United Telecasters Sydney Ltd v Pan Hotels International Pty Ltd

[1978] FCA 77

CATCHWORDS

Trade practices - Consumer protection - Conduct likely

to “mislead or deceive” - Use of partly descriptive

trading name - Interlocutory injunction - Trade Practices

-	Act 1974, ss.52,53(c) & 80.
UNITED TELECASTERS SYDNEY LTD. v. PAN HOTELS INTERNATIONAL

PTY. LTD. & ANOR.

G88 of 1978

Coram: Franki J.

Sydney, 8 September 1978

I N THE FEDERAL COURT OF AUSTRALIA 1

NEW SOUTH	WALES	DISTRICT REGISTRY	5	No. G 88 of 1978
1

GENERAL DIVISION I

I N THE MATTER OF The Trade

Prac t lces Act 1 9 7 7

UNITED TELECASTERS SYDNEY

LIMITED

Applicant

PAW HOTELS INTERNATIONAL

PTY. LIMITED

F i r s t Respondent

NAX MARKSON

Second Respondent

J U D G M E N T

DELIVERED:	8 September 1978.
FRANK1 J.

On the af ternoon o f 16 August 1978 an order t o show

cause was granted to United Telecasters Sydney Limited

( the appl icant) re turnable the neat af ternoon. The crder

t o show cause sought certain injunctions under s.80 of the

Trade Practices Act 1974 ("the Act") in relation t o the

conduct o f a discotheque which it was alleged contravened

ss.52 and 5 3 ( c ) of the Act. The injunctions sought against

the first respondent, Pan Hotels Internat ional P ty . Limited,

were t o p roh ib i t it from :

(a) conductmg a business of a discotheque

o r nightclub under a name, using a

graphic device, o r using a. decor o r

otherwise in such a manner a s t o

suggest that

( i ) the sa id d isco theque o r nightclub

I .

- 2 -

is one which has any connection

with the discotheque o r nightclub

depicted on the t e l ev i s ion show

"Thank God I t ' s Friday a t The Zoo1'.

( i i ) t h e said discotheque or nightclub

i s one which has any connection with the

discotheque or nightc lub depic ted in

the f i l m ''Thank God It's Friday''.

( i i i ) t h e said discotheque o r nightclub

is one which has any connection with

r ad io s t a t ion 2SK

(b) Continuing to use the name !'The ZooT1 with

respect t o the discotheque o r nightclub

s i tua t ed a t Bayswater Road, Kings Cross, without

c lear ly d is t inguish ing the said dlscotheque

or nightclub fronnl tha t depic ted on the

t e l ev i s ion show "Thank God It 's Friday a t

The Zoo"	and i n t h e f i l m "Thank God Itt	s
Friday".

(c)	Continuing to use a partlcular graphic design
f o r t he words "The Zoo11.

(d) Advertising the said dlscotheque o r nightclub

i n such a manner as to lead people to think

tha t t hey a re to r ece ive t i cke t s to t he

movie I'Thaqk God I t ' s Friday'' when they are

not t o s o receive them.

The applicant sought t o r e s t r a i n t h e second

respondent, ifJr. I4ax Markson, from aiding, abett ing, counsell-

ing, procuring OG engaging in c e r t a i n o t h e r a c t i v i t i e s , m ..

re lat lon to acts ~ncl .uded in the prohibi t ions sought against

- 3 -

t h e first respondent . Inter locutory rel ief was

sought on the r e tu rn day.

The first respondent was the l e s see of an

h o t e l a t Kings Cross and a t 7.30 on the evening of

t he r e tu rn day of t h e o r d e r t o show cause it was due

t o open a discotheque,called '!The Zooll, i n the ho te l .

The second respondent had been engaged by t h e first

respondent to conduct the discotheque on its behalf.

On t h e r e t u r n day of t he o rde r t o show cause

the appl icant a lso sought to prevent the opening of

the discotheque under the name !'The 2 0 0 ~ ~ . Before the

adjournment of the proceedings on the af ternoon of the

r e tu rn day the respondents offered to give and gave

cer ta in undertakings and the matter then proceeded on

the following Friday and Nonclay. The respondents

cont inued their undertakings thereaf ter , and of fe red

to cont inue them until the f ina l hea r ing o f t he ma t t e r

o r fu r the r o rde r ,

S i n c e t h i s judgment is only i n r e l a t i o n t o an

app l i ca t ion fo r i n t e r locu to ry in junc t ions I do no t

express any detailed o r concluded views on the evidence

r e l a t i n g t o t h e i s s u e s i n dispute . It is necessary for

me t o decide whether the applicant has made out a prima

f ac i e case within t h e meaning of that expression as used

i n Beecham Group Llmited v. Bristol Laboratories Pty. Limited

(1968) 118 C.L.R. 618 and, if it has , then to dec ide

whether, i n t h e words of s .80(2) , it is des i r ab le to g ran t

such an injunct ion. Somewhat similar i ssues were considered.

by t h e High Court i n Hornsby Building Information Centre

Pty. Ltd . v. Sydney Building Jnformation Centre Ltd.(1978)

18 A.L.R. 639,by t h e Full Court of t h i s Court i n World

Series Cricket Pty. Limited	v.	Parish (1977)	16 A.L.R.	181
- 4 -

and t o some extent by me i n Sleitmann v. Katies Ltd. (1977) I

29 F.L.R. 336. It has not been necessary f o r me t o

a s ses s t he t ru th the of evidence given hy any of Lhe L

witnesses vho swore a f f i d a v i t s , o r gave oral evidence,

and much o f the evidence	was of a non-controversial
nature.

A motion p i c tu re ca l l ed "Thank God It 's Fridayff ,

'rvhich was apparently produced in the United States of

America, and which appears to have been fllrned l a rge ly

i n a discotheque in Los Angeles and which bore the name

"The Zoo1f, was being e-xhibited i n Sydney a t t h e time the

proceedings before me were commenced. No evidence v7as

given to me from which it was poss ib l e t o draw any

conclusion,even in consideration of whether a prima f a c i e

case has 'been shovm, of what precise connection, i f any,

and i f it be relevant, the producers of the motion picture

had with the discotheque in Los Angeles.

. The applicant conducts a t e l ev i s ion s t a t ion ,

Channel 10, i n Sydney and according to the a f f i d a v i t of

W. Cooper, employed by it, the general manager of the

appl icant was approached by a M r . McCabe on behalf of

Lyle McCabe Productions Pty. Limited and Paradine Inc.

n t h a proposal whereby a busmess carr ied on by Lyle

McCabe Productions Pty. Limited md Paradme Inc. called

IkCabe-Paradine Productions would produce 13 episodes of

a te levis ioa se r ies e n t i t l e d "Thank God Itls Frlday a t

The Zoof1. The af€idavi t proceeds that the te levis ion

s e r i e s was intended t o be based upon the film ca l led

flThanl< God It1 S Friday". There was evidence t h a t t h e

proposal t o proQuce the tel-evision series was accepted

and Lhat ikCabe-Paradine Productions was producing the

t e l ev i s ion se r i e s on behalf of the applicant. There

I

I

- 5 -

was also evidence of t he r eg i s t r a t ion on 14 June 1978

by Mr. McCabe o f the busincss names '!Thank God It' S

Friday Disco Show" and "The Zoo Discotheque Nightclubf1.

I 4 r . CGoper a l so sa id in h i s a i : i . ' i dav i t t ha t :

"For the purpose of producing the

t e l e v i s i o n s e r i e s the Applicant has

b u i l t t h e b i g g e s t s e t It has ever

constructed, a t a cost of many

thousands of do l la rs . The s e t i s

a re-creation, from design drawings,

of 'The Zoo' i n Los Angel&. The

decor of 'The Zoo' is q u i t e

d i s t i n c t i v e . It contains large

s i l v e r palm t ree s, and various

jungle animals ( including two

l i f e size camels, and moving snakes).

It has associated with it a bar

ca l led 'The Snake Bar! , the main

supports o f rvhich a r e in the form

of pythons whlch revolve. The

waitresses a t 'The Zoo' wear

leopardskin leotards .

The first ed i t ion of t he t e l ev i s ion show was

recorded a t t h e a p p l k a n t ' s Sydney s tudios on Saturday

12 August 1978 and was t e l e c a s t on Monday 14 August 1978.

The applicant tendered a l e t t e r d a t e d 21 July

1978 from a gentleman called Chuck Ashman, on t h e l e t t e r -

head of Casablanca Record and Filmlrorks, Inc., whose

main of f ice accord ing to the le t te rhead was a t Los Angeles,

t o a Mr. Martin Blau a t Columbia P ic tures In te rna t iona l

i n New York which read :

"Dear Marty:

This will conflrm our various conversatlons

and on behalf o f Casablanca Record and

Filmlorks, Inc. , authorization f o r use

of t h e t i t l e , 'THANK GOD IT'S FRIDAY AT

THE ZOO' f o r Austral ian T.V. We expect

no compensation of any klnd f o r this

license.'I

What pos i t ion Mr. Ashman held or what authority he sought

t o exe rc i se m 'wr i t i ng the l e t t e r d ld not appear.

Agaln what precise relationship Casablanca

Record and FilmWorks Inc. had with the film "Thank God

- 6 -

It 's Friday" o r what were the na ture of t h e r i g h t s , i n

Austral ia , i f any, which it had i n the Litle IIThank Gad

I t ' s Friday a t The ZooT1 was not the subjec t of evidence.

The appl icant a lso tendered a le t te r from a

N r . Guy Sco t t on the l e t t e rhead of Columbia P ic tures

Proprietary Limited ( incorporated in N. S.W. ) who is

described on the l e t t e rhead as advert is ing and I

pub l i c i ty director. The le t te r was dated 15 August

1978 m i t t e n t o Yr. Lyle McCabe and read :

"Dear Lyle ,

Please f m d a t tached the le t ter requested

from Casablanca. A s it s t a t e s , it i

confirms our phone conversations o f t he

p a s t few days giving you their approval

on the use of the t i t l e ITHANK GOD IT'S

FRIDAY AT THE ZOO' f o r your T.V. show. From what New York t e l l s me, they were

en thus ias t ic in givlng this approval

to yourself because of the advantage i n

l promotional pointers the T.V. programme

can give t o our film 'T.G.I.F.4 and

i t ' s sound track album.

To ensure that everything goes well from

bo th our points 03 view, I will make

sure that Columbia Australia does not

give approval t o anybody e l s e in the

use of our film t i t l e .

Good luck in your upcorning pro jec t .

Kind regards, I'

It is not c lear what was the prec ise re la t lonship between

Columbia P ic tures In te rna t iona l and Columbia Pictures

Proprietary Limited. _ .

Mr. Markson said in evidence that i n o r about

the middle of May 1978 he conceived the idea of calling

the discotheque "The Zoo1' and a t t h a t time he did not

lmow anything about the proposed Channel 10 show o r

t he Los Angeles discotheque.

It appears from the evidence of Mr. Cooper t h a t

Channel I 0 was not approached by We. McCabe about the

i

- 7 -

t e l ev i s ion show until about the end of t h e first week i n

July. By t h e end of June Mr. Markson said he had presented

a f e a s i b i l i t y s t u d y t o t h e f irst respondent and t h a t h e

had suggested that the discotheque be called "The Zoo1'

and a l so that a disc jockey from Radio Station 2SM should

. be employed every Thursday as a key poin t to the whole

promotion campaign. He proposed t o use a d i f f e r e n t d i s c

jockey each week. In making his recommendation W.

Markson said he drew on recent experience which he had

had in England in connection with discotheques. The

respondents proceeded to have the discotheque furnished

and decorated and a pub l i c i ty campaigr? was commenced. It

appears tha t th i s pub l i c i ty commenced about 9 August 1978,

l

and was directed to the opening o f the respondent 's

discotheque on Thursday 17 August 1978. It was sa id that

about $2,000 was spent i n f i t t i ng ou t t he d i sco theque and

i n adver t i s ing and accordmg to Mr. ivIarkson, t h e i n t e r i o r

of the discotheque was no t a t a l l l ike the d isco theque

shown i n t h e film.

On 9 August 1978 an a r t i c l e appeared i n a

newspaper c i r cu la t ing in Sydney, i n a column of a Mr. Lee

B o t t r e l l , announcing as what appeared t o be a news item,

the opening of the respondents' discotheque called "The

Zoo". That morning Mr. Markson said a I*. Luxford, whom

he did not previously know, telephoned him and said t h a t

h i s name was Mike Luxfo'rd from the publicity department o f

Columbia P ic tures , that he had s e e n t h e a r t i c l e in t h e

newspaper and	that he would give Ibk. Markson 12 double
p a s s e s t o t h e	movie I'Thank God I t 's Friday" to be given

away on the opening night of the discotheque and tha t he

I

would supply some other promotional material . Discussion

- 8 -

took place about the possibi l i ty of havlng a "Thank

God It 's Friday Roadshow Week". Mr. ivlarkson said that

he made some arrangement with P P . Luxford t o have t h e

roadshow week and that he rece lved la te r about 50 pos te rs

from YE. Luxford. !b. Markson said t h a t Mr. Luxford

appeared impressed with the idea that the posters Y r .

Narkson proposed t o have displayed around Sydney f o r

t he roadshow would p rov ide bene f i c i a l pub l i c i ty fo r t he

p ic ture . PP. IJIarkson a l s o s a i d t h a t ItW. Luxford suggested

that he contact a Mr. Hilary Mellick who was in charge

o f promotion and pub l i c i ty r o r Astor Records which appeared

t o be involved in the d l s t r ibu t ion o f r eco rds o f the sound

track of "Thank God It1 S Fridayr1. Ib. Harkson said he

d id th i s Mel l ick said that he would provide

r eco rds fo r him f o r a llThank.God It 's Friday Roadshow WeekI1.

i '

Mr. Markson s a l d t h a t h e l a t e r r e c e i v e d a number of records.

t

It a lso appears tha t Mr. IbTarkson may have adopted the

parkicular lllogolI used i n t h e word llZooll because of t he

conversation wlth Hr. Luxford. Mr. IJIeagher, one of t h e

s o l i c i t o r s f o r t h e a p p l i c a n t , s a i d t h a t Mr. Sco t t , t he

publ lc i ty director of Columbia P ic tures i n Australia,

had t o l d him t h a t Columbia Pictures had the exclusive

r i g h t s t o t h e film "Thank God It1 S Friday" and that

Columbia Pictures had not given any l icence o r permission

t o e i t h e r or" the respondents to show the film llTharrlc God

It' S Friday" o r to use the express ion llTllank God It1 S

Friday" and that IW. Scot t had sald the re was no

connection between Columbia P ic tures and the respondents.

Mr. Markson said he had a fur ther conversat ion

with Mr. Luxford on 17 August 1978 when Mr. Luxford said,

i n e f f e c t , t h a t h e c o u l d n o t l e t hlm have t h e t i c k e t s f o r

- 9 -

t h e film o r other promotional material because of the

cour t case jnvol-ving Channel I 0 and t h a t h e , Mr.

Luxford, apparently had been caught bet7ween two forces

and he d id no t want t o c r e a t e any fuss.

I@. Dermis, the respondents ' sol ic i tor , gave

evidence that on 17 August 1978 he had telephoned

Columbia P ic tures i n Sydney and spoken t o Hr. Luxford

who had been described to h i m by the telephone operator

as an executive. Fr. Luxford said he was i n t h e

publicity department and had just finished being i n

charge of the promotion of "Thank God I t ' s Friday" and

that the mater ia l he had given t o Mr. Markson had been

t o promote the p i c tu re .

It seems that the p i c tu re commenced showing

i n Sydney on 11 August 1978 and that some p u b l i c i t y had

taken p lace before tha t da te , the na ture of which was not

i n evidence. On 9 August 1978 Mr. McCabe's s o l i c i t o r s

sent a l e t t e r t o Mr. Markson complaming of the use of

the name	"The Zoo11 and threatening proceedings	i n t h i s
Court.

The first pub l i c i ty for t he t e l ev i s ion program

had appeared i n the p re s s on l 8 June 1978. No mention

was made of "The Zoo" i n it but two overseas discotheques

I1Studio 54" and lTAnnabelsll were mentioned and a t e n t a t l v e

t i t l e f o r t h e show of IlDisco ConnectionI1 was a l s o mentloned.

I

It is f a i r to say that t h e newspaper pub l i c i ty was d i rec ted

t o t h e n a t u r e of t h e program and no re levant use of the

words "The Zoo" appears before about 4 August 1978. On

6 August 1978 g picture purport ing to be of '!The Zoo1'

discotheque i n Los Angeles appeared i n a Sydney newspaper.

Radio and te lev is ion adver t i s ing by the appl icant took

p lace between 11 and 14 August 1978 and the first t e l e c a s t

- 1 0 -

of the show took place on 1 4 August 1978. The prec ise

na ture ol: Lhe rad io and t e l ev i s ion adve r t l smg was no t

before me bu t t he re vas evldence of posters for the

program described as "T.V. disco showf1 and "Thank God

It's Friday a t The Zoo1' having been s e n t t o v a r i o u s

discotheques on 9 August 1978. There was also evidence

of o ther adver t i s ing s ince 4 October 1978 r e l a t i n g t o

t h e show.

Section 52 of the Act provides :

"(I) A corporation shall n o t , i n t r a d e o r

commerce, engage i n conduct t h a t is

misleading o r deceptdve o r i s l ike ly

to mislead o r deceive.

(2) Nothing m the succeeding provisions

of this Divis ion shal l be taken as

l imi t ing by implicat ion the general i ty

of sub-section (1).

I n my op in ion t he fo l lowing po in t s r e l a t ing t o t he

construction of s.52 of the Act emerge from t h e judgments

o f t h e High Court i n Hornsbv Bu-ilding Information Centre

Pty. L t d . v. Sydney Building Information Centre L t d .

' (1978) 18 B.L.R. 639 :

I

1. The sec t ion i s concerned with conduct which is

decept ive to members of t he pub l i c i n t h e i r

!

capaci ty as consumers o f goods o r se rv ices

and no t with the p ro t ec t ion of t he r epu ta t ion

o r goodwill o f compet i tors in t rade o r commerce

but consumers a re no t l imi t ed t o the persons

described i n s.4(3) of the Act. (Barwick C . J .

a t p .641 , with whom h k i n J. agreed a t p. 652

and Stephen J. a t pp.644-646	with whom Jacobs J.
agreed a t p.650).

2. In deciding whether the use o f a corporate name

o r t r ade name is deceptive. what has

- 1 1 -

been said about the pr inciples used to

dctcrminc whcthcr that name has a

su f f l c i en t r epu ta t ion i n the law of

pass ing of f , appl ies equal ly i n an

appropriate case i n r e l a t i o n t o s.52( 1 )

of t h e Act. I draw this conclusion from

the judgment of Stephen J.

3. Care must be taken not t o extend the

appl ica t ion o f s.52(1) fu r the r t han

Parliament intended: To quote the words

of Stephen J. a t p.648 :

"To allow this sectlon of the Trade

Prac t ices Act t o be used as an

mst rument for the creation of any

monopoly In descr ip t ive names would

be to mock the mani fes t in ten t of

t h e l e g i s l a t l o n . I'

Bowen C . J . i n World Series Cricket Pty. Limited

v. Par ish, supra, a t p.189 expressed the same view i n

r e l a t i o n t o t h e words, "Tests1', Yl'est Ser ies" , "The

Austral ian team" o r when he said, "These

a re o rd ina ry words in the English language. Any attempt

to acqu l r e a monopoly i n their use should be discouraged1'.

In Hornsby Buildmg Information Centre Pty. L t d .

v. SydneV Building Informatlon Centre L t d . , supra, a t

p.649 Stephen J. a l so said :

"There was evidence before the Industrial

Court about the antecedents and a c t l v i t i e s

of the Hornsby Centre from which it could

have concluded tha t t hose concerned vnth

t h a t c e n t r e ' s a c t l v i t i e s were i n t e n t t o

bene f i t from the good repute which the

Sydney Centre had, over the years, created

for the par t icu lar k ind of se rv ices ,

unique of t he i r k ind , which it had offered

as the only bul lding infornat lon cel l t re

i n the Sydney area . However, to say this

i s not to suggest any w-ongdomg on t h e m

Neither the concept of such a

p a r t .

cent re nor its conduct is anythmg f o r

I .

I - 1 2 -

which a monopoly can be claimed,

any more than it could be claimed

f o r , say, an a r t ga l le ry . If the

first commercial a r t ga l l e ry i n a

c i t y meets with an enthus las t ic

respoi1se from the publ ic , compet i t ive

g a l l e r i e s a r e l i k e l y t o b e a t t r a c t e d t o t h e f i e l d . They v1111 b e f r e e t o

en ter it and to descr ibe themselves

as a r t g a l l e r i e s , t h a t b e i n g t h e

descr ip t ive name appropr i a t e t o

their business; and th i s despi te

t h e f a c t t h a t t h e p i o n e e r g a l l e r y might have chosen a l s o t o s t y l e

i t s e l f ' a r t ga l le ry ' ,p ref lxed by

a reg iona l name. For competitors'

conduct to be misleading and deceptive they would have t o have adopted as t h e i r names the same o r a similar

regional pref ix fol lowed by ' a r t gal lery! .

A qui te d i s t inc t reg iona l pref ix fo l lor red

by 'art ga l le ry ' would nei ther mislead

nor decelve. The opposite view vould

invo lve t r ea t ing t h i s p rov i s ion o f

the t r a d e p r a c t i c e s l e g i s l a t i o n as

the source of a newly created monopoly

here tofore unknown t o t h e law and l i k e l y

t o d e t e r new entrants ir?to a f i e l d which

ought t o be open to legi t imate competi t ion.

It is d i f f i cu l t t o con templa t e any l e s s

l ike ly leg is la t ive source of such a

consequence. The present case of

building informa tion centres IS, I th ink ,

no d i f f e r e n t i n principle.! '

Whilst th i s pas sage r e l a t e s t o such a descr ip t ive name t

as "art g a l l e r y r 1 f o r what is an a r t ga l l e ry I consider

t h a t i n an appropriate case a similar approach should be I

made t o words which are descr ipt ive, such as "The Zoo'!,

even though t h e p l a c e t o which they a re app l i ed is not

s t r i c t l y a zoo but is a discotheque presenting some of the

f ea tu res which persons associate with a zoo, such as

animals and repti les, even though onlyda simulated nature.

On the first day of the hear ing the undertakings

t o t h e Court broadly were that before the opening a t

7.30 t h a t n i g h t t h e f irst respondent woKld p lace a not ice

i n a prominent posi t ion outs ide the entrance to the

d lsco theque s ta tmg, i n l e t t e r s n o t l e s s t h a n one inch

high : We are not connected i n any way with the Channel

10 t e l ev i s ion se r l e s	'Thank	God	I t ' s Friday a t The	Zoo'
- 1 3 -

o r the € i l m 'Thank God It 's Friday7". The f irst

respondent also undertook to place certaln advertisements

t o t h e same e f f e c t i n c e r t a i n newspapers and a l s o each

respcndent undertook not to advertise o r publ ic l se by

m y means whatever an erltsrtainment as "Thank God It' S

Friday1' and the applicant gave the usual cross undertaking

as t o damages. The respondents a l so of fe red to use the

name "The Zoo a t King S Cross" and not !'The Zoo11 alone.

I cons ider the first matter to determine is

what is t h e c l a s s o f consumer, using tha t word i n a

broad sense, . to whom the use of the words !'The ZooT1 by

the r e sponden t s i n r e l a t ion to the i r d i sco theque would

be misleading o r deceptive o r l ike ly to be mis leading o r

deceptive. I consider tha t the persons to be considered

a re those who would b e l i k e l y t o v i s i t the respondents'

discotheque.

Evidence was given on behalf of t he app l i can t ,

by m e a n s of sound and p i c t o r i a l r e p r e s e n t a t i o n s ,of

interviews conducted on Tuesday 15 August 1978 with

persons a t random a t t h e Hoyts Clnema Centre i n Sydney

where the motion p i c t u r e "Thank God I t ' s Friday1' was being

shown. Because the proceedings were interlocutory

proceedings I admitted t h i s evidence without having to

decide whether it would be admissible a t the f ina l hea r ing .

This evidence showed that many of those interviewed had

some knowledge of both the motion picture "Thank God I t ' s

Friday" and the te lev ls ion show and, i n gene ra l , i hose

persons 'who showed a knowledge o f e l t h e r were shown

what was in fact a coupon from a Sydney nelrspaper. T h s

coupon had been published In a Sunday paper a t the

ins t iga t ion of W. Markson. It was published on the same

page as a news item describing the discotheque. The

- 1 4 -

The coupon f ea tu red the words 'ITHE ZOO" together with

the address 9 Bayswater Road, Kings Cross. I L a r m o u r ~ e d

the openlng on Thursday 17 August and the name RON E. SPAFX

appeared i n extremely prominent lettering. A t t h e bottom

of t he coupon appeared !'The f irst 500 people presenting

this ad. t o 'The Zoo' rece ive b.10 f r e e t i c k e t s t o 'The

2 0 0 1 f o r Thank God I t 's Friday on Friday 19 ( s i c ) August".

Mr. Markson sought to explain the wording in this coupon

as t h e r e s u l t o f some confusion on the pa r t o f the newspaper.

Those being interviewed were then asked ll?i'ho do you think

would be running that?" and l a t e r ''Do you th ink it i s

assoc ia ted wi th the film o r t h e television show?'I On

Wednesday 16 August 1978 t h e show which had been t e l e c a s t

on Monday nlght was t e l e c a s t a g a i n and on Thursday morning

17 August 1978 a video tape film crew attended a t t h e Chatswood

Railway S ta t ion and conducted a number of random lnterviews

and I again admit ted the sound and p i c to r i a l r eco rd ing

i n evidence. These interviews followed the same general

l ines. Persons who sa id they knew e i t h e r t h e film o r

t he t e l ev i s ion program were shown t h e coupon and usua l ly

asked "Do you th ink it is connected with the film, t h e

t e l ev i s ion program o r ne i ther?" Some persons sa ld the

film, some the television progran,some 2SM and some

did not express any view. I consider that these interviews

were not persuasive f o r various reasons including that

the coupon r e f e r r e d t o llThanl< God I t ' s Friday" and also

to the f ac t t ha t t he ques t ions a sked a t the interviews

a t t h e Chatswood S-tation were not dxrected to a t ime e l ther

before the opening of the respondents ' discotheque o r

before the commencement of the act ion. If it be re levant ,

a t the t ime of the pr int ing of the coupon, Mr. Harkson's

- 1 5 -

evidence vas t h a t h e had the approval of Columbia

P ic tures f o r this tType of conduct. The undertakings

given, i f continued, would prevent the use of a similar

coupon. I consider that the evidence of those interviewed

was not persuasive i n r e l a t i o n t o the question of

whether or not they would consider the words "The Zoott

alone were l i k e l y t o c a u s e them t o be misled o r deceived

i n any relevant way. The na ture o f the in te rv iews d id

n o t r e s u l t i n any disclosure o f any reasons for the

views expressed by those interviewed.

The appl icant , however, a l so a rgued tha t the use

of the words '!The Zoott alone, in r e l a Lion to the respondents '

discotheque, would be l i k e l y t o i n d l c a t e in a re levant

manner a connection o r assoc ia t ion wi th the film o r t h e

t e l ev i s ion show o r 2SN. I will deal l a t e r w i t h t h e I .

question of 2SM.

I consider, bearing i n mind -chat I am on ly to

decide whether a prima Zacie case has been made out ,

t h a t t h e first quest ion 1s whether, a t t he r e l evan t da t e ,

the words !!The Zoo11 had acqui red in any re levant sense

such a repdca t ion - tha t the i r use would cause a sufficien-c

number of re levant persons to assocrate a discotheque i n

respect of which they were used with the applicant o r

with t h e film. In my op in ion , t he p l a in t i f f has not made

' o u t a prima f a c i e c a s e i n t h i s r e g a r d a l t h o u g h I consider

t h a t i t s pos i t lon is s t ronger i n r e l a t i o n t o the t e l ev i s ion

show than t h e film. If one follows the law i n r e l a t i o n

to pass lng of f it seems t h a t t h e a p p r o p r i s t e d a t e t o

consider the quest lon of reputat ion would be 17 August

1978, when the respondents! discotheque opened, although

- 1 6 -

it may be t h a t some e a r l i e r d a t e a f t e r p u b l i c i t y f o r

it commenced would be the appropriate date. See

generally Licensed Victuallers ' Newspaper Company v.

Bingham (1888) 38 Ch.D. 139 and W. & A. Gilbey Limited

v. Continental LiqueursPty. Limited (1960) 103 C.L.R. 406.

The applicant submltted that the correct date was the

commencement	of	t h e a c t i o n , t h a t	is Wednesday 16 August
1978.

I pass now t o consider the applicant 's submission

t h a t an in junc t ion should be gran ted , in e f fec t , res t ra in ing

the first respondent from conducting the discotheque in

such a way as t o suggest it has any connection with Radlo

S ta t ion 2SM. The appl icant ' s own t e l ev i s ion show featured

a disc jockey from 2SM, Mr. Ian Ma.lacrae. The argument went

t ha t t he use by the respondents o f a d i sc jockey from

2SM, i n the case o f the opening night o f a W-. Ron E. Sparx,

i n some way was l ike ly to mis lead o r deceive persons

into thinking that the respondentst dlscotheque had a

connection with Radio S ta t ion 2SM. The evidence before me

was that disc jockeys employed by 2SIvI a re ab le t o accept

what a r e called guest appearances from other employers

i n , f o r example, the enter ta inment f ie ld . The argument

appeared t o be based substantially upon the cu t t i ng and

upon ce r t a in pos t e r s which the respondents had arranged

. t o be d isp layed in cer ta in par t s o f Sydney f ea tu r ing the

name Ron E. Sparx. I am no t s a t i s f i e d t h a t any prima

facie case has been made ou t In r e l a t ion to the c l a im

f o r an injunct ion directed t o the questlon o f any

associat ion wlth Radio S ta t ion 2SM.

- 1 7 -

The applicant also submitted th&the conduct

of t h e respondentsvlas i n breach o f s .53(c) of the A c t

i n that It represented that the discotheque had a

sponsorship o r approval it d id not have ei ther i n r e l a t i o n

t o t h e film o r the t e l ev i s ion program. I considered

somewhat simllar questions i n World Series Cricket Pty.

Limited v. Par i sh , supra . In tha t case a t p.194 I said

that , in deciding whether o r no t a prima f ac i e case had

been made out the Court was requl red to examine as t h e

major question vhether a s ign i f i can t number o f t h e

r e l evan t po ten t i a l pu rchase r s o f t i cke t s would be

l i k e l y t o be deceived o r mislead by the conduct of

which complaint was made. I do not propose to repeat

what I sa id i n Weitmann v. Katies Ltd . , supra, i n r e l a t i o n

t o ss.52 and 53(c). Since Ishave decided that in t h e

re levant sense the words '!The Zoo11 have not acquired the

necessasy secondary reputatxon which I consider they must

be fo re the i r use can, i n the subjec t case , represent that

the first respondent h a s sponsorship o r approval it does

not have, I am not requi red to fur ther cons ider the meaning

of the words sponsorship o r approval. The questlon of

the use by the app l i can t oT t h e words "The Zoor1 and "Thank

God It 's Friday" i n r e l a t i o n t o its program doesrnt arise

for cons idera t ion but in my opinion it may be questionable

whether t h e word approval in s .53(c) embraces a mere

revocable l icence to use the name.

Having found tha t no prima fac i e case has been

establ ished it i s not necessary for me to proceed to the

question of whether I think it is des i rab le that t h e Court

g ran t an inter im injunct ion pending a f ina l de te rmlna t ion

o f the appl icat ion. This quest ton was considered i n some

- 1 8 -

d e t a i l i n p a r t i c u l a r i n World Series Cricket Pty. Limited

v. Par ish, supra. A t p.191 Bowen C.J. said :

When looking to the ba lance of

convenlence rvhere the re is a prima

f a c i e c a s e made out by the appl icant

that t h e consumer protect ion provis ions

of the Act have been contravened, it

is necessary to look, on t h e one hand

t o t h e p o s s i b l e damage t o consumers t h a t

would f low from a re fusa l of the

inter locutory injunct ion, and, on the

other , to the damage thatwould f low to

the adver t l se r j f the inJunct ion is

granted but no t made perpe tua l a t

t h e f i n a l hearing. This is a fa r more

d i f f i c u l t t a s k than weighing two

pr iva te in te res t s aga ins t each o ther . I1

Should any prospective consumer be misleC i n any

re levant way by the use of the name '!The Zoo11 i n r e l a t i o n

to the respondents ' d iscotheque, he would surely be aware

of the tsue posit ion before he entered the premlses because

of the not ice , the subject o f an undertaking and which,

the evidence shorredbad been affixed i n a prominent

pos i t i on a t the entrance.

To grant the in junc t ion prohib i t ing the use of

the name "The Zoo" when the matter was first before me

would, I n e f f e c t , have meant preventing the openlng of

the discotheque, and, even a t the time of the de1im-y o f

this judgment, would mean the waste of a great deal of

promotional effort and expense. There was evidence that

about	400	persons attended the opening.
One other approach would be to g ran t t he app l i ca t ion

to the ex ten t o f r e s t r a in ing the first respondent from

cont inuing to use the name "The ZooT1 with r e s p e c t t o t h e discotheque without clearly distinguishing the discotheque

from tha t depic ted m the t e l ev i s ion show "Thank God I t ' s

Friday a t The Zoo1' and i n t h e film "Thank God I t ' s Friday"

as requested i n one of the paragraphs of theoi-der t o show

- 1 9 -

cause. Had I considered it appropriate t o grant an

inter im injunct ion l m t i l Lhe hedr'iIlg 01 Lhe ackion,

o r fur ther order , I would have granted it i n th i s

form and not in an absolu te form prohib i t ing the use

of t he words !'The Zoo1'. The applicant submitted that

this form of order was not adequate. In this regard I

d.11 not repeat what I s a i d i n World Series Cricket Pty.

Limited v. Parish, supras a? pp.196-197.

The proceedings i n r e l a t i o n t o t he second

respondent were d i rec ted t o r e s t r a l n i n g him from aiding,

abet t ing, counsel l ing	o r procuring o r engaging	in various
a c t s .

_ _ upon the respondents giving the appropriate

undertakings, Ivhich would have the e f f e c t o f continuing

the exis t ing undertakings unt i l the determinat ion of the

i

matter o r fur ther order , which is the bas i s upon which

t h i s judgment r e s t s , I would re fuse t o grant lnter locutory

r e l i e f bu t would accept the undertakings offered provided

a cross undertaking in the usual form is given by t h e

applicant. I have not heard any argument i n r e l a t i o n t o

costs . I r e se rve l i be r ty to app ly t o any pa r ty on two

day 's not ice t o t he o the r pa r t i e s .