Twentieth Century Fox Film Corp v The South Australian Brewing Co Ltd
[1996] FCA 480
•19 JUNE 1996
CATCHWORDS
TRADE PRACTICES and PASSING OFF - appropriate form of the injunctive relief - whether respondents should only be restrained from producing a "Duff" beer can which does not have any disclaimers on it - respondents contend that they should not be restrained from selling "Duff" beer which has a clear and prominent disclaimer - impact of the type of distribution of proposed cans discussed - whether the disclaimer "unauthorised" and proposed references to "any TV show" or to "The Simpsons" reinforce or negate inference of association - impact of proposed can is question of fact and degree - if issue raised at hearing cross-examination would have been conducted differently - respondents effectively raising a new issue - not appropriate to determine effect of proposed cans at this stage, in an evidentiary vacuum.
Trade Practices Act 1974 (Cth)
Hogan v Pacific Dunlop Ltd (1988) 83 ALR 403, distinguished
Pacific Dunlop Ltd v Hogan (1989) 23 FCR 553, distinguished
Sony Music Productions Pty Ltd v Tansing (1993) 27 IPR 640, distinguished
Sony Music Australia Ltd v Tansing (1993) 27 IPR 649, distinguished
Weitmann v Katies Ltd (1977) 29 FLR 336, cited
Mundine v Layton Taylor Promotions Pty Ltd (1981) 51 FLR 73, cited
Brock v Terrace Times Pty Ltd (1982) 40 ALR 97, 56 FLR 464, distinguished
Bridge Stockbrokers Ltd v Bridges (1984) 4 FCR 460, distinguished
Peter Isaacson Publications Pty Ltd v Nationwide News Pty Ltd (1984) 6 FCR 289, distinguished
Abundant Earth Pty Ltd v R & C Products Pty Ltd (1985)
7 FCR 233, discussed
Chase Manhattan Overseas Corporation v Chase Corporation Ltd (1986) 12 FCR 375, discussed
Sterling Winthrop Pty Ltd v R & C Products Pty Ltd (1994)
16 ATPR 41-308, cited
Newton-John v Scholl-Plough (Aust) Ltd (1986)
11 FCR 233, distinguished
Hutchence v South Sea Bubble Co Pty Ltd (1986) 64 ALR 330, cited
Wright, Layman & Umney v Wright (1949) 66 RPC 149, followed
Terry A, "Disclaimer and Deceptive Conduct" (1986) 14 ABLR 478
TWENTIETH CENTURY FOX FILM CORPORATION & MATT GROENING PRODUCTIONS INC. v
THE SOUTH AUSTRALIAN BREWING CO LTD & LION NATHAN AUSTRALIA PTY LTD
No NG 155 of 1996
Tamberlin J
Sydney
19 June 1996
IN THE FEDERAL COURT OF AUSTRALIA )
NEW SOUTH WALES DISTRICT REGISTRY ) No. NG 155 of 1996
GENERAL DIVISION )
BETWEEN: TWENTIETH CENTURY FOX
FILM CORPORATION
First Applicant
MATT GROENING PRODUCTIONS
INC.
Second Applicant
AND: THE SOUTH AUSTRALIAN
BREWING CO LTD
First Respondent
LION NATHAN AUSTRALIA
PTY LTD
Second Respondent
CORAM: TAMBERLIN J
PLACE: SYDNEY
DATED: 19 JUNE 1996
MINUTE OF ORDERS
THE COURT:
Orders that the respondents, by themselves, their servants and agents be restrained permanently from promoting, selling or otherwise dealing with any product in the can illustrated in the Reasons for Judgment dated 17 May 1996 as "the Breweries' Duff Beer Can" an example of which is exhibit JHSS8 to the affidavit of Jamie Samson sworn 23 February 1996 and filed in these proceedings.
Orders that the respondents destroy the following material within 28 days:
(a)all corflutes and decals the type referred to in paragraph 7.5 of the affidavit of Jonathan Cole sworn 3 April 1996 and filed in the proceedings ("Mr Cole's affidavit");
(b)all unsold stock of product in the Breweries' Duff Beer Can manufactured by or on behalf of the respondents including by any of the entities referred to in paragraph 3.1 of Mr Cole's affidavit; and
(c)all stocks of packaging (including cans and cartons) for the product sold by the respondents and the entities listed in paragraph 3.1 of Mr Cole's affidavit under the name "Duff Beer" prior to 17 May 1996;
such destruction to be confirmed by an affidavit sworn by an officer of the respondents to be filed and served within a further 14 days. This destruction does not extend to file copies of the above materials which are retained by Mallesons Stephen Jaques or counsel for the respondents.
Orders that the second respondent file and serve within 28 days an affidavit made by one of its directors which, in respect of it and in respect of the entities listed in paragraph 3.1 of Mr Cole's affidavit:
(a)states the number of cartons containing product packaged in the Breweries' Duff Beer Can sold by the company;
(b)states the gross sales of the company of product packaged in the Breweries' Duff Beer Can;
(c)states the gross profit of the company from the said sales of the product packaged in the Breweries' Duff Beer Can;
(d)annexes or exhibits copies of business records of the company which record the calculation of the said gross profits;
(e)state the nett profit of the company from the said sales of the product packaged in the Breweries' Duff Beer Can; and
(f)annexes or exhibits copies of business records of the company which record the calculation of the said nett profit.
Orders that the applicants notify the respondents of their election between an account of profits and damages within seven days of their receipt of the affidavit referred to in order 3.
Orders the stay of orders 2 and 3 for 28 days or until further order.
Orders that the respondents pay the applicant's costs.
NOTE: Settlement and entry of orders is dealt with in accordance with Order 36 of the Federal Court Rules.
IN THE FEDERAL COURT OF AUSTRALIA )
NEW SOUTH WALES DISTRICT REGISTRY ) No. NG 155 of 1996
GENERAL DIVISION )
BETWEEN: TWENTIETH CENTURY FOX
FILM CORPORATION
First Applicant
MATT GROENING PRODUCTIONS
INC.
Second Applicant
AND: THE SOUTH AUSTRALIAN
BREWING CO LTD
First Respondent
LION NATHAN AUSTRALIA
PTY LTD
Second Respondent
CORAM: TAMBERLIN J
PLACE: SYDNEY
DATED: 19 JUNE 1996
REASONS FOR JUDGMENT
TAMBERLIN J:
Background
On 17 May 1996, I delivered reasons for judgment in this matter and directed the parties to bring in draft Short Minutes of Order to give effect to those reasons.
The parties are in substantial agreement on a number of matters but there is disagreement as to the appropriate form of injunctive relief.
The applicants ("the Producers"), seek an order restraining the respondents ("the Breweries"), from promoting, selling or otherwise dealing with any product in the can, illustrated in the reasons for judgment of 17 May 1996 as the "Breweries' Duff Beer Can".
The Breweries, on the other hand, submit that the appropriate restraining order is that:
"... the respondents, ... be restrained permanently from promoting, selling or otherwise dealing with any beer using the name "Duff" unless the packaging and any associated promotional material include a clear and prominent statement that:
(a)the beer is "UNAUTHORISED" and "NOT AUTHORISED BY 'THE SIMPSONS'" in substantially the form attached to these orders and marked "A"; or
(b)the beer is "UNAUTHORISED" and "THIS BEER IS NOT ASSOCIATED WITH 'THE SIMPSONS'" in substantially the form attached to these orders and marked "B"; or
(c)the beer is "UNAUTHORISED" and "THIS BEER IS NOT THE BEER FEATURED ON 'THE SIMPSONS'" in substantially the form attached to these orders and marked "C"."
Counsel for the Breweries, on 5 June 1996, informed me that the Breweries' present intention was to market beer in cans in the form of the proposed cans.
In order to appreciate the differences it is useful to illustrate the can which was the subject of the litigation and the three proposed cans.
The Litigation Can
The Proposed Cans
The Breweries submit that the form of order sought by the respondents is too wide and that if there is a prominent disclaimer, of the type illustrated, there can be no misleading conduct, because any association with "The Simpsons" must be dispelled by the express disclaimer.
The Authorities
In considering cases involving associations between a name and a product there must always be room for differences in each case arising from variations in the target market; the nature and strength of the associations conveyed by use of the name; the way in which the product is distributed; and the way in which the use of the name is calculated to attract the market. These considerations make it unsafe to treat any particular decision as a precedent. Of course, some general guidance can be derived from particular decisions, but there is no formula to the effect that the use of any particular words of disclaimer such as "unauthorised" or that disavowal in the form of an express statement of disassociation will always serve to dispel such association in the market place.
In support of its submissions, the Breweries rely on statements in Hogan v Pacific Dunlop Ltd (1988) 83 ALR 403; [on appeal Pacific Dunlop Ltd v Hogan (1989) 23 FCR 553 ("the Crocodile Dundee case")].
Gummow J in considering the form of injunctive relief in that case, after referring to some authorities, said at 433:
"The present case is rather different. ... it is concerned with the effect of television advertising and "outdoor" advertising upon the formation of attitudes of prospective purchasers of the respondent's goods. The misrepresentation I have described as being effected by those advertisements is of a rather special character. There is a very real prospect that the chance of such misrepresentation being effected will be most significantly reduced by an appropriate disclaimer.
In the circumstances, the injunctive relief against further broadcast of the television advertisement or public display of the posters should be qualified so as not to forbid those activities if it is made clear in the television advertisement and on the posters that Mr Paul Hogan and the makers of 'Crocodile Dundee' have not agreed to the advertisement or their contents and they in no way endorse Grosby Leatherz". (Emphasis added)
The order, which his Honour made (see 23 FCR at 554), restrained the advertisement by television or outdoor poster:
" ... unless the advertisement or the posters included a clear and prominent statement that the respondent, Paul Hogan, and the makers of the film, 'Crocodile Dundee', had not agreed ... and in no way endorsed Grosby 'Leatherz' shoes."
The Full Court dismissed the appeal but did not examine or comment on the form of injunctive relief.
It is clear from the qualifications in his Honour's judgment that he did not intend to lay down any general principle as to the form of injunctive relief in all cases. The formulation of the orders turned on the special facts before him. He observed that the misrepresentation was of a "special character" and he formed the view that there was "a very real prospect that the chance of such misrepresentation being effected will be most significantly reduced by an appropriate disclaimer." In that case, unlike the present, there was an element of inferred endorsement of the product by Hogan. Moreover, that case did not involve the question of an association arising from the direct use of a specific name. In the present case, it is the use of a name identical to that of the beer portrayed in "The Simpsons" which is the important consideration. The "Crocodile Dundee" case is simply one example of circumstances, where the Courts have formed a view that a disclaimer would be effective. Further, that case concerned advertisements and a disclaimer on advertising before sale and not disclaimers on labels or containers at the point of sale. This is a significant distinction.
A second case relied on by the Breweries is Sony Music Productions Pty Ltd v Tansing (1993) 27 IPR 640 ("the Michael Jackson case"). This was a decision of Einfeld J which was affirmed on appeal, (see (1993) 27 IPR 649).
The circumstances in that case were that Sony Music Australia Ltd was the exclusive licensee in Australia of the recordings of Michael Jackson. Several months before a scheduled Jackson tour to Australia, the respondent indicated an intention to market recordings in the period leading up to the tour, in the form of compact discs of Michael Jackson music, containing disclaimers that they were not authorised and stating that they may not be of the same quality as an authorised release. His Honour refused an application for an interlocutory injunction and held that because each disc, in four places, stated the unauthorised nature of the recording, there would not be any misleading or deceptive conduct or passing off, particularly since the image of Jackson, which his Honour considered would attract the public's attention, was covered by the word "unauthorised" in red block capital lettering.
That case differed from the present in that the music recorded was authentic Michael Jackson music. A major concern was the quality of the recording, and the applicants, Sony Music Australia Ltd and Jackson, were anxious to prevent inferior quality discs being circulated in circumstances where an association might be made with their names. The case was also concerned with the suggestion of endorsement. Here, there is no suggestion that the Producers might be taken to be endorsing the quality of the Breweries' beer. Furthermore, the "Michael Jackson" decision related to an interlocutory application, heard as a matter of urgency, the facts were not fully explored, and there was no cross-examination. As French J observed at 656:
"It might be that at trial evidence will be able to demonstrate a non-rational association which falls within the rubric of misleading or deceptive conduct."
His Honour pointed out, at 656, that as the case was presented before Einfeld J there was little beyond some "generalised trade evidence" to support such a conclusion.
Other Authorities on Disclaimers and Qualifying Injunctions
In addition to the above authorities, the applicant referred to a number of other decisions in relation to disclaimers and qualified injunctions, namely: Weitmann v Katies Ltd (1977) 29 FLR 336 per Franki J at 344; Mundine v Layton Taylor Promotions Pty Ltd (1981) 51 FLR 73 per Ellicott J at 77; Brock v Terrace Times Pty Ltd (1982) 40 ALR 97; 56 FLR 464 per Davies J (dissenting) at 471; Bridge Stockbrokers Ltd v Bridges (1984) 4 FCR 460 per Lockhart J at 472; Peter Isaacson Publications Pty Ltd v Nationwide News Pty Ltd (1984) 6 FCR 289 per Beaumont J at 300-2; Abundant Earth Pty Ltd v R & C Products Pty Ltd (1985) 7 FCR 233 at 239 and Chase Manhattan Overseas Corporation v Chase Corporation Ltd (1986) 12 FCR 375 per Beaumont J (dissenting) at 394. See also "Disclaimers and Deceptive Conduct", A Terry (1986) 14 ABLR 478.
The Katies decision (supra) does not assist either party. The remarks of Franki J at 344 are obiter, and the use of the words "clearly distinguishing" were disapproved as too general
by the majority of the Full Court in Sterling Winthrop Pty Ltd v R & C Products Pty Ltd (1994) 16 ATPR 41-308 ("the Pine-O-Cleen case"). The majority in the latter case (Sheppard and Burchett JJ), said at 42-133:
"We do not think it satisfactory to qualify the order by adding the words 'without clearly distinguishing their ... products from the products of the respondent..."
....
We think there should be ... an order restraining Sterling Winthrop from using or marketing liquid detergent in a bottle to which is affixed a label identical with or substantially similar to that depicted on the relevant exhibit."
Lockhart J at 42,126 approached the question by simply reserving liberty to apply in relation to the formulation of the order made by Beaumont J below.
In Brock's case (supra) Davies J, who was dissenting, was not concerned with a disclaimer analogous to that in the present case.
The Bridge case (supra) concerned a professional practice and Lockhart J at 472 considered that a disclaimer of association was inappropriate because an express dissociation in the circumstances, might convey a suggestion that the firm in respect of which disassociation was made, was somehow disreputable or suspect. Again, that is a different type of case.
In Isaacson (supra), Beaumont J qualified the restraint, at 302, by the words "without clearly distinguishing" which, in the present case, is inappropriate in the light of the Sterling Winthrop decision.
In Abundant Earth (supra), the Full Court held that the express disclaimer, on the mustard bottles, was insufficiently prominent and of little utility. The Court went on to comment in relation to the marketing generally of small inexpensive items that:
"... the efficacy of a disclaimer, however prominent, cannot be assumed ... Nor are we persuaded that any attempt to increase the size or position of the disclaimer would improve the understanding of consumers. In the circumstances, we think that no useful purpose would be served here by any disclaimer ..." .
Nor is the "Olivia Newton-John case" in point (Newton-John v Scholl Plough (Aust) Ltd (1986) 11 FCR 233). That was a case in which an interlocutory injunction was sought. There was no use of the name "Olivia Newton-John". The image portrayed was that of a female who bore some resemblance to the applicant. The wording in question was "Olivia? No, Maybelline". The advertisement went on to extol the enhancing effect of "Maybelline" cosmetics for their ability to "confer" the "Olivia look". It was of course clear from reading the advertisement that the product came from an entirely different source. It did not purport to be Olivia Newton-John's product
nor to be sponsored or endorsed by her. Rather the suggestion was that the cosmetic products would produce a result, namely a certain type of appearance. In the present case, the Breweries' use the name of a specific creation of the Producers, namely "Duff Beer" to market their beer. The use of the name, having regard to the comic subject matter of the series could give rise to special considerations rendering an express disclaimer ineffective.
Distribution
One important question which requires examination, in relation to the proposed cans is whether the endorsements will be seen before purchase so that the buyer is made aware of the disclosures on the face of the cans prior to purchase. Orders may be placed by telephone or by written order or facsimile and may simply call for delivery. The disclaimer may not be seen until some time after delivery when it is too late for them to have any effect. Cf Hutchence v South Sea Bubble Co Pty Ltd (1986) 64 ALR 330, per Wilcox J at 338.
The impact and effect of the can on the consciousness of the target market requires that an opportunity is given to the Producers to adduce evidence on this question.
It is too simplistic an approach to suggest that the word "unauthorised", coupled with the other forms of proposed disclaimer, must dispel any association with "The Simpsons". This is particularly so in circumstances where the proposed cans are in the same form and have the same colours as the cans the subject of the litigation which have been widely distributed throughout the country without disclaimer. Moreover, given the evidence that "The Simpsons" program makes a point of "sending up" in a comic manner, other advertisers and advertisements, and given the irreverent nature of the content of the series, it is by no means beyond reasonable argument that the disclaimers would reinforce, rather than negate or diminish, any association with the series. The proposed express references to "any TV Show" or to "The Simpsons" by name on the new cans, may arguably lead to such reinforcement by more specifically and expressly focussing on the series.
In Chase Manhattan (supra), at 394, Beaumont J indicated that he would have granted an injunction unless there was a disclaimer in relation to any association with the Chase Manhattan Banking Group. However, it was important to note that one consideration leading his Honour to this view, was that the impact of a proposed order was only "in respect of a small range of activities". It was clearly a different case, on a different scale of activity and in a different commercial context.
The impact on the public of any of the three proposed beer cans on the target market essentially raises for consideration
and evidence, a question of fact and degree as to the effect of the proposed disclaimers on likely consumers.
The Producers submit that it is appropriate that they be afforded the opportunity to adduce evidence and cross-examine in relation to the proposed cans under consideration.
Senior Counsel for the Producers has informed me, that if the proposed cans had been the subject of litigation at the hearing, the cross-examination may well have been conducted differently, and some evidence, either different or additional, would have been led as to distribution processes and the opportunity of consumers to examine the disclaimers before purchase. This is a cogent consideration.
New Issue
Correspondence was tendered to the effect that on 20 March 1996, three weeks before the hearing began, the Breweries offered to "package the beer in a new label in the style of an attached facsimile" image. This image bore essentially similar wording to that on the proposed cans illustrated earlier. This offer was not accepted and these cans were never put in suit.
As the Producers correctly submit, the Breweries now seek to raise, after judgment, an entirely new issue, as to the form and effect of the disclaimers, by seeking an order that promotion and distribution of one or more of these entirely new cans would not give rise to passing off or misleading or deceptive conduct.
The subject matter of the litigation before me, was the can which was put into production by the Breweries, on which there was no disclaimer of authority or disassociation. That is the can in respect of which the reasons for judgment were given, and on the basis of which relief should be granted. It is not appropriate at this late stage, in an evidentiary vacuum to determine the nature and effect of the new cans with the disclaimers under consideration for marketing by the Breweries.
In the words of Lord Greene M.R. in Wright, Layman & Umney v Wright (1949) 66 RPC 149 at 152:
"... It has been said many times that it is no part of the function of this court to examine imaginary cases of what the defendant could or could not do under this form of injunction. The best guide, if he is an honest man, is his own conscience; and it is certainly not the business of this court to give him instructions or hints as to how near the wind he can sail."
There is much to be said for the approach indicated by his Lordship in the present case where the Court has reached its conclusion on the specific can in suit and where in effect the Breweries seek an advisory opinion.
I note that the Producers, did not, at the hearing, press for any order or finding in relation to s53 of the Act, and in making the appropriate orders I have refrained from making any declaration in relation to infringement of s53.
My conclusion is that an injunction should be granted without any qualification.
As to the remaining orders, I consider that the orders set out in the Short Minutes of Order, lodged by the Producers on 5 June 1996, are appropriate, except that in Order 3, the words "each of" in the second line, should be deleted. Order 5, as proposed, should be amended to read:
"... Stay of orders 2 and 3 for 28 days or until further order".
I am of the view that the Producers should have the costs of the proceedings up to and including today.
I certify that this and
the preceding fifteen (15)
pages are a true copy of the
Reasons for Judgment herein of
his Honour Justice Tamberlin.
Associate:
Date: 19 June 1996
Counsel for Applicant: Mr D K Catterns QC
Mr R J Webb
Solicitors for Applicant: Allen Allen & Hemsley
Counsel for Respondent: Mr R B S Macfarlan QC
Ms A Bowne
Solicitors for Respondent: Mallesons Stephen Jaques
Date of Hearing: 5 June 1996
Date Judgment Delivered: 19 June 1996
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