Handley, Mark & Ors v Snoid, Andrew & Ors [1981] FCA 81
Federal Court of Australia
Full text
Select any passage to save a personal note with optional tags.
Anam Aye
eae Akt dE ae
we me mee bene
wr an mel asada ons Ee ete ms OE alm a
roe Senor
eM ke ea ee ee
Alam aw ed a
Leaman: Waitt wR ewok. oo
Can taitlttaltnd cise tainamonins, oo Oag. * Mat
CATCHWORDS
Trade Practices - alleged breaches of ss 52 and 53 -
application for injunction ~ consumer protection - rock
music groups - similar names - Popular Mechanics -
Pop Mechanix - whether conduct misleading or deceptive
or likely to mislead or deceive - whether representation
that goods or services have sponsorship and approval they
do not have - confusion - reputation ~ interpretation of
Trade Practices Act and in particular s.52.
Consumer Protection ~ whether s.52 of Trade Practices Act
limited by heading 'Consumer Protection'.
Injunctions - ss.80 and 82 - whether entitled tc specific
or general injunctions - whether entitled to perpetual
injunctions - if relevant reputation not shown to extend
beyond Sydney or Canberra whether public entitled to
protection from deceptive or misleading conduct in these
other places.
Trade Practices Act (1974) ss. 52, 53, 80 and 82
MARK HANDLEY, RUSSELIL HANDLEY, MARTIN BISHOP, GARRY MANLEY
V._ ANDREW _SHOID, PAUL SCOTT, KEVIN EMMETT, CHRISTOPHER MOORE,
PAUL MASON AND C.B.S. RECORDS AUSTRALIA LIMITED
(No. G34 of 1981)
Coram: Eliacott J.
Date: 7 To ly 1G Ff
Place: Sydney
Ly
eee ee Ty
IN THE FEDERAL COURT
OF AUSTRALIA No: G34 of 1981
GENERAL DIVISION
PRINCIPAL REGISTRY
wwe eve ew
MARK HANDLEY, RUSSELL HANDLEY,
MARTIN BISHOP, GARRY MANLEY
Applicants
ANDREW SNOID. PAUL SCOTT, KEVIN EMMETT,
CHRISTOPHER MOORE, PAUL MASON
Respondents
C.B.S. RECORDS AUSTRALIA LIMITED
Sixth Respondent
' ORDERS
JUDGE MAKING ORDERS ; ELLICOTT J,
DATE OF ORDERS TUESDAY, 7 JULY 1981
WHERE MADE: AT SYDNEY
THE COURT ORDERS THAT;
A. ORDER that until further order of the Court;-
(1) the sixth-named respondent by utself its servants
and agents be restrained from engaging in conduct in
trade or commerce that is misleading or deceptive or
is likely to mislead or deceive by using the name
POP MECHANIX POP MEX or POP MX or any other colourable
imitation of the name POPULAR MECHANICS or of the name
halen
a
é
=
POP MECHS in connection with the promotion or the
performances of a band or in connection with the
promotion sale supply or distribution of the music
songs recordings or video tapes of or by a band in
such a way as to mislead or deceive members of the
public into believing that such band 1s the band
known as POPULAR MECHANICS of which the second, third
and fourth named applicants are or haye been members
(2) the first to fifth-named respondents (inclusive)
and each of them by himself his servants and agents
be restrained from aiding or abetting the sixth-named
respondent in any conduct forbidden by order 1 above
and from being in any way directly or indirectly
knowingly concerned in or a party to any such conduct.
(3) the sixth-named respondent by itself its servants
and agents be restrainedi-
(a) from selling supplying or distributing in Sydney
or Canberra and from selling supplying or
distributing for sale in Sydney or Canberra
music songs recordings or video tapes purporting
to be the music songs recordings or video tapes
of or by a band referred to by the names POP
MECHANIX POP MEX or POP MX or by any name which
1s a colourable imzrtation of the name POPULAR
MECHANICS or of the name POP MECHS;
a
"
tte
at A
'
Lawcseinsa a tk al
(b)
(ce)
(4)
3.
from promoting for sale in Sydney or Canberra
and from promoting in Sydney or Canberra the
sale of musitc songs recordings or video tapes
purporting to be the music songs recordings
or video tapes of or by a band referred to
by the names POP MECHANIX POP MEX or POP MX or
by any name which is a colourable imitation of
the name POPULAR MECHANICS or of the name POP
MECHS ;
from promoting in Sydney or Canberra or from
promoting the performances in Sydney or Canberra
of any band referred to by the names POP MECHANIX
or POP MEX or POP MX or by any other name which
is a colourable imitation of the name POPULAR
MECHANICS or of the name POP MECHS;
from supplying to any radio or teleyision station
recordings video tapes film clips or promotional
material intended for a broadcast or for use in
connection with a broadcast to be transmitted to
Sydney or Canberra and relating to any band referred
to by the name POP MECHANIX or POP MEX or POP MX or
by any other name which 1s a colourable imitation
of the name POPULAR MECHANICS or of the name
POP MECHS.
the first to fifth-named respondents (inclusive) and
each of them by himself his servants and agents be restrained,-
wa
perry
(a)
(b)
(¢)
(d)
from aiding and abetting the s1ixth-~named
respondent in any conduct forbidden by order
3(a)(b)(c) or (d) above or from being in any
way directly or indirectly knowingly concerned
in or a party to any such conduct;
from taking part in any radio or television
broadcast or in the preparation of any recording
video tape f1lm clip or promotional material
for use in or in connection with a broadcast
transmitted or intended to be transmitted to
Sydney or Canberra 1f in such broadcast or in such
recording tape clip or material 1t 1s represented
that the said respondents are members of a band known
as POP MECHANIX or POP MEX or POP MX or by any
other name which 1s a colourable imitation of the
name POPULAR MECHANICS or of the name POP MECHS;
from recording mustcal works including video tapes
where such records or yideo tapes are to be sold
supplied or distributed for sale by the sixth-named
respondent in Sydney or Canberra as the recordings
of a band referred to as POP MECHANICS POP MEX or
POP MX or by any other name which 1s a colourable
imitation of the name POPULAR MECHANICS or POP MECHS,
from preparing or assisting in the preparation of
promotional material intended to be used by the
sixth-named respondent to promote the sale supply or
distribution in Sydney or Canberra of music songs
recordings or video tapes purporting to be the music
songs recordings or video tapes of or by a band
referred to by the names POP MECHANICS POP MEX
OR POP MX or by any other colourable imitation
of the name POPULAR MECHANICS or of the name
POP MECHS.
ORDER that any party be at liberty to apply on three
days notice to discharge or vary any of the foregorng
orders.
ORDER that the respondents pay the applicants' costs
to date of this application.
ORDER that the further hearing and consideration of
this application be stood over to a date to be fixed
by the Regzustrar at the request of any party or at the
direction of a Judge.
Pe ae ea ind
IN THE FEDERAL COURT )
OF AUSTRALIA No. G34 of 1981
GENERAL DIVISION
)
)
)
)
)
)
PRINCIPAL REGISTRY
MARK HANDLEY, RUSSELL HANDLEY,
MARTIN BISHOP, GARRY MANLEY
Applicants
ANDREW SNOID, PAUL SCOTT,
KEVIN EMMETT, CHRISTOPHER MOORE,
PAUL MASON
Respondents
C.B.S. RECORDS AUSTRALIA LIMITED
Sixth Respondent
FURTHER REASONS FOR JUDGMENT
CORAM: Ellicott J.
In this matter I handed down reasons for
judgment on 18 June last. In them I indicated that the
applicants were entitled to appropriate injunctive relief
but by agreement with counsel for the applicants and the
respondents, ieft the determination of the exact form of
relief until I had had the opportunity to hear submissions
from counsel on the matter.
Poo
I have now had the benefit of those
submissions and I propose to make the orders set out
below.
Before doing so, there are two observations
I would make.
First, I do not think that, in a case such as
this, the applicants are entitled to unqualified perpetual
injunctions against the respondents. In the uncertain
world of popular music bands can become defunct or they
may change their names. Already the applicants have ceased
to engage in live performances for periods. If they ceased
to exist or to use the name"POPULAR MECHANICS" any likely
deception of the public may also cease and in those
circumstances ,at least,the respondents should be entitled
to seek the discharge or variation of the orders I propose
to make. There may be other supervening circumstances which
would justify such an application. I therefore propose to
make each of the orders "until further order of the court"
and to grant liberty to any party to apply.
The second observation relates to the effect
of the finding in my reasons for judgment that the reputation
surrounding the name ''POPULAR MECHANICS" had not been shown
to extend beyond Sydney or Canberra. Counsel for the
applicants submitted that this was not a reason for limiting
the injunctive relief to Sydney or Canberra because the
relevant public in other parts of Australia could still be
misled or deceived if the two bands were performing there
or if their respective records were being sold or played
there. It is true that I have not found that the
applicants' band has no reputation in those other places.
What I have found is that the evidence does not satisfy me
that the relevant reputation extends there. It is also true
that the public in those places are entitled to protection
from any deceptive or misleading conduct involved in the use
of the name "POP MECHANIX".
The applicants have sought very specific
Australia-wide injunctions against the respondents. On the
other hand the respondents have suggested that the injunctions
be in broad terms confined to Sydney and Canberra.
I have decided that there should be some relief
that protects the public in other parts of Australia against
possible deceptive or misleading conduct. I think this can
best be done by granting injunctions in broad terms which
will apply to the whole of Australia. Under these injunctions
it will be a matter for the respondents to determine whether
proposed
any/conduct involving use of the names "POP MECHANIX",
"POP MEX" or "POP MX" or any other colourable imitation of
"POPULAR MECHANICS" or "POP MECHS" would amount to misleading
or deceptive conduct. I take the view that an Australia wide
injunction is justified because the respondents' intentions
as to the use of the offending name do not appear to be
confined to any particular State or Territory.
I think there should also be more specific
injunctions but these will be limited to the cities of Sydney
and Canberra by which I mean not only the inner city but all
those suburbs which are ordinarily regarded as part of each
city.
2 Sn ke,
A
Soom
wee te
4,
This does not mean of course that the respondents
or any of them can with impunity engage in conduct in relation
to places outside Sydney or Canberra which if done in or in
relation to those cities would be caught by those more specific
ingunctions. This will depend on whether such conduct breaches
the more general injunctions which I propose to grant. Nor does
the fact that I have not granted an injunction against particular
conduct in Sydney or Canberra mean that it is not covered by a
broader injunction. For example if the individual respondents
engaged in live performances in Sydney or Canberra it may,
depending on the circumstances, amount to a breach of the
injunction 4(a) - aiding or abetting etc.
The orders I make are:-
A. ORDER that until further order of the Court:-
(1) the sixth-named respondent by itself its servants
and agents be restrained from engaging in conduct in
trade or commerce that is misleading or deceptive or
is likely to mislead or deceive by using the name
POP MECHANIX POP MEX or POP MX or any other colourable
imitation of the name POPULAR MECHANICS or of the name
POP MECHS in connection with the promotion or the
performances of a band or in connection with the
promotion sale supply or distribution of the music
songs recordings or video tapes of or by a band in
such a way as to mislead or deceive members of the
public into believing that such band is the band known
as POPULAR MECHANICS of which the second, third and
fourth named applicants are or have been members
a
u
5.
(2) the first to fifth-named respondents (inclusive)
and each of them by himself his servants and agents
be restrained from aiding or abetting the sixth-named
respondent in any conduct forbidden by order 1 above
and from being in any way directly or indirectly
knowingly concerned in or a party to any such conduct.
(3) the sixth-named respondent by itself its servants
and agents be restrained:-
(a)
from selling supplying or distributing in
Sydney or Canberra and from selling supplying
or distributing for sale in Sydney or Canberra
music songs recordings or video tapes
purporting to be the music songs recordings
or video tapes of or by a band referred to
by the names POP MECHANIX POP MEX or POP MX
or by any name which is a colourable imitation
of the name POPULAR MECHANICS or of the name
POP MECHS;
from promoting for sale in Sydney or Canberra
and from promoting in Sydney or Canberra the
sale of music songs recordings or video tapes
purporting to be the music songs recordings
or video tapes of or by a band referred to
by the names POP MECHANIX POP MEX or POP MX or
by any name which is a colourable imitation
of the name POPULAR MECHANICS or of the name
POP MECHS;
Se Tanai saa mT ad at se Te Ta TNS at ac is tn Ake os sae
Sects noe hee Me
eu abet SEES ee in bil Rn
a or
Jamie me
*
ca ietitemZiase aang
on
one!
(d)
6.
from promoting in Sydney or Canberra or from
promoting the performances in Sydney or
Canberra of any band referred to by the names
POP MECHANIX or POP MEX or POP MX or by any
other name which is a colourable imitation
of the name POPULAR MECHANICS or of the name
POP MECHS;
from supplying to any radio or television
station recordings video tapes film clips or
promotional material intended for a broadcast
or for use in connection with a broadcast to be
transmitted to Sydney or Canberra and relating
to any band referred to by the name POP MECHANIX
or POP MEX or POP MX or by any other name which
is a colourable imitation of the name POPULAR
MECHANICS or of the name POP MECHS.
(4) the first to fifth-named respondents (inclusive)
and each of them by himself his servants and agents be
restrained:-
(a)
(b)
from aiding and abetting the sixth-named
respondent in any conduct forbidden by
order 3(a)(b)(c) or (d) above or from being
in any way directly or indirectly knowingly
concerned in or a party to any such conduct;
from taking part in any radio or television
broadcast or in the preparation of any
recording video tape film clip or promotional
material for use in or in connection with a
broadcast transmitted or intended to be
transmitted to Sydney or Canberra if in such
ee,
(c)
(4)
7.
broadcast or in such recording tape clip or
material it is represented that the said
respondents are members of a band known as
POP MECHANIX or POP MEX or POP MX or by any
other name which is a colourable imitation of
the name POPULAR MECHANICS or of the name
POP MECHS;
from recording musical works including video
tapes where such records or video tapes are
to be sold supplied or distributed for sale
by the sixth-named respondent in Sydney or
Canberra as the recordings of a band referred
to as POP MECHANICS POP MEX or POP MX or by
any other name which is a colourable imitation
of the name POPULAR MECHANICS or POP MECHS;
from preparing or assisting in the preparation
of promotional material intended to be used
by the sixth-named respondent to promote the
sale supply or distribution in Sydney or
Canberra of music songs recordings or video
tapes purporting to be the music songs
recordings or video tapes of or by a band
referred to by the names POP MECHANICS
POP MEX or POP MX or by any other colourable
imitation of the name POPULAR MECHANICS or of
the name POP MECHS.
a
B.
8.
ORDER that any party be at liberty to apply on three
days notice to discharge or vary any of the foregoing
orders.
. ORDER that the respondents pay the applicants' costs
to date of this application.
ORDER that the further hearing and consideration of
this application be stood over to a date to be fixed
by the Registrar at the request of any party or at
the direction of a Judge.
IN THE FEDERAL COURT
OF AUSTRALIA No: G34 of 1981
GENERAL DIVISION
ee ee ee ee ee
PRINCIPAL REGISTRY
MARK HANDLEY, RUSSELL HANDLEY,
MARTIN BISHOP, GARRY MANLEY
Applicants
ANDREW _SNOID, PAUL SCOTT,
KEVIN EMMETT, CHRISTOPHER MOORE,
PAUL MASON
Respondents
C.B.S. RECORDS AUSTRALIA LIMITED
Sixth Respondent
REASONS FOR JUDGMENT
CORAM: Ellicott J.
Since 1975, in places like Australia and New
Zealand, there has been a revolution in rock and roll style
music. It has manifested itself in an upsurge of young bands
playing for reward in venues large and small around the country.
The days when the superstars were almost exclusively the
providers of this music have passed. Many young people, in
our do-it-yourself age,have decided that they can do 1t too.
They have formed and named their own bands, played their own
compositions and sung their own lyrics.
Out of this maelstrom of "new music" there
emerged two particular bands who are locked in combat in these
proceedings involving what has been appropriately described by
2.
a journalist as "an unfortunate clash of names". For one
group, (the applicants), chose to be called "POPULAR MECHANICS"
and the other, (five of the respondents), "POP MECHANIX".
The former originated in Australia and the latter, at a later
date, in New Zealand and, as far as I can tell from the evidence
the names were arrived at independently of each other but, in
one case, perhaps not surprisingly, with the journal "Popular
Mechanics" in mind.
Recently the group POP MECHANIX came into
prominence at a festival in New Zealand. As a result of their
fame spreading across the Tasman,they were soon signed up as
recording artists for all countries outside New Zealand by the
respondent CBS Records Australia Pty. Limited ("CBS") and, as
many New Zealanders have done before them, decided to try their
luck in Australia both in live performances and through the
promotion and sale of their records. The applicants immediately
objected, but, because the respondents ignored their objection,
they commenced these proceedings claiming that the respondents
have engaged in conduct that is misleading or deceptive or is
likely to mislead or deceive contrary to s.52 of the Trade
Practices Act 1974 (hereinafter called "the Act") and that they
have in trade or commerce in connection with the supply of goods
and services and the promotion of the supply of goods and
services contrary to s.53(d) of the Act,represented that they
have a sponsorship approval or affiliation that they do not
have.
Oe ee ears ae
oes
3.
The application has been strongly resisted
and the hearing before me lasted some nine days.
The provisions of the Act of immediate
relevance are ss.52(1) and 53(d) and parts of ss.6 and
80.
For convenience I shall set them out.
"52(1)
"53.
(2)
A corporation shall not, in trade or
commerce, engage in conduct that is
misleading or deceptive or is likely to
mislead or deceive."
A corporation shall not, in trade or
commerce, in connection with the supply
or possible supply of goods or services
or in connection with the promotion by
any means of the supply or use of goods
or services -
ee ry
(ad) represent that the corporation has a
sponsorship, approval or affiliation
it does not have;"
Without prejudice to its effect apart from
this section, this Act also has effect as
provided by this section.
This Act, other than Part X, has, by force of
this sub-section, the effect it would have if -
(a) any references in this Act other than
in sub-section 45D(1A) or in section 55
to trade or commerce were, by express
provision, confined to trade or commerce —
(i) between Australia and places outside
Australia;
'
(i2) among the States;
(iii)within a Territory, between a State
and a Territory or between two
Territories; or
(iv) by way of the supply of goods or
services to the Commonwealth or an
authority or instrumentality of the
Commonwealth;
ae bats
ot
Sead me
(3)
"80(1)
4.
(h) subject to paragraphs (d), (e), (ea),
(eb), (£) and (g), a reference in this
Act to a corporation, except a reference
in section 4, 48, 50 or 81 or sub-section
88(9), included a reference to a person
not being a corporation.
In addition to the effect that this Act, other
than Part X, has as provided by sub-section (2),
Division 1 of Part V has, by force of this sub-
section the effect 1t would have if -
(a) that Division (other than section 55) were,
by express provision, confined in its
operation to engaging in conduct to the
extent to which the conduct involves
the use of postal, telegraphic or
telephonic services or takes place ina
radio or television broadcast;
(c) subject to paragraph (b), a reference in
that Division to a corporation included a
reference to a person not being a
corporation."
The Court may, on the application of -
(a) the Minister;
(b) the Commission; or
(c) subject to sub-section (1A) - any other
person,
grant an injunction restraining a person from
engaging in conduct that constitutes or would
constitute —-
(d) a contravention of a provision of Part IV
or Vi
(f) aiding, abetting, counselling or procuring
a person to contravene such a provision;
re
(h) being in any way, directly or indirectly,
knowingly concerned in, or party to, the
contravention by a person of such a
provision; or
5.
As will appear from the facts, the band
POP MECHANIX has played at many venues in several States
and the A.c.T. As a result of arrangements made by CBS
it has appeared live and a film clip of it has been shown on
a nationally televised A.B.C. program "Countdown". CBS,which
also produced the film clip,has distributed for sale to the
public recordings of the band to a large number of retail
outlets around Australia where those records have been sold.
It is because it played in the A.C.T. and interstate and on
national television that the applicants seek to rely on the
extended operation of the Act under s.6 to obtain relief
against the five members of POP MECHANIX. Of its own force
s.52 could of course only apply to conduct on the part of CBS
(being a corporation) but it 1s also claimed by the applicants
that by virtue of s.80(1) the individual respondents have
aided and abetted CBS to contravene s.52 and have directly or
indirectly been knowingly concerned in or party to the
contravention by CBS of s.52 and should be restrained from
doing so.
It will be seen from this analysis of the statutory
provisions that the essence of the dispute is the allegation that
the individual respondents and CBS have engaged in conduct in
trade or commerce or in radio or television broadcasts which is
misleading or deceptive or likely to mislead or deceive. As
indicated,the applicants rely on s.53(d) as well. It was not
the main ground of their attack and I am satisfied, on the
evidence, that a case under that provision has not been made out
against any of the respondents either in its lamited or
extended form. I am satisfied the evidence does not establish
6.
that any of the respondents represented that he or it
had a sponsorship approval or affiliation he or it does
not have.
Before stating the facts, it may be helpful to
set out,briefly,the principles which,in my view,are relevant
in considering the application of s.52 of the Act to those
facts.
The section is found in Part V Division 1 of
the Act. Part V is headed "Consumer Protection" and Division 1
"Unfair Practices". It is the first of a number of sections
prohibiting conduct regarded as unfair and 1s in much broader
terms than those that follow. Unlike them its breach has not
been made the subject of criminal proceedings. Because of its
broad terms its full scope and operation will of necessity be
worked out by the courts in individual cases and it is unwise
to attempt to define ,exhaustively,the types of cases which it
will cover. Some idea of its scope and operation is to be
gained from the fact that it is one of a number of sections
whose obvious purpose is to outlaw unfair practices in the
marketplace. The general heading of Part V is "Consumer
Protection" but it should not be assumed from this that the
protection of consumers is its only object. Section 52 is
only one of a number of very broad provisions in the Act which
are designed to preserve the freedom and fairness of competition
in the marketplace. Part IV deals with restrictive trade
practices iuncluding monopolisation, exclusive dealing, resale
price maintenance and price discrimination. These provisions
are obviously designed to protect and benefit traders and
consumers alike - likewise s.52. It is designed to protect the
""
7.
marketplace for both traders and consumers alike to ensure
as far as practicable that only the truth will be disseminated
about the goods and services available. Traders who are
affected by false statements have as much interest in preventing
their dissemination as consumers. It is not surprising
therefore that although any person can bring an action to
enforce s.52, most actions to date have been brought by
traders rather than consumers. The deception which s.52
is aimed at is not confined to misleading and deceptive
statements by a trader in advertisements as to the qualities
or characteristics of his products. The passing off by one
trader of his goods as those of another is a classic instance
of deception in the marketplace and it is not surprising that
it has been held that in applying s.52 assistance is to be
gained from cases relating to passing off. The principles
of passing off, however, are mainly relevant for the purpose
of determining what 1s misleading or deceptive or likely to
mislead or deceive and the use to be made of them has already
been discussed in cases before the High Court and this court.
The law of passing off recognises a trader's
right to protect the goodwill which attaches to his business
because a particular name, mark, get-up, slogan etc. has
become distinctive in the market of Heoods. This right is of
course a restriction on the freedom of competition in the
marketplace because it prevents other traders from using such
a name etc. But it is a restriction which the law accepts.
From the consumer's point of view 1t is beneficial because it
avoids being misled or deceived into thinking that one
trader's product is that of or connected with another. This,
in essence, 1s why the law of passing off is so relevant to s.52.
8.
In truth, the use by one trader of a name which has become
distinctive of the goods of another can be as misleading and
deceptive in the marketplace as a false statement made by a
trader about the goods of another. Basic to establishing
such deception is proof that in the marketplace the particular
name etc. by use, advertising or similar means distinguishes
or means to consumers the goods or services of an identifiable
trader. (See generally Hornsby Building Information Centre
Pty. Limited v. Sydney Building Information Centre Pty. Limited
1978 52 A.L.J.R. 392; Erven Warnink BV v. J Townend & Sons
(Hull) Ltd (1979) A.c. 731; Cadbury Schweppes v. Pub Squash Co.
(1981) 1 All E.R. 213).
Obviously the extent and nature of the market will
vary from case to case. In some cases it will be substantial
and cover most members of the community. In others it will be
relatively small. Because the object of s.52 is to give
protection to those involved in the market from deceptive and
misleading conduct its application should not depend on the
size of the market or the nature of the consumers who make it
up. They will be as varied as the demand for particular goods
and services dictates.
In 1977,s.52 was amended to add the words "or is
likely to mislead or deceive". This clarified two matters.
Pirst, proof of an intention to mislead or deceive is not
necessary to the application of the section. Secondly, conduct
will offend the provision if it has the capacity to or might
well mislead or deceive even though it is not shown that it has
in fact misled or deceived.
kee
9.
With these principles in mind I shall now
proceed to consider the facts.
Late in 1978,a rock music band was formed in
Sydney consisting of four people one of whom was the applicant,
Russell Handley. About 1 March 1979 it adopted as its name
POPULAR MECHANICS. By this time 1t consisted of five people,
namely, the applicants, Russell Handley and Garry Manley and
three others, Mark Foster, David Lemon and Ian Beckett. On
23 April 1979 1t commenced to give live performances of rock
music under that name at various venues in and around the centre
of Sydney. On occasions it played at more distant venues such
as Narrabeen, Rydalmere, Brighton-Le~Sands, Bexley, Ku-ring-gai
but most of its performances were in the inner city area. They
took place quite regularly until 15 April 1980. Between
23 April 1979 and that date the band performed on some 78
separate occasions at these venues using the name POPULAR MECHANICS.
Several of the venues could hold up to 1,000 people. Most of
them were smaller and could hold crowds ranging from 80 to
600 or 700. There was no precise evidence as to whether these
venues were full on every occasion but I am satisfied that the
band performed from time to time before audiences running into
many hundreds. Sometimes they played as a support group to
more popular bands like JIMMY AND THE BOYS and The HITMEN and
on such occasions enjoyed the additional crowds which those
bands drew.
In June 1979 the band warranted the services of
a Manager and the applicant, Mark Handley, joined it in that
capacity. About mid-November 1979 the band released an
extended play recording entitled "From Here to Obscurity" under
atk dee 2 ee
ates te
mew. be bane
a ee
on
oats a
10.
its name POPULAR MECHANICS. Approximately 750 copies of this
record have been sold mainly in the Sydney area. Shortly after
it was released,it received regular air play on station 2JJ7
in Sydney and 2XX in Canberra. 2JJ7 plays 24 hours a day,
7 days a week and has a listening audience of 30,000 people.
Ian Meldrum, Co-ordinator of the ABC program "Countdown"
described it as a very good radio station capable of breaking
hits in Sydney in relation to the popular music played by it.
On 20733 one of the tracks on the record ("Flamingo Road")
received extensive air play, in terms of 2JJJ0's practices, when
the record was first released. It was one of 12 singles played
on a rotation system and it was played three times a day for
a period of approximately six weeks after its release. After
that it was played for several months probably three or four
times a week. Since then 2JJJ has continued to play it.
In June 1979 Garry Doyle replaced David Lemon as a
member of the band. At the time of the first recording the
band consisted of Russell Handley, Mark Foster (lead singer),
Garry Manley, Ian Beckett and Garry Doyle.
In March 1980 the band attracted the attention of
Alberts Music Publishers. They recorded demonstration tapes
and there was discussion between the band and Albertsabout a
recording contract but apparently nothing came of it.
After the first recording was made,further changes
in the band's line-up occurred. Tan Beckett left the band in
December 1979 and he was replaced by Jim Heywood. [In April
1980 Garry Doyle and Mark Foster left and as a result on
15 April 1980 the band ceased live performances and did not
perform live again until 1 November 1980.
a a
a
ll.
Between these dates several things happened. In
June 1980 Garry Dodd joined the band. On 1 July 1980 an
agreement was entered into between Martin Bishop of Basilisk
Records as the Producer and Garry Manley and Russell Handley
as the Performer. The latter were described in the agreement
as being "banded together under the group name 'POPULAR
MECHANICS! and/or 'POP MEX' and/or 'POP MECHS'". Under it
those described as"the Performer" agreed to make recordings
exclusively for the Producer for an initial period of 3 years
and terms were agreed upon for the payment of royalties and the
deduction of recording costs. This was one of four arrangements
entered into by Basilisk Records with bands for the making
and release of recordings. These other bands were known as
SEKRET SEKRET, THE SINGLES and JUMP VISION. Basilisk Records,
it is claimed, is owned in partnership between the applicant
Martin Bishop and his father. The Basilisk label is what is
known in the music industry as an independent label. Russell
Handley is identified with it in certain press releases put
out by him and Martin Bishop but is apparently neither a
partner nor an employee of it. He has however worked for it
and is said to have founded it together with Martin Bishop.
I do not regard it as necessary for the determination of these
proceedings to decide what the precise nature of his relationship
is or has been.
In June 1980 a recording was made by the band at
Basilisk Studios entitled "you Get The Picture/Furniture". It
was not in fact released until early December 1980. For the
12.
purpose of this recording the band consisted of Russell Handley,
Garry Manley, Jim Heywood and Garry Dodd. When released 1t
was issued under the Basilisk record label. Prior to resuming
live performances on 1 November 1980 the band as then
constituted was engaged in an intensive period of rehearsals.
On 1 November 1980 the band resumed its live
performances under the name POPULAR MECHANICS. It continued
so to perform until 20 December 1980. In all it played on
14 occasions. These performances, except for two in Canberra,
were also at venues in and around the centre of Sydney. On two
occasions it played as support to other bands. The venues
ranged between those holding 80 up to 800 people. Again,there
is no precise evidence as to the number of people present at
these performances but I am satisfied that on some of these
occasions too the audiences consisted of many hundreds of people.
On 24 November 1980 a press statement was issued
under the name of Basilisk Records and announced the intended
release on 1 December 1980 of three singles including "You Get
The Picture/Furniture" by POPULAR MECHANICS. The press release
included a statement that the band had "disbanded" after 75
performances but made 1t clear that a new band had been formed
consisting of Russell Handley, Garry Manley, Jim Heywood and
Garry Dodd. This record was released early in December 1980
and thereafter received airplay on a number of radio stations
around Australia. The record cover had on it the name of the
band in the form "POP-ULAR MECHAN-ICS". The record itself had
on it "POPULAR MECHANICS" and underneath the words "Produced
by Mr Bishop and Pop Mex."
13.
This was not the first time the short form
"POP MEX" had been used to describe the band. From its
inception members of the band and other persons aware of
the existence of the band in the music industry referred to
it as "POP MEX" and "POP MECHS".
This second record was received by 2JJJ late in
1980 and upon receipt was played for a period once a day
six times a week. It is still being played by 2JJJ about
3 to 4 times a week. This record has also been played and
is still being played on other radio stations including 2xXX
(Canberra), 3RRR-FM (Melbourne) 4222Z-AM (Brisbane) 5MMM-FM
(Adelaide) 3PBS-FM (Melbourne) and 2SER~-FM (Sydney). These
are not commercial stations but it is reasonable to assume
that they command an audience of some thousands though probably
substantially less than 20300.
The evidence establishes that those who are
interested in the music which POPULAR MECHANICS plays, are
mainly young people between the ages of 12 and 30. At least
half of them would probably range from ages 12 to 18, that is,
would be of school age. There was evidence from a Mr Righ1,
the manager of a band booking agency,to the effect that those
who attended the major venues mainly 1n the suburbs were business
people, office workers and school students, whilst those who
went to the smallest venues in the inner city were apparently
more avant garde young people. At those larger venues at
which POPULAR MECHANICS played, some of which held up to 600 and
others up to 300, the crowds tended to be mixed in character.
I concluded from this evidence that the larger the crowd the
more conventional or conservative it was likely to be.
.
4a
14.
When the band performed at the various venues
it was rewarded either by a fixed fee or by what is termed
a door deal.
fee.
Its normal method of remuneration was by a fixed
Relevant to an understanding of this case is an
appreciation of the music which bands such as POPULAR MECHANICS
play. It is referred to as "the new music". Mr Stuart Coupe, a
journalist and expert in popular music, who is the joint author
of a book on the subject gave evidence about this style of
music. The
quote parts
best way in which to describe it, 1s I think to
of his evidence:-
"I would like you to describe to the court as best
you can how you would define the new music?-~~----
As we define it in the book I have been involved in
writing, it is used to refer to rock and roll bands
and performers that have appeared since 1975 and 1976.
I guess it is important to note that at that time
there was almost what you call a music revolution
in that, a quite clear one at that, during the early
period of the seventies there had been a particular
style of rock and roll very much based around the
super stars running around in limousines and an
abuse of kids going to see them, and around 1975,
1976 and heralded by the Sex Pistols there was a
whole upsurge of the new bands that started, and these
appeared very quickly over a 12 month period. So,
for the purpose of our book those people that began
playing and being popular over the last few years,
and it is quite an observable trend that they have
occurred and like the much stronger return to small
bands playing in pubs. There is a reaction against
the huge concert syndrome. A lot of young bands are
making their own independent records because they were
reacting against the situation where you have a music
company dangling a five year contract and saying:
'We are going to make you stars'; and they think, well
we can do that ourselves, we do not need you. It was
a feeling from young kids that 1t was more not what
you said but how you said jit; so they were not waiting
until they had expensive equipment or expensive gear
and a $20,000 light show before they attempted to play.
They bought cheap instruments and did the best they
could. That is a very noticeable development from
about late 1975. .
machen (atinexS ORR
ee Sai oe
15.
Does that mean there are more groups by and large?------
There is a very noticeable upsurge in bands and more
interest. Rock and Roll in the early seventies
there was this appreciation of the super-star the
Mick Jaggers the Paul McCartneys, the Rolling Stones,
the Led Zeplins the Who.
I think it was bringing rock and roll back to the way
it was in the '50's and early '60's where in Liverpool,
where the Beetles came from, there was something like
500 other bands playing in Liverpool at that time and
anstead of .watching, it was saying: Let us have a go
ourselves. That was very evident around Sydney and
Australia. There was a massive upsurge in young bands
doing very much the same thing as what was happening
overseas."
It will be seen from these quotations that the
"new music" as it 1s described is more the product of a period
when hundreds of young bands appeared in reaction to the superstar '
period than a new style of music. The basic music which these
bands play would still be described as rock and roll.
I have described in detail the activity of the band
POPULAR MECHANICS up to the end of 1980. I have also indicated
the nature of the crowds to whom they played live and the exposure
their recordings had on radio. On this aspect of the case it
remains to consider whether this activity had by early 1981
when POP MECHANIX came on the scene resulted in the name POPULAR
MECHANICS becoming distinctive in the minds of the public and if
so of whom and in what area. In considering the effect of their
activity I found that articles which were appearing in various
magazines at the time confirm the view I formed after considering
the cther evidence, namely, that by early 1981 the name POPULAR
MECHANICS meant to young people, particularly in Sydney, a young
band which performed live 1n the inner city area of Sydney and
had put out the records I have referred to - in other words it
had become distinctive of the band to which the applicants claim
,
to belong.
ROE Se te ner a ee
ad
Poe)
ead Pare
ce a SS eS
a
16.
It is common for articles to appear in the major
daily and weekend newspapers regarding rock and roll music.
In addition there are magazines which are published
devoted to such music and containing articles about the bands
who are performing and in some cases lists of the venues or
"gigs" where they are playing. Some contain the usual gossip
column with snippets of gossip of varying degrees of accuracy
about bands and their members. Articles from such magazines
referring to POPULAR MECHANICS and POP MECHANIX were admitted
in evidence. Some of them are published weekly, others
fortnightly or monthly. Some are free. Their circulations
range from 10,000 per issue to 35,000. Some are circulated
nationally, others locally in Sydney. The usual procedure is
to multiply the circulation by a factor of four to seven in
order to get the actual readership of the magazines.
By early 1980 the band had caught the eye of
Mr Stuart Coupe. He wrote an article in "The Sun Herald" of
27 January 1980 under the heading "Bands to watch in the '80's."
One of the bands mentioned was POPULAR MECHANICS. He described
them as follows:-
"A new Sydney band with all the elements that make
good dancing rock and roll music. The Mechanics
write catchy, original songs, move around on stage
and have all the elements that make bands like
Mental as Anything and Australian Crawl so popular.
They have released an independent single and sooner
or later a smart record company executive will drag
himself from his office, see the band live and
realise their potential."
few E Re
17.
In an issue of a magazine "Juke" dated 22 March
1980 they again received favourable attention:-
"Popular Mechanics are heralded as one of the most
promising new bands to come out of Sydney in recent
times. Their quirky sixties - orlentated pop with a
loud bass line and usual rhythm changes mixed with a
good strong hit of hard rock has won them a staunch
following. 'From Here to Obscurity' their first
E.P. has been selling moderately well."
The magazine "Ram" on 4 April 1980 referred to them as
"a hot new band".
In an issue of "Night Beat" on 29 March 1980, in
an article by Stuart Coupe, they are referred to as
"Pop Mechs".
Their return after a break from April 1980 to
1 November 1980 was greeted by an article in "The Daily Telegraph"
of 27 October 1980 by Peter Botterell headed "Mechanics Fix Their
Problem". He wrote:-
"Popular Mechanics, the band that entertained Sydney
rock fans with their brand of sixties style pop last
year, are back."
eeeeceeeeesethe Original band quickly attracted lots
of attention and were offered a record contract with
Alberts."
The article went on to refer to the Basilisk label
and continued:-
an issue of
"Most of the better bands in Sydney are finally
getting the recognition they deserve and securing
record deals - and about time - some of them could
easily make the charts."
Mention was made of the band and its new single in
"Tagg" magazine dated November 7 - 20 1980 and
"Rolling Stone" of 13 November 1980. There was a further article
in "Tagg" in its 1ssue November 21 - 24 referring to the band
and its new
single.
18.
On 1 December 1980 another article appeared in
"The Daily Telegraph" by Peter Botterell referring to the band
and its new single.
In "The Sunday Telegraph" of 14 December 1980
Ross Mclelland wrote:-~
"The label - Basilisk - is the brainchild of
Popular Mechanics keyboard's player Russell Handley
and recording studio owner Martin Bishop.
The first three releases on the label are singles
from promising Sydney bands The Singles, Sekret
Sekret and Handley's own Popular Mechanics."
These articles are important not only because they
confirm the impression I have from the evidence as to the
reputation surrounding the name POPULAR MECHANICS but it is
proper to assume that they were read by a large number of young
people and therefore they helped to create in their minds the
view about POPULAR MECHANICS which by early 1981 I think the
relevant public had.
On 29 December 1980 Peter Botterell in an article
in "The Daily Telegraph" entitled "1980 - A Year To Remember"
referred to them in fullsome praise:-
"Sydney is still the centre of the music business,
nearly all the happening bands in the country are
based in Sydney and the flourishing alternative scene
is throwing up some great young bands.
It's these independently minded bands that are the
creative force in Australian music. Bands like ........
Popular Mechanics......... are like a breath of fresh
air."
This could only have added to their reputation.
It was suggested that because of the break between
15 April 1980 and 1 November 1980 the band's popularity and
reputation would have suffered. Evidence was given that it 1s
ae Geuncie wee
wa Re
19.
not unusual for bands to cease playing for a period with the
result that those who follow them and know them would not be
surprised not to hear about them for a period. On the other
hand it was said that it would not be in the interests of a
band such as POPULAR MECHANICS not to perform live for a pericd
of eight months.
However one is not left to speculate about the
effect of this break in their live performances. I think it
is clear that from the articles I have quoted, supported as
they were by live performances of the band in November and
December 1980, the release in December of another record and
the continued radio play of their records,that their break from
play did not destroy their reputation and that as at the end
of 1980 and as at the time POP MECHANIX appeared on the Australian
scene, amongst those interested in that type of music, they were
a reasonably well known Sydney band.
Some attention was directed in the evidence towards
the changes in the membership of the band and that this would
have affected the reputation which the band had amongst those
interested in the form of music it played. It 1s important to
note that probably the best known member of the band, Russell
Handley, has been in it sance it's inception. It has had the
same manager and Garry Manley has been a member since June 1979.
Obviously changes in line-up can affect a band's listening
audience as can changes in the style or sound of its music.
Its popularity or appeal can also be affected by the quality of
its recordings and the degree of its promotion. Evidence was
"
~
20.
given on these matters by people who are knowledgable in
popular music but I am satisfied that despite the changes
in line-up the name "POPULAR MECHANICS" at the times I have
mentioned indicated to relevant members of the public particularly
in Sydney a band that had been playing mainly at inner city venues
that had released two singles. Many of them would, I believe,
have known Russell Handley to be a member of the group. I also
think its reputation would have been sufficiently high for it to
be regarded as one of the more promising bands playing in the
inner city area of Sydney.
Although of the view that the name POPULAR MECHANICS
means to the relevant public the band in which the applicants
are and have been interested, I do not think this reputation
has been shown to extend beyond Sydney or Canberra. There is
some evidence that it played late last year in Canberra and
that its records have been played there regularly on radio
station 2xXX. On the basis of this evidence and having in mind
the relative proximity of Canberra to Sydney I am satisfied
on the balance of probabilities that the name POPULAR MECHANICS
does have this reputation in Canberra as well as Sydney.
However, although its records are played and sold
in other cities and some of the magazines I have referred to
circulate there I am not satisfied from the evidence before me
that POPULAR MECHANICS among persons who attend live performances
and buy records of rock and roll music in those places means
the Sydney band in which the applicants are interested. It
may well be the fact but the evidence in my view does not
establish it.
The band did not give a live performance after
20 December 1980. However the band's new release continued to
get publicity. For instance, the issue of "Rolling Stone"
21.
of 8 January 1981 contained a reference to the single
"You Get the Picture/Furniture" by POPULAR MECHANICS.
It said:-
"Another improvement on previous records.
Popular Mechanics come up with a clever
arrangement on "Picture" with a great bass
line and organ fills. Quite commercial in
a way.
'Purniture' is a track with pace and an
excellent production. A lot stronger than
the A-side".
In the issue of Ram of 23 January 1981 Kent
Goddard reviewing the record refers to this record in
the following terms:-
"Bright energetic pop from this Sydney band
which couldn't help but win me over with its
tinny Farfisa organ backing and jumpy bass
line. Like the other two debut Basilisk
platters 1t is highlighted by an excellent
clean production. This record isn't going
to put a big dent in the charts, but it is
pleasant listening and a sign of perhaps
better things to come."
A number of things did happen which, the
respondents claim, had the effect of leading them and
others to believe that the band had split up and was no
longer in existence.
On 28 December 1980 Jim Heywood and Garry Dodd
left the band and Martin Bishop joined it.
22.
However in the issue of "Tag" of January 22 -
February 5 1981 in the gossip column it was suggested
POPULAR MECHANICS was finished:-
"Looks like Popular Mechanics are no more, and
that Russell Handley will be joining The Numbers
on keyboards. And speaking of Pop Mechs, original
singer Greg Foster made a return to the stage on
New Years Eve at the Rock Garden with Jump Vision".
After that date there were a number of articles
referring to Russell Handley's involvement with another group
called "The Numbers". In the issue of "Juke" of 28 February
1981 it was written:- °
"The Numbers are now a four-piece with the
addition of guitarist/keyboardsman Russell
Handley, from fellow- Sydneysiders Popular
Mechanics."
A more lengthy article appeared in the issue of
Ram of 3 April 1981 by one Greg Taylor who wrote:-
"Keyboard player Russell Handley has been a man-
about-the-small-~Sydney-band-scene for some time,
both as a member of Popular Mechanics and as a
partner in Basilisk records. The former is no
more ('We didn't break up - we retired') the
latter continues, while Russell becomes a
Number. Not that it's all totally new for him;
he played on demos for their album ages ago."
This article had in fact been overtaken by events.
Late in March the arrangement which Russell Handley had with
THE NUMBERS was terminated. On March 30, 1981 in an article by
Roger Crosthwaite it was announced in an article headed
"The Numbers Are Soon to Divide" :-
"Anne and Chris Morrow, the brother and sister
team at the core of the band, are reportedly not
satisfied with the sound since the addition of
former Popular Mechanics keyboard player Russell
Handley.
So Handley is to leave the band......"
Similar articles appeared in magazines around this
time.
23.
Considerable evidence was given relating to the
arrangement between Russell Handley and THE NUMBERS. He had
played with them before for the purposes of making demonstration
tapes. He denies that he joined THE NUMBERS as a member of the
band and claims that he was there as a paid performer for the
purpose of a series of live performances. He also says that
whilst he was touring with THE NUMBERS away from Sydney in other
capitals, he kept in touch with members of POPULAR MECHANICS
particularly Martin Bishop and attended to the distribution
in those cities of the record "You Get The Picture/Furniture"
by POPULAR MECHANICS. He also gave evidence that he had been
asked to sign a contract with THE NUMBERS but declined to do so.
Mr Arch Brown, the Tour Manager of THE NUMBERS gave evidence
and he asserted that Russell Handley had become a member of
the group and that he was liable for the debts. He gave
evidence to the effect that throughout the whole period
Handley was with THE NUMBERS he was paid a fixed sum of $150
per week as were the other members of the band. Although he
alleged that Handley was responsible for the debts of the group
he gave no evidence of any contribution that Handley had made
apart from the fact that expenses had been deducted from the
total amounts received as well as the weekly payments of
$150 to performers. Both Russell Handley and Mr Brown gave
evidence that towards the end of March, Handley's services were
terminated and that from then until his tour with them was
finished in April he continued to receive the weekly sum of
$150.
é
oo ee
24.
I do not regard Mr Brown as a reliable witness
and on the balance of probabilities I am satisfied that Russell
Handley was telling the truth in claiming that he did not join
THE NUMBERS as a member of that group. The fact that he
refused to sign a contract with them is in itself a
strong circumstance telling against his having become a member.
However, this finding, of itself, may not be of any great
significance in the case. For the fact 1s he was not engaged
in live performances with POPULAR MECHANICS during that period
and as a result of his playing with THE NUMBERS an impression
was certainly created that POPULAR MECHANICS may have broken up,
he having been an original and very important member of it.
The real question in relation to this matter is
whether, by the time POP MECHANIX started their Australian tour,
the relevant public would have formed the view that POPULAR
MECHANICS had ceased to exist and that therefore they could not
possibly have been misled into thinking that POP MECHANIX was
POPULAR MECHANICS. JI have formed the view from the evidence that
although some members of the public would have believed this
there would still have been a substantial number who knew the
name and who may have still heard its records who believed that
the band was still about and distributing 1ts records. Many
would also have expected it to start playing live again. It is
clear that during the period when Handley was with THE NUMBERS
activity on behalf of POPULAR MECHANICS was continuing.
For instance at this time ,Martin Bishop who with
Handley was running the Basilisk label, took steps to terminate
the distribution arrangement which he previously had with
25.
Larrikin Records to distribute the records of POPULAR MECHANICS
and those of other bands associated with Basilisk. This happened
early in March 1981 and thereafter distribution of POPULAR MECHANICS
records was made by Basilisk itself to numbers of record shops in
capital cities in Australia. On 1 March 1981 a press release
was issued by Basilisk relating to its records including "You Get
The Picture/Furniture".
The evidence establishes that approximately 700
records of POPULAR MECHANICS'single "You Get The Picture/Furniture"
were sold to the public as a result of distribution by Larrikin
Records in the period December 1, 1980 to the end of February 1981
and that up to 300 such records may have been sold since. J say
"may" because although the evidence establishes that there were
some sales it is difficult to be satisfied on the evidence as to
the exact quantity. Mr Bishop gave evidence which I am prepared
to accept as a rough estimate that approximately 300 have been sold
to the public. Most of the distributors have paid for the records
delivered to them since early March.
Evidence was also given that during the period up to
the hearing of this matter, the members of the band POPULAR MECHANICS
have recorded certain jingles for 2JJJ and have received approximately
$1815 for this work. The jingles are used for station identification
and no reference is made in them to the band. Evidence was also
given, which I accept, that in the period from early April the band
has been rehearsing with a view to bringing out a new record.
This involves considerable time and numbers of rehearsals. The
final recording involves marrying a number of tracks to produce
the final work. The tracks done to date were produced to the
court.
Shem wet
26.
I am satisfied from this evidence that whatever
impression may have been created the current members of
POPULAR MECHANICS have not intended to abandon the use of
their name or further live performances under the name POPULAR
MECHANICS. In relation to the latter, a Mr Wild gave evidence
that he was employed by an agency known as Nucleus and this
year has been engaged in finding venues for the band in the
suburbs of Sydney. As indicated earlier the band had played
mainly in and around the inner city and the evidence established
that they were not as popular at suburban venues. Mr Wild, at
the request of Mark Handley, was seeking to find venues for
the band but had been unsuccessful. Although his evidence was,
in some respects, unsatisfactory and vague, I am satisfied
on the evidence that he and his agency have been taking steps
to find venues for POPULAR MECHANICS, albeit unsuccessfully, in
the suburbs of Sydney. He has not sought to find venues in
the inner city because this was a matter the band itself could
look after.
Some suggestion was made that Garry Manley had left
the band and had joined a band known as THE TACTICS. I do not
think that the evidence establishes this. Even if he was
playing with THE TACTICS it would not follow from that that he
was leaving the band POPULAR MECHANICS. He is still an
applicant and although in these proceedings he has not given
evidence I am not prepared to assume that he has forfeited his
interest either in these proceedings or in the continuation of
the band POPULAR MECHANICS.
27.
Considerable evidence was directed to conversations
which took place between the applicant, Martin Bishop, and
employees of CBS between late February and the end of March
1981. It was submitted on behalf of the respondents that the
applicants had offered to sell the name to CBS for $15,000.
Mr Bishop strongly denied this though he did say that he had
offered to negotiate for the use of the name. Having heard the
evidence and noted the demeanour of the witnesses I think the
conversations were at times heated and emotional. Obviously
Mr Bishop strongly resisted the idea of the name POP MECHANIX
being used without the consent of the applicants. One of the
reasons would, I feel, have been the effort and expense that
had gone into the promotion and development of the band POPULAR
MECHANICS since its inception. The idea of another band with
a very similar name entering the market with the promotional
capacity of CBS behind 1t would naturally cause strong objections
from him.
' I have considered this evidence but I am not
satisfied that in his conversation with Mr Scard, Mr Bishop
offered to sell the name to CBS for $15,000. It is quite
likely that in the heat of the conversation a sum of $15,000
was mentioned as an amount which had been invested in POPULAR
MECHANICS and that because Mr Bishop said he was prepared to
—
28.
negotiate over the use of the name Mr Scard obtained
the impression that Mr Bishop was willing to sell for
$15,000. Neither Mr Bishop nor Mr Scard 1s a person
whom I would judge to have deliberately told the court
an untruth in evidence. On this matter the onus lies
on the respondents and I am not satisfied that what
the respondents allege was said. If it had been said
to Mr Scard I would have expected it to have been
repeated to Mr Russell but, although he says a sum of
15,000 or 20,000 was mentioned by Mr Bishop, it was in
relation to an amount that had been spent on the band
and that he wanted back. On Mr Russell's account of
the conversation the impression I was left with was of
Mr Bishop being incensed that CBS was stealing their
name - not an impression of a man who was anxious to
negotiate a sale of the name of a band that was almost
defunct and of whose name he was anxious to dispose.
The respondents' purpose in pursuing this
argument was, I assume, to indicate that the applicants
had really lost all interest 1n the band and had no real
intention of using the name again. However, as I have
indicated, this is not the view I have formed.
29.
Mr Bishop gave evidence, supported by Russell
Handley, that the intention was to release the new single
and resume live performances in June. Whether this will be
realised, particularly having in mind the hearing of this
case and its interruption of rehearsals, may be open to
question. I am however, satisfied, on the evidence, that the
applicants have an honest intention to pursue the production
of another single and to resume live performances in the near
future.
The first five respondents are the current members
of the band POP MECHANIX. It was formed in New Zealand in
April 1979 and was originally known under another name
SPLASH ALLEY. It adopted the name POP MECHANIX in December
1979. The name first considered was POPULAR MECHANIX but this
was shortened to POP MECHANIX as the band were making or
manufacturing pop music. The letters IX, instead of the letters
IcS,at the end of the word "Mechanics" were, it was said,
adopted for two reasons. First, because it was considered to
be smart and, secondly, to prevent the name sounding the same
as that of the magazine known as Popular Mechanics.
At first the band consisted of four of the respondents.
An additional member, the first respondent, joined the band in
October 1980. It made its first recording in August 1980 which
was released and distributed in New Zealand through C.B.S.
New Zealand. A second recording was released in October 1980.
A third recording "Jumping Out a Window" was released in
New Zealand in February 1981 on XSF Records and distributed
by CBS Records New Zealand. Late in January 1981 the band was
30.
one of a number that performed at the Sweetwater Music
Festival near Auckland and it succeeded in attracting
favourable attention. Mr Stuart Coupe attended the Festival
and witnessed the band's successful performance. An article
on the Festival was written by him and published in"The Sun
Herald"on 1 February 1981. In it he wrote, inter alia:-
"New Zealand Pop Mechanix were the surprise success
of the weekend. They played before Split Enz on
Saturday night performing a powerful, vibrant set
of rock and roll that earnt them the most enthusiastic
audience response of the whole festival.
After their festival appearance Pop Mechanix went
into an Auckland studio to record some material
which is being produced by Split Enz keyboard
player, Eddy Rayner."
Reference was also made to the group in an article
on the Festival published in an issue of "Juke" dated
14 February 1981 in the following terms:-
"The other biggie is Pop Mechanix anpther tough
rock act with some great toons. Split Enz
Eddy Rayner was so knocked out that he is
producing some of their stuff."
The music recorded by it and referred to in these
articles is apparently the single "Jumping Out a Window".
SPLIT ENZ is a band which also originated in New Zealand which
came to Australia some years ago and which has since enjoyed
considerable success both here and overseas. Following its
success at the Festival in New Zealand it was apparently decided
that the band POP MECHANIX should undertake an Australian tour
and that it should do so as a support in Australia to the group
SPLIT ENZ at several engagements between 17 March and 16 April
1981. It also appears that at about the same time CBS Australia
became interested in signing a recording contract with the
group covering all countries outside New Zealand. Discussions
31.
took place between representatives of CBS and the group and
a New Zealand company, XSF Records (which had already signed
them up to a recording contract) and on 15 March 1981 a contract
was entered into between CBS and the group which covered
recordings by the group for all countries outside New Zealand.
The contract was for a period of a year with an option to
extend.
There is no evidence that the New Zealand group
derived their name from the name of the Australian band
POPULAR MECHANICS and, they claim, and the evidence is, that
they first became aware of the existence of the Australian
band in February 1981. This was prior to their coming to
Australia and prior to signing up with CBS. The negotiations
in relation to the contract were undertaken on behalf of CBS
by Mr Karpin, its Artist and Repertoire Manager, and later
by Mr Scard, its Business Affairs Manager. Mr Karpin had
become aware of the Australian band POPULAR MECHANICS late in
1980 and about 27 February 1981 had a conversation with the
applicant Martin Bishop during which the existence of the
New Zealand group, POP MECHANIX was mentioned and Mr Bishop
warned that it would have to change its name. Mr Scard gave
evidence that he was unaware of the existence of the Australian
band at the time he was negotiating the contract.
A press release dated 17 March 1981 was issued by
CBS regarding the signing of POP MECHANIX. It contained the
following statement:-
32.
POP MECHANTX
SIGN WITH
CBS RECORDS AUSTRALIA
Pop Mechanix, one of the hottest, most exciting
bands to emerge from the New Zealand rock scene
in recent years, have signed with CBS Records
Australia.
A young and vibrant five piece rock 'n' roll outfit,
Pop Mechanix generated considerable interest from
major Australian record companies following their
powerful performance at the Feb '81 NZ Sweetwater
Music Festival where they reportedly received the
most enthusiastic audience response of the whole
week-end event.
The bands debut CBS single, "Jumping Out A Wandow",
produced by Split Enz keyboard player Eddie Rayner,
will be released on 17 March, the date which also
marks the commencement of the Pop Mechanix Australian
tour with Split Enz (see attached tour itinerary).
POP MECHANIX are: Andrew Snoid - Vocals
Paul Scott - Bass
Paul Mason - Guitar
Kevin Emmett - Drums
Chris Moore - Organ, guitar
This press release was distributed to over 300
journalists, disc jockeys, radio programmers and others in the
musical industry. On the same day, 17 March, the New Zealand
. . . since then .
group commenced live performances in Victoria and/has performed
regularly in Australia almost every night at venues in Melbourne,
Sydney, Canberra and other cities. On 29 and 30 March they
played as support to SPLIT ENZ at the Regent Theatre, Sydney,
and their appearance was the subject of another article by
Mr Coupe in "The Sun Herald" dated 29 March 1981. Much of the
publicity they received related to problems they were having
over the name and either the threat of proceedings or the
fact that proceedings had been brought. Mr Coupe's article
33.
of 29 March was very complimentary. He said:-
"Having seen Pop Mechanix playing live and heard
their single I can thoroughly recommend them to
anyone interested in exciting rock and roll."
In New Zealand the band had badges made with the
lettering POP MX. on them. These were widely distributed by
them in New Zealand and 20 to 30 were distributed in Australia.
The band also used a backdrop with the letters POP MX on it
and for a period this was used in their Australian performances.
The band has made bookings through a booking agency
managed by the witness Mr Righ2z known as Harbour Promotions and
their present intention is to stay permanently in Australia.
After the record "Jumping Out a Window" was released by CBS
it was distributed to at least 250 stores known as chart stores
and probably to another 300 or 400 other outlets. Altogether
approximately 1873 records had been distributed to stores in
all States excepting Tasmania as at 26 May 1981 and sales of
those records have been made to the public since their distribution.
They have not lived up to expectations in any State except
New South Wales.
In addition to the promotion work done by CBS in
connection with the release of their single "Jumping Out a Window"
CBS arranged for a film clip of the band to be produced and
released to television stations. Arrangements were made between
CBS and the ABC program "Countdown" for the group to appear live
on "Countdown" and also for the clip to be shown. On one of
the recent "Countdown" programs they appeared live. On another
the film clip produced by CBS was shown. The "Countdown"
34.
program is televised on a Sunday evening and repeated the
following Saturday so that in effect there have been four
appearances by them on this program. According to the
Co-ordinator Mr Meldrum it has an audience of 3 million people.
These appearances have occurred since the commencement of these
proceedings.
It will be apparent from the above that most of the
exposure to the public by the group has occurred since April 13
1981 when these proceedings were instituted. As stated earlier
much of the publicity concerned the group POP MECHANIX and has
referred either to these proceedings or the possibility of
problems arising out of the use of the name. For example, in the
article by Stuart Coupe on 29 March 1981 it was said after
referring to POP MECHANIX supporting SPLIT ENZ:~
"It looks as though they face some problems with
their band. A Sydney band called Popular Mechanics
who played around the local pubs on and off the
past 18 months are apparently upset about the
New Zealand band using the name in Sydney. I
Imagine the name problem will have been sorted
out before tonight's concert."
On the same date in "The Sunday Telegraph" there
was a similar type of reference in an article "Handley to sue
CBS over name". On April 11, 1981 in the magazine "Juke" reference
was made to the intention to sue because of the confusion between
the two names POPULAR MECHANICS and POP MECHANIX. Again in
"Roadrunner" April 1981 there was a similar reference. In
"Rolling Stone" of 16 April 1981 an article, in part, read:-
35.
"An unfortunate clash of names has led to the
fledgling independent record company Basilisk
planning to take out a temporary injunction
against CBS usang the name Pop Mechanix.
It seems that Pop Mechanix is the name of a
band from New Zealand that was formed some 9
months ago and has recently been signed here by
CBS.....esee.-. The Band has also been touring as
a support act with Split Enz.
However the Australian band Popular Mechanics (also
known as Pop Mex) who have been around a good bit
longer than nine months are somewhat dismayed at
these developments, especially as they have a
current single out called "You Get the Picture" and
have further performing and recording plans."
The record released by CBS has on it "POP MECHANIX"
and a reference to the three songs recorded on it. The record
sleeve, apart from the art work has at the top on each side of
the cover POP MECHANIX in large lettering and at the bottom the
names of the recordings. There is no reference to the band
being a New Zealand band.
It is clear from the evidence that at the time the
individual respondents commenced to perform here they were aware
of the existence of an Australian group known as POPULAR MECHANICS.
It is also clear that Mr Karpin, Artist and Repertoire Manager
for CBS was aware of the existence of the group from late in 1980
and that in a conversation between him and Mr Bishop at the end
of February 1981 he knew that those interested in POPULAR
MECHANICS took the view that the New Zealand group would have
to change its name before it performed here. The venues at
which they have played include a number in the inner city area
of Sydney.
36.
Another relevant matter is the similarity between
the two bands and the audiences they would attract.
Mr Stuart Coupe who has had considerable experience
of popular music particularly of the "new music" and is one of
the leading Australian critics on the subject has seen both
groups play and has listened to their recordings. When asked
what similarities he would draw between the music played and
performed by the two groups he said he found them to a degree
quite similar. They played quite vibrant bouncy pop music with
very memorable distinctive choruses. Both are quite enjoyable
to watch on the stage and are of a similar style. He said the
sort of music both bands are playirg would appeal to people of
12 to 13 right up to approximately 30. It is very accessable
lightweight catchy dance music. He also thought that the same
age group of persons would be those who would be likely to buy
the sort of music the two bands are producing. It does not
demand too much and it is ideally suited to people of school
age, that is,up to the age of 17 or 18,who would constitute
approximately half of the market. He pointed out that the
younger peopie are in a lot of cases, because they have less
money, more inclined to buy one single as opposed to going out
and spending $9 or $10 on an L.P. record.
Other witnesses gave evidence about the two bands
but Mr Coupe has had reason to study the style and performance
of both and the nature of the audience whom they attract.
I regard him as an impartial witness. Where he is in conflict
with others on these matters I would adopt his evidence.
37.
He was also asked about the effect of absence from
live performance by such bands and what was of interest to audiences
who attend their live performances. He said he thought absence could
make people expectant. As at May 1981, especially in the light of the
court case, he said there is an interest in the whereabouts of POPULAR
MECHANICS. It as a very common thing for the management of bands or
the bands themselves to take themselves off the road or away from
public performance for an extended period because in many instances
that serves to increase 1nterest in the band. People begin to ask
what's happening to them, what are they doing. It is quite a common
move by bands themselves not to appear for quite some time. He thinks
that in the case of POPULAR MECHANICS because they have not performed
for some time and their record is a few months old there 1s an interest
in them. He said that the majority of young people go out to see
regular bands and tend to go more to see the band rather than the
personalities on stage. Whether they have swapped a couple of members
is neither here nor there.
His evidence and one's general knowledge of people leads
me to the view that those who attend live performances or who buy
records of rock and roll music are no different to any other cross
section of the consuming public. Some will be very discerning: others
not. Some will have a very special knowledge of the subject: others
only a general understanding. Some will know every detail about a band
others will only know it by its name. Some who hear it will buy
records recalling the name of the tunes 1t plays: others will buy them
remembering only the name of the band and wanting a record of that band
Others will only have an imperfect recollection of the band's name and
of how it is spelt.
The evidence also establishes that the records of
POPULAR MECHANICS AQ POP MECHANIX are sold in the same retail outlets.
They are also likely to be found following one another in the same
38.
rack. Mr Alfonso in his evidence provides an instance where both
records are sold in the same shop and where confusion has occurred
in the minds of customers because of the similarity of names.
It remains to consider the issue of misleading and
deceptive conduct. The conduct which is alleged to be misleading or
deceptive or likely to mislead or deceive on the part of the individual
respondents is their giving live performances under the name POP
MECHANIX or POP MX in various parts of Australia, the arrangements they
made with CBS and helped to carry out in Australia to record their
music for distribution and sale here and their involvement in the
promotion of their records including their appearances on television.
On the part of CBS it involves the arrangements they entered into and
carried into effect here regarding the engagement of POP MECHANIX as
recording artists, the promotion, distribution and sale of their
recordings under the name POP MECHANIX, the making of a film clip for
promoting the group and the distribution of it to television studios
and the arrangements which they made with the A.B.c. for the appearance
of the group on the National program "Countdown" either live or through
use of the film clip. It is alleged that all the respondents intend
to continue this or similar conduct.
It is also alleged that the individualrespondents through
their conduct have either aided or abetted or been knowingly directly
or indirectly concerned in the wrongful conduct of CBS and are
therefore liable to be restrained under s.80 of the Act.
One issue which arises in applying s.52 is whether
what has been done has been done "in trade or commerce". These
are very wide words. In my view they bear the same meaning as
they do in s.51(i) of the Constitution. They are not confined
to the buying and selling of goods and encompass the provision
of services. They include the provision of the intangible as
well as the tangible. It was urged upon me that what was
39.
happening was that the individual respondents were engaged
in pursuing their profession as musicians. In my view
entering into arrangements to provide musical entertainment
live at a venue for reward is clearly engaging in trade or
commerce. Playing live at such venues pursuant to such
arrangements 1s conduct engaged in "in trade or commerce". The
Act itself specifically includes within the definition of
"services" the provision of benefits pursuant to contracts to
provide entertainment (see s.4(1)). Playing a musical instrument
in itself may not be "trade or commerce" but when it 1s done
for reward it is something done "in trade or commerce". The
promotion sale and distribution of records by CBS is also clearly
conduct engaged in in trade or commerce.
The gravamen of the complaint against the respondents
is that they have used deceptive names POP MECHANIX or POP MX
to identify the band, that they intend to continue using them
and that their conduct has misled or deceived the relevant public
in Australia or is likely to mislead or deceive them.
In my opinion the two names in question are very similar
in sound and spelling. The witnesses employed by CBS who gave
evidence for the respondents conceded that the names were similiar.
Mr Karpin said they were very similar. He hoped to distinguish
them through music. They claimed however that nobody in the
music industry would be deceived. It was put on behalf of the
respondents that even though the relevant public might be
confused they were not likely to be deceived and that there
was no evidence of deception.
40.
Counsel for the respondents relied upon the decision
of the Full Court of this Court in McWilliam's Wines Pty. Limited
v. McDonald's System of Australia Pty. Limited((1980) 33 A.L.R.
394). In that case there was evidence that members of the public
were led to wonder whether there was some arrangement between
McWilliam's Wines and McDonald's over the use by McWilliam's
of "Big Mac" on McWilliam's wines. They were confused but the
Court held they were not deceived. I have considered the
judgments in that case but do not think they require me to hold
that in this case there can be no deceptive or misleading conduct.
There at least the majority of the Gourt seems to have regarded
. te with the words
the words "Big Mac" as descriptive as had been the case/in
Hornsby Building Information Centre Pty. Limited v. Sydney
Building Information Centre ((1978) 140 C.L.R. 216). Here
the relevant words are not descriptive. Furthermore,I do not regard
their Honours as having intended to lay down any new principles,
particularly in relation to cases where a trader has sold his
product under a non-descriptive name which has a reputation
attaching to his business in the marketplace and where another tradez
has sold identical or similar goods in that market under a similar
name. I think it is clear from previous decisions of this Court
and the High Court that,even if,in such a case,the defendant's
conduct does not amount to passing off,the conduct can be a
breach of s.52. In such a case it matters not that a member of
the public,if he or she troubled to make enquiry,would discover
that his or her belicf that the products were made by,or in some
way associated with, a trader they were familiar with,was
unfounded. The essential difference betweensuch cases and the
facts as discussed and dealt with in the Hornsby Building
Information Case and The "Big Mac" Case is that where the name
41.
used to identify a trader's product or services ,is: descriptive
it is much more difficult to establish that a defendant has been
guilty of deceptive or misleading conduct or of conduct that is
likely to deceive or mislead. Where, however, a trader's
product or services are known to the public by a particular
name,which is not descriptive,a trader who uses a similar name,
is in real jeopardy of engaging in misleading or deceptive
conduct offensive to s.52.
These principles apply equally in my view to the
circumstances of this case.
The name POPULAR MECHANICS is not a descriptive name.
It is not one therefore which is unlikely to acquire distinctive-
ness because of @ descriptive character. It may well have
been borrowed from the name of a magazine which has been on sale
for many years. However it is not suggested that when it is
used by a band it is likely to be associated in any way with the
business of those who put out that magazine. The evidence in
my view establishes that at the time the respondents commenced
the use of the names POP MECHANIX and POP MX. the names POPULAR
MECHANICS and POP MEX or POP MECHS had quite clearly come to
identify to the relevant public a band which had played live for
several years mainly in the inner city area of Sydney and which
had put out records under those names. When another group
enters the market using names very similar in sound and spelling
as the names of their group, I think there is a very real
likelihood of the public believing that it is the same group
as the one they have known. In my opinion this 1s what can
happer. here and I regard the use of the names POP MECHANIX
and POP MX without more by the respondents as likelv to mislead
or deceive. Their use may already have misled or deceived but
proof thereof is not necessary.
42.
It was pressed on me that the age group who
are likely to follow these bands are themselves unlikely
to be deceived because they are discerning. However, as I
have already indicated, I am left with the impression from
the evidence, particularly that of Mr Coupe, that in essence the
cross section of the relevant market is no different in
character from that which 1s interested in the acquisition of
other goods or services. I am satisfied that there would be
a substantial number of those interested in bands of this
description and who know the band POPULAR MECHANICS and their
reputation who would be led to believe from the use of the
name POP MECHANIX or POP MX that it was the same group and
would either attend their performances or buy their records
believing that to be so. I think there would be many, confronted
by a reference to a band called POP MECHANIX, who would be
confused and unless they were assisted to resolve their confusion
they would be likely to act on the basis of a belief that it was
the same band they knew, namely, POPULAR MECHANICS. [In this
event they could properly be said to have been misled or deceived
not by their own confusion or misconception but by the conduct
of the respondents. There is no suggestion on the part of the
respondents that they have done or intend to do anything to
distinguish the two bands, e.g. by adopting a name such as
"NEW ZEALAND POP MECHANIX". Obviously if people are told facts
at the time they are confused which remove their confusion they
may not ultimately be misled or deceived. However, there is no
certainty in this case that their confusion will be removed
a errors
Aan een ee
43.
either in deciding to attend a performance or buy a record.
Nor is it a case where confusion has to be accepted because
the applicants in this case have chosen a descriptive name or
a name that is widely used in the industry.
In this case, the conduct which is offensive to
s.52 commenced at least as early as 17 March when the band
POP MECHANIX commenced to play in Australia and I have no doubt
that there were people who hearing of the band POP MECHANIX
playing or of a record being put out by a band of that name
or of a band of that name supporting SPLIT ENZ believed not simply
that there was a chance it was the band they knew as POPULAR
MECHANICS but believed that 1t was the band POPULAR MECHANICS.
Although there is no actual evidence of it, I think it is quite
possible that some people acted on the basis cf that belief in
attending performances or buying records.
It was also put in argument that as a result of the
exposure which POP MECHANIX had had, the public would no longer
be likely to be misled or deceived even if, as I understand the
argument, there may have been confusion in their minds at an
early stage. It is true that the band POP MECHANIX has played
very regularly since it commenced in Australia, particularly in
Sydney and Melbourne and that there has been a degree of
exposure on the program "Countdown". There have been some
sales of their records (which I am prepared to assume may have
been equivalent to the number distributed), and a slaght exposure
on radio. However, I have no doubt, as I have already indicated,
that the relevant public still regards the name POPULAR MECHANICS
and to some extent the name POP MEX as referring to the band in
Atlin
44.
which the applicants are interested. I am also satisfied that
the applicants intend to continue to sell and issue records
under the name POPULAR MECHANICS or the name POP MEX and to
resume live performances using that name. In these circumstances
whatever the degree of exposure of POP MECHANIX that may have
occurred, I think it will only lead to deception of the public
if the two bands continue to operate in the same market using
their respective names. I take this view because, in my opinion,
the names are so similar that, unless some step is taken to
distinguish them, members of the relevant public are likely to
be deceived and misled.
In so finding I have left out of account, as I
am bound to, any right or goodwill which the applicants may
have in the name POPULAR MECHANICS. Obviously, as Mr Karpin
agreed, it is difficult enough for a band to succeed in the
highly competitive field of popular music. Success does not
come easily and apparently luck as well as expertise can be
involved in it. To the extent to which s.52 is directed
to ensuring that the marketplace is free of unfair practices
by way of deceptive or misleading conduct, it is important to
those engaged in trade and commerce by the provision for reward
of musical entertainment that they not be subject to such conduct
so that no further impediment than is necessary is placed in
their path in the hard world of competition they face. In
this sense s.52 is ensuring to some extent that the marketplace
is as far as practicable under federal law fair for competitive
purposes to both consumer and trader alike.
45.
The view which I have formed is assisted, though,
I must stress, not dependent on, the evidence so far as it
relates to confusion. It will be apparent that I have formed
this view based on the close similarity of the names, the
nature of the relevant consuming public and the similarities
between the bands and the venues in which they are likely to
play and the fact that their records are being sold in shops
alongside one another in various parts of Australia. The
evidence, however, does confirm the view I have formed.
I have already referred to a number of articles
published in the period since POP MECHANIX began to perform in
Australia. It is common for the intended live performances of
bands to be publicised in these magazines with the date and
the venue. In the issue of "Ram" of 17 April 1981 the following
entry appears advertising the performance of POP MECHANIX at
Sergeant Pepper's night club and Wesley College on 8th and
10th April:-
"POPULAR MECHANICS
8 Sjt. Peppers Naght Club
10 Wesley College, Newtown".
There is no evidence as to how this came about.
Unless it was deliberate on the part of the respondents or the
magazine (and I am not prepared to assume it was) it is obvious
that somebody has been so confused in accepting the instruction
to publish the performance of POP MECHANIX on those nights that
they have used the name POPULAR MECHANICS.
46.
In an issue of "Tag" dated May 14 ~ 28, 1981 there
is an article on POP MECANIX by a journalist Steve Lane. It
commences -
"There I was, sitting in a room at the Diplomat
Motor Inn, sipping coffee, making small talk
and wondering what the hell I was doing there.
I was under the impression that I was going to
have a rave with Sydney band, Popular Mechanics,
instead, I am intreduced to Andrew Snoid, lead
vocalist for New Zealands Pop Mechanix...........
dilema!!i"
It was claimed that this was not evidence of
confusion on the part of Mr Lane and that he should have been
called. Be that as it may,it does provide an instance in the
relevant journals where the possibility of confusion is drawn
attention to and only cleared up after it is made clear that it is
the New Zealand band not the Sydney band.
Mr Coupe gave evidence of a specific occasion where
a friend of his girlfriend (whose name he could not recall) was
surprised that the Sydney band was playing with SPLIT ENZ
saying -
"Is it not odd that the Sydney band is supporting
Split Enz because at this point they are not at
a level where you would expect them to be
supporting a band of Split Eng stature."
In this case the deception appeared to be working
in favour of the band POPULAR MECHANICS. This evidence was
admitted over an objection from Counsel for the respondents.
I admitted it on the ground that evidence of what people in the
relevant market said indicating confusion was as much evidence
of that fact as if they came and gave the evidence themselves.
47.
Evidence of what customers actually say in a shop when
asking for goods could be admitted on a similar basis. It
is not the same as evidence of what a person states his or
her state of mind to be. Such evidence, if admitted is of
course of limited weight.
One of the submissions put on behalf of the
respondents was that the evidence established that people
in the music industry would not be likely to be confused.
I am not sure whether, in giving such evidence, witnesses
were intending to refer only to those actually involved in
the industry as distinct from those attending performances
and buying records. However, what 1s significant, is that a
number of the witnesses who are involved in the industry as
such, did give direct evidence of being confused. For
instance, Mr O'Grady who is the editor of the magazine "Ram"
gave evidence that he knew the band POPULAR MFCHANICS and
was aware of the records which they had released. He also
knew about the band POP MECHANIX and that it had received a
lot of publicity in recent months. When asked whether he
would confuse the band POPULAR MECHANICS with POP MECHANIX
he said "yes and no". He said that he did originally actually
confuse them when he was over in New Zealand at the Sweetwater Music
Festival. He said:-
"T saw the name Pop Mechanix and until it was
explained to me that Pop Mechanix were a New
Zealand band I was unable to separate the
Popular Mechanics and Fop Mechanix".
48.
He went on to say he was wondering if the Sydney
band had come over and somebody had spelt their name wrong.
Another witness, Virginia Madsen, a student who
has been working at an F.M.radio station, 2SER, was aware of the
band POPULAR MECHANICS and had been involved in conducting
interviews with the band early in 1981. She said she probably
became aware of the band POP MECHANIX in early April. When
asked what was in her mind at the time that shayesd the name
POP MECHANIX she said "I just thought it was still POPULAR
MECHANICS because I was not aware there were two bands". She held
that impression until, shortly after then, she saw an article
which said that there were two bands, a new band and POPULAR
MECHANICS.
Mr Karski is a record producer for Albert Productions
the recording division of J. Albert & Sons Pty. Limited, Music
Publishers of Sydney. The Sydney band, POPULAR MECHANICS had
been known to him and discussions had taken place early in
1980 with POPULAR MECHANICS with a view to a recording contract
being entered into between the band and Alberts. No contract
actually eventuated. He said that he first heard of POP MECHANIX
about a month or two before he gave evidence. He thinks he saw
a record sleeve on the wall at CBS and enquired about it and was
told it was a New Zealand band. He said that when he first saw
the poster or record sleeve he was under the impression it was
a Sydney band but it was pointed out to him in fact it was a
New Zealand band. He said that the Sydney band, POPULAR MECHANICS
used to call themselves POP MEX as an abbreviation for POPULAR
MECHANICS and he concluded from seeing the name POP MECHANIX that
it was the same band in fact as POPULAR MECHANICS.
49.
Mr Righi the booking agent gave evidence that
the person who handles the acts at one of the venues, the
Manzel Room, when approached about his using the group
POP MECHANIX, thought it was POPULAR MECHANICS. When it was
explained to him who POP MECHANIX were he went ahead and booked
them and has done so since. He wasn't able to recall any
other instances.
The only record shop retailer who gave evidence
was Mr Alfonso called on behalf of the respondents. He had
been a sales representative with CBS and presently manages a
medium size record shop at Crows Nest. He gave evidence to the
effect that when records of POP MECHANIX were first brought
round by the CBS rep. he naturally asked him whether it was
the same band as POPULAR MECHANICS. He stated that he stocked
records of POPULAR MECHANICS and that in the past four to five
months about five or six of them had been sold. He had also
stocked a record produced by CBS by POP MECHANIX and since the
middle of March about two or three of these had been sold. He
had served customers who had purchased both POPULAR MECHANICS
and POP MECHANIX records on several occasions. Soon after
the single by POP MECHANIX was released he was asked by a
customer whether it was the same band as POPULAR MECHANICS.
He says he informed the customer that it wasn't. This
apparently has happened on other occasions. They have questioned
whether or not the name is the same band. They had possibly
assumed from what they told him that the band POP MECHANIX
was the same band as POPULAR MECHANICS and they wanted him to
clarify the position.
50,
This evidence in my opinion confirms the view
I have formed. Even though it may not indicate that people
acted on the faath of the band, POP MECHANIX,being the same
as POPULAR MECHANICS, the possibility of their doing so
existed without 1unformation being given to them removing their
mistaken belief or confusion. As I have already said there
is no guarantee that people will have such information provided
to them and therefore they may well act on the basis of a
mistaken belief. Whether on occasions it would be to their
detriment to do so is not to the point. In my view it is
sufficient under s.52 if they are deceived or misled or likely
to be deceived or misled whether or not it would be detrimental
to them to act on the faith of their mistaken belief.
Some evidence to the contrary was given by witnesses
called by the respondents. Mr Ian Meldrum, the Co-ordinator of
the program "Countdown" had originally known of POP MECHANIX
as a New Zealand group and he was able to distinguish them from
the band POPULAR MECHANICS. He wouldn't agree that the names
were confusing and relied on the different spelling. He would
agree however that they were similar.
Mr Karpin agreed that the names were very similar
but wouldn't agree that they could readily be confused,
particularly with all the publicity the court case was getting.
He said anyone in the music industry would not be confused but
conceded that for the general public there could be some amount
of confusion. As to the record buying public there wouldn't
be any "great" confusion. He said he thought there was a band
51.
POPULAR MECHANICS with a close name to POP MECHANIX but he
felt that CBS could distinguish them through music.
Mr Russell, the Managing Director of CBS agreed
that the two names were very similar if you write them down
on a piece of paper. He said however that if you are familiar
with the music industry they are totally dissimilar. He also
said that one word is "Popular" and the other word is "Pop".
The word "Pop" in POP MECHANIX is a generic term. It is not
short for "Popular".
Some evidence was given of bands who had similar
mames. There was a band in Melbourne called "WENDY AND THE
ROCKETS" and a band in Perth called "THE ROCKETS". There is
another band in New Zealand called "THE ROCKETS". There is a
group known as "THE BEAT" and another known as "THE BRITISH
BEAT". There are two bands named "JIGSAW" one of which
subsequently became known as "THE BRITISH JIGSAW". There were
"THE STARS", "THE AUSTRALIAN STARS" and "THE AMERICAN TSARZ".
It is evident from what I have already said that I
do not think there is sufficient difference in the use of the
word "Pop" as against the word "Popular" to distinguish POP MECHANIX
from POPULAR MECHANICS in the way Mr Russell suggested. It seems
to me that the names are so similar that the likelihood of
deception exists. The evidence of other bands with similar
names does not establish any practice in the industry. If
anything it indicates attempts to distinguish between groups. .
For instance "THE BEAT" and "THE BRITISH BEAT", "JIGSAW" and
ee ee eed
wae te te ne te ees ete
52.
"THE BRITISH JIGSAW" as I have detailed. Although some of
the articles have emphasised that the band POP MECHANIX is a
New Zealand band it is not advertised under that name, its
records are not sold with any specific reference on the
recording or the cover to the fact that they are a New Zealand
band. Nor does their backdrop or other material appear to
distinguish it in this way. If, of course, it had called itself
THE NEW ZEALAND POP MECHANIX it may have been easier for the
respondents to claim that this was sufficient to avoid deception
of the public.
In my opinion the following actions of CBS are
likely to mislead and deceive:-
- promoting the band POP MECHANIX under that name
and the name POP MX.
~- selling records under those names to retailers
with a view to their sale in record shops.
- providing film clips and other demonstration tapes
for use by television stations; making arrangements
for the use and using television broadcasts for
the purposes of promoting the band POP MECHANIX
under those names.
Although the conduct of the individual respondents
in performing live at various venues in Sydney and Canberra may
be likely to mislead or deceive, in the sense I have discussed,
it is not conduct which of itself comes within the reach of the
Act. However, it is clear from the evidence that live performances
are aB much a part of increasing the popularity of a band and
thereby boosting record sales as being involved in promotional
work on radio, television or in the press. Such conduct in my
view amounts to aiding or abetting CBS to contravene s.52 within
the meaning of s.80(1)(f) and being directly or indirectly
sue a a ce ns
53.
knowingly concerned in or party to the contravention by
CBS of s.52 within the meaning of s.80(1)(h).
In my view the individual respondents have also
breached s.52 ky virtue of the extended operation that section
is given by s.6(3) of the Act. They performed live on a
television program and this was conduct engaged in which was
likely to mislead or deceive which "took place in a television
broadcast" within the meaning of that subsection.
Tt was also suggested that they had, as individuals,
engaged in trade and commerce among the States. I do not think
that any of their conduct was "trade or commerce among the
States" as contemplated by s.6(2)(a)({ii) of the Act. Therefore
the Act does not apply to them as individuals by virtue of that
provision.
In the light of these findings I am of the opinion
that the applicants are entitled to appropriate injunctive relief.
As agreed with Counsel I shall determine the form of that relief
after hearing submissions from them.
emt ae i, ener Ae Ay a OM Myre) ae rime we