JUDGMENT No.4= 1 fn Sh Ar ddemuiry * CATCHWORDS TRADE PRACTICES ~- Contest over use of name "Colossus" in connection with crossword puzzles — Puzzles compiled by applicants and published by respondent under that name - Whether either party had acquired a reputation in that name such as to constitute a use of that name by the other an infraction of ss.52 or 53 of the Trade Practices Act or a passing off - Whether s.65A provides a defence to the claim. CONTRACT - Implied term - Whether there ought to be implied in the agreement between the parties a term precluding the use of the word "Colossus" by the respondent in connection with crosswords not compiled by the applicants. Trade Practices Act 1974 ss.52, 53, 65A. NSW G.1116 of 1988 JAMES LOVATT & ORS v CONSOLIDATED MAGAZINES PTY LIMITED Wilcox J Sydney 5 September 1988 NEW SOUTH WALES DISTRICT REGISTRY IN THE FEDERAL COURT OF AUSTRALIA GENERAL DIVISION BETWEEN: AND BETWEEN: No. G.1116 of 1988 JAMES LOVATT First Applicant CHRISTINE LOVATT Second Applicant WORDSMITHS PTY LIMITED Third Applicant CONSOLIDATED MAGAZINES PTY LIMITED Respondent CONSOLIDATED MAGAZINES PTY LIMITED Cross-Claimant JAMES LOVATT First Cross-Respondent CHRISTINE LOVATT Second Cross—-Respondent WORDSMITHS PTY LIMITED Third Cross—Respondent PUZZLE PRESS PTY LIMITED Fourth Cross-Respondent CENTURY PUBLISHING PTY LIMITED Fifth Cross-Respondent CORAM: WILCOX J PLACE: SYDNEY DATE: 5 SEPTEMBER 1988 MINUTES OF ORDER THE COURT ORDERS THAT: 1. The Application be dismissed. 2. The Cross-claim be dismissed. 3. The cross-claimant, Consolidated Magazines Pty Limited, pay to the cross-respondent, Century Publishing Pty Limited, its costs of the Cross-clain. Notes Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules. IN THE FEDERAL COURT OF AUSTRALIA NEW SOUTH WALES DISTRICT REGISTRY GENERAL DIVISION BETWEEN: AND BETWEEN: No. G.1116 of 1988 ~~ Sw JAMES LOVATT First Applicant CHRISTINE LOVATT Second Applicant WORDSMITHS PTY LIMITED Third Applicant CONSOLIDATED MAGAZINES PTY LIMITED Respondent CONSOLIDATED MAGAZINES PTY LIMITED Cross-Claimant JAMES LOVATT First Cross—Respondent CHRISTINE LOVATT Second Cross-—Respondent WORDSMITHS PTY LIMITED Third Cross—Respondent PUZZLE PRESS PTY LIMITED Fourth Cross-Respondent CENTURY PUBLISHING PTY LIMITED Fifth Cross-Respondent CORAM: WILCOX J PLACE: SYDNEY DATE: 5 SEPTEMBER 1988 REASONS FOR JUDGMENT The sole question which arises in this litigation is the entitlement of the various parties to use the word "Colossus" in connection with the publication of crossword puzzles. The parties and the proceedings The first and second applicants, James and Christine Lovatt, are husband and wife. They control the third applicant, Wordsmiths Pty Limited. The respondent, Consolidated Magazines Pty Limited, is the publisher of a weekly magazine known as "People". Consolidated Magazines was previously known as Fairfax Magazines Pty Limited, before that as Magazine Promotions Australia Pty Limited; and before that again as Sungravure Pty Limited. From early 1979 until July 1988 the applicants, or one of them, supplied a crossword puzzle for publication in each issue of "People". Each of those crosswords was compiled by Mrs Lovatt, with some assistance from her husband. Each was published in "People" under the title "Colossus". A characteristic of each of the crosswords was its size. The crossword always occupied a complete page in the magazine. From early 1981 the crossword was always published in a position immediately following a feature -- containing games and puzzles -- entitled "Games People Play", which feature was billed as being "compiled by Christine Lovatt". But there was no regular attribution to Mrs Lovall of the crossword itself. From time to time collections of the crossword puzzles previously used in "People" magazine have been published in book form. The first book was entitled "People's Colossus Crossword Book". The title page referred to the various puzzles it contained -- not all of them crosswords -- as being "compiled by People's popular puzzling pair Christine and James Lovatt". This book was published by the respondent and sold by newsagents and other retailers. The respondent subsequently published other books of puzzles. They were identified as "People's 2nd Colossus Crossword Book", "People's 3rd Colossus Crossword Book", and so on down to the 10th in the series. In each case the title page named Christine and James Lovatt as the compilers of the puzzles contained in the book. Puzzle Press Pty Limited is a company controlled by Mr and Mrs Lovatt and by Jules Zanetti and his wife. From March 1978 until 1980 Mr Zanetti was the editor of "People". Thereafter he became publisher of the magazine and subsequently the group publisher of all the magazines published by the Fairfax organization. That employment ceased in April 1988, shortly after the sale of the Fairfax magazines to the Australian Consolidated Press group. Since that date Mr zanetti has devoted his time to the activities of Puzzle Press, which company recently produced a book called "People's 11th Colossus Crossword Book". This book was published under that name pursuant to an arrangement made with Australian Consolidated Press. The association between Mr and Mrs Lovatt and the respondent recently ceased. The last crossword supplied by the applicants was published in "People" on 19 July 1988. In the following issue, of 26 July 1988, a crossword of similar size was published under the title "Super Colossus". The compiler of this crossword was not identified in the magazine. Neither Mr or Mrs Lovatt had anything to do with its compilation. They took exception to the use of the word "Colossus" in connection with a crossword not compiled by them and, on 27 July, they commenced this proceeding by filing an Application seeking various orders, including an injunction restraining the respondent from publishing, in "People" magazine or otherwise, any crossword puzzle the title of which consists of, or includes, the word "Colossus" and which is not a crossword puzzle compiled by one of the applicants. Late in June 1988 there was press publicity of an alleged arrangement, between the applicants and a company known: as Century Publishing Pty Limited, for the inclusion in a new magazine, to be published by that company and called "The Picture", of crosswords supplied by the applicants. The respondent therefore cross-claimed in this proceeding, seeking orders restraining each of Wordsmiths, Puzzle Press and Century Publishing from publishing in any magazine or book any crossword puzzle whose name is or includes the word "Colossus" or from using that word in the title of any book containing crossword puzzles. Orders were also sought restraining Mr and Mrs Lovatt from being knowingly concerned in any such publication. The claim by the applicants against Consolidated Magazines is put upon two broad bases: firstly, breach of an implied term of the contract made between Mrs Lovatt and that company and, secondly, contravention of ss.52 and 53 of the Trade Practices Act 1974 together with passing off. The cross-claim depends upon s.52 alone. Implied contractual term In order to deal with the contention relating to an implied term it is necessary to refer to the evidence surrounding the making of the original agreement for Mrs Lovatt to supply crosswords to "People" magazine. This evidence is not in dispute. Mr Lovatt is, by profession, a journalist. He joined the staff of "People" in 1978, being employed as a sub-editor. Most of the contributions to the magazine were then made by freelance journalists. At that time the magazine published a crossword puzzle each week under the title "The People Stopper". One of Mr Lovatt's tasks as sub~editor was to check the crossword before publication. He frequently found errors in the copy submitted. He discussed the situation with his wife, who waS a crossword enthusiast. Mr Lovatt commented to Mr Zanetti, who was then the editor of the magazine, that his wife, Christine, could do a better job on the crossword. Mr Zanetti invited Mr Lovatt to have her submit a sample of a crossword. Mr Lovatt reported this conversation to his wife. She prepared a sample, which Mr Zanetti found acceptable. However, Mr Zanetti informed Mr Lovatt that he needed to be convinced that Mrs Lovatt could produce the crosswords on a regular basis. Mr Zanetti suggested that Mrs Lovatt should produce six crosswords over the following six weeks and he said that if the quality of the crosswords was good enough then she could do the crosswords for the magazine on a permanent basis. Once again, Mr Lovatt reported this conversation. Mrs Lovatt produced six crossword puzzles. During the course of this task, and as a result of her own experience and the conversations she had with her husband, Mrs Lovatt settled upon certain characteristics which she thought necessary for a popular crossword puzzle. As I understand the evidence, she has adhered to these criteria ever since. Mr Lovatt took the six samples to Mr Zanetti. There followed a conversation between Mr Zanetti and Mr Lovatt in the presence of Mr Ralph Wragg, the then managing editor of the magazine. During the course of that conversation, Mr Wragg informed Mr Lovatt that Mrs Lovatt's crosswords "seemed to be fine". On behalf of the magazine he offered to pay $150 for each crossword which was published. Mr Lovatt replied: "That will be alright for first Australian magazine use only. We are hoping we can arrange for republication of the crosswords overseas". Mr Lovatt went on: "Christine wants to call it 'The Colossus Crossword' because it suggests not only big but worldwide". Mr Zanetti suggested the name "Mammoth"; but Mr Lovatt rejected this name, saying that it had already been used. It was then agreed, by both Mr Zanetti and Mr Wragg, that the name "Colossus" would be used in the magazine. Mr Wragg and Mr Zanetti shook hands with Mr Lovatt on the agreement, which was not confirmed in writing at that time. The first crossword puzzle compiled by Mrs Lovatt appeared in the issue of "People" magazine dated 1 February 1979. At that time "The People Stopper" crossword was discontinued. Mrs Lovatt's puzzle was always published under the name "The Colossus Crossword" and a payment of $150 was made by the magazine in respect of each crossword puzzle which it published. Mr Lovatt left "People" in 1980. Shortly thereafter Wordsmiths was incorporated. Since that time Mr Lovatt has apparently devoted a major proportion of his time to the business of that company, which business has included participation in the publication of the various "Colossus" crossword books previously mentioned. The arrangements between Mrs Lovatt and "People" magazine were renegotiated in 1981. On 17 March 1981 Mr Zanetti wrote a letter to Mr and Mrs Lovatt referring to discussions which had been held and stating that he was "now in a position to formally offer you a firm contract for the supply of weekly crosswords and puzzles for a period of three years". Under the heading "Colossus Crossword" the following appears: "It is agreed that you will supply, from April 1, 1981, People Magazine with one Colossus Crossword per week with exclusive Australasian rights. The existing arrangement, whereby People and your company share proceeds of the sale of crosswords to Globe Publications in Montreal, is to continue for the duration of this agreement. You will be free to dispose of the crosswords in any countries other than Australasia, including Canada, provided such arrangement does not jeopardise the existing arrangement with Globe Publications. It is further agreed that you may not supply crosswords to other publications inside or outside the Fairfax/Sungravure group, without the Editor of People first authorising it. This is designed to avoid any duplication, and to maintain People's exclusivity. It is further agreed that you will undertake to maintain a six-week advance supply of crosswords, and to maintain the standard and size of the crosswords. It is further agreed that this three year contract, dating from April 1, 1981, covering the crossword, is subject to People having the option to renew the contract for a further three year period." The agreement also dealt with the publication of puzzles and games supplied by Mr and Mrs Lovatt, with book rights and with the provision of consultancy services whereby Mr and Mrs Lovatt undertook to spend a certain amount of time each week in the "People" office to oversee the production, revision and final check of the games and crosswords. A schedule of payments was specified including payment of $175 for each two-page Colossus Crossword. The letter included provision for an increase in the rates paid at the conclusion of each twelve month period. The three year period contemplated by this agreement expired in April 1984. There is no evidence of any subsequent agreement between the parties. It seems that the parties continued to act thereafter as if bound by the agreement, subject perhaps to some increase in the rates of payment. The contention of the applicants is that the agreement made in 1978 between Mrs Lovatt, through her agent Mr Lovatt, and the respondent included an implied term "that the respondent would not use the word 'Colossus' as the title or part of the title of any crossword published by it not supplied under the terms of the said agreement". It is not contended that there was any express agreement to that effect, either in 1978 or in 1981. In BP Refinery (Westernport) Pty Limited v Hastings Shire Council (1977) 52 ALUJR 20 at p.26, a majority of the Judicial Committee of the Privy Council specified five conditions necessary for a court to imply a term ina contract: "(1) it must be reasonable and equitable; (2) it must be necessary to give business efficacy to the contract, so that no term will be implied if the contract 1s effective without it; 10. (3) it must be so obvious that ''it goes without saying'; (4) it must be capable of clear expression; (5) 1t must not contradict any express term of the contract." In the present case there is no difficulty in concluding that the term contended for by the applicants complies with conditions (1), (4) and (5) of the above conditions. The respondent, however, denies that a term to the effect of that contended for by the applicants was necessary in order to give business efficacy to the contract or that its inclusion in the understanding made between the parties was so obvious as to "go without saying". Reference is made by counsel to the discussion of the circumstances in which a term may be implied which is contained in the reasons for judgment of the members of the High Court of Australia in Codelfa Construction Pty Limited v State Rail Authority of New South Wales (1982) 149 CLR 337. In particular counsel for the respondent call attention to the following passage in the judgment of Mason J at p.346: "For obvious reasons the courts are slow to imply a term. In many cases, what the parties have actually agreed upon represents the totality of their willingness to agree; each may be prepared to take his chance in relation to an eventuality for which no provision is made. The more detailed and comprehensive the contract the less ground for there is for supposing that the parties have failed to address their minds to the question at issue. And then there is the difficulty of identifying with any degree of certainty the term which the parties would have settled upon had they considered the question. 11. Accordingly, the courts have been at pains to emphasize that it is not enough that it is reasonable to imply a term; it must be necessary to do so to give business efficacy to the contract ... The basis on which the courts act in implying a term was expressed by MacKinnon LJ in Shirlaw v Southern Foundaries (1926), Limited [1939] 2 KB 206 at p.227 in terms that have been universally accepted: 'Prima facie that which in any contract is left to be implied and need not be expressed is something so obvious that it goes without saying ...'". Counsel for the applicants submit that the implication of a term regarding the title of the crosswords is necessary in order to give business efficacy to the agreement made between Mrs Lovatt and the magazine. They point out that it was expressly agreed between the parties that the puzzles were supplied to the magazine upon the basis that the fee which was paid would cover the first Australian magazine use only and that the respondent was informed that Mrs Lovatt hoped to arrange for republication -- obviously for her own benefit -- of the crosswords overseas. Counsel further point out that the name "Colossus" was suggested by Mrs Lovatt, and not by anybody associated with the magazine, and that the word was selected partly because of its perceived international flavour. The limitation of "first Australian rights" would be meaningless, say counsel, if the applicants were not free thereafter to republish the same crossword puzzles under the title "Colossus". Furthermore, counsel submit, it must have been obvious to the parties that, in the course of time and with the regular use of the title "Colossus", the name would acquire a considerable goodwill value; so that it is unthinkable that the parties would have wished to leave unresolved the entitlement to that value. 12. I see the force of the submissions put by counsel for the applicants but I am not persuaded that this is a case in which the Court should imply a term. It 1s true that the name "Colossus" was suggested by Mrs Lovatt and that she was influenced in that cho1ce by her hope that the crossword puzzles could be published overseas. It would be a natural corollary of such a hope that the perceived international connotation in the title could be exploited by using the same name in any overseas publication. But 1t would not follow that it would be necessary that the agreement between the parties preclude the use by the respondent of the title "Colossus" in relation to crosswords not produced by Mrs Lovatt. Nothing has been put before the Court to suggest that an overseas publisher would be affected in any decision to use crosswords supplied by Mrs Lovatt, or to publish them under the title "Colossus", by any continued publication in "People" magazine of crosswords, not supplied by Mrs Lovatt, under the title "Colossus". So far as the evidence shows, "People" is distributed only in Australia. It is difficult to see that an overseas publisher would be influenced in any way by a title used in "People". Certainly this was not a matter adverted to in the discussion between Mr Lovatt, Mr Zanetti and Mr Wragg. Under some circumstances an argument founded upon an expectation of the generation of goodwill might carry weight. If 1t was certain that a substantial goodwill would attach to a title, it might be thought unlikely that the parties would have intended to leave unresolved the question of which of 13. them was entitled to that goodwill. But I do not think that this is such a case. At the time of the initial agreement Mrs Lovatt had no professional experience as a crossword compiler. This was a new venture for her, caused by the fact that her husband happened to be working for a magazine in which the existing puzzles were thought to be unsatisfactory. No doubt Mrs Lovatt hoped that the puzzles compiled by her would prove popular with readers, as on the evidence they did, and that the association would prosper and continue for a considerable time. No doubt Mr Wragg and Mr Zanetti hoped that Mrs Lovatt would be able to supply a continuous stream of puzzles which would prove satisfactory to the readers of the magazine. But on neither side was there any commitment to continuity. There is no evidence that any of the participants in the initial discussions even contemplated the possibility that the word "Colossus" might generate some independent goodwill value. And, even if the parties did think about the possibility of goodwill, it is not obvious that they would have been of one mind as to which of them should have the benefit of that goodwill; so that they would together have turned to the officious bystander who reminded them that they had not expressly dealt with the question of entitlement to use the word "Colossus" with the testy rebuke: "Of course, that name can only be used for Mrs Lovatt's puzzles". Mrs Lovatt was in an inferior bargaining position. Mr Wragg and Mr Zanetti may well have successfully insisted that, if her puzzles proved unsatisfactory, "People" might continue to publish full-page puzzles prepared by others under the new name. 14. The agreement between the parties was for the submission, on a regular basis, of crossword puzzles in return for a specified fee. Even if it be conceded that it was a term of the agreement, as distinct from an indication of the publisher's intention, that the puzzles be published under the title "Colossus", it does not follow that it was necessary to imply a term as to the right to use that title in order to give business efficacy to the agreement. It would be perfectly compatible with that agreement that, if the parties' paths diverged, Mrs Lovatt could use the word "Colossus" in connection with her crossword puzzles published elsewhere and that the respondent could use the word "Colossus" in connection with puzzles devised by others. In my judgment it cannot be said that a term in the form suggested by the applicant is something which was, at the time, so obvious that "it goes without saying". Trade Practices Act and passing off claims I turn now to the applicants' claims under ss.52 and 53 of the Trade Practices Act and for passing off, which claims may be discussed in conjunction with the respondent's cross-claim under s.52. The claims made under s.53 were that the respondent, in trade and commerce, falsely represented that its crosswords were of a particular standard, quality and style (s.53(a)) and falsely represented that they had sponsorship, approval or performance characteristics which they did not in fact have (s.53(c)). a 15. The applicant led evidence from 16 persons who have customarily attempted the "Colossus" crossword in "People". Most of these people were aware that the crossword was compiled by Mrs Lovatt; some were not. All of them spoke in laudatory terms of the crossword. Most compared the crosswords subsequently published in "People", under the title "Super Colossus", unfavourably with the "Colossus" crosswords. Several of the witnesses spoke of the distinctive style of the "Colossus" crosswords, some having noticed the similarity between this style and that found in crosswords, devised by Mrs Lovatt and published during recent years, in "Woman's Day". Most of these witnesses were familiar with the "Colossus" crossword books. All of the witnesses who had tried the "Super Colossus" crosswords quickly realised, upon doing so, that those crosswords were compiled by someone else. As previously mentioned, it has not been the practice of "People" magazine regularly to associate either Mr or Mrs Lovatt with the "Colossus" crosswords. However, upon some occasions, the magazine has published notes or articles in which the compilers have been identified. In particular, on 29 April 1981, "People" published a lengthy article about Mr and Mrs Lovatt, and their crossword-making technique. This article featured a photograph of them both, toiling over a draft crossword. From these occasional articles any long term devotee of the "Colossus" crossword would be likely to have learned that the person identified as the compiler of the games section was also, with her husband, the compiler of the 16. "Colossus" crossword. And, of course, many of such people would know Mr and Mrs Lovatt from the crossword books. In summary, it must be concluded that there exists, amongst the readers and former readers of "People", a body of people who would associate Mr and Mrs Lovatt, or one of them, with the name "Colossus", published in connection with a crossword puzzle in that magazine, in the sense that they would know that one or both of these people were responsible for compiling the crosswords which had appeared under that rubric. What proportion of the total readership of "People" falls into this category it is impossible to say. Evidence was called by the respondent from nine readers of the magazine who said that they did not know the "Colossus" crossword other than as a regular feature in "People". They are probably not the only readers in that position. As is obvious from its cover and content, "People" is not only directed at the intellect. No doubt many readers of "People" buy it otherwise than for its crossword puzzles. They may be indifferent to the authorship of those puzzles, perhaps even oblivious of their existence. There may even be "Colossus" aficionados who are unaware, or unsure, of the authorship of those puzzles. The argument put on behalf of the applicants, in connection with s.52, is that, once it is established that there exists a body of people who associate the name "Colossus" with the work of the applicants, it is demonstrated that the use of that name in relation to a crossword not compiled by them constitutes conduct which 1s likely to mislead members of the public. It is no answer, say counsel, 17. that crossword devotees would be likely to realise, upon attempting the "Super Colossus" puzzles, that these puzzles are not compiled by Mr and Mrs Lovatt. By that time a reader 1s likely to have purchased the magazine. The misleading conduct, according to the argument, is to use the name "Super Colossus" as the title of one of the regular features of the magazine. Counsel suggest that it is significant that the respondent chose the name "Super Colossus", rather than a distinctively different name, for the crosswords compiled by Mrs Lovatt's successor. In this connection it 1s interesting to note that, upon the front cover of the first of the issues carrying a "Super Colossus" crossword, the July 26 issue, there appear the words: "New Great Crosswords. Criss-Crossword, 13 terrific puzzles in one! Super Colossus bigger than ever!". Upon the page where the puzzle appears are printed, after the name "Super Colossus", the words "bigger and bolder than ever". These captions clearly suggest a connection between the "Super Colossus" crossword and what has gone before, implying that what is published 1s the same puzzle on an enlarged scale. The argument for the respondent denies that there is any likelihood of members of the public being misled. Counsel point out that the word "Colossus" is an ordinary English word prima facie available for anyone to use. They say that the evidence does not associate the word "Colossus" exclusively with the Lovatts. It is a word which was used to identify a particular feature of the magazine. The evidence, say counsel, suggests that readers who are interested in the 18. crosswords published in "People" associate Mr and Mrs Lovatt with a particular style of crossword, not with a particular name. The true connection in the public mind, according to counsel, is between the name "Colossus" and "People" magazine, of which it has been a regular feature for over nine years; hence it would constitute misleading conduct to use the name "Colossus" in some other publication, thereby suggesting some connection between that other publication and "People". In particular, says the respondent, the use of the word in a different publication would be likely to signify to readers of that publication that either that publication as a whole or the crossword puzzle itself is published by, or with the licence or approval of, the publisher of "People". The latter part of this argument has only to be stated to be rejected, and with it the cross-claim. It may be accepted that there exists a significant number of people who have become familiar with the use of the name "Colossus" as a designation of the crossword which 1s a regular feature in "People". It may also be accepted that some of those people are unaware of the identity of the author of those puzzles. They may be unaware that they have all come from the same source, They may believe that the puzzles are devised by a multitude of people. In short, there may be some people for whom the word "Colossus" has no significance except as the title given by "People" to its weekly crossword feature. It may, further, be assumed that some of these people will come across the name in its other context; whether "The Picture" or otherwise. But, in doing so, those people will be aware 19. that they are seeing the crossword in a different magazine. It can hardly be contended that, by the circumstance that these readers find in the other publication a crossword similar in style and size to that which they know from "People" and bearing the same name, they think that this publication is "People" magazine. Nor, I think, can it be said that such readers are likely to assume that the other publication, or the crossword, is published with the licence or approval of the publisher of "People". The relationship could as easily be the other way around; or, perhaps more likely in the age of syndicated journalism, it might be thought that both puzzles emanate from a common outside source. There is no evidence whatever that the word "Colossus" has acquired a secondary meaning amongst readers of "People" as indicating a puzzle created by that magazine. Of course, a reader who comes across a "Colossus" puzzle in another publication may realise that it is a crossword constructed upon the same principles as the "Colossus" in "People". The reader may even deduce that it was compiled by the same person or persons. But there would be no error in those conclusions. To the extent that the name "Colossus" induces such beliefs, it would not be misleading. The Trade Practices Act and passing off claims made by the applicants require more extensive discussion. Falsity is of the essence of all of those claims. Section 52 of the Act proscribes conduct which is misleading or deceptive or is likely to mislead or deceive. Section 53 prohibits a 20. corporation making false representations as to particular matters. And the making of a misrepresentation 1s an essential ingredient of the tort of passing off: see Erven Warnink BV v_ J Townend & Sons (Hull) Limited [1979] AC 731 at p.742. So the case for the applicants, under each of these headings, must depend upon the proposition that the publication in "People" of a crossword name which is, or includes, "Colossus" constitutes a representation to readers that the crossword puzzle was devised by one or more of the applicants. As the name "Colossus" does not, in terms, make any reference to the applicants, that proposition, in turn, must depend upon the claim that the word "Colossus" has acquired a distinctive meaning, signifying to knowledgeable members of the public that any crossword published under that title was created by the applicants. The principles applicable to such a claim were summarized by Gummow J in Telmark Teleproducts (Australia) Pty Ltd v Coles Myer Ltd (5 August 1988, not reported). As his Honour pointed out, although it will generally be relevant to consider whether a respondent has acted fraudulently or has deliberately sought to take advantage of the applicant's name, badge er reputation, a finding that the respondent has so acted is not enough to establish a case under s.52 of the Trade Practices Act or a case of passing off. The same is true of a case under s.53 of the Act. This is because of the necessity, in each type of case, to show that the conduct of the respondent involves the making of a misrepresentation. Consequently, although I have no doubt that, in selecting the 21. name "Super Colossus", and in its use of the words "bigger than ever" in the July 26 issue of "People", the respondent sought to take advantage of the high reputation of the crosswords which had been compiled by Mrs Lovatt and had been previously published by 1t under the name "Colossus", that fact is not enough to ensure the success of the applicants. They must establish that a substantial portion of those readers of "People" who are interested in crossword puzzles identify all puzzles published under a name which is, or which contains, the word "Colossus" as the product of one or more of the applicants. I do not think that this case is made out by the evidence. As I have said, some -- perhaps many -- readers of "People" became aware that one or both of the Lovatts was responsible for the compilation of the "Colossus" crosswords published in "People" up to 19 July. But none of these witnesses claimed that the mere word "Colossus" conveyed to him or her a puzzle created by the Lovatts. Each of the witnesses who had subsequently seen a "Super Colossus" crossword conceded that he or she realized from the style of the crossword that the "Super Colossus" was compiled by someone else. It is true that this positive realization came after the magazine was purchased; but in each case the purchase was occasioned by the expectation of a Christine Lovatt crossword rather than because of the use of the name "Super Colossus", 22. Reference was made, during the course of argument, to some authorities concerning the use of pseudonyms: see Landa v_ Greenberg (1908) 24 TLR 441, Hines v Winnick [1947] Ch.708, Modern Fiction Ltd v Fawcett (1949) 66 RPC 230, Forbes v Kemsley Newspapers Limited [1951] 2 TLR 656, Sykes v John Fairfax & Sons Limited [1977] 1 NSWLR 415. Those cases affirm the general principle that a person whose work is published under a pseudonym is entitled, subject to any agreement to the contrary, to prevent the publisher using that same pseudonym in conjunction with the work of another person. But I do not think that these cases assist the applicants in the present case. A pseudonym is a direct reference to the author, so that continuity in the use of a pseudonym tends to suggest continuity in the identity of the author. In contrast, the title given to a regular feature of a magazine or of a newspaper is a reference to that feature. Members of the public are familiar with the notion that authorship of particular features in a magazine or 1n a newspaper changes from time to time. During his or her incumbency a particular author, or editor, of a feature may become well known to readers; but the readers would not normally expect that the feature will close down, or the title will be changed, if someone else takes over responsibility for 1t. Successful features, and their titles, tend to outlast their creators. I do not go so far as to say that it 1s impossible to envisage a situation under which a particular feature ina publication, or its title, is so connected in the public mind 23. with a particular person that the continuation of that feature or title after the departure of that person, without disclosure, amounts to a misrepresentation of fact capable of giving rise to an action under s.52 or s.53 of the Trade Practices Act or aS a passing off. But I think that strong evidence would be required to make out such a case, establishing such a connection in the public mind between the relevant feature or title and the person that a reference to the former will be taken as a reference to the latter. In my opinion, it is not enough to show that members of the public are aware of the identity of the person responsible, for the time being, for that feature or title. Upon analysis, the evidence in the present case does no more than make out the latter situation. My conclusion on this aspect of the case is that, in continuing to use the name "Colossus" after the departure from the magazine of Mr and Mrs Lovatt, the respondent did not make any misrepresentation. It follows that each of the claims under the Trade Practices Act, and the passing off claim, must fail. Section 65A For the sake of completeness I should add that counsel for the respondent submit that, in any event, the applicants' claim under the Trade Practices Act would be defeated by s.65A of that Act. Sub-section (1) of that section excludes the application of certain sections of the Act, including ss.52 and 53, to "a prescribed publication of matter by a prescribed information provider, other than-- we 24. (a) a publication of matter 1n connection with-- (i) the supply or possible supply of goods or services; (iil) the sale or grant, or possible sale or grant, of interests in land; (iii) the promotion by any means of the supply or use of goods or services; or (iv) the promotion by any means of the sale or grant of interests in land, where-- (v) the goods or services were relevant goods or services, or the interests un land were relevant interests in land, as the case may be, in relation to the prescribed information provider; or (vi) the publication was made on behalf of, or pursuant to a contract, arrangement or understanding with-- (A) a person who supplies goods or services of that kind, or who sells or grants interests in land, being interests of that kind; orf (B) a body corporate that is related to a body corporate that supplies goods or services of that kind, or that sells or grants interests in land, being interests of that kind; or (b) a publication of an advertisement." A "prescribed information provider" is a person who carries on a business of providing information. The term "relevant goods or services" is defined to include goods or services of a kind supplied by the relevant prescribed information provider. 3} 25. Sub-section (2) defines the concept of "prescribed publication". For the purposes of s.65A a publication by a prescribed information provider is a prescribed publication if the publication was made by the prescribed information provider in the course of carrying on a business of providing information or, in certain cases, was a publication by way of a radio or television broadcast by a prescribed information provider. Having regard to the conclusion I have reached in connection with the applicants' claims under ss.52 and 53 of the Trade Practices Act, the respondent does not need to rely upon s.65A in this case. And, in any event, s.65A could not afford an answer to the claim of passing off, 1f that claim had been made good. But, as the point has been argued, I should record my view that s.65A has no application to the facts of this case. It may be accepted that the respondent is a "prescribed information provider" and that its publication of each of the relevant issues of "People" magazine constitutes a publication by a prescribed information provider in the course of carrying on a business of providing information. Consequently, the publication of each of those issues is a publication falling within the opening words of sub-s.(1). However, the publication of the word "Super Colossus" was a publication of matter in connection with the promotion of the supply, or possible supply, of "relevant 26. goods or services". The word "Colossus" was used on each occasion to identify, and to promote the popularity of, the crossword, and so the sale of the magazine, both in connection with the instant issue and future issues. In Horwitz Grahame Books Pty Limited v Performance Publications Pty Limited [1987] ATPR 40-764 I made reference to s.65A in the course of considering whether an interlocutory injunction ought to be made restraining the publication and distribution of a magazine said to contain matter offending s.52 of the Trade Practices Act. In that case I reached the tentative view that none of the items complained of by the applicant fell within the qualifications contained in s.65A(1). I have reached the opposite factual conclusion in this case, regarding the word "Super Colossus", but further reflection has not caused me to resile from the approach taken in Horwitz Grahame at p.48,275: "It is, no doubt, true, in a general sense, that the publisher of the magazine, in inserting the material referred to, hopes to interest readers in purchasing future issues. But, I suppose, that same statement may be made about everything which is published in a newspaper or in a magazine, including straight news items. Each of the items published are intended to stimulate interest and to induce readers to purchase future issues. I think that the qualification in para.(a) is intended to relate to what might be called advertisements for, or promotions of, future issues; 'self-advertisements' corresponding with advertisements published on behalf of others, which are dealt with by para.(b). It is important to note that para.(a) refers to particular published 'matter', which matter must be 'in connection with' the supply or possible supply of goods or services." 27. I would only add that there is no reason to limit para.(a) to the promotion of future issues of a magazine. In Horwitz Grahame the relevant matter related to future issues. But in some cases promotional matter may be published in such a position as to come to the attention of potential buyers before purchase, and be calculated to induce purchase of that very issue of the magazine. In such a case, there is no reason in principle to exclude the application of para.(a) to that matter. Put shortly, the intention of s.65A was to exclude the application of the specified provisions of the Act to ordinary items of news and comment but to continue to subject the information provider to those provisions in connection with any items directly promoting the supply of its own goods or services or the disposal by it of interests in land. It was intended that, to the extent that an information provider uses its own publication to boost its own business, it should remain as amenable to s.52 as anyone else. In the present case, the use of the words "Super Colossus" had no purpose other than to promote the crossword published under that name, and, consequently, present and future sales. Therefore, the publication of that name was excluded by para.(a) from the application of s.65A(1), with the result that s.65A would not have afforded the respondent any defence to the applicants' Trade Practices Act claims. 'es 28, Orders Both the application and the cross-claim should be dismissed. In relation to costs, as between the applicants and the respondent, I think that the appropriate course is to make no order. Each side has had an equal measure of success -- in resisting the claim of the other -- and of failure -- in making out its own claim. An alternative course would be to award each party the costs of the successful resistance of the other's claim but this would involve the taxation of two bills of costs, the totals of which would almost certainly be very similar. Each bill would, in effect, cancel out the other. The parties should be spared this unnecessary expense. In relation to Century Publishing there is no reason to decline to make an order for costs. This party has been wholly successful in resisting the claim made against it by Consolidated Magazines. Accordingly, I propose to order that Consolidated Magazines pay the costs of Century Publishing. I certify this and the twenty-seven (27) preceding pages to be a true copy of the Reasons for Judgment of his Honour Justice Wilcox. Associate: PUNE Date: Sept r 1988 Counsel for the Applicants and First to Fourth Cross-Respondents: Solicitors for the Applicants and First to Fourth Cross—Respondents: Counsel for the Respondent and Cross-Claimant: Solicitors for the Respondent and Cross-—Claimant: Counsel for the Fifth Cross—Respondent: Solicitors for the Fifth Cross—-Respondent: Date(s) of hearing: 29. Mr J M Ireland and Mr R J Webb Rooney & Heazelwood Mr J J Garnsey and Ms A H Bowne Allen Allen & Hemsley Mc T H Bathurst QC with Mr G O'L Reynolds Minter Ellison 16, 17 and 19 August 1988