Pacific Dunlop Ltd v. Hogan and Ors

23 FCR 553

(Judgment by: Beaumont J)

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

Court:
Federal Court of Australia

Judges: Sheppard J

Beaumont J
Burchett J

Subject References:
TRADE PRACTICES
Passing Off

Judgment date: 25 May 1989

Sydney


Judgment by:
Beaumont J

Pacific Dunlop Limited (hereafter "the appellant") appeals from orders made by a Judge of the Court restraining it from engaging in conduct which, his Honour held, constituted first, a passing-off and, secondly, misleading conduct contrary to s.52 of the Trade Practices Act 1974 (see Hogan v. Pacific Dunlop Ltd. (1988) 83 ALR 403 ).

2. The primary facts are not in dispute. The first respondent, Paul Hogan, performed the title role in the film "Crocodile Dundee". He was one of the authors of the script for the film. The film was widely advertised. The film had considerable commercial success in Australia and in other countries. A video of the film was released.

3. The advertising for the film asserted that "Paul Hogan Is Crocodile Dundee". A synopsis of the plot of the film, which was adopted by his Honour, was as follows: The first respondent is Crocodile Mick Dundee, a friendly larrikin crocodile hunter from the wilds of the Northern Territory of Australia. He becomes national news after he has his leg almost ripped off by a giant crocodile. Heroically he drags himself for a week through "croc-infested" waters and survives to tell the tale. In fact, the story gets better every time it's told, especially by his manager/partner Wally ("call me Walter") Reilly. Together they run Never Never Safaries ("never go with us ... if you do you'll never come back") out of Walkabout Creek. Mick Dundee is a hero who takes the "micky" out of heroism. He's almost a blond aborigine, an expert with animals, a tracker, a hunter and fisherman. Time means nothing to him. Millionaire and pauper are treated equally. He has a great sense of humour and his own unique line of homespun philosophy. In a nation short of heroes Mick Dundee is just that . . . a hero. 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.

4. The tone of the film was described by his Honour as "humorous with an element of self deprecation and irony in characters from the outback, including the title figure". Several of the scenes in the film appeared to be "exaggerated rather than naturalistic." The respondents contend that the appellant used, or adapted, strong images from the film "Crocodile Dundee", and in particular, from a striking scene ("the knife scene") to seek to persuade prospective purchasers of the appellant's products that the products have an association with, or endorsement by, the first respondent as "Crocodile Dundee" which they do not have. Before describing the "knife scene" reference should be made, by way of background, to some other aspects of the first respondent's career.

5. From 1970 to 1979, the first respondent took a prominent part in an extensive advertising campaign for cigarettes marketed under the name "Winfield", receiving substantial fees for his services. The campaign projected his character as "down-to-earth, irreverent and with something of the good natured larrikin in him." His Honour found that the character of "Crocodile Dundee" was thus not only strongly identified with the actor playing it, but with the already well recognised personality of the actor. Over the last three years, the first respondent appeared in an advertising campaign conducted by the Australian Tourist Commission in this country and in the United States. In 1985, he entered into an agreement with Carlton & United Breweries International Ltd. for the provision of his services internationally for a term of four years in the promotion of "Foster's" beer.

6. The "knife scene" was described by his Honour as follows: The scene is set in New York at night, not in a dingy alley but in a well lit public area with a colonnade. However, the hero's various adventures in New York after dark include other scenes which do take place in dingy back streets. 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. Characteristically, Mick then says "Just kids havin' fun". He asks his companion "Are you alright?". She responds that she's always alright when she's with him and says "God, that sounds corny".

After a slight pause, she then says "Why do you always make me feel like Jane in a Tarzan comic?". Mick then imitates Tarzan and the couple kiss under the colonnade.

7. The appellant is a well established public company. It markets shoes under the trade name of "Grosby". The appellant advertised on television for the sale of a line of Grosby shoes described as "Grosby Leatherz". The advertisement, as described by the Judge, was in these terms: A scene at night in a dingy street is depicted 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 the first respondent, 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 than, 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 annouces "Grosby - they're great mate" and closes his remarks with "woof]"."

8. The respondents also complained of a poster displayed by the appellant.

The Judge described the poster as follows: The advertisement shows a partially reclining figure, wearing the same clothes as those in the television advertisement. But whilst the hat is quite prominently displayed, only portions of the vest and shirt are visible. The arms are not visible and the eye is directed along the jeans-clad horizontally placed legs of the figure, to his feet which rest upon a round wooden object. Upon the feet is 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, again in bold print, "Grosby LEATHERZ $40". The words "Recommended retail price" appear in small print. The head of a cartoon-like dog appears in a rondel before the word "Grosby". The same actor appeared in this advertisement as in the television commercial, and the same clothes were worn by him.

9. The background to this advertising was that in 1986 the respondent had decided to introduce a derivative, or continuation, of a line of shoes previously marketed by it under the name "Jetz". The "Jetz" shoes were made of polyurethane. The new product, to be known as "Grosby Leatherz", was to have leather uppers. The new product was to retail at $40.00, an inexpensive price. The appellant wished the product to appeal to men aged primarily between 18 and 35.

10. Fountain Huie Fish Pty. Ltd., the appellant's advertising agent, was asked to devise a concept for the advertisement of the product. The script produced by the advertising agent was described by Miss James, one of the staff of Fountain Huie Fish, as follows:

"Scenario: The commercial is a send up of the famous 'knife' scene in the movie 'Crocodile Dundee'. The characters are over the top."

11. There can be no doubt that it was intended by the advertiser that viewers should get an impression of "Crocodile Dundee" in the context of the Grosby shoes. His Honour summarised the evidence of Miss James in this regard as follows (at p411):

"Miss James saw as amusing and entertaining the playfulness of the comparison between the words in the advertisement ('He's wearing leather shoes.' 'You call those leather shoes? Now these are leather shoes...') and the words spoken in the knife scene in the film ('He's got a knife.' 'That's not a knife. That's a knife.'). She described this as a 'spoof' but agreed that the idea she had would not have worked unless the television audience at which the advertisement was to be directed, or the vast bulk of it, was well aware of the character of Mick Dundee and of the use of the corresponding words by the character Mick Dundee in the knife scene. She described the correlation between the two portions of dialogue as the element that made the commercial stand out and, whilst she herself did not use the expressions as did others in the advertising world, she accepted that it was this correlation which was the 'grab' or the 'hook' of the advertisement."

12. There was evidence, accepted by the Judge, of a widespread practice of "character merchandising" in which persons holding copyright or other rights in fictional characters grant licences for reward to others to manufacture or deal in products in association with a representation of those characters. His Honour inferred from this evidence that the purchasing public would be aware, in a general way, of this practice. There was also evidence of the widespread use, for reward, of the services of sportsmen, entertainers and other figures in the public eye to promote a wide range of products and services. There was evidence that not every celebrity used in advertising campaigns appeared simply as himself or herself. He or she might appear as the "persona" of himself or herself.

13. Evidence was called by both sides from members of the public as an indication of the likely responses by consumers to the advertisements in question. Some did, but most did not, think that permission to display the advertising would have been sought from the first respondent or from the producers of the film.

14. The Judge made the following findings:

(1)
A very large number of television viewers in the target audience would be aware, first, of the character Mick Dundee as played by the first respondent in the film "Crocodile Dundee" and, secondly, of the incident comprising the knife scene of the film.
(2)
The first respondent was well regarded by those persons as an individual in the public eye who represented "archetypal Australian attitudes and values".
(3)
Many of those television viewers would recall fairly closely the dialogue in the knife scene: "He's got a knife." "That's not a knife, That's a knife."
(4)
These persons would have "pleasant memories" of the film and the knife scene in particular.
(5)
Many of those television viewers 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 agreed to associate themselves with the marketing of products.
(6)
The television advertisement was devised with the desire (which his Honour found would have been achieved as regards many television viewers in the target audience) of "grabbing" or "hooking" the attention of viewers by having them draw an "immediate association" with the "knife scene" and the first respondent; that attention would be (and was) retained throughout the advertisement.
(7)
A substantial number of those viewers would believe that the male actor was a "send-up" of the Mick Dundee character played by the first respondent, and the advertisement was intended to achieve this result.
(8)
The objective of the advertisement was that a substantial number of viewers take away a favourable impression of "Crocodile Dundee" and the first respondent in connection with "Grosby Leatherz", rather than that they go away to analyse differences between the real thing and the character in the advertisement dressed up like "Crocodile Dundee"; and that intention was realised.

15. The Judge held that a substantial number of viewers in the target audience would, as a matter of real, not remote, likelihood have responded to the advertisement "on the footing that in accordance with general or normal practice", permission would have been sought for the advertisement from the first respondent, the film makers or both, and that they had "some association of a commercial nature with" the production of the advertisement, or, more generally, with "Grosby Leatherz" shoes. His Honour made similar findings with respect to the posters.

16. The Judge held that both passing-off and misleading conduct contrary to s.52 had been made out. He said that the action of passing-off was concerned with a particular type of misrepresentation involving use of the image or "indicium" in question to convey a representation of a commercial connection between the respondents and the goods or services of the appellant which connection does not exist. His Honour made the following orders: It was declared that the appellant had passed off its shoes as goods with which the respondents had a commercial association and had engaged in conduct contrary to s.52. The respondents were given an election to claim damages or seek an account of profits. The appellant was enjoined from advertising unless the advertisement included a clear and prominent statement that the first respondent 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."

17. The appellant now challenges the Judge's conclusions. In summary, it contends that the misrepresentation alleged by the respondents depended upon the finding that there was a belief about a "general or normal practice" that permission would be sought in the circumstances of this advertising; that it cannot be a breach of s.52 or a passing-off merely to depart from what is believed by some people to be "general or normal practice"; that there was no evidence that the appellant was under any legal obligation to follow the assumed "general or normal practice" or that the appellant induced members of the public to believe that it was so obliged; that there was thus no basis on which it could be said that the appellant was bound to follow the assumed "general or normal practice"; that, in any event, the evidence did not support the view that a substantial part of the public would make the suggested assumption spontaneously, i.e. without prompting; that there was no evidence that the commercial behaviour of a significant number of members of the public was influenced, with respect to the appellant's shoes, by whether they held that assumption; that there was no evidence that the alleged misrepresentation was likely to cause injury to consumers; that there is no breach of s.52, and no passing-off where the erroneous assumption was not caused by the appellant's conduct and the erroneous assumption was not relied upon by the appellant to influence the commercial behaviour of members of the public; that there was no evidence of any causal nexus between the particular misrepresentation found by his Honour and any damage allegedly suffered by the respondents; and that there was no sufficient evidence that the respondents had suffered any damage.

18. In Moorgate Tobacco Co. Limited v. Philip Morris Limited (1984) 156 CLR 414, Deane J. (with Gibbs C.J., Mason, Wilson and Dawson JJ. concurring) rejected the availability of a general action for "unfair competition" or "unfair trading". But his Honour accepted that this did not involve a denial of the desirability of adopting a flexible approach to traditional forms of action when such an approach is necessary to adapt them to meet new situations and circumstances such as the use of indicia to persuade purchasers to believe that goods or services have an "association, quality or endorsement" which belongs or would belong to goods or services of, or associated with, another or others. He instanced Warnink v. Townend & Sons (1979) AC at p 739ff. and Henderson v. Radio Corporation Pty. Ltd. (1960) SR (NSW) 576 (see 156 CLR at p 445).

19. In Henderson's Case, supra, the plaintiffs, who were well-known professional ballroom dancers, were granted an injunction restraining the defendant from selling a record cover for a record of music suitable for ballroom dancing having upon the cover a reproduction of a photograph of the plaintiffs. Evatt C.J. and Myers J. were of the opinion, on the evidence, that the class of persons for whom the record was primarily intended "would probably believe that the picture of the (plaintiffs) on the cover indicated their recommendation or approval of the record. The only rational purpose of the wrongful use of the (plaintiffs') photograph...was to assist the sale of the disc it contained" (at p 591). They said (at p 592):

"The reprsentation that the (plaintiffs) recommended the record is an inducement to buy it. The recommendation can only be attributed to the (plaintiffs) in their capacity of professional dancers, that is, a recommendation made in the course of their professional activities, and means that as professional dancers they have associated themselves with the (defendant) in promoting sales of the record, and that amounts to a connexion, in respect of the marketing of the record, between the business of the (plaintiffs) and the business of the (defendant)."

20. Manning J. said (at p 603) that the plaintiffs had acquired a reputation which 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; and the publication of the cover amounted to a misrepresentation of the type which gave 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."

21. Manning J. referred (at p 602) to Tolley v. J.S. Fry & Sons Ltd. (1931) AC 333. There, the defendants published as an advertisement for their chocolate a caricature of the plaintiff in the act of playing golf. The plaintiff was a well-known amateur golfer. It was held, in a libel action, that it was open to the jury to infer that the cartoon had been published with the plaintiff's approval. Viscount Hailsham was "not satisfied that it would not be open to a jury, acting on their own knowledge as ordinary citizens, to assume that no reputable firm would have the effrontery and bad taste to take the name and reputation of a well known man for an advertisement commending their goods without first obtaining his consent" (at p 339). Viscount Dunedin found that the cartoon of the plaintiff, "innocent itself as a caricature, is so to speak imbedded in the advertisement. It is held out as part of an advertisement, so that its presence there gives rise to speculation as to how it got there, or in other words provokes in the minds of the public an inference as to how and why the plaintiff's picture, caricatured as it was, became associated with a commercial advertisement. The inference that is suggested (by the plaintiff) is that his consent was given either gratuitously or for a consideration to its appearance" (at p 342). Viscount Dunedin concluded (at p 343) that the first proposition to be considered was as follows:

"(1)
Would the caricature associated with the advertisement admit of a reasonable inference that the plaintiff had assented to be so depicted? That depends on the view taken of the picture, of its surroundings, and of its use."

22. Lord Buckmaster said (at p 344) that all the circumstances of the issue of the publication must be considered. The first is that "the picture is not a mere caricature, it is an advertisement; and...the question of whether a well known and respectable trader would be assumed to have the effrontery to use a man's portrait and his reputation to advertise goods without his assent is exactly the class of question on which the opinion of a juror might well be invoked." Lord Tomlin said (at p 350) that, "regarded in vacuo", a drawing in the nature of a caricature of the plaintiff was innocent; but, having regard to the circumstances or "environment" surrounding its publication, including the fact that it was published by the defendants as part of an advertisement used for promoting the sale of their goods, "reasonable minds" might infer that the plaintiff had assented to the publication.

23. In Henderson's Case, the trial Judge, Sugerman J., referred to the observation made by Dixon J. in Radio Corporation Pty. Ltd. v. Disney (1937) 57 CLR 448 at p 459 that an injunction could not be obtained "for the protection of such an interest as that arising from the mere celebrity or reputation of Disney's Productions". In Disney's Case, the appellant unsuccessfully sought to register the words "Mickey Mouse" and "Minnie Mouse" as trade marks in respect of radio sets. Dixon J. said (at p 457) that the use of these words would not produce an impression that related primarily to the origin, selection or treatment of the goods. Rather "(t)he 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."

24. Dixon J. later (at p 459) referred to "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".

25. It appears that Dixon J. was of the opinion that no cause of action arose in passing-off. However, he was of the view that, in the language of s.ll4 of the Trade Marks Act 1905, the use by the applicants of a mark consisting in the words would, by reason of its being "likely to deceive or otherwise, be disentitled to protection in a court of justice".

26. What kind of "connection" with the plaintiff must be claimed in order to constitute a passing-off? The question is discussed by W.L. Morison in his article "Unfair Competition and 'Passing Off'" (1956) 2 Sydney Law Review 50 at pp 59-60. Goff L.J. in H.P. Bulmer Ltd. and Showerings Ltd. v. J. Bollinger S.A. (1978) RPC 79 (a passage cited by the primary Judge in the present case) said (at p 117):

"Not every kind of connection claimed will amount to passing off; for example if one says that one's goods are very suitable to be used in connection with the plaintiff's. On the other hand in my view there can be a passing off of goods without representing that they are actually the well-known goods which the plaintiff produces or a new line which he is supposed to have started. It is sufficient in my view if what is done represents the defendant's goods to be connected with the plaintiff's in such a way as would lead people to accept them on the faith of the plaintiff's reputation. Thus for example it would be sufficient if they were taken to be made under licence, or under some trading arrangement which would give the plaintiff some control over them, and I think Harman, J. had such ideas in his mind as appears from the passage at page 93 of the Treasure Cot case when he spoke of 'something for which the plaintiffs were responsible'".

27. Questions of "character merchandising" were considered in three earlier cases in this Court.

28. In Newton-John v. Scholl-Plough (Australia) Ltd. (1985) 11 FCR 233 , a well-known entertainer alleged a breach of s.52 and passing-off in respect of pictorial advertisements for cosmetics. Burchett J. dismissed the claim because "the casual reader would get the impression that indeed the advertiser had made use of Olivia Newton-John's reputation to the extent of gaining attention, but not to the extent of making any suggestion of an association" (at p 235).

29. In Shoshana Pty. Ltd. v. 10th Cantanae Pty. Ltd. (1987) 79 ALR 279 , an advertisement using the name of a well known television personality, Sue Smith, was held by Burchett J. to amount to a passing-off and a breach of s.52 since "deception (was) struck by the advertisement out of a correct public understanding that television personalities use the images conveyed by their well known and admired names for commercial gain by endorsing products" (at p 286). On appeal, Wilcox J. said the court "must assume that the advertising community has some understanding of the effect of certain types of advertisments and it is notable that advertisers continue to pay high fees to well known personalities in return for the right to use their names, photographs etc. in advertisements" (at p 300). However, Wilcox J. was of the view that the respondents had failed to establish that readers would be likely to read the advertisement as containing a reference to the second respondent (at p 303). Pincus J. said that passing-off is "not necessarily constituted by the mere unauthorised use of someone's name or picture or the name or picture of a well-known fictitious character, in an advertisement" (at p 306). Gummow J., in dissent, was of the view that to depict Sue Smith as endorsing the first appellant's product, without her consent, was a passing-off (at p 319).

30. In Hogan v. Koala Dundee Pty. Ltd. (1988) 83 ALR 187 , Mr. Hogan and other "interests associated with the 'Crocodile Dundee' films" (see p 188) complained that the respondents, who sold Australian souvenirs bearing similarities to, and strongly reminiscent of, the central character in the film, had breached s.52. Relief was also sought in passing-off. Pincus J. enjoined the respondents (at p 202). His Honour was of the view that "the inventor of a sufficiently famous fictional character having certain visual or other traits may prevent others using his character to sell their goods." (p 196). In upholding the common law claim in passing-off, he said (at p 200):

"Here, Mr Chesterman QC argued that the koala image was akin to a parody of the image of Paul Hogan in the film and he relied upon certain United States parody cases...He contended that people would be likely to think that, if the respondents were using 'Crocodile Dundee' images in the shop by licence, Paul Hogan's face would not have been replaced by that of a koala, nor would all mention of Paul Hogan's name have been omitted. I agree. In my opinion, however, there is nevertheless a clear representation of association with the film's images. Mr. Chesterman pointed out that each of the elements complained of is by itself common enough. For example, koalas are, as are bush hats and, perhaps less so, hats with teeth in the band and so forth, but the combination of images is something else again."

31. The question for the Judge to decide in the present case was whether a significant section would be misled into believing, contrary to the fact, that a commercial arrangement had been concluded between the first respondent and the appellant under which the first respondent agreed to the advertising. If such a misrepresentation were established to the satisfaction of the Judge, a case of both passing-off and conduct contrary to s.52 would be made out.

32. This question is essentially one of fact. But in the present case, because the representation alleged was not made in express terms, the resolution of the issue turns on the proper inferences to be drawn from the appellant's conduct, that is, the case depends upon secondary, rather than primary facts.

33. In approaching his task, the Judge had to determine the question for himself and the test was an objective one (see Taco Company of Australia Inc. v. Taco Bell Pty. Ltd. (1982) 42 ALR 177 per Deane and Fitzgerald JJ. at p 202). As Deane and Fitzgerald JJ. there pointed out, "evidence that some person has in fact formed an erroneous conclusion is admissible and may be persuasive but is not essential."

34. The nature of the issue, involving as it did matters of impression, is one in which particular respect and weight should be given to the decision of the trial Judge unless some error in his judgment has been demonstrated (see S.W. Hart & Co. Proprietary Limited v. Edwards Hot Water Systems (1985) 159 CLR 466 per Gibbs C.J., at p 478, Mason J. concurring; see also per Brennan J. at p 491).

35. In my opinion, no such error has been demonstrated.

36. On behalf of the appellant, it was strongly submitted that, although the attention of consumers may have been "grabbed" by reference to the film "Crocodile Dundee", consumers were induced to buy by reason of the subsequent "sales pitch", which, it was said, was a different thing. In my view, the distinction sought to be drawn is unlikely to be made by viewers. The thrust of the advertising is to identify the image of "Crocodile Dundee" with the product to be sold. That image and the appellant's product are not portrayed as separate. On the contrary, the image is put forward as endorsing the product. The message conveyed is that Dundee is recommending the shoes.

37. It is true that the Dundee figure in the advertising does not appear to be the first respondent. But it does not follow that the image of "Crocodile Dundee" is not projected as sponsoring the product. Viewers are given the impression that a variant of the Dundee figure is endorsing the shoes. The question for the Judge was whether this impression would be seen as connected with the first respondent in a commercial context.

38. It was further argued on behalf of the appellant that the effect of his Honour's decision would be to proscribe the use of parody in advertising or, indeed generally. But the essential question is whether the appellant has conveyed the message that the first respondent has agreed to an advertisement for the appellant's goods in which an image identified with the respondents is seen to endorse the goods. As in Tolley v. Fry, there is a real distinction to be drawn between a "mere" caricature on the one hand and a caricature "embedded" in an advertisement on the other. The former is innocent because viewers would receive the impression that the person caricatured would not have agreed. The latter carries with it a different impression, favourable to the subject of the caricature, in which he or she is perceived as endorsing the object of the advertising. The distinction between the "mere" caricature and one "embedded" in the advertising is of critical significance. If it were appropriate to divide the advertisement into two discrete parts, one part devoted to a parody of the Dundee figure and the other a sales promotion, it may be that no relevant misrepresentation could be made out. But such a division of the advertising is not possible. The Dundee figure, albeit a variant of the original image, is seen as sponsoring the appellant's shoes. The advertising is not a "mere" caricature.

39. The appellant also argued that there could be no relevant misrepresentation here unless there was a belief that there was a universal practice that permission would be sought in the present circumstances, whereas the Judge found that this was the "general or normal" practice. In my opinion, the point is without substance. His Honour was entitled to take a by and large approach in this area, considering the matter, as he was, from the standpoint of viewers of the advertisement who would not reasonably be expected to draw such fine distinctions. The appellant sought to use this submission as a platform for a further argument that there was no misrepresentation here and that the difficulty was no more than an "erroneous assumption" as to the legal relationship between the appellant and the first respondent. But the case does not depend upon any erroneous assumption. Either the advertisements do, or they do not, carry with them a message or suggestion of the first respondent's agreement with their tenor. If they do, there is a misrepresentation. If they do not, there can be no cause of action.

40. Reliance was also placed by the appellant upon the absence of evidence that the misrepresentation caused damage to consumers. It was further contended by the appellant that there could be no passing-off here in the absence of evidence of any causal nexus between the misrepresentation alleged and any damage claimed to have been suffered by the first respondent.

41. In my opinion, neither of the appellant's arguments should be accepted.

42. The substantive position is well settled. The cause of action for passing-off is complete as soon as the relevant misrepresentation is made, even though no actual deception and damage to the plaintiff can be shown to have resulted from it (see Naresh, "Passing-Off, Goodwill and False Advertising: New Wine in Old Bottles" (1986) CLJ 97 at pp 103-4; see also the Advocaat Case, supra, (1979) AC at p 742; see also W.L. Morison, supra, at p 61). The position under s.52 is the same. Independently of these substantive questions, adjectival matters may call for separate consideration. For instance, the grant of an injunction is discretionary and a claim for more than nominal damages would require evidence because substantial damages are compensatory. But none of this is to say that passing-off and a contravention of s.52 had not been established here.

43. I would dismiss the appeal.