Pacific Dunlop Ltd v Hogan and Ors

23 FCR 553

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(Judgment by: Burchett J)

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

Court:

Judges: Sheppard J
Beaumont J

Burchett J

Subject References:
TRADE PRACTICES
Passing Off

Judgment date: 25 May 1989

Sydney

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Judgment by:
Burchett J

The facts of this case are set out in the judgment of Beaumont J., and I shall not repeat them. To the extent that the question is whether a significant section of the viewing public would infer a consent of some kind by Mr Hogan to the showing of the appellant's advertisement, I agree with the reasons Beaumont J. has given for not disturbing the findings of the trial Judge.

2. But, to my mind, the matter may be approached more directly and more realistically by asking whether the advertisement conveys a false message of endorsement of the shoes themselves, which were its subject, by Mr Hogan. Whether the advertisement does convey any identifiable and relevant message is, of course, a question of fact. I do not think the truly legal questions in the case are controversial. However, the ultimate conclusion whether the advertisement was likely to mislead should not depend upon precisely that analysis which would be sufficient for an advertisement appearing only in print, as in Tolley v. J.S. Fry and Sons, Limited [1931] AC 333 , or for the kind of representation constituted by the display of a trademark, as in Radio Corporation Proprietary Limited v. Disney (1937) 57 CLR 448 . The advertisement here in question uses the still relatively new technology of television, and the even newer techniques of the exploitation of personality, projected by that medium, in order to promote products. In considering whether such a television advertisement involves conduct likely to mislead, within the meaning of s.52, or deception liable to attract the principle of passing off, it is necessary to bear in mind the nature of the advertising, and of the unique appeal advertising of that kind makes to those to whom it is directed.

3. Character merchandising through television advertisements should not be seen as setting off a logical train of thought in the minds of television viewers. Its appeal is nothing like the insistence of a logical argument on behalf of a product, which may persuade, but also may repel. An association of some desirable character with the product proceeds more subtly to foster favourable inclination towards it, a good feeling about it, an emotional attachment to it. No logic tells the consumer that boots are better because Crocodile Dundee wears them for a few seconds on the screen (cf. the remarks of Lord Brightman in In re American Greetings Corporation's Application [1984] 1 WLR 189 at 197); but the boots are better in his eyes, worn by his idol. The enhancement of the boots is not different in kind from the effect produced when an alpine pass makes a grander impact on the tourist whose mind's eye captures a vision of Hannibal urging elephants and men to scale it.

4. To ask whether the consumer reasons that Mr Hogan authorised the advertisement is therefore to ask a question which is a mere side issue, and far from the full impact of the advertisement. The consumer is moved by a desire to wear something belonging in some sense to Crocodile Dundee (who is perceived as a persona, almost an avatar, of Mr Hogan). The arousal of that feeling by Mr Hogan himself could not be regarded as misleading, for then the value he promises the product will have is not in its leather, but in its association with himself. When, however, an advertisement he did not authorise makes the same suggestion, it is misleading; for the product sold by that advertisement really lacks the one feature the advertisement attributes to it.

5. The whole importance of character merchandising is the creation of an association of the product with the character; not the making of precise representations. Precision would only weaken an impression which is unrelated to logic, and would in general be logically indefensible. Yet the impression must be powerful to be effective. The only medium likely to convey the vague message of character merchandising, while giving it the force and immediacy of an exciting visual impact, is television. That is why the technique has grown in importance with the rise of the television industry. Its implications have hardly yet been explored in the courts. Their exploration involves the application of established principles in an unfamiliar setting, where a pervasive feature is not so much the making of statements that may mislead the mind directly, as suggestions that may inveigle the emotions into false responses.

6. The suggestion in the present case, as his Honour found the facts, was of an endorsement of the appellant's shoes by Mr Hogan's almost universally appreciated Crocodile Dundee personality, and through that of an association between Mr Hogan and the product so endorsed. The television audience would accordingly hold the shoes in higher regard. On the evidence, some evocation of Crocodile Dundee was admittedly both intended and achieved; I do not see any basis for disturbing Gummow J.'s view of its true effect. That view owed much to the special nature and circumstances of Mr Hogan's portrayal of a character really indistinguishable from his own public image. It is, too, consistent with the concession made by the advertisement's author, as noted by his Honour, "that the intention of the advertisement was that viewers should get an impression of 'Crocodile Dundee' in connection with Grosby shoes". I reject the appellant's attempt to avoid, by miscalling its advertisement a parody, the consequences of representing Crocodile Dundee (actually addressed in the advertisement by his name Mick) as endorsing its shoes. The essence of Mr Hogan's performance is parody, which can hardly itself be parodied, at least by what would be more accurately described as a parasitic copy - parasitic because its vitality is drawn entirely from the audience's memory of the original. As well might an attempt to imitate "H.M.S. Pinafore" be called a parody of Gilbert and Sullivan]

7. I also reject the argument that the figure in the advertisement is differentiated from Mick Dundee by virtue of his companion's statement: "He looked just like you Mick." I regard as fanciful the suggestion that more than a tiny minority of viewers would infer from this an otherwise unmentioned visit to a picture theatre showing "Crocodile Dundee", and that the word "he" referred to Mick Dundee. Such an advertisement is not analysed like a crossword puzzle. It comes as a caller upon a family relaxing in the evening, from whom it asks an uncritical welcome. There is little chance that the words in question, which are not emphasized, would even be noticed by many viewers. What the thirty seconds caller would leave behind would be a satisfying feeling that it would be good to have these "Crocodile Dundee" shoes, associated with Mr Hogan. That is just the sort of message character merchandising ordinarily aims to implant.

8. When the matter is put in this way, the question becomes whether the vagueness of the message prevents the application of the principles of passing off or of s.52 of the Trade Practices Act. It is in this connection, I think, that Gummow J. cited Moorgate Tobacco Co. Limited v. Philip Morris Limited (No. 2) (1984) 156 CLR 414 at 445, where Deane J. said:

"The rejection of a general action for 'unfair competition' or 'unfair trading' does 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. It has not, for example, prevented the adaptation of the traditional doctrine of passing off to meet new circumstances involving the deceptive or confusing use of names, descriptive terms or other indicia to persuade purchasers or customers 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 ... ."

9. In Henjo Investments Pty Ltd v. Collins Marrickville Pty Ltd (1988) 79 ALR 83 at 93, Lockhart J. (with this aspect of whose reasons Foster J. agreed, and with whom I also agreed) said:

"Misleading or deceptive conduct generally consists of representations, whether express or by silence; but it is erroneous to approach s 52 on the assumption that its application is confined exclusively to circumstances which constitute some form of representation. The section is expressed briefly, indeed tersely, in plain and simple words which, if I may be forgiven for repeating them, say simply: 'a corporation shall not, in trade or commerce, engage in conduct that is misleading or deceptive or is likely to mislead or deceive'. There is no need or warrant to search for other words to replace those used in the section itself. Dictionaries, one's own knowledge of the developing English language and ordinary experience are useful touchstones, but ultimately in each case it is necessary to examine the conduct, whether representational in character or not, and ask the question whether the impugned conduct of its nature constitutes misleading or deceptive conduct.

This will often, but not always, be the same question, as whether the conduct is likely to mislead or deceive."

See also Rhone-Poulenc Agrochimie SA v. UIM Chemical Services Pty Ltd (1986) 12 FCR 477 at 489, 504 and 508; and article by French J., "A Lawyer's Guide to Misleading or Deceptive Conduct" 63 ALJ 250 at 254-6; and cf. the remarks of Latham C.J. in Radio Corporation Proprietary Limited v. Disney (supra) at 454.

10. In my opinion, the vagueness of the suggestion conveyed in this case is not sufficient to save it. That vagueness is not incompatible with great effectiveness. It would be unfortunate if the law merely prevented a trader using the primitive club of direct misrepresentation, while leaving him free to employ the more sophisticated rapier of suggestion, which may deceive more completely. In my opinion, the deployment in circumstances of the present kind of techniques of persuasion, designed to influence prospective customers in favour of a trader or his products upon the basis of some underlying assumption which is false, may be held to be misleading or deceptive or to be likely to mislead or deceive within the meaning of s.52, and may also be held to constitute passing off. Upon that basis, the appellant was rightly found liable.

11. Viewed in this way, I do not think the appellant's conduct derived its misleading character from any pre-existing misconception on the part of members of the public. It was submitted, for the appellant, that only persons who already had a misconception of the extent of the legal protection available to the creator of an artistic work, such as a film, would be misled. As I have seen the matter, this argument cannot be sustained. On the alternative approach discussed in the judgment of Beaumont J., with which I have also expressed agreement, I do not think a person who inferred Mr Hogan's consent had been given to the advertisement would do so by reason of a misunderstanding of the law. The ordinary viewer would well appreciate that the niceties of the law of intellectual property were quite outside his own area of precise knowledge, and would base his conclusion, not on any assumption about the law, but on his correct perception of what normally happens in commercial and advertising practice. However, an acceptance of the proposition that deception here grows out of error and confusion on the part of some consumers would not necessarily be fatal to the respondents' case. Gummow J. found that the intention of the appellant's agents was to create the deceptive impression. Generally, intention is irrelevant to s.52 (however, see the remarks of Lockhart J. in Bridge Stockbrokers Ltd v. Bridges (1984) 4 FCR 460 at 474-5), except in the evidentiary sense that a court may more readily infer deception was achieved where it is shown to have been intended. But if intentional advantage is taken by a corporation of a misconception harboured by some consumers, I think at least it can be said it will not be open to the corporation to rely on the misconception, or on some confusion about it, in order to negative the quality of its own conduct as a breach of s.52. Here, the appellant intended to stimulate in the minds of consumers, including those who had the relevant preconceptions, an impression that there was an association between Grosby Shoes and Mr Hogan in the guise of Mick Dundee.

12. For these reasons, the appeal should be dismissed with costs.