to advance in this case, but as I do not propose to deal with this proposition, the respondent's counter must also be disregarded although as a general observation on our social order, it is no doubt correct.

The applicants said that if there is a doubt about the matter the

status quo should be maintained. That of course in the abstract is sometimes the way in which matters such as this are resolved. But the question really does have to be faced in this case as to whether the wrong of passing off and the statutory prohibitions on misleading or deceptive conduct upon which the applicants place reliance and nothing else, have arguably been contravened or transgressed. It seems to me that the presentation of these labels in the form put forward makes a clear distinction between

the recordings to which the labels will be attached and recordings authorised by or on behalf of Michael Jackson. Thus the relevant public is given a choice between choosing the original authorised product which is of a higher quality on the one hand, and purchasing a possibly inferior quality product of the respondent which is not authorised on the other. I am informed that such products are known as "bootleg" or "bootlegged" articles.

Although I do not have or claim any expertise in assessing the reactions of people much younger than I to music with which I am not especially familiar, the law requires that I make an attempt. I think that any reasonable teenager or young person, for that matter many children and certainly m a y older people, coming upon a recording with this label, would be unlikely to consider that its name was UNAUTHORISED, and also be unlikely to be unaffected by the three references to "unauthorised"' or "not authorised" and the one qualitative distinction between this recording and an "authorised" release. People in tbeir late teen years vote,

take a particularly educated or sophisticated member of this

serve on juries and go to war for their country. It would not

group in society to understand what is meant by the word "unauthorised" especially when it fs coupled with "not authorised". As it seems to me on the evidence presently presented, it would be an extremely stupid young member of the public who, upon being confronted by thLs recording, would come to the conclusion that it was a production which Michael Jackson has authorised, that it was a production of Michael Jackson's

record company or some other associated organisation, and that the quality of the recording was one of which Michael Jackson would or does approve or with which he would wish or be proud to be associated.

This is in my opinion not the type of circumstance to which the statutes or the tort of passing off are directed. There is nothing in the Trade Practices Act or the Fair Tradina Act which suggests that in the absence of misleading or deceptive conduct, or other contraventions of the Acts concerned, this competitive position should not be settled by the market place rather than by the courts.

I note the undertaking given to the Court by the respondent to keep proper accounts of its sales of the proposed discs for the purpose of being able to found a damages claim by the applicants should their action ultimately succeed. I will also require other undertakings to be given and noted before finally disposing of this case, and will therefore leave open the final orders to

be made so that they can be the subject of consultation between

the parties. Addresses may be given or written submissions made

on them if there is no agreement, but on the basis of the respondent's evidence to the Court, what he proposes to do is to produce and market the recordings of which he has given notice to the applicants and to package them in packaging to which the labels, contained in exhibit RWT1, are the only labels to be attached, apart from the change of the number and contents of each volume and the photograph or likeness of Jackson in the

place to which I have referred. On appropriate undertakings to the Court, therefore, including that of providing adequate notice to the applicants to allow the Court to be approached again if necessary before the products are released to the public contrary to this evidence or in breach of undertakings, it seems to me that the injunction sought on an interlocutory basis should be refused.

[On the applicants' application for leave to appeal:]

The evidence establishes that there is a considerable amount of money likely to be at stake in this case whichever way it goes. If the applicants do not obtain an interlocutory injunction, they will have to fall back on their right to damages alone, and there is no evidence of the respondent's capacity to meet an order for damages. As these matters have so often in the past been a matter of subjective judgment by individual judges onwhich quite a number of different opinions have periodically been expressed, I should not limit the applicants ' rights to the maximum judicial

adjudication of the issue while the damages have not accumulated
to any very great extent.	I think that this case is an unusual

case; it may even be the first of its particular kind. It is a matter on which the views of a Full Court can legitimately be sought so I grant leave to appeal.

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