Pacific Dunlop Ltd v. Hogan and Ors

23 FCR 553

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(Judgment by: Sheppard J)

Re: Pacific Dunlop Ltd
And: Paul Hogan, Rimfire Films Ltd and Burns Philp Trustee Company Ltd

Court:

Judges:
Sheppard JBeaumont J
Burchett J

Subject References:
TRADE PRACTICES
Passing Off

Judgment date: 25 May 1989

Sydney

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Judgment by:
Sheppard J

This is an appeal from the judgment of a judge of the Court (Gummow J.) against declarations and orders made on 29 November last. The learned primary Judge made a declaration that the appellant had, by causing to be televised the advertisement referred to therein and by causing the public display of certain posters, passed off its shoes known and marketed as "Leatherz", as goods with which the respondents had a commercial association. His Honour made a further declaration that the appellant, by televising the advertisement and causing the display of the posters, engaged in conduct which contravened s. 52 of the Trade Practices Act 1974. It was also declared that the respondents were entitled, at their option, to damages or an account of profits in respect of the appellant's conduct. The Court ordered that the appellant be restrained from causing the advertisement to be televised or the posters displayed 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 to the advertisement or posters or their contents and in no way endorsed Grosby "Leatherz" shoes. Liberty to apply was reserved to enable the parties to apply, inter alia, for further relief and for further orders as to damages or the taking of accounts.

2. The case is concerned, as the orders suggest, with advertisements for shoes marketed by the appellant. The advertisements were intended to and did recall to the minds of persons seeing them a scene from the motion picture, "Crocodile Dundee" (now referred to as "Crocodile Dundee I") known as the "knife scene".

3. The film, "Crocodile Dundee I", is well known and has been the subject of much public discussion and comment. The star of the film is Mr. Hogan whose career is already well known to the great majority of Australians. His Honour has, at some length, set out a summary of Mr. Hogan's career, of the nature of the film and of the impact it has had. For completeness it is necessary to repeat that summary here. It has been taken substantially from the judgment under appeal.

4. Mr. Hogan came under public notice in Australia when he played a prominent part in an extensive advertising campaign for cigarettes marketed under the name, "Winfield". The campaign was conducted from 1970 to 1979 when, so I believe, cigarette advertising was banned on television. As his Honour has said, the campaign projected the character of Mr. Hogan as down-to-earth and irreverent and with something of the good-natured larrikin in him. Although the matter is not mentioned in this part of his Honour's judgment, Mr. Hogan was also well known for advertisements made for a well known brewer of beer and for a variety show, known as "The Paul Hogan Show", some excerpts from which are in evidence. In more recent times he has been featured in a large number of advertisements for the Australian Tourist Commission. Many of these were shown overseas but a number were also shown in Australia, sometimes as advertisements and sometimes in public interest programs informing Australians of the nature of the Commission's overseas advertising campaign.

Unquestionably, all Mr. Hogan's advertising has been highly successful. It has given him a large public following in this country. The characters which he played in the variety show had a similar stamp about them to the character - Mr. Hogan himself is featured in the advertisements. In a broad sense they were extensions, or rather, exaggerations of Mr. Hogan's personality as revealed in the various advertising campaigns to which I have referred.

5. In the film Mr. Hogan stars as the principal character, Mick or Crocodile Dundee. This character, although fictitious, is another extension or exaggeration of Mr. Hogan's own personality, as projected in the various television advertisements to which I have referred. It is correct to say that the character undertakes many feats which, to use an expression used in the course of argument, are larger than life and highly improbable. Usually they are portrayed in a laconic, laid-back style and yet are all pervaded with a certain cockiness and insolence. All these characteristics are said to be dear to the hearts of many Australians and indeed to reveal the type of personality which Australians like to think they have, even if this involves a certain amount of self-deception.

6. The film is set in two very different areas. First, the action takes place in crocodile infested waters in the outback of the Northern Territory. The characters are then transported to New York and it is whilst in New York that the knife scene occurs. The other principal character in the film is a journalist, Sue Charlton, described in publicity for the film as "an adventurous New York reporter". The synopsis for the film, quoted fully by his Honour, contains the following paragraphs:-

"Sue Charlton, an adventurous New York reporter, picks up the croc attack story, tracks Dundee down and travels with him on a re-enactment of Dundee's now famous adventure. Mick shows her an outback and a lifestyle worlds apart from New York and saves her from being crocodile lunch.

Sue entices Dundee, who's never seen a crowd of more than 40 in one spot, back to New York City to finish her story. Croc takes New York City by storm, playing Prince Valiant to hookers and little old ladies, delivering his own unique line of philosophy and generally being the affable larrikin hero that he is.

Sue is under pressure from her squillionaire newspaper magnate father to marry Richard, the perfect match editor of the family newspaper chain. She is headstrong, intelligent and amorous, lusting after life and after unusual adventures.

Crocodile Mick romps through New York City like a friendly alien sweeping Sue along with him and leaving laughter in his wake."

7. His Honour's description of the knife scene, which is critical for the case, is as follows:-

"Mick Dundee and Sue Charlton are walking arm in arm through the colonnade. They are approached by three young persons, one of whom asks the hero for a light. He replies 'Yeah sure kid. There you go', but the response is a demand for the hero's wallet. The heroine says in alarm 'Mick! Give him your wallet'. Mick says in a relaxed fashion 'What for?'. She replies 'He's got a knife'. Mick then laughs and responds 'That's not a knife', producing a formidable hunting knife with the words 'That's a knife'. Mick uses the knife to slash the jacket of the mugger, then holds the knife to his face. The mugger and his accomplices then run off."

8. The television advertisement, which as I have said, was based on the knife scene, was described by his Honour as follows:-

"The television advertisement involves three persons, a couple set upon by a mugger. The advertisement depicts a scene at night in a dingy street with a couple advancing arm in arm, in light hearted mood. The female has fair hair, as does the Sue Charlton character in the film, but the clothing worn by the female character is quite different from that worn by Sue Charlton in the 'knife scene'.

The clothes of the male character include a hat with a band displaying animal teeth and a vest worn over an open necked shirt with the sleeves rolled up above arm bands; he wears a necklet with several animal teeth affixed to it. The male character thus is dressed in clothing, the distinctive elements of which are similar to or identifiable as the clothing of the hero in the film. However, unlike Mr. Hogan, he is wearing jeans and 'Grosby Leatherz' shoes.

The female character says 'He looked just like you Mick'. They are then confronted by a mugger wearing grotesque clothing and make-up, far more exaggerated than that of the mugger in the scene in the film. The mugger holds a knife and the female character says 'Mick give him your wallet. He's wearing leather shoes'. The male character then says in a confident tone 'You call those leather shoes? Now these are leather shoes - Grosby leather, soft, comfortable, action packed leather'. The male character looks up and down and then kicks the knife out of the mugger's hand. The male character then takes further kicks at the mugger culminating in a running kick at the mugger in the crotch.

The mugger then, in a very exaggerated manner, flies into the air and out of the frame of the film. As this happens, Mick says 'Made right here in Australia and only 40 bucks'. The male character delivers the parting message 'Grosby Leatherz - you'd be a mugger to pay any more for real leather'.

There then appears superimposed on the film as the male and female character walk away a cartoon dog which then announces 'Grosby - they're great mate' and closes his remarks with 'woof'. The cartoon dog was a device which had been used previously in advertising for Grosby products."

9. The advertisement on the posters shows a partially reclining figure wearing the same clothes as those worn in the television advertisement. The figure is wearing a pair of Grosby Leatherz. The face of the model is facing the camera and grinning. Beside the face appear in quotation marks the words in bold print, "You'd be a mugger to pay any more for real leather]" Above the shoes are the words in bold print, "Grosby Leatherz $40". The same actor appeared in the poster advertisement as in the television commercial and the same clothes were worn by him. The posters were shown at railway stations and on the sides of buses and trams.

10. Like the primary Judge, I have viewed the film, particularly the knife scene, the television advertisement and photographs of the posters. The impact which each makes is substantially a visual one - in the case of the film and the television advertisement it is also an aural one - and the reactions of people viewing them will no doubt vary. The bare account of them given in the primary Judge's reasons, which I have adopted for myself, whilst accurate, cannot adequately convey to a viewer or reader who has not seen them what each of them conveys. This is an important point and must be kept firmly in mind when the questions of fact which arise for decision in the case are being considered.

11. A reading of the amended statement of claim shows that the respondents (the applicants at first instance) relied upon passing off and upon breach of ss. 52 and 53 (paras. (c) and (d)) of the Trade Practices Act. The essence of the respondents' case in relation to the cause of action for passing off was that the public were likely to be confused and led to believe that the appellant's footwear was marketed under franchise from the first or second respondent or both or marketed under licence or approval of those respondents whereby the appellant had passed off its footwear. In relation to the causes of action based on the Trade Practices Act the respondents' case was that the appellant falsely represented that it had the sponsorship or approval of or an affiliation with the first and or second respondents, falsely represented that the appellant's shoes had the sponsorship or approval of or an affiliation with the two respondents, and engaged in conduct which was misleading or deceptive or likely to mislead or deceive by making representations or otherwise leading or likely to lead members of the public to believe that the appellant or its goods had the endorsement of or was or were affiliated or associated with the first two respondents.

12. The learned primary Judge found the respondents' case in passing off established. He also found that the appellant's conduct constituted a breach of s. 52 of the Trade Practices Act. He did not find any breach of s. 53 of that Act. In relation to passing off his Honour's conclusion was:-

"... I have reached the conclusion that the misrepresentations which I have found in respect of the television commercial and the posters gave rise to passing-off of the 'Grosby Leatherz' as marketed under a commercial arrangement with the applicants (the respondents to the appeal) which did not exist."

13. In relation to s. 52 of the Trade Practices Act his Honour said:-

"... I have found that the advertising campaign was conceived and implemented with an appreciation that many persons would be aware in a general way of business practices whereby licences for reward were given for marketing of products in association with representations of well known fictional characters, and whereby persons in the public eye agree to associate themselves with the marketing of products."

His Honour went on to say that the doctrine known as the "erroneous assumption doctrine" had no application in this case.

14. His Honour considered the application of paras. 53 (c) and (d) of the Trade Practices Act but said that he did not believe that what happened in the case "satisfied the rather specific requirements of these paragraphs". The respondents have not challenged his Honour's conclusions about the application of these paragraphs so that they do not arise for consideration in the appeal.

15. At the hearing at first instance, counsel for the respondents put their case in two ways. The primary case was that many people viewing the television advertisement and also the posters would be misled into thinking that the principal actor depicted in the advertisement was Mr. Hogan himself. That case was rejected by his Honour and his finding in that respect has not been the subject of any challenge on appeal. The other way in which the case was put, and this was maintained on appeal, was that, although people would not mistake the actor in the advertisement for Mr. Hogan they would nevertheless conclude that the advertisement could not have been shown without Mr. Hogan's consent or approval. Furthermore, the words used by the actor in the television advertisement and the words attributed to the actor on the posters were endorsements of the shoes. Thus the fact that a significant number of people would think that Mr. Hogan or one of his companies had approved or consented to the advertisement, would lead them also to think that he either advocated the purchase of the shoes or at least approved of them in some general way. In his reasons for judgment his Honour has concentrated upon the question whether the showing of the advertisements would be likely to have misled people into thinking that Mr. Hogan, or one of his companies had approved of or consented to their being shown. His Honour has not expressly said anything about members of the public being misled because they were led to believe that Mr. Hogan in some general way approved of or endorsed the product, namely, the shoes. However, in the course of his submissions, senior counsel for the respondents to the appeal emphasized this aspect of his case and sought to support the declarations and orders made by his Honour upon the basis, not only of consent to the showing of the advertisements, but of approval and endorsement of the product.

16. Notwithstanding the absence of any express mention of this aspect of the respondents' case by his Honour, it seems to me, particularly if one has regard to the terms of the declarations which were made, that his Honour found this part of the case established. Whether this be so or not, it is a case which has been made before us and it is necessary to deal with it.

17. In addition to there being in evidence the film, the television advertisement and photographs of the posters, there was evidence of Mr. Hogan's background and career, of the making of the film and of the identity of the companies and persons who had copyright in the script for the film and in the film itself. The members of the staff of the advertising agency which devised and made the advertisement gave evidence of how they went about their task and what they intended to convey to those viewing or reading the advertisements. There was also evidence given by advertising agents not concerned with the making or promotion of the film or the advertisements of their view of the impact the advertisements would be likely to have and of advertising practices in relation to the use by advertisers of spoofs of scenes from well-known films to promote products. Some of this evidence was rejected. His Honour does not appear to have thought that so much of it as was admitted to be very helpful. I take the same view. Finally, evidence was given by seven members of the public, four called by the respondents and three by the appellant. I shall refer to this evidence as the lay evidence. Each of these witnesses had seen the film. Some had seen both the television advertisement and the posters; others had seen the posters but not the television advertisement.

18. It is necessary to make some analysis of this evidence. It was the subject of a detailed analysis by his Honour and my own treatment of it comes largely from what he said about it. The four witnesses called in the respondents' case were all employed in a firm of Sydney stockbrokers, Jacksons Limited. The evidence is vague as to how they came to be selected to give evidence. It is also vague on matters such as the number of members of staff in Jacksons Limited who were approached about the matter. Nothing can be taken from the fact that it would appear that a great many more than four were approached. It is possible that some had reactions adverse to the respondents' case; but it is also possible that some did not want to become involved in an exercise which might lead them into the witness box.

19. The respondents' witnesses were Mr. Greenheld, Miss Ashby, Miss Timbs and Mr. Watson. Mr. Greenheld saw the poster at two Sydney railway stations and the television advertisement on some 20 occasions. He described the television advertisement as featuring a character "obviously meant to be Mick Dundee" and said that the advertisement was a "take-off of Mick Dundee". In the course of conversations leading to the preparation of his affidavit, he was asked whether, given that the character portrayed in the advertisement appeared to him to have been meant to be that of Dundee, he would have thought that permission would have been sought for the use of the character either from Mr. Hogan or the producers of the film. He said that as a matter of normal business practice he would have thought the producers would have gained permission. He said that he was not aware of the law behind this, but that in a normal business sense it would have been expected that permission would have been gained. In cross-examination Mr. Greenheld agreed that, at the time when he first saw the advertisements, thoughts such as these had not crossed his mind. He said, "You would be a bit cynical if you started thinking of the possible repercussions."

20. Miss Ashby did not say that she had seen the television advertisement but she had seen the poster displayed at Wynyard Railway Station and on the sides of buses. She agreed that the character shown in the poster was not Mr. Hogan but said that she thought "they were imitating him, dressed so they would look like him." Paragraph 3 of Miss Ashby's affidavit was as follows:-

"When I saw the poster advertisements on the sides of buses I thought it was a look-alike of Paul Hogan as Crocodile Dundee. I thought the people who were advertising the shoes probably would have asked his permission or the permission of the makers of the film to use a look-alike. The makers would have asked for rights and royalties for using the look-alike. I thought they would have asked permission because it's a take off of Crocodile Dundee character and the character that Paul Hogan created. It's a complete copy, hat and all."

21. In cross-examination Miss Ashby conceded that she had no means of knowing whether Mr. Hogan or the producers of the film had sought consent or not but she said that she thought that the advertiser should have approached Mr. Hogan or the producers of the film to get the right to put the advertisement on display.

22. Miss Timbs, like Miss Ashby, did not say that she had seen the television advertisement. She had seen the poster on the sides of buses. She thought that the advertisement was "a take-off" in the sense that it used and copied the character, Crocodile Dundee. She could see that the character was not Mr. Hogan but thought it was somebody who looked a lot like him. She said the character reminded her of the film which was funny.

23. In her affidavit Miss Timbs said:-

"I presumed there would have been some permission given by the makers of the film or by Paul Hogan to use the Mick Dundee character. I also presumed that someone approached Paul Hogan or the makers of the film and that Paul Hogan or the makers of the film were getting something out of it. I presumed this because the character in the ad was their character. You just can't get up and use someone else's character."

24. In cross-examination Miss Timbs agreed that thoughts as to the asking of permission for use of a look-alike had not gone through her mind at the time she saw the advertisement. It is apparent that she only considered this matter when she was asked to do so by the solicitor who interviewed her.

25. Mr. Watson had seen the television advertisement on at least 12 occasions and had also seen the poster at a railway station. He agreed that the person depicted in the advertisement was not Mr. Hogan. He said that the television advertisement was an attempt to use the humour already existing in the situation involved "in the Crocodile Dundee routine about the mugger." He said that probably some time during his first viewing of the television advertisement, it flashed through his mind that someone should have been paid for it or rewarded for it. He had assumed that the makers of the advertisement had obtained permission in some way, or that they were linked with the people who held rights in the film. In his affidavit Mr. Watson described the makers of the television advertisement as "playing on Crocodile Dundee". He said that both the poster and the television advertisement were "pretty close replicas of the movie and they had been twisted to suit the product".

26. Miss Kiffin, Mrs. Eddy and Mr. Jedlin were called in the appellant's case. All had seen the film before they saw the appellant's advertisement. Miss Kiffin was at one time employed as secretary to a partner in the litigation department of a large firm of Sydney solicitors. She saw the television advertisement on several occasions. In her affidavit she said:-

"I recall that I immediately noticed that the commercial utilised the famous 'knife scene' from the 'Crocodile Dundee' film, which I had seen some time before. Also, I immediately recognised that the commercial was intended to be amusing. Further, it was quite clear to me that the commercial was a sort of 'send-up' and an exaggeration of the scene in the film. It was obvious that the man in the commercial was not Paul Hogan, and did not even look like him."

She said that it had never occurred to her that there was some sort of business arrangement between Mr. Hogan or the makers of the film and the makers of the advertisement.

27. Mrs. Eddy is a former manager in Sydney of Philippine Airlines. She saw the poster from time to time at the Edgecliff Railway Station. She said that at no time did it cross her mind that the man pictured in the poster was Mr. Hogan or that the producers of the poster had obtained Mr. Hogan's permission to use his image in the poster. Apparently she did not see the television advertisement.

28. Mr. Jedlin had seen both the television advertisement and the posters. He said that he thought the television commercial was "terrible" because he did not like the nature of the send-up. There was never any doubt in his mind that the advertisement was based on the knife scene in the film, but the poster reminded him more of the television advertisement than of the film. He regarded the poster as a "reiteration" of the television advertisement. Mr. Jedlin said that he always regarded the commercial as having been made in fun and it never occurred to him that the makers of the film or Mr. Hogan must have authorized the making of the advertisements.

29. The lay evidence is relevant but it is not conclusive of the outcome of the case. The evidence must be considered, but the tribunal of fact, that is the judge hearing the case, must also use its own judgment and common sense and consider whether it would be likely to have been deceived or confused. I shall say more of this later, but, before leaving the lay evidence, I should note that none of the seven witnesses called said that he or she thought that the advertisements indicated that Mr. Hogan in some way supported or endorsed the shoes which were the subject of the advertisements. The fact that that is so does not prevent the judge at first instance or a court on appeal from reaching the conclusion that this indeed was the effect of the advertisement.

30. The case made by the appellant is, in a sense, a simple one. Its advertisers say that they set out to gain the attention of television viewers and persons who saw the posters by reminding them of a well known scene in the film. Their intention was not to suggest that Mr. Hogan or the producers of the film had given permission for a spoof or send up of it to be made. Far less was it their intention to suggest that in some way Mr. Hogan endorsed or approved of Grosby shoes. What they endeavoured to do was to "grab" or "hook" the attention of television viewers and passers-by by reminding them of a funny incident in the film. They chose characters who did not look like Mr. Hogan (or Crocodile Dundee) or Miss Kozlowski who played the part of Sue Charlton in the film. The central feature of the action was not a knife or knives but shoes. The television advertisement was said to portray a scene which was exaggerated and "larger than life" in the sense that it built upon the already improbable sequence shown in the film and made the scene shown in the advertisement even more unlikely. The actors playing the two parts were said to be caricatures of Crocodile Dundee and Sue Charlton and in no way to resemble them.

31. Because the character in the advertisement was not Mr. Hogan and viewers were not misled into thinking that it was he who was espousing the qualities of the shoes, the case brought against the appellant was a speculative one. It depended upon vague thoughts by members of the community concerning the legal rights film makers might have in ideas or characters and beliefs on the part of some people that in some general way permission was needed before use could be made of ideas or characters. To the extent that people had thought along these lines they had done so because they were under a misapprehension. They had thus deceived themselves and had not been misled by any conduct engaged in by the appellant. At bottom the advertisements had done no more than to cause people to become confused and to wonder what the situation was.

This was not enough to warrant a finding of misleading and deceptive conduct nor of passing off. Certainly there was no basis for the view that Mr. Hogan had endorsed or approved of the product which was advertised.

32. The appellant tendered a series of excerpts from well known films - "Casablanca" and "Close Encounters of the Third Kind" are two examples - and then in juxtaposition with them on the reel what was said to be a spoof or send up of that scene. There were also a number of excerpts taken from "The Paul Hogan Show" in each of which Mr. Hogan was said to have sent up the advertisement for a well known product, for instance, Blue Omo washing powder and the Womens' Weekly Magazine. There was no evidence whether the owners of the copyright in any of these films or advertisements had consented to the spoof or send up. His Honour did not find the films of substantial assistance. The purpose of their tender was to attempt to show that what was done by the advertising agency in the present case was in accordance with well known practice in the industry and that persons seeing advertisements of this kind do not assume permission nor endorsement of products referred to in the spoofs. I share, with respect, his Honour's views about this evidence which I think is inconclusive and largely unhelpful.

33. In the course of the discussion which was had during the argument great emphasis was laid by counsel for the appellant on the submission that the advertisement was a spoof or send up of the scene in the film. Another word used was "parody". On reflection, I do not think that it helps greatly to come to a conclusion whether this is an accurate description of what was done. Some, including Mr. Jedlin, would think that to use the word "parody" in connection with the advertisement would be to dignify it with a characteristic it does not have; he along, perhaps, with others, might prefer to view it as a travesty, but, as I have indicated, I think the exercise tends to divert one from a proper consideration of the matter. It is a question of looking at the elements of each of the causes of action relied upon in determining whether they have been established by the evidence.

34. Two things need to be emphasized. Firstly, this is not a case of infringement of copyright. No infringement of copyright was alleged. Secondly, although the respondents contended at first instance that many people would believe that the principal character in the advertisement was Mr. Hogan, his Honour found to the contrary and there has been no challenge to that finding. In my opinion that was the only finding which was reasonably open. None of the seven lay witnesses thought the character was Mr. Hogan. I think it is clear that he was not. I say that not unmindful of the fact that people, in the ordinary course, do not see the film and the advertisement at the same time. The film leaves an impression and the advertisement recalls an aspect of it. Furthermore, the advertisement, like most advertisements, is shown without any warning of what viewers are about to see. It is flashed on the screen for 30 seconds or so at times when the attention of viewers may be distracted so that they do not take it in fully. Nevertheless, Mr. Hogan was such a well known personality on television well before the film and the advertisement came into existence that his features, voice and manner were unmistakable. The actor who played the principal part in the advertisement could not possibly have been confused with him.

35. I propose first of all to deal with the question whether the appellant's conduct in broadcasting the television advertisement and displaying the posters constitutes passing off. The elements of that course of action are:

"(1) a misrepresentation (2) made by a trader in the course of trade, (3) to prospective customers of his or ultimate consumers of goods or services supplied by him, (4) which is calculated to injure the business or goodwill of another trader (in the sense that this is a reasonably foreseeable consequence) and (5) which causes actual damage to a business or goodwill of the trader by whom the action is brought or (in a quia timet action) will probably do so."

So much was said by Lord Diplock in Erven Warnink Besloten Vennootschap v. J. Townend & Sons (Hull) Limited [1979] AC 731 at p 742. I refer also to the speech of Lord Fraser at pp 755-6.

36. The question whether there was a misrepresentation is at the heart of this case and I shall deal with it last. If there was, there is no doubt that it was made by the appellant as a trader in the course of trade (requirement (2)), to its prospective customers or ultimate consumers of goods supplied by it (requirement (3)). There are questions concerning the next two requirements, namely, whether any misrepresentation was calculated to injure the business or goodwill of the respondents and whether it caused actual damage to their business or goodwill or would probably do so.

37. I do not have great difficulty in resolving these questions favourably to the respondents in this appeal, particularly to Mr. Hogan himself. As I have indicated, he has for many years advertised products by himself appearing on television sponsoring or endorsing products. These products have been cigarettes, beer and Australia as a desirable tourist destination. It is clear, and the evidence establishes it, that he has been selective about the products he has chosen to advertise and that he has restricted his advertising activities to a small number of them. The appellant's advertising, if it amounted to a misrepresentation, would tend to damage the reputation which Mr. Hogan has because it would suggest that he was endorsing yet another product, although in a way different from the way in which his well known advertising campaigns had been conducted. Furthermore, the appellant's advertising would tend to reduce the impact of advertising in which Mr. Hogan himself might wish to engage by using parts of the film as a basis for it. What the appellant's advertising did, or at least had the potential to do, was to detract from Mr. Hogan's own opportunities of making money out of a film in which he himself had appeared and in which he or companies associated with him had copyright.

38. In the course of the argument it was submitted by counsel for the appellant that the character, Crocodile or Mick Dundee, was fictional and was certainly not Paul Hogan. On the other hand, the character in Mr. Hogan's advertising was not fictional, but was Mr. Hogan himself. I think this submission ignores the fact that Mr. Hogan, whether he is appearing personally to advertise a product or to portray fictional and exaggerated characters such as he did in the variety show which bears his name or in the film, is not really acting a part but is playing himself, notwithstanding that the character he plays may behave in an exaggerated and, at times, unbelievable fashion. The publicity for the film opens with the sentence, "Paul Hogan is Crocodile Dundee ..." I think this is unquestionably correct and was found to be so by the primary Judge.

39. I have found assistance in relation to the problems which Lord Diplock's elements (4) and (5) raise in the judgments of the High Court in Radio Corporation Pty. Limited v. Disney (1937) 57 CLR 448 . The case concerned the application for the registration of trade marks for the names "Mickey Mouse" and "Minnie Mouse". The two characters had been invented by Mr. Disney and had acquired world-wide popularity in cinematograph pictures. The names and figures had been applied by traders under licence from Mr. Disney to many classes of goods other than films as an aid to selling them. The applicant for registration of the marks had no connection with or licence from Mr. Disney whose interests opposed the registration. The Court was concerned to construe and apply s. 114 of the Trade Marks Act 1905 (see now s. 28 of the Trade Marks Act 1955) which, so far as relevant, provided that no mark, the use of which would, by reason of its being likely to deceive or otherwise be deemed disentitled to protection in a court of justice, shall be used or registered as a trade mark or part of a trade mark. It is to be observed that the section used language not dissimilar from that used in s. 52 of the Trade Practices Act. The case is relevant to the cause of action based on that section but I shall come to that matter a little later. In the course of his judgment Dixon J. (as he then was), after referring to Eno v. Dunn (1890) 15 App Cas 252 said:-

"In the present case it is the same intangible advantage arising from public celebrity, widespread fame and interest, that the applicants seek. It is not a diversion of trade, custom or profit. Except for the refusal to pay licence fees, the continued use of the trade mark by the applicants will not affect any of the commercial operations of the opponents. It is clear, I think, that the opponents could on their part obtain no injunction for the protection of such an interest as that arising from the mere celebrity or reputation of Disney's productions. Further, in selling, so to speak, the advantage of that celebrity to traders as the opponents have done under their licensing system, they have done much to destroy the significance which they now seek to ascribe to it, namely, the significance of trade reputation based upon a mark. But these are matters which do not make it less right to keep off the register a mark improperly adopted by the applicants.

If the circumstances are such that its adoption will give the applicants no right to protection by injunction or other remedy under the general law, then it should be kept off the register. This is what Lord Macnaghten (in the passage cited from his speech in the Eno case at pp 263-4) means. Further, the burden of establishing that the mark is free from this disqualification lies on the applicants.

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

40. It is impossible, of course, to make comparisons between the impact that the Walt Disney characters must have had in Australia and other countries in the mid 1930s with the impact that Mr. Hogan has had in Australia and elsewhere in the 1970s and 80s. But the evidence establishes that that impact has been quite enormous. The considerations which apply in relation to him are precisely the same as those which Dixon J. found to apply in the case of the Disney characters.

41. The Disney case was not a passing off case but it seems to me that the considerations which are mentioned by Dixon J. provide assistance in the approach one should make to the question whether the respondents have established elements (4) and (5) stated by Lord Diplock in the Warnink case to be essential ingredients of the cause of action.

42. Further assistance is to be found in the decision of the Full Court of the Supreme Court of New South Wales in Henderson v. Radio Corporation Pty. Limited (1960) 60 SR NSW 576. The Hendersons, who were the plaintiffs, were well known professional ballroom dancers. The defendant made and distributed gramophone records. One of the records was entitled, "Strictly for Dancing, Vol. I". The record was of music suitable for ballroom dancing and was described as strict tempo dance music. It was intended for the instruction of students in dancing and for use by dancing teachers, but might also be bought by the public. The front cover featured as a background a ballroom scene in which a dancing couple was a prominent feature. The couple was not identified in the print appearing on the cover but was recognized as the Hendersons by a number of witnesses connected with professional ballroom dancing.

43. In the course of his judgment Manning J. said (pp 603-4):-

"The plaintiffs in this case had acquired a reputation which doubtless placed them in a position to earn a fee for any recommendation which they might be disposed to give to aid the sale of recorded dance music of the type in question. I have referred to those engaged in sporting activities because of the facts in Tolley's Case [1931] AC 333 , but the position of the plaintiffs is better compared with that of a well-known actress or model. I can see no distinction in any such cases provided (as has been established in this case) that the activity of the party concerned has resulted in their recommendation becoming a saleable commodity.

The result of the defendant's action was to give the defendant the benefit of the plaintiffs' recommendation and the value of such recommendation and to deprive the plaintiffs of the fee or remuneration they would have earned if they had been asked for their authority to do what was done. The publication of the cover amounted to a misrepresentation of the type which will give rise to the tort of passing-off, as there was implied in the acts of the defendant an assertion that the plaintiffs had 'sponsored' the record.

No evidence was given as to what fee or remuneration would have been payable in circumstances such as these and the major part of the argument was directed rather to the submission that damage would flow because the plaintiffs would be less likely to secure some reward for 'sponsoring' some other record or records. In my view damage of the latter type is too remote.

However, I am satisfied that the unauthorised use by the defendant of the commercially valuable reputation of the plaintiffs justifies the intervention of the Court. I would have thought that the relief to which the plaintiffs were entitled was an inquiry as to damages, an injunction to restrain the defendant from disposing of any further record covers bearing a visual representation of the plaintiffs and an order for delivery up for destruction of the unsold covers, but the only order made was for an injunction and there is no cross-appeal."

44. Earlier Manning J. contrasted the position which existed in 1960 with that which obtained 20 or 30 years earlier about the time Tolley's case (Tolley v. J.S. Fry & Sons Limited [1931] AC 333 ) was decided. He said (p 602):-

"Commercial enterprise develops, competition becomes keen and those in whom the desire to succeed, at the expense of their competitors, is strongest, are forever seeking new and more attractive methods of presenting their goods to the public. In the early part of the century it doubtless would have been difficult if not impossible to envisage the development of advertising by radio. A quarter of a century ago only those with the greatest foresight could have envisaged the manner in which advertisers seek to catch the eye of a large proportion of the public by means to which we are (sadly so it seems to me) subjected if we tune in to a commercial television station."

Undoubtedly the changes in the period of almost 30 years that have elapsed since Manning J. said what he did provide an even more remarkable contrast.

45. To the references I have already given, it is appropriate to add a reference to what was said by Drysdale and Silverleaf in their work, Passing Off Law and Practice (1986) at p 85, namely:-

"The use of well-known names, whether of real people or of fictional characters, for commercial purposes is known as 'character merchandising'. As has been seen, the owner of a name, or the deviser of a fictional character, has no right under the law of passing off to prevent the use of such a name for such a purpose, unless (i) he has acquired a reputation in the name in connection with a business, and (ii) he can prove damage or the likelihood of damage to the goodwill in the business as a result of the use of the name of which he complains.

From the point of view of passing off actions, character merchandising cases fall into exactly the same categories as all other cases and there are no special considerations. To have any prospect of success the plaintiff must be able to show that the business in the character which is being merchandised is such as to give rise in the minds of the public to a connection with a single common source and that the use by those not licensed by him therefore causes damage to his goodwill."

46. It follows in my opinion that, if there is here a misrepresentation, to use the language of Manning J. quoted earlier, the unauthorized use of Mr. Hogan's commercially valuable reputation justifies the interference of the Court. I turn then to consider the critical question whether the televising of the advertisement and the display of the posters amounted to a misrepresentation. Guidance as to how the task should be approached is provided by Lord Diplock in General Electric Co. (of USA) v. General Electric Co. Limited [1972] 1 WLR 729 . Like the Disney case, the General Electric case was also a trade mark case, but what his Lordship said about the approach of a judge to the finding of facts applies equally to passing off cases and to cases based upon misleading and deceptive conduct. His Lordship said (p 738):-

"... where goods are sold to the general public for consumption or domestic use, the question whether such buyers would be likely to be deceived or confused by the use of the trade mark is a 'jury question.' By that I mean: that if the issue had now, as formerly, to be tried by a jury, who as members of the general public would themselves be potential buyers of the goods, they would be required not only to consider any evidence of other members of the public which had been adduced but also to use their own common sense and to consider whether they would themselves be likely to be deceived or confused.

The question does not cease to be a 'jury question' when the issue is tried by a judge alone or on appeal by a plurality of judges.

The judge's approach to the question should be the same as that of a jury. He, too, would be a potential buyer of the goods. He should, of course, be alert to the danger of allowing his own idiosyncratic knowledge or temperament to influence his decision, but the whole of his training in the practice of the law should have accustomed him to this, and this should provide the safety which in the case of a jury is provided by their number. That in issues of this kind judges are entitled to give effect to their own opinions as to the likelihood of deception or confusion and, in doing so, are not confined to the evidence of witnesses called at the trial is well established by decisions of this House itself."

47. I refer also to the speech of Lord Morris in Parker-Knoll Limited v. Knoll International Limited (1962) RPC 265 where his Lordship said (p 279) that, in arriving at a decision, the Court must not surrender in favour of any witness its own independent judgment. The matter is discussed in the judgments in McWilliam's Wines Pty. Limited v. McDonald's System of Australia Limited (1980) 49 FLR 455 per Smithers J. at pp 460-1 and per Fisher J. at p 477. McWilliam's was a case under s. 52 of the Trade Practices Act but some of the authorities and texts referred to by their Honours were concerned with the question of passing off rather than breach of a statutory provision such as s. 52 of the Trade Practices Act.

48. In reaching a conclusion whether there has been misrepresentation in this case a number of factors need to be taken into account. Minds may differ about these and about the degree of importance each of them has, but, in my opinion, the most significant factors are as follows:-

(a)

In his advertising Mr. Hogan himself has always appeared to endorse or sponsor products. He has brought to his advertising his own distinctive personality and style which he brings also to the characters which he plays in variety shows and in the film in question. He is to the forefront of the advertising. There is nothing subtle about it; he plays the principal part and makes the recommendations personally.

(b)

The advertisements in question have as their principal character a person who is plainly not Mr. Hogan. He is not a look-alike in the sense of his being a double or an impersonator. He has distinctly different features and his voice is very different from Mr. Hogan's. Nevertheless, he is dressed similarly to Mick Dundee in the film and his very appearance even on the posters would cause people, as the advertisers intended should occur, to recall the character in the film and the knife scene well known by that stage to great numbers of people.

(c)

The action which the television advertisement depicts is plainly evocative of the knife scene in the film. Again, that is intended to be the case because the purpose of the advertisers was to "grab" people's attention - to "hook" them - by causing them to recall a well known, somewhat improbable and amusing part of the film.

(d)

The action in the advertisement varies substantially from that in the film because the object which becomes the centre of attention is not the character's knife (as it is in the film) but the character's shoes. This is emphasized by the plug for the shoes in the course of the advertisement and by the advertising material about them which follows the conclusion of the action. Furthermore, the action in the advertisement is much more exaggerated. The assailant's knife is kicked out of his hand and the assailant himself is kicked in the crotch. This causes him to fly into the air and out of the frame. Nothing of that kind happened in the film.

(e)

The lay evidence does not strongly favour the respondents' case. Three witnesses - those called by the appellant - did not think that Mr. Hogan would have approved of or consented to the display of the advertisements. The question had not entered their minds at the time they saw the advertisements. When their minds were later directed to it they expressed the firm view that the display did not mean consent or approval.

(f)

Of the four witnesses called in the respondents' case, two had apparently not seen the television advertisement but were reminded of the knife scene by the posters which they saw at railway stations or on buses. A reading of the evidence of two of them does not suggest that the question of consent or approval crossed their minds until they were asked about the matter by the solicitor who interviewed them. In the other cases there was a presumption that approval must in some way have been given.

(g)

None of the witnesses gave evidence that Mr. Hogan had endorsed or sponsored the shoes even indirectly. This does not appear to be a matter about which they were asked. On the other hand, bearing in mind the plug which the central character in the advertisement gives for the shoes, I think one would conclude that, if display of the advertisements was sufficient to represent to members of the public consent or approval of the advertising by Mr. Hogan, it must follow that he in some way also approved the product which was advertised or at least did not look unfavourably on it. In any event, the advertisements would be likely, because they recalled the film and a particularly memorable scene from it, to confer on the advertiser the benefit or advantage arising from what is described in the industry as the "rub-off" from the film or at least the knife scene in it. In other words it would be likely to give to the appellant's product the advantage or the prospect of being well regarded by the public because in some unspecified way the appellant's shoes had become associated with the film, the knife scene, the character Crocodile Dundee and thus Mr. Hogan himself. I think this was the effect of his Honour's findings, particularly if one has regard to the terms of his declarations.

(h)

Although the television advertisement was shown frequently, its duration was only 30 seconds. When it was shown, it was shown without warning and, no doubt, as one of a batch of advertisements during advertising breaks between programs or in the course of particular programs. The opportunity which viewers had to see the advertisement was a fleeting one. It appeared momentarily on their screens. That is so in the case of most television advertising which must, perforce, be quite transitory. Indeed, that is why advertisers, such as the agency here, seek to "grab" or "hook" viewers by using material which so attracts their attention, that they are held for sufficiently long to see the product which is being advertised. This is particularly important when one bears in mind that viewers become distracted during advertising breaks by conversation, looking at reading material or leaving the room to attend to household chores and the like.

(i)

Each of the judges who has had to consider this matter has had the benefit, or has been under the disadvantage - it depends how one looks at the matter - of seeing the knife scene from the film and the advertisement one after the other. Each has thus been able to engage in an exercise of close comparison. The advertisement has not been flashed on the screen unexpectedly when their attention has been diverted by some other activity. Viewers of the advertisement, on the other hand, would, in most cases, not have seen the film at any very recent time beforehand and would recall the knife scene, which the advertisement would be likely to bring to their minds, with varying degrees of particularity and accuracy.

(j)

According to the advertising evidence, the target audience was people in the 20 to 35 year old age bracket. But the advertisement would have been seen by a wide variety of age groups. All who had seen the film - and there must have been hundreds of thousands - would have reacted to the advertisement in a variety of ways. It would be wrong to consider only the reactions of those in the target group. In the assessment of the situation, there must be taken into account the broad range of people who must have seen both the film and the advertisement, including the posters. Thus there would be a wide range of ages, a wide range of intellects and intelligence, a wide range of tastes and, if people thought about the matter to any extent, a wide range of reactions.

49. Upon the basis that a court should approach the matter as Lord Diplock said it should in the General Electric case, it seems to me that the court must make an assessment of the relevant factors to be considered and reach a conclusion on what is essentially a question of fact and degree. Tolley's case referred to by Manning J. in his judgment in the Henderson case was a defamation case. But, with some adaptation, I find the first question posed by Viscount Duneedin ((1931) AC at p 343) of assistance in determining the way in which the matter should be approached. His Lordship asked:-

"Would the caricature associated with the advertisement admit of a reasonable inference that the plaintiff had assented to be so depicted?"

His Lordship added that the answer depended on the view taken of the pictures, that is, the cartoon of the amateur golfer in that case, of its surroundings, and of its use. His Lordship used the words, "admit of a reasonable inference" because the question he had to determine was whether the case should have been left to the jury. There was judicial disagreement both in the Court of Appeal and in the House of Lords about the answer to this threshold question and yet the question was not whether the advertisement did lead to the inference that the plaintiff had assented to be part of it but whether it was open to a jury to decide whether it did or not. Here I think the question is, "Would the portrayal of an advertisement evocative of the knife scene in the film lead a significant number of those seeing the broadcast and the posters to think that Mr. Hogan had assented to the adaptation of the knife scene from the film?"

50. The decisions in a number of cases show that questions such as this will sometimes be answered favourably and sometimes unfavourably to those claiming relief for passing off. This is because of the wide variety of factual situations with which the courts have had to grapple. Dicta of judges about the ambit of particular advertising are not always helpful. Nevertheless I find it of assistance to refer to a further passage from the judgment of Dixon J. in the Disney case. His Honour said 57 CLR at (p 457):-

"I find it hard to believe that the use of the words on or in connection with a radio receiving set would produce any other impression than in the case of most of the other almost innumerable classes of articles to which the name or the representation of Mickey Mouse has been applied. That impression does not, I think, primarily relate to the origin, selection or treatment of the goods. The reason for using the names is to attract the attention of members of a public that has found pleasure and amusement in the grotesque forms and absurd antics of Disney's creatures, and at the same time to give to the goods a name or means of description at once familiar and pleasing or interesting to the possible buyer. No doubt this means that the trader makes use of elements which belong to the reputation and fame of Disney's creations and it may be that in some vague way the buyer supposes that Disney must have sanctioned it."

51. The decision in Henderson's case is another example of a court finding that the use of material plainly related to the plaintiffs in a given case created the impression that the plaintiffs had in some way given their support, or at least their consent, to the advertisement. But this view is not universally held. In In re American Greetings Corporation's Application (the "Holly Hobbie" case) [1984] 1 WLR 189 , yet another trade mark case, Lord Bridge said (pp 191-2):-

"But character merchandising deceives nobody. Fictional characters capture the imagination, particularly of children, and can be very successfully exploited in the marketing of a wide range of goods. No one who buys a Mickey Mouse shirt supposes that the quality of the shirt owes anything to Walt Disney Productions."

52. What his Lordship said appears to have echoed what was said by Oliver J. (as he then was) in Lyngstad v. Anabas Products Limited ("the Abba" case) (1977) FSR 62. Abba was a group of Swedish musicians. The first defendants manufactured badges and transfers for pillow slips and T-shirts bearing pictures of various popular musicians and groups. The second defendants had offered for sale certain of these badges bearing pictures of Abba. Abba had not authorized this use of their photographs. Amongst other things Oliver J. said (p 68):-

"So far as it (the evidence) goes it suggests no more than that some people might think that the plaintiffs might have granted some sort of licence for the use of the name, although why they should do so has never been explained, since it is not alleged, and indeed I do not think could be alleged on the evidence, that there is any general custom for such licences to be granted by pop singers. Indeed the available evidence is quite to the contrary."

53. I do not find assistance from these dicta . It seems to me that they are not statements of principle but assertions which comprise the subjective views of the judges who propounded them. Furthermore each was said in the context of the case being decided and with the evidence in that case in mind. One has to come to the facts of this case and not be overly influenced by decisions on other sets of facts. Neither the Disney case nor the Henderson case provides the respondents here with assistance of any conclusive kind because in the one case the characters used were replicas of the Disney characters and in the other the photograph was of the plaintiffs themselves. As I have pointed out, this is not the case of a look alike, in other words, the use of a character so similar in appearance to Mr. Hogan that a significant number of people would think that it was he who was playing the principal part in the advertisement. It is a case rather of the adaptation (not in the copyright sense) of a scene from the film for the purpose of attracting viewers' attention. Having considered the whole of the circumstances, I do not think that one can say that more than this was involved.

54. That, however, does not end the inquiry. I have to place myself in the difficult position postulated by Lord Diplock in the General Electric case. I am entitled, indeed bound, to give effect to my own reactions and views. But, in doing so, I must be careful not to be too subjective about my approach and to endeavour to put aside any idiosyncratic notions that I may have. I ought to give substantial weight to the circumstances that viewers of the advertisements would see it under very different circumstances from those in which I saw it and I ought to have regard to the wide range of age groups, intellects and tastes of the numerous people who must have seen both the film and the advertisements.

55. Having performed this exercise as best I can, I have reached the conclusion that viewers of the advertisement could not reasonably conclude that Mr. Hogan had consented to or authorized the advertisement. In reaching this conclusion I have been much influenced by the very different advertising style used in the advertisements from the style used by Mr. Hogan himself. That style or stamp is, in a sense, an essential part of his case, because, as I have endeavoured to show, it is that which in effect is claimed to have been damaged as a result of the showing of the advertisements. I have been influenced also by the weakness, from the respondents' point of view, of the lay evidence. It crossed the mind of only two of the seven members of the public who were called that Mr. Hogan must, in some way, have approved of the advertisements. The three witnesses called in the appellant's case were firmly of the view that the showing of the advertisements did not imply consent. Two of the respondents' witnesses did not think about the matter until they were asked to do so by the solicitor who interviewed them. It seems to me that their reactions to his question reflected a vagueness and an uncertainty which militated against the evidence establishing that they were deceived or confused about the matter. I bear in mind that this evidence is by no means conclusive and that I have an obligation to reach my own conclusions about the matter. But the reactions of the seven witnesses called, although varied, accord with my own general reactions. The witness who expressed my own views closely was Mr. Jedlin who thought the advertisement was terrible and that it could not have had anything to do with Mr. Hogan.

56. One can understand the indignation which the respondents and their own advertising agents must have felt when they saw one of the well-known scenes from this most successful film adapted in this way. But the question is whether what was done constituted a misrepresentation. There being no question of copyright, no right of property is involved. The only question is whether the use made of the advertisements caused a significant number of people to be misled or at least confused.

57. In reaching my conclusion, I have taken into account that I am differing from the primary Judge, who has had great experience in this area and who has given the matter very close and careful attention. That is a circumstance which has caused me to hesitate. But this Court is in as good a position to assess the evidence as was his Honour and if, upon proper reflection, it reaches the conclusion that a different view is warranted, it should give effect to its own views. For my part, I have reached that conclusion and I would propose that that be the view which the Court should adopt. It follows, in my opinion, that the respondents' claim based on passing off should have failed.

58. That leaves the cause of action based on s. 52 of the Trade Practices Act. Essentially the question is whether the appellant, in making use of the advertising material which is in question, engaged in conduct which was misleading or deceptive or likely to mislead or deceive. In my opinion this raises essentially the same question and the same considerations as are involved in the determination of whether there was a misrepresentation for the purposes of the cause of action in passing off. I do not think that the considerations are very different. It follows that I am of opinion that the cause of action based upon s. 52 should also have failed.

59. My conclusion in this respect makes it unnecessary to consider submissions relied upon by counsel for the appellant based upon the propositions that, if people were misled by the advertisements, they were misled because they had deceived themselves and that, in any event, the advertisements were at most confusing causing people to wonder whether the respondents had authorized them with the consequence that misleading and deceptive conduct by the appellant had not been made out. In support of his propositions senior counsel for the appellant relied upon a number of well known cases, namely, Hornsby Building Information Centre Pty Limited v. Sydney Building Information Centre Limited (1978) 140 CLR 216 , the McWilliam's case earlier cited and Parkdale Custom Built Furniture Pty Limited v. Puxu Pty Limited (1982) 149 CLR 191 . The last of these cases establishes plainly enough that conduct will not involve a contravention of s. 52 of the Trade Practices Act if it is confusing as distinct from misleading. In this respect there would appear to be some difference between the two causes of action relied upon in this case. There are many dicta in the authorities dealing with passing off which show that there need not be actual deception; confusion will be enough. The dictum from the speech of Lord Diplock in the General Electric case earlier quoted provides an example. In Bridge Stockbrokers v. Bridges (1984) 57 ALR 401 Lockhart J. attempted to reconcile what was said in Puxu with problems which the Court has had to face in relation to a number of commercial practices; see pp 414-5. I tend to agree with what his Honour there said, but the matter does not, in my opinion, need to be considered in this case because I have reached the conclusion that the use of the advertisements did not cause people to be misled or confused.

60. In the result I would allow the appeal, set aside the orders of the learned primary Judge and, in lieu thereof, order that the application be dismissed. The appellant should have its costs both on appeal and at first instance.