FEDERAL COURT OF AUSTRALIA Telstra Corporation Limited v Royal & Sun Alliance Insurance Australia Limited [2003] FCA 786 COPYRIGHT – whether original script for a Yellow Pages television advertisement was reproduced in a script and television advertisement for motor vehicle insurance – whether dramatic events recorded in the advertisement were reproduced in the television advertisement for motor vehicle insurance – whether there was a reproduction of the ideas or concepts employed in the copyright works rather than the form of expression of those ideas or concepts TRADE PRACTICES – misleading and deceptive conduct – secondary or suggestive brand advertising – whether television advertising by a motor vehicle insurer which reproduced ideas and concepts employed by Yellow Pages in its advertising represented that the motor vehicle insurer was in some way connected or associated with Yellow Pages Trade Practices Act 1974 (Cth) ss 52, 53(c) and 53(d) Copyright Act 1968 (Cth) ss 10, 14 and 31(1) Autodesk Inc v Dyason (No 2) (1993) 176 CLR 300 - cited Zeccola v Universal City Studios Inc (1982) 46 ALR 189 - cited Blackie & Sons Limited v The Lothian Book Publishing Company Proprietary Limited (1921) 29 CLR 396 - cited Clarendon Homes (Aust) Pty Ltd v Henley Arch Pty Ltd (2000) 46 IPR 309 - applied Williamson Music Ltd v Pearson Partnership [1987] FSR 97 - cited AGL Sydney Ltd v Shortland County Council (1989) 17 IPR 99 - cited Reckitt & Coleman Ltd v Borden Inc (1990) 17 IPR 1 - cited R & C Products Pty Limited v S C Johnson & Sons Pty Limited (1993) 42 FCR 188 - cited Twentieth Century Fox Film Corporation v South Australian Brewing Co Ltd (1996) 66 FCR 451 - applied Parkdale Custom Built Furniture Proprietary Limited v Puxu Proprietary Limited (1982) 149 CLR 191 – applied Campomar Societad Limitada v Nike International Ltd (1999) 202 CLR 45 - applied Pacific Dunlop Pty Ltd v Hogan (1989) 23 FCR 553 - cited Mary Foys Pty Ltd v TVSN (Pacific) Ltd (2000) 104 FCR 61 - applied TELSTRA CORPORATION LIMITED AND SENSIS PTY LTD v ROYAL AND SUN ALLIANCE INSURANCE AUSTRALIA LIMITED V 303 OF 2002 MERKEL J 1 AUGUST 2003 MELBOURNE IN THE FEDERAL COURT OF AUSTRALIA VICTORIA DISTRICT REGISTRY V 303 OF 2002 BETWEEN: TELSTRA CORPORATION LIMITED (ACN 051 775 556) FIRST APPLICANT SENSIS PTY LTD (formerly PACIFIC ACCESS PTY LTD) (ACN 007 423 913) SECOND APPLICANT AND: ROYAL AND SUN ALLIANCE INSURANCE AUSTRALIA LIMITED (ACN 005 297 807) FIRST RESPONDENT WILSON EVERARD PTY LTD (ACN 007 403 349) SECOND RESPONDENT JUDGE: MERKEL J DATE OF ORDER: 1 AUGUST 2003 WHERE MADE: MELBOURNE THE COURT DECLARES THAT: 1. The Court declares that the broadcasting of the advertisement comprised in exhibit KK19 to the affidavit of Kate Mary Kavanagh sworn 5 February 2003 ("the first Shannons advertisement") contravenes ss 52 and 53(d) of the Trade Practices Act 1974 (Cth) ("TPA"). AND THE COURT ORDERS THAT: 2. An injunction be granted restraining the respondents, whether by their servants, agents or howsoever otherwise, from further broadcasting the first Shannons advertisement or broadcasting any advertisement which is substantially similar to or is a colourable imitation of the first Shannons advertisement. 3. The applicants' claims of copyright infringement be dismissed. 4. The applicants' claims in relation to passing off and contraventions of ss 52, 53(c) and 53(d) of the TPA in respect of the advertisement comprised in exhibit KK20 to the affidavit of Kate Mary Kavanagh sworn 5 February 2003 and the four radio commercials, copies of which are exhibit KK21 to the affidavit of Kate Mary Kavanagh sworn 5 February 2003, be dismissed. AND THE COURT DIRECTS THAT: 5. The question of damages for contravention of ss 52 and 53(d) of the TPA and for passing off in respect of the first Shannons advertisement be referred to mediation before a mediator agreed to by the parties and appointed by the District Registrar. 6. In the event that the question of damages is not resolved at mediation, the matter be listed for directions on 19 September 2003 in relation to a further hearing in respect of damages or any other appropriate relief in relation to the passing off claim and the TPA contraventions in respect of the first Shannons advertisement. 7. The parties have fourteen days from the date of these orders to file submissions as to the appropriate orders to be made in respect of the costs of the proceedings to date. AND: 8. The Court reserves liberty to the parties to apply on reasonable notice. Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules. IN THE FEDERAL COURT OF AUSTRALIA VICTORIA DISTRICT REGISTRY V 303 OF 2002 BETWEEN: TELSTRA CORPORATION LIMITED (ACN 051 775 556) FIRST APPLICANT SENSIS PTY LTD (formerly PACIFIC ACCESS PTY LTD) (ACN 007 423 913) SECOND APPLICANT AND: ROYAL AND SUN ALLIANCE INSURANCE AUSTRALIA LIMITED (ACN 005 297 807) FIRST RESPONDENT WILSON EVERARD PTY LTD (ACN 007 403 349) SECOND RESPONDENT JUDGE: MERKEL J DATE: 1 AUGUST 2003 PLACE: MELBOURNE REASONS FOR JUDGMENT Introduction 1 The first applicant ("Telstra") and the second applicant ("Sensis"), which is a wholly owned subsidiary of Telstra, claim declaratory and injunctive relief, as well as damages or an account of profits, against the first respondent ("Royal") and the second respondent ("Wilson Everard") in respect of their advertising of car insurance to the public under the name of Shannons Insurance ("Shannons"). 2 The applicants claim the advertising infringes copyright, constitutes passing off and contravenes ss 52, 53(c) and 53(d) of the Trade Practices Act 1974 (Cth) ("the TPA"). The applicants contend that Royal and Wilson Everard appropriated the format, story and character they created in the Yellow Pages Goggomobil advertising campaign conducted by them during the 1990s. The riposte of Royal and Wilson Everard is that, insofar as any of the Shannons advertisements might be perceived to be similar to the Yellow Pages campaign or to have used any of the concepts employed in that campaign, their advertisements were clearly branded as Shannons advertisements, were no more than a "satirical take" on the Yellow Pages campaign and they created their own original form of expression in doing so. The Yellow Pages Goggomobil advertising campaign 3 Yellow Pages business directories are distributed free of charge to households and businesses throughout Australia. Information concerning the businesses listed in the directories are also available on the internet and over the telephone. The revenue earned by selling space to businesses advertising in the directories is said to be nearly $1 billion. The directories are widely used by, and are well-known to, consumers throughout Australia. 4 During 1991 Sensis (which was then called "Pacific Access") planned an advertising campaign to improve the image and goodwill of the Yellow Pages directory, which was seen as a dull, but functional, product. The objective of the campaign was to establish an "emotional rapport" with potential users of the directory and to "strengthen their bond with the Yellow Pages Brand". Although the campaign featured a number of television advertisements the advertisements with which the present litigation is concerned are the first and second Goggomobil advertisements, which involve a central character who became known as "Mr Goggomobil". 5 At the time of the campaign the Goggomobil, which was manufactured in the 1950s, was a rare, inexpensive and relatively unknown car. The first Goggomobil advertisement commences in the driveway of a suburban house, in which a yellow Goggomobil is parked on a jack with a man underneath it. The man, portrayed by the actor Tommy Dysart ("Dysart"), crawls out from underneath the car. He is middle-aged, heavy-set, dressed in overalls and wears a pendant. The car is leaking oil. The scene moves to inside the house where the man, with a heavy Scottish accent, tells his wife "I've broken Fritz". He then flicks through a publication, picks up the telephone and, after dialling a number, asks "I was wondering if you could help me" stating that "I've got a problem with my Goggomobil". He pauses, and slowly repeats the word "Goggo-mobil". He rings up another number and again says he has a problem with his Goggomobil. The man, becoming increasingly frustrated, is required to spell in his Scottish brogue, "G-O-G-G-O". He rings again to say he has a problem with his Goggomobil, pauses, and cautiously says "yeah, 1954" and, getting excited, says "Yeah, no not the dart. Not the Dart. They always think it's the Dart!". The Dart is a particular Goggomobil model of that era. The man, with his wife smiling at him, starts laughing uproariously and, simultaneously, the advertisement fades to the well-known yellow and black Yellow Pages walking fingers logo, with the man's laughter and joyous voice calling out in the background "It's a wee ripper". 6 The first Goggomobil advertisement featured a likeable and memorable character, an unusual and distinctive motor vehicle, the use of the telephone to help solve an obscure problem, and tells its story in a humorous manner. The advertisement was successful and highly popular. It was televised extensively throughout Australia between 1992-1996 and again in 1998. In a 1997 publication edited by Griggs and Thoeming entitled Superbrands: An Insight into 65 of Australia's Superbrands vol 1, twelve senior and experienced Australian executives in the areas of marketing, sales, market research, advertising and public relations, (at p 141) made certain observations about the advertising campaign of Yellow Pages which "emphasises warmth, humour and familiarity" that resulted in Yellow Pages being viewed as "a likeable brand". The authors stated in respect of the first Goggomobil advertisement: "Building this perception of a likeable Yellow Pages through the advertising has meant the creation of a whole series of endearing and funny situations where Yellow Pages saves the day. One of the best loved of these is the advertisement which features a man trying to locate a special part for his rare Goggomobile. After the advertisement went to air, the name of the vehicle became a household word and Yellow Pages become an overnight hero for people looking for the impossible. Ever since that Gogomobile commercial, Yellow Pages has reinforced its role as the humble hero." 7 In 1998 Sensis produced a second advertisement using Dysart, who by then had become known as "Mr Goggomobil", his wife and the same yellow Goggomobil. This advertisement showed "Mr Goggomobil" and his wife, who was sitting with him in the Goggomobil, being prevented from driving the Goggomobil out of their driveway by two Yellow Pages directories placed under one of the rear wheels of the vehicle. The advertisement promoted the "Out Now" campaign – a campaign to advise people to look out for the delivery of their new Yellow Pages directories. The second advertisement was shown in 1998 in a campaign that also featured the first Goggomobil advertisement. It was also shown on its own in 1999. The second Goggomobil advertisement did not use "Mr Goggomobil" in the same problem-solving context but, rather, utilised his character and its well-known connection with the Yellow Pages brand. 8 Professor Widing, a marketing professor and consultant, explained the success and popularity of the Yellow Pages Goggomobil campaign as follows: "50. In my opinion, the Yellow Pages 'Goggomobil' campaign was a major campaign in terms of the size of audience reached, the impact of the campaign on consumers with regard to brand awareness (including ad recognition linked to the Yellow Pages brand) and brand associations (e.g. liking, affinity), and the length of time over which the campaign has run (i.e. more than ten years). … 51. The Yellow Pages Goggomobil campaign had a significant impact, in my opinion, because it communicated to viewers in both rational and emotional ways. 51.1. On the emotional side, the campaign and its central character Mr Goggomobil became well known, well liked, well accepted, and were likely to be considered funny and engaging … 51.2. On the rational/functional side, the campaign communicated clearly the central proposition that Yellow Pages helps people solve unusual or difficult problems … 51.3. In my opinion, these functional and emotional benefits are likely to have been key elements of the relationship between Yellow Pages and its customers." 9 As a result of budgetary constraints neither advertisement was shown between 2000 and 2002 and no decision has been made in respect of the use of the advertisements in the future. 10 Dysart had appeared in a number of productions and television commercials prior to being engaged to appear in the first Goggomobil advertisement. In particular, in 1990 he featured prominently in advertisements promoting Don Smallgoods, a role for which he became well-known. In those advertisements Dysart adopted an Eastern European accent. After the first Goggomobil advertisement Dysart, in his role as "Mr Goggomobil", appeared on a number of television programmes, often spelling out in his Scottish brogue, "G-O-G-G-O", a spelling that had become famous after the first Goggomobil advertisement. The appearances were largely self-promotional and were not organised by Yellow Pages. In 1994 Dysart and his wife also made a CD and video-clip which featured the Goggomobil. The CD and video-clip were ultimately sponsored by Yellow Pages. Dysart appeared in a Mobil advertisement in 1994 which, with the consent of Pacific Access, used the "Mr Goggomobil" character and setting. However, the evidence was that, subsequently, Pacific Access considered it had made a mistake in giving its consent. The Shannons advertising campaign 11 In May 2000 Royal, a major general insurer, acquired Shannons, which had specialised in insuring vintage, veteran or classic motor vehicles since the early 1970s. After the acquisition Royal decided to expand the business conducted by Shannons by increasing the exposure of the Shannons brand to motoring enthusiasts who owned "special vehicles". In particular, in pursuit of its objective of marketing its policies to a broader cross-section of motoring enthusiasts Shannons, acting through its marketing consultant Frank Moore Advertising Pty Ltd, engaged Wilson Everard to create the television, radio and print advertising for its campaign. 12 In 2000 Wilson Everard developed a series of television advertising concepts for Shannons but, after group focus testing of the concepts proved to be negative, Shannons decided not to proceed with any of those concepts. The Shannons marketing plan was developed in November 2001. Andrew Gibson ("Gibson"), the General Manager of Shannons, noted that the plan was that: "any mass market advertising for Shannons had to be targeted specifically to the motoring enthusiast and needed to generate immediate telephone responses. Shannons does not have a large advertising budget and therefore any new advertising had to grab the attention of consumers very quickly and yet also appear to justify the loyalty of existing customers." 13 Late in 2001 Wilson Everard came up with the idea of using Dysart and a Goggomobil for Shannons advertising. It was thought that "using Tommy Dysart and a Goggomobil would be instantly recognisable for Shannons as people were aware of Tommy and his appearance in the Yellow Pages advertisement". The Goggomobil vehicle was attractive to Shannons as it had come to the public's attention in the Yellow Pages campaign and was the type of enthusiast's car that would be insured by Shannons. Also its rare and unique character would not offend the car brand loyalties of Shannons customers. Mr Frank Moore ("Moore") of Frank Moore Advertising Pty Ltd, which advised Shannons in relation to its advertising, also thought the use of a Goggomobil was a good choice because it was quirky and unusual and "would assist in cutting through the 'clutter' of advertising in the press as it had … gained considerable exposure through the Yellow Pages TV commercials … and would therefore most likely be remembered by Shannons target market". 14 In January 2002 an animatic (ie a rough mock-up) of a proposed advertisement was produced by Wilson Everard in order to obtain the reaction of focus groups to the advertisement. The animatic started with a voice-over that stated that the advertisement would open on "the famous and instantly recognisable figure of Mr Goggomobil standing proudly by his car". The animatic was made up of stills from the first Goggomobil advertisement with a voice-over that revealed that "Mr Goggomobil" was now looking for insurance for his vehicle. The animatic concluded with the Shannons logo, rather than the Yellow Pages logo. At no point did the animatic make any reference to Yellow Pages or its logo. 15 Klein and Associates, a professional marketing group, was engaged by Shannons to show the animatic and another proposed advertisement to four selected focus groups comprising male motoring enthusiasts. One group comprised motor enthusiasts who insured with Shannons. The other three groups did not insure with Shannons but were likely to have known of it. The research report prepared by Klein and Associates stated: "All respondents in this study recognised 'Goggomobile' as an historic, outstanding, iconic, talked about and much loved Yellow Pages TVC [television commercial], with estimates of the time since it was on air ranging from 5 to 15 years. Among the majority and as a television commercial promoting Shannons insurance, 'Goggomobile' was exceptionally well received and well regarded. Importantly, we highlight that: the idea of borrowing (or ambushing) an old advertising icon for Shannons gain was considered to be a masterful act of cleverness and was variously described as 'quirky', 'clever', 'opportunistic', 'taking a free kick', 'smart', 'brilliant', 'cheeky', 'mad', 'fun', and so forth not a single interviewee in this study deemed it inappropriate or wrong (or held it against Shannons) for borrowing 'Goggomobile', with most admiring Shannons for being sufficiently cheeky and clever to do so: 'It's absolutely brilliant to have thought of it and such a clever idea.' 'Good on Shannons I reckon.' 'Goggomobile' was considered to be a perfect vehicle for promoting Shannons (for as interviewees themselves had done, Mr Goggomobile was now using the Yellow Pages and his telephone to shop for car insurance) no-one was alienated by a Goggomobile (which might have occurred among Holden people if a Ford had been featured or an American muscle car owner if a Jag had been utilised, etc.) consistently and in the context of Shannons, 'Goggomobile' was readily accepted and embraced in the vein in which it was intended particularly after a couple of exposures, Shannons branding is guaranteed. 'Goggomobile' found empathy …… 'That's me on the phone talking to the other insurance companies who can't find my car in the Glass' guide or who haven't got a clue what I'm talking about.' 'It happens to us; a fully restored 78 Fairmont just doesn't come up on their system and then they won't give me comprehensive.' 'They hate me ringing; when I ask to insure my 72 Stag Convertible for twenty grand, they dunno what to say.' … Note that the call to action in the TVC was noted - the 'one-three-ooooh-ooooh ……' delivery of the telephone number enhanced the advertising approach and ensured that the phone number was a highlight -and we sensed that 'Goggomobile' will ensure that Shannons phones run red hot with calls from special car owners seeking a quote for insurance when the approach goes to air. In the final analysis, 'Goggomobile' possesses a range of strengths…… appeal high impact empathy relevance cleverness genuine humour iconic status 'specialness' strong branding memorability campaignability a suitable style and tone and so forth …… and few if any shortcomings. While it appears that younger special car owners warmed to the approach more strongly and more rapidly than their more mature counterparts: the vast majority were supportive we reiterate that not a single respondent was alienated by the approach the potential of 'Goggomobile' to build the Shannons brand and generate sales inquiry is beyond question. 'Goggomobile' is potentially a 9 or 10 out of 10 on our scale of advertising measurement (and potentially a communication which will go down in history as outstanding). In strongly recommending implementation of the approach: we sense that it will be much talked about among the community we see opportunity for a cut-down version of the TVC (the approach is so well known that after some time, a reminder rather than a replay might be all that is needed and prove effective) the ability to effectively extend the campaign into radio (and thereby enhance it) became very clearly evident." 16 After considering this research report Mr Andrew Wilson ("Wilson"), a director of Wilson Everard, produced a report entitled "Creative Rationale", which set out the objectives of the proposed Shannons advertising campaign. The report stated: "In 1992 the Yellow Pages created the archetypical ad for Shannons Insurance. Featuring a Scots-born Australian who owned a Goggomobile, the ad recorded his difficulty in finding a part for this obscure and inexpensive motor car. We all shared his depression at finding no-one understood what a Goggomobile was, much less having a part for one. And then we rejoiced with him as he discovered a like-minded soul who knew the car and could supply the part. The ad was immensely popular and is one of the best remembered on Australian TV. Indeed the actor, Tommy Dysart and his wife Joan Brokenshire (who played herself in the ad), are still recognised as the 'Goggomobile people' today. To expropriate the man and, car in an ad for another product may at first seem to be dangerous given the ad was firmly branded as a Yellow Pages property. Unless the product is both analogous to the original and can be demonstrably seen to be appropriate use of the concept. Research of the concept with existing and prospective Shannons clients has proven beyond doubt that the concept can be an incredibly successful vehicle for Shannons -creating instant recognition and cut-through. … Utilising this concept has no show-stopping downsides and serious extra benefits. Seeing one of Australia's favourite ads with a new twist after ten years is big news and Shannons must be primed to capitalise on the interest it will generate in the media. Print, radio and television around the country will be interested in talking to Shannons management about the campaign and with proper management by a PR company, this will generate extraordinary levels of media attention and subsequent increased public profile for Shannons. Naturally Yellow Pages will get some publicity spin-off but the majority will be for Shannons and should be, with judicious briefing, 100% positive. … The possibilities are endless. For the Yellow Pages it was just a chapter in their advertising history -for Shannons it will provide instant recognition, understanding and high memorability along with almost unlimited promotional benefits for years to come." 17 The approval of Pacific Access to the reproduction of parts of the first Goggomobil advertisement was sought. Pacific Access' response was that copyright subsisted in the first Goggomobil advertisement, the proposed advertisement was a reproduction of the first Goggomobil advertisement and Pacific Access was not prepared to allow its advertisement to be incorporated into Shannons' advertising campaign. 18 After Pacific Access' refusal Wilson Everard was instructed "to create a script that did not reproduce parts of the 1991 Yellow Pages advertisement". Mr Lachlan Dunn ("Dunn"), an employee of Wilson Everard, was given the task of creating the new script. His evidence was that he was told to take "the Goggomobil concept a step further" and make it look "completely different to the Yellow Pages advertisement". 19 Dunn created three scripts dated 6 February 2002, but only the 30 second script, entitled "The Ol' Dart", was proceeded with. The script was as follows: "VISION: WE OPEN ON A SUNNY OUTDOOR SCENE IN THE DRIVEWAY OF A TYPICAL SUBURBAN HOUSE. WE SEE A MAN GIVING A FINAL POLISH TO A GLEAMING VEHICLE. WE INSTANTLY RECOGNISE THE MAN -IT IS MR GOGGOMOBILE - AND IT IS OBVIOUS A FEW YEARS HAVE PASSED SINCE WE LAST SAW HIM -HE IS GREYING AND HE IS CARRYING AN EXTRA BIT AROUND THE MIDDLE! THE CAR IS DIFFERENT TOO -INSTEAD OF A YELLOW SEDAN UP ON BLOCKS, HIS PRIDE AND JOY IS A GLEAMING, IMMACULATE GOGGOMOBILE DART (THAT'S RIGHT, THE DART!) IN FLAWLESS, SHANNONS GREEN. AS HE TAKES A STEP BACK TO ADMIRE HIS HANDIWORK, MR GOGGOMOBILE PULLS A MOBILE PHONE FROM HIS POCKET AND BEGINS PUNCHING IN NUMBERS BEFORE SPEAKING... [Dysart]: Hello ...I'd like to insure my Goggomobile...(pause)...(frustrated)... Go-go-mob-ile...G… VISION: BEFORE HE CONTINUES WE FADE TO A LATER SHOT OF THE SAME SCENE -HE IS PACING AROUND THE CAR IMPATIENTLY WHILE ON ANOTHER CALL. WE FADE AGAIN TO ANOTHER SHOT- THESE QUICK SCENES ARE SIMPLY TO SHOW HIM BECOMING MORE AND MORE FRUSTRATED. WE THEN... ...FADE TO A FINAL SHOT- HE IS SITTING IN THE CAR, TAPPING HIS FINGERS IMPATIENTLY ON THE STEERING WHEEL... [Dysart]: My Goggomobile... Aye...1954... aye it is the Dart! VISION: HE IS EXCITED AND VERY VERY HAPPY TO HAVE FINALLY FOUND WHAT HE'S LOOKING FOR. WE FADE TO FINAL SUPER... SUPER: AGREED VALUE. CHOICE OF REPAIRERS. LIFETIME GUARANTEE ON REPAIRS SHANNONS CAR INSURANCE -WE SHARE YOUR PASSION CALL 1300 139 006 FOR A QUOTE MVO: At Shannons Insurance we share your passion, call us on... [Dysart Voiceover]: One…three…o … o…one…three…nine…o…o…six." 20 After the script was created Moore informed Pacific Access of the new script. Moore wrote: "After considering your email, the proposed commercial has been rescripted to avoid any reproduction of the original Mr Goggomobile commercial, including a new script, plot line, camera position and location. We now consider the commercial to be created for Shannon's Insurance to be quite different from the original Yellow Pages commercial as there is no reproduction of either the original script or cinematograph film. This should alleviate the concerns of Pacific Access that its copyright in the original commercial has been infringed. Frank Moore Advertising and Shannon's Insurance are mindful of Pacific Access's Copyright of the original Goggomobile commercial and do not wish to engage in any action that may be detrimental to either party. Our revision of the concept to ensure this is a measure of our commitment to that end. Our legal advise indicates that our revised concept does not infringe any copyright of the original and with the talent being out of contract and available we propose to proceed with production of the revised concept. I would welcome the opportunity to discuss the revised concept at your earliest opportunity." 21 Moore's evidence was that he "wanted to have the views of Yellow Pages but its consent was not necessarily a pre-condition to my recommendation to Royal & Sun Alliance to proceed with the advertisement." Pacific Access' response was: "Your proposed ad is largely derivative. There is a clear link and association with our previous advertising. In particular - * the 'Mr Goggomobile' character is obviously intended to be the same; * the context (locating a service through telephone use) is substantially similar; * the repetition, pronunciation and spelling Goggomobile …G (later emphasised by the 'o ...o' in the last TD VO) is very much along the lines of our previous advertising; and * 'the Dart' features (although the well-remembered 'No, not the Dart' has become 'that's right -the Dart aye …it is the Dart'. I therefore ran the ad past our legal advisers. They have indicated their opinion is that your advertisement conveys an association with, or endorsement or affiliation by, Pacific Access and 'Yellow Pages' directories, and would infringe our rights. In these circumstances, I trust you will understand PA's request that you do not proceed with the proposed advertisement. We do not consent to its use. If you have any questions regarding this, please contact our solicitor". 22 Moore made no further contact with Pacific Access after its response. However, the script was revised to remove the reference to Dysart's expression of the "G" after Goggomobil and Dysart's voice-over of the telephone number, with its emphasis on "O" "O", was also removed. With those changes, and some other less significant changes, the final form of the script was as follows: "VISION: WE OPEN ON A SUNNY OUTDOOR SCENE IN THE DRIVEWAY OF A TYPICAL SUBURBAN HOUSE. WE SEE A MAN GIVING A FINAL POLISH TO A GLEAMING VEHICLE. WE INSTANTLY RECOGNISE THE MAN -IT IS MR GOGGOMOBILE - AND IT IS OBVIOUS A FEW YEARS HAVE PASSED SINCE WE LAST SAW HIM -HE IS GREYING AND HE IS CARRYING AN EXTRA BIT AROUND THE MIDDLE! THE CAR IS DIFFERENT TOO -INSTEAD OF A YELLOW SEDAN UP ON BLOCKS, HIS PRIDE AND JOY IS A GLEAMING, IMMACULATE GOGGOMOBILE DART (THAT'S RIGHT, THE DART!) IN FLAWLESS, SHANNONS GREEN. AS HE TAKES A STEP BACK TO ADMIRE HIS HANDIWORK, MR GOGGOMOBILE PULLS A MOBILE PHONE FROM HIS POCKET AND BEGINS PUNCHING IN NUMBERS BEFORE SPEAKING... [Dysart]: Hello …I'd like to insure my Goggomobile…(pause)…(frustrated)… Go-go-mob-ile… VISION: BEFORE HE CONTINUES WE FADE TO A LATER SHOT OF THE SAME SCENE -HE IS PACING AROUND THE CAR IMPATIENTLY WHILE ON ANOTHER CALL. WE FADE AGAIN TO ANOTHER SHOT- THESE QUICK SCENES ARE SIMPLY TO SHOW HIM BECOMING MORE AND MORE FRUSTRATED. WE THEN... ...FADE TO A FINAL SHOT- HE IS SITTING IN THE CAR, TAPPING HIS FINGERS IMPATIENTLY ON THE STEERING WHEEL... MVO: Shannons Insurance shares the passion with car enthusiasts … [Dysart]: Aye that's right – it is the Dart – aye!!! (laughs) VISION: HE IS EXCITED AND VERY HAPPY TO HAVE FINALLY FOUND WHAT HE'S LOOKING FOR. WE FADE TO FINAL SUPER… SUPER: SHANNONS (LOGO) – SHARE THE PASSION 1300 139 006 AGREED VALUE. CHOICE OF REPAIRERS . LIFETIME NO CLAIM BONUS PROTECTION MVO: …so call Shannons for a special quote on your special vehicle." 23 When the first Shannons advertisement was produced Dysart made certain changes in relation to the spelling of "Goggomobil". After enunciating "Go-go-mob-il", in frustration he pronounced in his Scottish brogue: "Two G's, no E's". The Director of the commercial, Mr Richard Franklin ("Franklin"), also suggested certain additions which included "Close ups with time transitions as Tommy fails to get past 'G' twice (have fun with the fact that he can't get to do his spelling routine)." In the final commercial Dysart, while pacing around the car, spells out "G" and "O" in his Scottish brogue six times and says "GO" "MO" and in frustration exclaims "Wait, Wait, Wait". At the end of the advertisement Dysart's laughter continues to be heard after the Shannons logo appears. 24 In March 2002 Dunn was asked by Wilson Everard to create a script for a second advertisement, which he entitled "The Legal Ol' Dart" or "The New Dart". Mr Wilson gave evidence that the first advertisement: "was designed to be an introductory advertisement for Shannons that would make motoring enthusiasts take notice of Tommy Dysart and a Goggomobil appearing in another advertisement, this time for Shannons Insurance … The second advertisement … proposed [would] provide more information about Shannons Insurance policy." 25 In addition to providing further information, Shannons also wanted the second advertisement to be available to replace the first advertisement in the event that Sensis obtained an injunction that prevented the screening of the first advertisement. 26 In the second Shannons advertisement, which was subsequently used together with the first Shannons advertisement, Dysart detailed particular features of Shannons insurance. The transcript of the second Shannons advertisement is as follows: "VISION: WE OPEN ON A WHITE STUDIO SCENE. WE SEE MR GOGGO-MOBILE (TOMMY DYSART) MAN STANDING BY AN IMMACULATE GOGGOMOBILE DART (THAT'S RIGHT, THE DART!) IN FLAWLESS SHANNONS GREEN. OVER THIS SCENE WE HEAR A VOICEOVER TO WHICH MR GOGGOMOBILE RESPONDS ACCORDINGLY. MVO: If you have a car that's a bit unusual you could find insurance hard to come by. VISION: MR GOGGOMOBILE NODS MVO: But at Shannons we know what they are…even Goggomobiles … [Dysart]: It's the Dart! MVO: …and we know what they're worth. [Dysart]: A pretty penny! MVO: Shannons Insurance shares the passion with car enthusiasts… [Dysart]: Aye…they give ye agreed value…choice of repairer…lifetime maximum no claim bonus protection! VISION: CUT TO FULL SCREEN SUPER… MVO: So call Shannons for a special quote on your special vehicle. SUPER: SHANNONS (LOGO) – SHARE THE PASSION 1300 139 006 AGREED VALUE · CHOICE OF REPAIRERS LIFETIME NO CLAIM BONUS PROTECTION VISION: CUT BACK TO TOMMY RECITING THE PHONE NUMBER WHICH APPEARS ON THE SCREEN IN TIME WITH HIS VO… SUPER: SHANNONS (LOGO) – SHARE THE PASSION 1300 139 006 [Dysart]: One…three…o…o…one…three…nine…o…o…six" 27 Four radio advertisements were also produced as part of the Shannons campaign. It is unnecessary to set out the detail of the scripts. Each script used Dysart's unique Scottish pronunciation of the "O's" in "G-O-G-G-O", when he stated the telephone number for Shannons Insurance, "One … three … O … O … three … nine … O … O … six". Three of the advertisements also used Dysart's well-known association with his Goggomobil, and all involved the use of a telephone. However, the radio advertisements did not have a problem solving context. Rather, as was the case with the second Shannons advertisement, they detailed particular features of the insurance offered by Shannons. 28 The first Shannons advertisement, or a shortened version of it, were shown in Sydney and Melbourne in April 2002 and in Sydney alone in May 2002; in Sydney, Melbourne, Brisbane, Adelaide and Perth in August 2002 and in Perth alone in June 2002. The second advertisement was shown in April, May and August 2002 in Melbourne, Brisbane, Adelaide and Perth; in June, July, September and October it was shown in Melbourne and Sydney; and during September in Adelaide. The advertisements were also shown as part of the same campaign in all of those cities in March 2003. The radio advertisements were broadcast in conjunction with the television advertising. 29 Telstra and Sensis sought, and Royal declined to give, undertakings not to continue with its advertising. Telstra and Sensis then commenced the present proceeding claiming relief in respect of all of the advertisements. Only the first Shannons advertisement is alleged to be an infringement of the copyright owned by Telstra in the first Goggomobil advertisement and in the script for that advertisement. However, the televising and broadcasting of all of the Shannons advertisements is alleged to constitute passing off and a contravention of ss 52, 53(c) and 53(d) of the TPA. Copyright Infringement 30 Telstra claims to be the owner of the copyright subsisting in the original dramatic and literary works in respect of the first Goggomobil advertisement and in the script for that advertisement. If Telstra is to succeed in its claim of copyright infringement it must establish that: · copyright subsists in the original dramatic and literary works upon which it relies; · if such copyright subsists, Telstra is the owner of the copyright; and · Royal and Wilson Everard have infringed Telstra's copyright in the works by reproducing them in a material form. 31 Royal and Wilson Everard do not dispute that Telstra is the owner of any copyright found to subsist in the first Goggomobil advertisement or in the original script for that advertisement, but dispute that the advertisement or the script constitutes an original literary or dramatic work for the purposes of the Copyright Act 1968 (Cth) ("the CA"). They also dispute that there has been an infringement of the copyright (if any) found to subsist in those works. 32 The claim for copyright infringement in respect of the original script for the first Goggomobil advertisement must confront a number of difficulties. The script relied upon by Telstra as the original script is not the script but, rather, is a synopsis of the advertisement. The precise form and content of the original script has not been established by Telstra. Whilst that is not fatal to its claim, the problems arising from the absence of the original script have been exacerbated because some key features of the advertisement were improvised in the course of its production. The problems created by the absence of the original script are significant as the shortness of the overall film makes the requisite comparison between the "reconstructed" original literary work and the alleged infringing work a matter of some difficulty. 33 The synopsis of the first Goggomobil advertisement is as follows: "'GOGGOMOBIL' We open on the side of a very normal suburban house. Sitting in the driveway in front of a garage is a Goggomobil, an uncommon but certainly not an expensive older car – definitely an 'enthusiasts' car. A pair of legs in overalls are projecting out from beneath the car and various tools are strewn about. Suddenly there is a nose of snapping metal, followed by an ominous 'oh no' grown [sic]. A figure rolls out from under the car – a big, burly man in his forties; Tommy. We cut to Tommy now inside his house as he starts his search for a part for his beloved Goggo. His wife sits at the kitchen table reading a magazine and gives a 'poor thing' glance to her gruff husband. 'I've broken Fritz' As we pick up his conversation it doesn't look promising. 'I'm after a part for a Goggomobil … that's right … a Goggo …' We pan in and out of further calls. 'I'm after a Goggomobil … Goggo' Finally he not only chances upon the rare part for his car, but even better still Tommy's actually discovered a fellow 'Goggo' enthusiast, he can't believe his good fortune. His wife smiles approvingly at her husband's dramatic change of mood as he excitedly gestures to her that he found it. We end as we hear Tommy immersed in exchanging details of his 'baby' to an equally enthusiastic person on the other end of the phone. 'That's right a Goggo … yes … you have'. A super appears Yellow Pages logo." 34 As I shortly explain I am prepared to assume, without deciding, that the synopsis accurately reflects the original script and is therefore an original literary work for the purposes of the CA. 35 The claim for copyright infringement in respect of the first Goggomobil advertisement as a dramatic work is also not without difficulty. The claim is premised on the proposition that copyright can exist in a dramatic work notwithstanding that it has not been reduced to writing or to some other material form. In that regard Telstra relies on the inclusive definition of a "dramatic work" in s 10 of the CA, which provides: "dramatic work includes: (a) a choreographic show or other dumb show; and (b) a scenario or script for a cinematograph film; but does not include a cinematograph film as distinct from the scenario or script for a cinematograph film;" 36 Telstra accepts that the work upon which it relies is not within (a) or (b) but contends: "The advertisement is not a choreographic show or other dumb show, or a scenario or script for a cinematograph film, but it does not need to be any of those things because the definition is inclusive and the advertisement is a 'dramatic work' according to the ordinary meaning of that expression (ie 'drama' is defined as 'a dramatic series of events', Concise Oxford Dictionary, or 'a work of action, with or without words or music, which is capable of being performed before an audience': Norowzian v Arks Ltd & Ors [2000] FSR 363 at 367). The advertisement is not excluded by the last part of the definition. That part of the definition serves only to exclude the film of the advertisement because the film of the advertisement is the subject of separate copyright as a 'cinematograph film' which in this case is not alleged to be infringed (see ss 86 and 90, and s 10(1) Copyright Act). Where a dramatic work is fixed in the form of a film or a sound recording, '…there would be two copyrights: one in the dramatic work and the other in the film or sound recording, as the case may be." 37 The "dramatic work" relied upon by Telstra is pleaded to be "[t]he series of dramatic events making up the short story" in the first Goggomobil advertisement. 38 I need not further pursue the difficulties to which I have referred as Telstra's copyright claims can be resolved by addressing the issue of infringement assuming, but without deciding, that copyright subsists in the literary and dramatic works relied upon by it. 39 Copyright gives to the owner the exclusive right to do certain things, including the right to "reproduce the work in a material form": see s 31(1)(a)(i) of the CA. Section 14(1) provides that "reproduction" includes reproduction of "a substantial part of the work". In the present case the allegation is that Royal and Wilson Everard reproduced a substantial part of the original script for, and the series of dramatic events constituting, the story in the first Goggomobil advertisement. Reproduction involves actual use of the copyright work and the reproduction of a substantial part of that work: see generally Clarendon Homes (Aust) Pty Ltd v Henley Arch Pty Ltd (2000) 46 IPR 309 at [18] 314. In determining whether the reproduction is of a substantial part of the work, greater weight is to be given to the quality, rather than the quantity, of what has been copied: see Autodesk Inc v Dyason (No 2) (1993) 176 CLR 300 at 305 and the cases there cited. 40 There is no copyright in an idea, concept or theme. Rather, copyright subsists in "the particular working out or expression of the idea or theme": see Zeccola v Universal City Studios Inc (1982) 46 ALR 189 at 192. As copyright does not protect ideas or concepts, but only the form in which they are expressed, it is not sufficient for Telstra to establish that Royal and Wilson Everard reproduced the ideas, concepts or theme embodied in the first Goggomobil advertisement. 41 Finally, it is for the Court to determine whether the alleged infringing work is sufficiently similar to the work in which copyright subsists to amount to a reproduction of a substantial part of that work. The question of whether or not there has been a substantial reproduction of the relevant work involves questions of fact and degree that depend on the circumstances of the particular case: see Blackie & Sons Limited v The Lothian Book Publishing Company Proprietary Limited (1921) 29 CLR 396 at 402-403. 42 Royal and Wilson Everard do not deny their use of the first Goggomobil advertisement but contend that that use was of the ideas or concepts that may be found in that advertisement. 43 Putting Telstra's case at its highest the comparisons it requires are between: · the script of the first Goggomobil advertisement and the script and film of the first Shannons advertisement; and · the series of "dramatic" events recorded in the first Goggomobil advertisement and the series of "dramatic" events recorded in the first Shannons advertisement. 44 The scripts for the two advertisements bear little resemblance to each other. The only expressions of any significance common to both scripts are those relating to the Goggomobil. Not surprisingly, there is a similar lack of resemblance between the script for the first Goggomobil advertisement and the film of the first Shannons advertisement. While the resemblances in the scripts and films relating to the Goggomobil are significant, the copying that has occurred relates more to the concept or theme employed in relation to the Goggomobil than to the expression of that concept or theme. In my view the script for and film constituting the first Shannons advertisement fall well short of constituting a reproduction of a substantial part of the script for the first Goggomobil advertisement. Whether viewed qualitatively or quantitatively the lack of resemblance to which I have referred is such that I am satisfied there is no substance in the claim of infringement based on the script of the first Goggomobil advertisement. 45 A comparison between the series of "dramatic" events comprising both advertisements results in the same outcome. The events that might be capable of being regarded as "dramatic" events in respect of the first Goggomobil advertisement were outlined in [5] above. Those events describe the use of the Yellow Pages by a middle-aged car enthusiast to find someone who can help him repair his Goggomobil. The events include oil leaking from a yellow Goggomobil sitting on a jack in the enthusiast's driveway; the enthusiast's wife looking concerned as he flicks through a publication (which is later revealed to be the Yellow Pages) to find the phone number of someone who can help him repair his Goggomobil; the enthusiast's frustration at not being able to find someone who understands what a "Goggomobil" is; the need for the enthusiast to slowly repeat the word "Goggomobil" and later to spell it out slowly to try to communicate his problem; the enthusiast's elation when he finds a supplier who not only knows what the Goggomobil is but who can differentiate between particular models of Goggomobils (ie "Not the Dart"); and the concluding segment expressing the happiness of the enthusiast with the outcome ("It's a wee ripper"). At the end of the advertisement the point it is making is revealed – that you can use Yellow Pages to solve any problem no matter how obscure it is. 46 The "dramatic" events in the first Shannons advertisement are played out in a quite different scenario. The enthusiast, now seemingly more affluent, completes the final polish to his gleaming green Goggomobil. After admiring his handiwork the enthusiast punches numbers into his portable phone in an endeavour to obtain insurance for his vehicle. A similar scene of frustration arises when the enthusiast is unable to make any progress with insuring his "Goggomobil". He is required to slowly state the word "Go-go-mob-il", starts to spell the word, and, while sitting in his car tapping his fingers impatiently on the steering wheel, explains to someone on the phone that it has "two G's, no E's". It concludes with the excitement and happiness of the enthusiast once he has found an insurer ("it is the Dart – aye!!!"), identified as Shannons, that shares his passion. 47 As was the case with the comparison between the scripts for the two advertisements there is a significant resemblance in relation to the concept or theme relating to the Goggomobil, and the Dart, in the recorded version of the "dramatic events" constituting each advertisement. There are also similarities in the enthusiast's character, his Scottish brogue and the play on his accent and pronunciation, particularly when references are made to the "Goggomobil" or to the spelling out of any of the letters in that name. 48 The common concepts or themes feature a memorable character ("Mr Goggomobil"), an unusual and distinctive motor vehicle (a Goggomobil), the use of the telephone to help solve an obscure problem in relation to that vehicle and the telling of that story in a humorous manner. However, those resemblances relate to the ideas and concepts copied rather than to their expression, and are not sufficient to constitute the "reproduction" of a substantial part of the first Goggomobil advertisement. Plainly, the first Shannons advertisement conjures up the first Goggomobil advertisement and its ideas and concepts but does not reproduce a substantial part of the substance or expression of the "dramatic" events comprising that advertisement: cf Williamson Music Ltd v Pearson Partnership [1987] FSR 97 at 107. Put another way, there has been an "evoking or conjuring up of recollection" of the first Telstra advertisement, but there has not been a taking of a "substantial portion of the applicant's work by the respondent[s]": cf AGL Sydney Ltd v Shortland County Council (1989) 17 IPR 99 at 106 ("AGL"). In contrast to the position in AGL, the first Shannons advertisement does not use substantially the same dialogue and the setting or structure of the first Shannons advertisement is sufficiently different to fall well short of a "substantial" reproduction of the first Goggomobil advertisement. 49 For the above reasons Telstra has not made out its claims of copyright infringement. Passing off and Misleading conduct 50 The applicants also allege that the first and second Shannons television advertisements and the four radio advertisements constitute passing off and contravene ss 52, 53(c) and 53(d) of the TPA. Both parties relied upon the three elements of passing off, as explained by Lord Oliver in Reckitt & Coleman Ltd v Borden Inc (1990) 17 IPR 1 at 7: "First, he [the plaintiff] must establish a goodwill or reputation attached to the goods or services which he supplied in the mind of the purchasing public by association with the identifying 'get-up' (whether it consists simply of a brand name or a trade description, or the individual features of labelling or packaging) under which his particular goods or services are offered to the public, such that the get-up is recognised by the public as distinctive specifically of the plaintiff's goods or services. Secondly, he must demonstrate a misrepresentation by the defendant to the public (whether or not intentional) leading or likely to lead the public to believe that goods or services offered by him are the goods or services of the plaintiff. Whether the public is aware of the plaintiff's identity as the manufacturer or supplier of the goods or services is immaterial, as long as they are identified with a particular source which is in fact the plaintiff. For example, if the public is accustomed to rely upon a particular brand name in purchasing goods of a particular description, it matters not at all that there is little or no public awareness of the identity of the proprietor of the brand name. Thirdly, he must demonstrate that he suffers or, in a quia timet action, that he is likely to suffer damage by reason of the erroneous belief engendered by the defendant's misrepresentation that the source of the defendant's goods or services is the same as the source of those offered by the plaintiff." 51 Section 52 of the TPA prohibits conduct in trade or commerce that is misleading or deceptive or is likely to mislead or deceive. Relevantly, s 53(c) prohibits representations that goods and services have a sponsorship or approval they do not actually have, and s 53(d) prohibits representations that a corporation has a sponsorship, approval or affiliation it does not have. Unlike the TPA claims, passing off requires proof of actual damage or, in a quia timet action, likelihood of damage. 52 It appears to be common ground between the parties that, subject to the requirement of actual damage in the passing off claim, the applicants' passing off case is, in general, co-extensive with their case of contravention of ss 52, 53(c) and 53(d) of the TPA. Both cases depend on whether the Shannons advertisements represent that Yellow Pages was in some way associated or connected with Shannons, the Shannons advertisements or the services Shannnons offers. If no such representation has been made the applicants' claims must fail. If any such representation was made it is untrue and a necessary prerequisite for the success of the passing off and misleading conduct claims will have been established. 53 Although the applicants made their claims in relation to the two television advertisements and the four radio advertisements broadcast as part of Shannons advertising campaign, in my view the only substantial case of misrepresentation is in respect of the first Shannons television advertisement. 54 As explained above, the respondents concede that they made use of the first Goggomobil advertisement in making the first Shannons television advertisement. The rationale for that use was stated by Everard, a principal of Wilson Everard, that: "a campaign using Tommy Dysart and a Goggomobil would be instantly recognisable for Shannons as people were aware of Tommy and his appearance in the Yellow Pages advertisement." Moore considered that the use of a Goggomobil was a good choice because it was quirky and unusual and "would assist in cutting through the 'clutter' of advertising in the press" because of its exposure by Yellow Pages and "would therefore most likely be remembered by Shannons target market". 55 The views of Everard and Moore about the extent to which the public would associate Dysart and a Goggomobil with the Yellow Pages advertisements were well founded. Considerable evidence was adduced about the memorability of the Yellow Pages Goggomobil advertisements. I need not venture into the detail of that evidence as the effect on the public of that campaign was accurately summarised in the reports prepared by Klein & Associates and by Wilson for Shannons. Klein & Associates, after showing the animatic which contained no reference to Yellow Pages, stated that all of the members of the four focus groups "recognised 'Goggomobile' as an historic, outstanding, iconic, talked about and much loved Yellow Pages [television commercial]". Wilson's report referred to the first Goggomobil advertisement as "immensely popular and is one of the best remembered on Australian TV". He added that Dysart and his wife (who played herself in the advertisment) "are still recognised as the 'Goggomobile people' today". 56 The above observations are consistent with other evidence adduced to the effect that the extensive exposure of Dysart, acting as "Mr Goggomobil", solving a problem in respect of his beloved Goggomobil in the manner and context set out in the Yellow Pages advertisements had become part of the Yellow Pages brand image. Advertising that conjures up a brand without referring to it was described in the evidence as "secondary" or "suggestive" brand advertising. By such advertising images can become established and so well-known that they create an impression of association or connection to a primary brand, notwithstanding that the name of the brand does not appear in the advertisement. The symbol, logo or image is referred to as secondary or suggestive branding as its expression gives a ready impression of association or connection with the primary brand. Examples of such advertising include the Nike swoosh, McDonald's arches, the "Ronald McDonald" character, the Coca Cola bottle and the Yellow Pages "walking fingers" logo. 57 Secondary branding or suggestive brand advertising occurs when a word, character, symbol or image creates, on its own, instant recognition or association with a particular product or business. The adoption of such characters, symbols or images by another advertiser will usually raise the question of whether that advertiser is representing that it, or its goods or services, have an affiliation, association or connection they do not have. In R & C Products Pty Limited v S C Johnson & Sons Pty Limited (1993) 42 FCR 188 at 194 Davies J observed: "if advertising or get-up has acquired special signification, then the adoption of elements of the advertising or get-up by another trader may give rise to a misrepresentation. Then the question will be whether other steps have been taken which sufficiently distinguish the one trader and its products from the other trader and its products." 58 Twentieth Century Fox Film Corporation v South Australian Brewing Co Ltd (1996) 66 FCR 451 ("the Duff Beer case") was concerned with the name "Duff", which had acquired a powerful secondary meaning in relation to "Duff Beer" as a result of the use of the name "Duff Beer" in the television program "The Simpsons". Tamberlin J concluded (at 470) that the use by the respondents of the term "Duff Beer" was misleading and deceptive as it is likely to lead to an assumption by consumers that permission had been given by "The Simpsons" to the respondents to produce "Duff Beer". His Honour found (at 467) that the respondents' intention was "to 'sail as close as possible to the wind' in order to 'cash in' on the reputation of 'The Simpsons' without stepping over the line of passing off or deceit". Tamberlin J observed (at 466): "Intention to take advantage of the goodwill of another, does not of itself establish a cause of action … A court will, however, more readily infer where there is intention, that the promoters who know the field of business well, were justified in entertaining the hope or expectation that the attempt would succeed and it assists the conclusion that the public was so influenced: cf Australian Guarantee Corporation Ltd v Sydney Guarantee Corp Ltd (1951) 51 SR(NSW) 166 at 170-171, applied by Gummow J in Telmak Teleproducts (Australia) Pty Ltd v Coles Myer Ltd (1988) 84 ALR 437 at 445." 59 Of course each case must depend on its own particular facts. In the present case the evidence establishes that as a result of the first Yellow Pages advertisement Dysart's "Mr Goggomobil" had become a form of secondary branding for Yellow Pages when employed in the manner and context set out in the first Goggomobil advertisement. The evidence of Professor Widing was that the applicants' campaign "created a major consumer-oriented promotional campaign primarily through the depiction of an invented character, Mr Goggomobil, and his car and the linking of this to a search for solutions to an obscure problem. …The campaign has, in my opinion, been a significant factor in creating strong brand associations for the Yellow Pages including giving the brand a human face." Professor Widing also stated that: "The name 'Yellow Pages' is certainly an identity symbol for Yellow Pages. 'The fingers do the walking' are certainly an identity symbol for Yellow Pages. I would propose that the identity symbol 'Mr Goggomobil' is also a very strong identity symbol, and has been shown to be so." (T49) 60 Professor Widing stated that the focus group results point "strongly to the conclusion that Mr Goggomobil is a YELLOW PAGES brand identity symbol". In contrast, Mr Lawrance, a marketing expert called by the respondents, gave evidence that he did not regard "Mr Goggomobil" as a brand symbol as the character was not exclusively used in Yellow Pages advertising. He stated that "it formed only a part of the exposure of Yellow Pages advertising" (T200). 61 The response of the focus groups to the animatic support the view that the use of Dysart's "Mr Goggomobil" to solve a problem in respect of his beloved Goggomobil using the telephone in the manner and context set out in the first Goggomobil advertisement is a form of secondary or suggestive branding for Yellow Pages, notwithstanding that the animatic contained a voice-over advertising Shannons insurance and made no reference to Yellow Pages, its directory or its logo. The Klein & Associates research report stated: "'Goggomobile' [ie the animatic] was considered to be a perfect vehicle for promoting Shannons (for as interviewees themselves had done, Mr Goggomobile was now using the Yellow Pages and his telephone to shop for car insurance)" [Emphasis added] 62 Thus, although the animatic was branded as a Shannons advertisement the focus group members, who had insured with or were likely to have been aware of Shannons, nonetheless viewed the animatic as an advertisement that related to the use of Yellow Pages and to that extent, was associated or connected with Yellow Pages. Mr Hall, a marketing consultant called as an expert witness by the respondents, accepted that the focus groups' response to the animatic is suggestive of secondary advertising but thought that the fact that the advertisement was branded as a Shannons, rather than a Yellow Pages, advertisement suggested it was not. When asked to explain that answer he stated: "Well, because the message comes from not the - if the awareness was created originally by Yellow Pages, I don't think there's any question or any doubt about that. The interpretation that a consumer would put on that is not that there is any secondary brand communication to the Yellow Pages, because the person bringing you this piece of information is a car insurance company, and to the best of the consumer's knowledge, has no relationship with the Yellow Pages. If there was a context in which the subject matter could be considered to be associated with or related to in some way with the Yellow Pages, then I would agree that it would have that secondary brand consideration. But because of the uniqueness of the product categories and the diversity of them, there was no reason for the consumer, the viewer, to make that link." [Emphasis added] (T278) 63 Mr Lawrance's evidence was that the Shannons advertisement was a "take on the original advertisement run by Yellow Pages" but he did not think that consumers would be misled into thinking the Shannons advertisement was associated with Yellow Pages. However, in his affidavit he conceded that his opinion: "would be different if the same actor playing the same role had been used to promote exactly the same type of products or services … I think that may well confuse consumers into thinking that the actor or personality who had been used to endorse a particular product was now … endorsing a similar or new product or new range of products developed by the manufacturer who paid for the first advertisement." Mr Lawrance considered that car insurance was so distinct from the services provided by Yellow Pages that this could not be a factor in these circumstances. 64 Mr Hall's reliance upon Shannons' branding is not supported by the response of the focus groups, which were left with the impression that in the animatic "Mr Goggomobil" was now using the Yellow Pages and his telephone to shop for car insurance. It is also not supported by Wilson's statements that: · he was concerned that the use of the animatic may seem to be dangerous "given the ad was firmly branded as a Yellow Pages property" and reported: "Naturally Yellow Pages will get some publicity spin-off but the majority will be for Shannons"; · the animatic would be just a further chapter in Yellow Pages advertising history. 65 Mr Klein, a director of Klein Craig & Associates, suggested that any assumption concerning Yellow Pages: "was just an assumption that people made that when you're shopping around for car insurance you would probably have a look in the Yellow Pages to get telephone numbers. So it was a consumer assumption and it wasn't a component part that featured in the animatic … It was just part of the connect with the past." (T269) 66 In my view the animatic constituted a form of secondary or suggestive brand advertising for Yellow Pages, as well as primary brand advertising for Shannons. While "Mr Goggomobil's" character was significant the key element or "context" in the animatic which led to it becoming a form of secondary branding for Yellow Pages was "Mr Goggomobil's" search for a solution to his obscure or unique problem by use of the telephone. 67 Although the animatic did not proceed, it was an integral aspect of Shannons' strategy that the concepts and ideas employed in the animatic be reproduced in the first Shannons advertisement, but without literally reproducing any parts of the first Goggomobil advertisement. Thus, although the newly created first Shannons advertisement was to take "the Goggomobil concept a step further" and to make it look "completely different to the Yellow Pages advertisement" the steps taken to do so were taken with the intention that the first Shannons advertisement reproduce the effect and impression created by the animatic by copying its central ideas and concepts, but by employing a different visual format in expressing them. Dunn gave the following evidence in the course of his cross-examination (T160): "You say in … your affidavit … 'I wrote the advertisement in the expectation that potential Shannons' customers would recall this commercial and recall Mr Dysart in his difficulty in finding a part for his Goggomobil and his need to spell the name of the vehicle in the commercial.' You expected that this written advertisement would call to mind the Yellow Pages advertisement, did you?---Yes. That, you thought, would be so even though there is no reference to Yellow Pages on your printed advertisement?---Yes. And there's no Yellow Pages indicia in that advertisement. Is that correct? ---That's correct." Dunn also conceded that the first Shannons advertisement told "the same story" (T158) and conveyed "the same message" (T159) as the Yellow Pages advertisement, except that it concerned finding insurance, rather than parts, for the Goggomobil. 68 There can be little doubt that Dunn's evidence accurately states the respondents' intentions in respect of the first Shannons advertisement. As was explained by Tamberlin J in the Duff Beer case (at 466) those intentions, when expressed by persons "who know the field of business well", may justify the Court in more readily inferring that their endeavour to create the intended association or connection would succeed. 69 The real question for the Court in the present case is whether the manner and context in which Dysart and the Goggomobil were used by Shannons in the first Shannons advertisement represented that Yellow Pages had some association or connection with that advertisement or had endorsed or approved the services offered in it. It is to that question that I now turn. 70 The first Shannons advertisement was intended to "overhaul the Shannons brand", "broaden" Shannons appeal and to "generate immediate telephone responses" by "grab[bing] the attention of consumers very quickly". Although the new advertisement was to look "completely different" to the first Goggomobil advertisement those objectives would only be achieved if the new advertisement drew on the features of the first Goggomobil advertisement that provided "instant recognition, understanding and high memorability". Wilson Everard exercised considerable skill in reproducing those features and was thereby able to "cut through the 'clutter' of advertising" because of the memorability of the Yellow Pages Goggomobil advertising campaign. The features reproduced relate essentially to the similar manner and context in which Dysart and the Goggomobil are used in each advertisement. Both advertisements feature the likeable and memorable character who would be instantly recognised as "Mr Goggomobil", his unusual and distinctive motor vehicle ("the Goggomobil"), the use of the telephone to help solve a unique problem in relation to the Goggomobil and tell their similar stories in a humorous manner which is heavily reliant on Dysart's Scottish brogue and his pronunciation of "Goggomobil" and some of the letters in that name. 71 Wilson, in his "creative rationale", explained the feelings conveyed by the first Goggomobil advertisement as follows. The advertisement involved viewers in sharing Mr Goggomobil's depression at finding no one understood what a Goggomobil was and then rejoicing with him as he discovered "a like-minded soul who knew the car and could supply the part" for which he was searching. The first Shannons advertisement recreates each of the features to which Wilson referred, save that Mr Goggomobil was not seeking a part for his vehicle but, rather, was looking for an insurer who would insure it. Thus, while the first Shannons advertisement might have used a different scenario it retained virtually all of the features of the first Goggomobil advertisement that made it famous, popular and instantly recognisable. As explained above, that outcome was not accidental. Rather, it was an essential and intended element in Shannons achieving its objective of instant recognition and response. The manner in which the Shannons advertisement evolved also supports that conclusion. 72 In response to the complaint by Pacific Access about the script for the first Shannons advertisement, the script was revised to remove Dysart's expression of the "G" after Goggomobil, and Dysart's voiceover of the telephone number with its emphasis on "O" "O". These features were important because one of the instantly recognisable and recalled features of the first Goggomobil advertisement was Dysart's Scottish pronunciation of "Goggomobil" and the spelling out of some of the letters in it. It's likely that the creators of the Shannons advertisement considered that the spelling references, which were undoubtedly attractive features of the advertisement, might lead the public to relate it too closely to the Yellow Pages Goggomobil advertisement and, as a consequence, lead to legal problems with Telstra. Notwithstanding the removal of those features similar features were reintroduced in the course of production of the advertisement. Dysart, after saying "Go-Go-Mob-il" in frustration pronounces in his Scottish brogue – "two Gs, no Es". Franklin stated he made that addition because he "was trying to make the frustration of Tommy Dysart not being able to spell the name of the manufacturer of the car a fun feature of the Shannons advertisement." The production changes were said to have been made as a result of Dysart and Franklin "having some fun on the set with the script". Whatever the explanation might be, the production changes, which also included Dysart's spelling of "G" and "O" in his Scottish brogue six times along with "Go" "Mo", effectively reintroduced, in a more prominent manner, the changes deleted from the script. 73 The Yellow Pages Goggomobil campaign was directed to the public at large or, at the least, that large part of the public capable of using the Yellow Pages directory. Although the first Shannons advertisement targeted motor enthusiasts it was shown on commercial television to a large segment of the viewing public over a number of timeslots and in the course of a variety of programs. As was said in Parkdale Custom Built Furniture Proprietary Limited v Puxu Proprietary Limited (1982) 149 CLR 191 at 199, consideration must be given as to the class of consumers likely to be affected by the conduct. That is of some importance in a case such as the present as the initial question is whether the misconceptions, or deceptions, alleged to arise or to be likely to arise are properly to be attributed to "the ordinary or reasonable members" of the relevant segment of the viewing public: see Campomar Societad Limitada v Nike International Ltd (1999) 202 CLR 45 at [105] 86-87. In the present case the relevant class of the public likely to be affected by the conduct in question were viewers who saw the first Shannons advertisement and were aware of the Yellow Pages Goggomobil campaign. Plainly, that class constitutes a significant segment of the public. 74 As observed above, whether the use of Mr Goggomobil and his Goggomobil vehicle to solve a problem by use of the telephone would result in secondary or suggestive brand advertising for Yellow Pages depends upon the manner and context in which that subject matter is employed. The extensive and significant contextual similarities between the first Goggomobil advertisement and the first Shannons advertisement and the manner in which Dysart and his Goggomobil have been used to ensure "instant recognition" have led me to conclude that the first Shannons advertisement constitutes such secondary advertising. The difficulty that confronted Shannons is that it needed to appropriate the features that made the first Goggomobil advertisement both famous and popular, if it were to "cut through the 'clutter'" of advertising and gain the instant recognition and attention of the viewing public that it was seeking. Thus, the features that Shannons most desired to retain, and did retain, in the advertisement that was broadcast were the features that were most likely to result in the first advertisement being perceived by the relevant class of the public to be another Yellow Pages advertisement or to be in some other way connected or associated with Yellow Pages. Of course, the further Shannons moved away from those features (such as the other Shannons advertisements) the less likely its advertisement would be seen to have a connection with Yellow Pages. However, the problem for Shannons with that outcome is that it would lose the advantage of the instant recognition and response it was seeking from its first advertisement. That recognition and response was gained by Shannons recreating in its advertisement the features that gave the first Goggomobil advertisement the "warmth, humour and familiarity" that made that advertisement so well-known, popular and memorable: see [6] above. In particular, Shannons relied on re-creating the character of "Mr Goggomobil" in a similar problem solving context. 75 As was explained by Burchett J in Pacific Dunlop Pty Ltd v Hogan (1989) 23 FCR 553 at 584, in the analogous context of character advertising: "The whole importance of character merchandising is the creation of an association of the product with the character; not the making of precise representations. Precision would only weaken an impression which is unrelated to logic, and would in general be logically indefensible. Yet the impression must be powerful to be effective. The only medium likely to convey the vague message of character merchandising, while giving it the force and immediacy of an exciting visual impact, is television." 76 In Mark Foys Pty Ltd v TVSN (Pacific) Ltd (2000) 104 FCR 61 ("Mark Foys") at 76-78 the Full Court explained why it is sufficient that "some form" of association or connection is conveyed notwithstanding that the precise form of the association or connection may not be articulated or identified. That is akin to the situation in the present case. I am satisfied that the overall impression created by the showing of the first Shannons advertisement upon a significant portion of ordinary and reasonable members of the relevant class of the public was that Yellow Pages is in some way associated or connected with the advertisement or with locating the services offered in it. Accordingly, I am satisfied that the advertisement made a representation to that effect. While there would be doubt as to the precise form of the association or connection a significant segment of the relevant public would also be likely to conclude that the first Shannons advertisement is another Yellow Pages "Mr Goggomobil" advertisement, but that he is now using his telephone to look for Shannons insurance, rather than a repairer, for his vehicle. The representations of association or connection I am satisfied were conveyed by the first Shannons advertisement "cause more than mere wonderment or confusion [as to whether an association or connection exists] and travel into the areas of positive misrepresentation": see Mark Foys at 77. 77 The most compelling argument of the respondents against a connection or association between the first Shannons advertisement and Yellow Pages is the absence of any Yellow Pages branding, and the presence of Shannons' branding, in the advertisement. It was argued that those features would leave the public in little doubt that this was an advertisement for Shannons insurance and not for Yellow Pages. There may be force in that argument if the viewing public consisted solely of persons who had insured with Shannons or were aware of its specialised products. Those persons might have responded to the advertisement by regarding it as a clever use of the Yellow Pages advertisement in an advertisement by Shannons insurance. That view, however, is predicated upon those persons being well aware of Shannons and the unique role it plays in insuring "special" vehicles. The problem with that view is that such persons only constitute a small segment of the viewing public and therefore their likely response to the advertisement provides no answer as to how the larger section of the relevant viewing public, which would not have an awareness of Shannons, might view it. Indeed, the advertisement was primarily targeting a section of the viewing public that was not aware of Shannons. 78 There is a further difficulty with the respondents' argument. While a viewer would appreciate that the policies of a particular insurer, Shannons, are being offered in the advertisement, that is not inconsistent with it also being a Yellow Pages advertisement or an advertisement with which Yellow Pages is in some way associated or connected. Yellow Pages customers are all businesses throughout Australia. There would be nothing anomalous about Yellow Pages advertising its services together with one of those businesses. The situation might be analogous to a restaurant directory entering into joint advertising with a restaurant which is an advertiser in that directory. Thus, the fact that the advertisement might be seen to have Shannons branding is not inconsistent with the secondary or suggestive branding that it is also a Yellow Pages advertisement or an advertisement with which Yellow Pages is in some way connected or associated. 79 For the above reasons I have concluded that the first Shannons advertisement misrepresents that it is also an advertisement by Yellow Pages or that Yellow Pages is in some way associated or connected with that advertisement or with locating the services offered in it. As Yellow Pages had no association or connection whatsoever with the advertisement or with those services, the making of the representation: · contravened s 52 of the TPA because it was misleading or deceptive or likely to mislead or deceive; · contravened s 53(d) of the TPA because it represented that Shannons had an "affiliation" with Yellow Pages (ie an association: see Mark Foys at 76-77) which it did not have; · established a critical element of the applicants' claim of passing off. 80 However, I do not regard the first Shannons advertisement as representing that the insurance services offered by Shannons are sponsored or approved by Yellow Pages. There is nothing in the context of the advertisement or in the secondary or suggestive brand advertising that I have found to exist that would constitute a representation by Yellow Pages relating to the quality of the services offered in the advertisement: cf Mark Foys at 77-78. 81 The reasons that led me to conclude that the first Shannons advertisement contains a secondary or suggestive brand connection or association with Yellow Pages are absent in respect of the second Shannons television advertisement and the Shannons radio advertisements. Those advertisements lack the context of the first Shannons advertisement which has given rise to a secondary or suggestive brand association with Yellow Pages. Although the advertisements rely upon "Mr Goggomobil", his Scottish pronunciation and the insurance of a Goggomobil, they do not do so in the humorous and entertaining problem solving context of the first Shannons advertisement. As explained above, that problem solving context is an integral aspect of the first Shannons advertisement that has led me to conclude that there is a representation of connection or association with Yellow Pages. Accordingly, I am of the view that no representation has been made in the Shannons advertisements, other than the first Shannons advertisement, as to a connection or association with Yellow Pages. That conclusion, however, does not lead to the consequence that the other advertisements are irrelevant. It is clear that the first Shannons advertisement was a springboard for the introduction of the other advertisements with the consequence that their role might be relevant to the question of loss and damage (if any) suffered by the applicants by reason of the broadcast of the first Shannons advertisement. However, the other Shannons advertisements do not involve a misrepresentation and therefore the claims in relation to them must fail. 82 The respondents argued that the applicants' claims are misconceived insofar as they seek to claim some proprietary rights or goodwill in the character of "Mr Goggomobil". As explained above, I have not founded my decision in respect of the first Goggomobil advertisement on any such rights or goodwill. Indeed, my rejection of the applicants' claims in respect of the other Shannons advertisements is based upon my acceptance of the respondents' argument that the applicants do not have proprietary rights or goodwill in the character of "Mr Goggomobil". However, a different outcome attended the first Shannons advertisement because the context and the manner in which "Mr Goggomobil" was used in that advertisement resulted in a representation of association or connection that does not exist. 83 The respondents also alleged waiver, acquiescence or estoppel on the part of the applicants. There is no substance in those allegations. The respondents were made aware of Sensis' opposition to their use of "Mr Goggomobil" in the proposed Shannons campaign and proceeded with the campaign fully aware of the legal risks involved. I am not satisfied that there was any conduct on the part of the applicants that is capable of constituting waiver, acquiescence or estoppel in relation to the Shannons campaign. Conclusions 84 For the above reasons the applicants are entitled to appropriate declaratory and injunctive relief in respect of the first Shannons advertisement and to orders for a further hearing in respect of damages. The applicants' claims for copyright infringement are to be dismissed, as are their claims for misleading conduct and passing off in respect of the other Shannons advertisements. I also propose to make orders for mediation in respect of the damages claim and to provide for submissions as to costs. I certify that the preceding eighty-four (84) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Merkel. Associate: Dated: 31 July 2003 Counsel for the Applicant: Mr WT Houghton QC with Mr AJ Ryan Solicitor for the Applicant: Mallesons Stephen Jaques Counsel for the Respondent: Mr C Golvan SC with Dr S Ricketson Solicitor for the Respondent: Middletons Date of Hearing: 8, 9, 10, 11 and 14 April 2003 Date of Judgment: 1 August 2003