FEDERAL COURT OF AUSTRALIA

Knight v Beyond Properties Pty Ltd [2007] FCAFC 170

INTELLECTUAL PROPERTY – claims of misleading or deceptive conduct and passing off – whether appellant’s connection with name ‘Mythbusters’ sufficient to establish reputation – name broadly descriptive, not distinctive to appellant – class of addressees is ordinary members of the television viewing public – temporary or commercially irrelevant misapprehension of association due to use of name not misleading or deceptive conduct.

Federal Court of Australia Act 1976 (Cth) s 27

Trade Practices Act 1974 (Cth) s 52

Knight v Beyond Properties Pty Ltd 71 IPR 466 upheld

.au Domain Administration Ltd v Domain Names Australia Pty Ltd (2004) 207 ALR 521 cited

Angelides v James Stedman Hendersons Sweets Ltd (1927) 40 CLR 43 cited

Campomar Sociedad, Limitada v Nike International Ltd (2000) 202 CLR 45 considered

Coal and Allied Operations Pty Ltd v Australian and Industrial Relations Commission (2000) 203 CLR 194

Conagra Inc v McCain Foods (Aust) Pty Ltd (1992) 33 FCR 302 applied

Knight v Beyond Properties Pty Limited [2007] EWHC 1251 (Ch) considered

Lumley Life Ltd v IOOF of Victoria Friendly Society (1990) 16 IPR 316 cited

Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191 cited

Taco Company of Australia Inc v Taco Bell Pty Ltd (1982) 42 ALR 177 considered

ANDREW KNIGHT v BEYOND PROPERTIES PTY LTD (ACN 002 861 458), BEYOND INTERNATIONAL LTD (ACN 003 174 409), DISCOVERY COMMUNICATIONS INC, THE SPECIAL BROADCASTING SERVICE CORPORATION (ABN 91 314 398 574), FOXTEL MANAGEMENT PTY LTD (ACN 068 671 938) AND BEYOND PRODUCTIONS PTY LTD (ACN 003 433 216)

NSD 300 OF 2007

FRENCH, TAMBERLIN AND RARES JJ

19 NOVEMBER 2007

SYDNEY

THE COURT ORDERS THAT:

1.                  The appeal be dismissed with costs; and

2.                  The cross appeal be dismissed with costs.

Note:    Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.

REASONS FOR JUDGMENT

THE COURT:

1                     The appellant, Mr Andrew Knight, appeals from a judgment of a judge of the Court which dismissed an application alleging that the respondents had breached the Trade Practices Act 1974 (Cth) (“TPA”) and engaged in the tort of passing off: see Knight v Beyond Properties Pty Ltd 71 IPR 466.

2                     Mr Knight is an author.  Three of Mr Knight’s books refer in their title and content to a group of persons who investigate paranormal or supernatural phenomena, using the name of ‘Mythbusters’ (“Mr Knight’s Mythbusters Books”).  The books, however are written under Mr Knight’s nom de plume of ‘Bowvayne’, who is also their central character.  Mr Knight’s actual name does not appear on the cover or title pages or in the books.

3                     Mr Knight’s allegations in these proceedings arise out of the production and distribution by the respondents of a series of widely advertised and broadcast television programs entitled ‘Mythbusters’ (“Mythbusters TV Show”) and three books based on, and containing content from, these series (“Spin-off Books”).

4                     Mr Knight claims that, as a consequence of the widespread success of the Mythbusters TV Show, he has lost the benefit of the goodwill and reputation attaching to that name.  Mr Knight says he has lost the opportunity to exploit the goodwill and reputation associated with his use of the name because members of the public would wrongly associate the name ‘Mythbusters’ with the Mythbusters TV Show rather than with Mr Knight’s Mythbusters Books or any television adaptation of those books.

5                     The first, second and sixth respondents (“Beyond”) are members of the group of Australian companies which produce the Mythbusters TV Show.  Beyond commenced its business activities in 1985 and describes itself as a major entertainment group involved in the creation and international sale and exploitation of television feature films and ancillary products.

6                     The third respondent (“Discovery”) is a large American corporation to which the Mythbusters TV Show was sold by Beyond.  It operates a well-known international television channel.  Discovery distributed the Mythbusters TV Show initially in the United States of America and later also in Australia.

7                     Both the fourth respondent (“SBS”) and the fifth respondent (“Foxtel”) are Australian corporations which have screened the Mythbusters TV Show in Australia.  The first screening on a pay television channel by Foxtel was on 27 September 2004, and the first screening on a free to air channel by SBS was on 3 January 2005.

8                     The central issue for determination in this appeal is whether the use of the name ‘Mythbusters’ in the Mythbusters TV Show was likely to wrongly suggest to the mind of a reasonable television viewer that the show was associated in some way with Mr Knight’s Mythbusters Books (and other associated activities, such as interviews and plans to develop a television show of his own) when in fact, as is acknowledged by both parties, there was never any such association.  Determination of this issue involves a consideration whether Mr Knight’s reputation in relation to the name was sufficient to provide a reasonable basis for such an assumption of association.

BACKGROUND

9                     The background to these proceedings and the primary judge’s findings of fact are set out in detail in the decision below.  For the purposes of understanding the context in which the issue on appeal arises, we set out in summary form the relevant matters.

10                  Bowvayne is the leader of the ‘Mythbusters team’, a group of people who pursue mystery, myths and ghost stories in various parts of the world with a view to showing their falsity.  Typical of Mr Knight’s promotion of the Mythbusters team is the following comment made in 1993:

‘The Mythbusters are a wacky team who travel the world looking for monsters, ghosts, UFOs, buried treasures and things that go bump in the night.  They are in the grand English literary tradition of jolly children who have lots of scrapes and see extraordinary things.  But the Mythbusters are real and they’re grown men who don’t have to be home in time for tea.

And extraordinary things they have seen: A monster lurking in a British seaside resort, fantastically coloured UFOs in Czechoslovakia’s Carpathian mountains … and that’s just for starters.’

11                  Before the primary judge, Mr Knight gave evidence that, under the nom de plume ‘Bowvayne’, he wrote or co-wrote 14 books.  However, of this corpus, only three were Mr Knight’s Mythbusters Books, namely, ‘Mythbusters: First Cases’ (first published 1991), ‘Mythbusters: Nut Cases’ (first published 1993) and ‘Mythbusters: Real Life Adventures in the World of the Supernatural’ (first published 1996).

12                  Mr Knight’s Mythbusters Books are fictional children’s books, dealing with themes of fantasy.  They represent the most public use of the term ‘Mythbusters’ by Mr Knight in Australia, albeit that they were written under his nom de plume ‘Bowvayne’.  It is primarily on the basis of these three books that his claim to have a reputation in Australia depends.

13                  As to the number of book sales, the primary judge noted that no business records were produced on which reliable calculations of actual sales, royalties, payments, pro-rata fees and commissions or taxation records could be made, and that no convincing explanation was offered for the absence of this evidence.  His Honour considered that it was not possible to make a finding on the number of book sales on the limited material in evidence.

14                  Mr Knight claimed that he has used the name ‘Mythbusters’ in the course of television appearances and interviews.  Mr Knight made a handful of appearances on television programs in the United Kingdom between 1988 and 1996, mostly in the form of short interviews, for the purposes of light entertainment.  Furthermore, to promote his books, Mr Knight also staged a musical concert in England in 1992, was the subject of some newspaper articles in England between 1988 and 1996, appeared at the Royal Adelaide Show in 1999, gave presentations at Australian schools in 1991 and appeared occasionally on Australian television between 1991 and 1997.

15                  Mr Knight also had plans for the production of a ‘Mythbusters’ television series based on the concept of his books, and feels aggrieved by the entry into the television market of a show with what he regards as the name he created.  The evidence before the primary judge indicates that Mr Knight had attempted to interest British and Australian production companies in producing a ‘Mythbusters’ television series.

16                  Mr Knight (and his writing partner, Mr Harley) had contacted Beyond about producing a television series.  After some dispute before the primary judge, his Honour held that in 1999 Beyond was aware of, but did not necessarily consider, some material furnished by Messrs Knight and Harley regarding a proposed ‘Mythbusters’ television series in that period. 

17                  On the basis that Beyond was familiar with the title and content of Mr Knight’s Mythbusters Books, Mr Knight submitted before the primary judge that Beyond adopted a valuable idea from his activities which it otherwise would not have developed for itself.  After reviewing the history and development which led to the use of the name ‘Mythbusters’ in the Mythbusters TV Show, his Honour concluded as a question of fact at [105] that the development and adoption of the name had nothing to do with Mr Knight or any of his ideas, and that it was a belated choice because “it was a catchy term descriptive of the activities portrayed by the Mythbusters TV show”.  His Honour analysed the material supplied by Mr Knight, including material which his Honour held was not received by Beyond, and found no similarity between the content of Mr Knight’s Mythbusters Books and other materials and the content of the Mythbusters TV Show.

18                  In 1997, Beyond began work on preliminary concepts which, although different from the Mythbusters TV Show, ultimately led to its creation.  During 1999 to 2001, Mr Reece, an executive producer employed by Beyond, focused this work on television programs which used science to explore common misconceptions and debunk semi-scientific myths and common beliefs.  After going through working ideas and titles such as ‘Tall Tales or True’, ‘The Buzz: The New Science of Gossip’, ‘Legend Seekers’ and ‘Slaves to Superstition’, the concepts eventually merged with one another into the single television production under the title ‘Mythbusters’.

19                  Pre-production work on the Mythbusters TV Show commenced in June 2002 and the first series of three episodes was delivered to Discovery by Beyond on 25 October 2002.  Between that date and November 2006, a further 69 episodes were produced.  In addition, meetings about marketing broadcast rights in Australia took place between 2001 and 2004, resulting in Foxtel obtaining the pay television broadcast rights in July 2004 and SBS obtaining the free to air rights in September 2004.

ISSUES ON APPEAL

20                  The issues arising on this appeal may be identified in the following shorthand:

(i)                 Reputation;

(ii)                Descriptiveness;

(iii)              Class of Addressees; and

(iv)              Misleading or Deceptive Conduct.

All these matters are closely interrelated when determining whether the use and promotion of the name ‘Mythbusters’ by the respondents constituted misleading or deceptive conduct, but it is useful in this case to first consider them individually.  In doing so, we are mindful that the appeal is under s 27 of the Federal Court of Australia Act 1976 (Cth), which is an appeal by way of rehearing.  The Court can exercise its appellate powers only if it is satisfied that there was error on the part of the primary judge: see Coal and Allied Operations Pty Ltd v Australian and Industrial Relations Commission (2000) 203 CLR 194 at 203 (per Gleeson CJ, Gaudron and Hayne JJ).

REPUTATION

21                  In relation to the primary judge’s finding that Mr Knight’s Mythbusters Books did not have sufficient reputation among “members of the television viewing public”, Mr Knight argues that his Honour erred in not giving sufficient weight to the evidence concerning the marketing, distribution and sale of the books.  An example of this error, it is said, is that his Honour did not expressly refer to the fact that books continue in circulation after purchase or that a first purchaser may not be the only reader of the book.  Mr Knight also submits that the number of sales of a book does not determine its reputation.

22                  Mr Knight submits that the books were publicly launched and sold in Australia, were distributed and available for purchase in Australian shops, and were available in public libraries and referred to in press releases.  This, together with the activities referred to above, is said to be sufficient to give Mr Knight a reputation sufficient to ground a claim that the respondents’ conduct was misleading or deceptive.

23                  After detailed consideration of the evidence, the primary judge found that the evidence relating to book sales in Australia was insufficient and unsatisfactory, and therefore did not consider it was open to him to conclude that the sales were extensive.  Notwithstanding this, his Honour concluded at [154] that the evidence established that Mr Knight had some reputation in Australia “as the author of children’s books bearing the name ‘Mythbusters’”.  The question was how extensive was that reputation.  It is clear from this conclusion that his Honour was considering reputation among those who had read or were aware of Mr Knight’s Mythbusters Books and his association with them.  Furthermore, his Honour accepted at [161] that Mr Knight had sufficient reputation with “TV broadcasters and television production executives”, on the basis that Mr Knight had, in several countries, persistently sought to interest members of this narrower section of the public in the production of a television series based on his books.

24                  Having made these findings, his Honour considered whether a significant number of the members of the television viewing public would draw a connection between Mr Knight’s Mythbusters Books and the Mythbusters TV Show.  Having regard to impressions formed on reading, listening to and considering the evidence, his Honour concluded at [157]-[159] that

‘… there is no basis to positively find, infer or assume an association in the minds of members of the television viewing public between either Mr Knight or his Mythbusters books and the Mythbusters TV show. … There was no evidence of any announcement in the public arena which might alert members of the Australian television viewing public to the fact that Mr Knight had concrete plans in the foreseeable future for the screening of a TV show entitled Mythbusters.  Any occasional comment to that general effect over the years could not generate a reputation to that effect.’  (Emphasis added.)

25                  In our opinion, it is evident from his Honour’s reasons at [121] and [153]-[155] that the primary judge considered the evidence concerning the marketing, distribution and sale of Mr Knight’s Mythbusters Books.  The fact his Honour did not make a firm finding about the actual level of book sales is not an error of law.  It is clear that, in his Honour’s view, a finding was impossible due to the insufficiency of evidence adduced by the appellant.

26                  On appeal, counsel for Beyond took the Court to the transcript of the proceedings below, and in particular to the evidence concerning the sales of Mr Knight’s Mythbusters Books in Australia.  This evidence indicated that the books were sold in Australia, the United Kingdom Singapore and Hong Kong, with varying levels of success.  The primary judge was critical of the lack of direct evidence of the sales of Mr Knight’s Mythbusters Books in Australia.  His Honour observed at [121]-[122] that he was referred to “secondary evidence”, and not to direct evidence in the form of “receipts related to actual sales, royalties, payments of pro rata fees and commissions to others etc”.  His Honour considered that on the basis of the inadequate material placed before him he could not make any finding as to the level of sales.

27                  In our view, it was reasonably open to his Honour to conclude that the evidence concerning sales of Mr Knight’s Mythbusters Books, as at September 2004 when Foxtel began screening the Mythbusters TV Show, was insufficient to cause a viewer to make the requisite connection between the Mythbusters TV Show and Mr Knight’s Mythbusters Books.  No error of law has been demonstrated in his Honour’s reasoning in relation the issue of reputation.  Moreover, having reviewed the evidence ourselves, we agree with his Honour’s conclusion that Mr Knight failed to prove a sufficient connection between the Mythbusters TV Show and his books.

28                  It was also submitted by counsel for Mr Knight that the primary judge did not consider the “spill-over” of reputation from the activities of Mr Knight in foreign countries.  However, at several points in the reasons for judgment below, his Honour referred to Mr Knight’s claimed use of the ‘Mythbusters’ name: see [48]-[49] and [57]-[69].  The question of overseas reputation was not overlooked by his Honour, and in the absence of specific evidence as to the nature, extent and effect of any spill-over reputation which Mr Knight’s Mythbusters Books had acquired in Australia, we cannot find that his Honour erred on this point.

29                  In addition, it is suggested by counsel for Mr Knight that the evidence of an Adelaide journalist, Mr Yeaman, was not given sufficient weight or was ignored.  It is clear that Mr Yeaman’s articles contained inaccuracies and exaggerations, such as references to a television series which did not exist and to sales of over a million books which was a gross exaggeration.  This exaggeration is consistent with the observations of Richards J in proceedings brought by Mr Knight in England where his Lordship refers at [33]-[34] to numerous examples of Mr Knight’s exaggeration and describes some of the claims regarding sales as being not so much exaggeration as fantasy: see Knight v Beyond Properties Pty Limited [2007] EWHC 1251 (Ch).  In our view, his Honour did not err in dismissing or not relying on the evidence of Mr Yeaman as to spill-over of reputation.

30                  Briefly described, the Mythbusters TV Show describes itself as using modern-day science to separate fact from fiction, cautioning its audience not to copy its experiments.  The central theme is the use of semi-scientific experimentation and methodology using custom-made equipment in order to demonstrate the incorrectness of common misconceptions about physical phenomena such as, for example, the effect of gravity, the generation of gases in the stomach, the lifting power of balloons, or the ability for ping-pong balls to refloat sunken vessels.  In contrast, Mr Knight’s Mythbusters Books are concerned with adventures in the unreal world of the fantastic and supernatural, and involve characters who go in search of ghosts, buried treasure, bunyips and mythical creatures like the Loch Ness Monster.  The central theme of these books is concerned with going beyond the reality of everyday life.  His Honour found that Mr Knight’s Mythbusters Books are so dramatically distinct in format, appearance, script and substance from the Mythbusters TV Show that, after a few seconds of observing the show, an immediate and strong dissociation is apparent.  To this limited extent, a comparison of the content of the Mythbusters TV Show with the content of Mr Knight’s Mythbusters Books is relevant in this case.

31                  When making this comparison, the primary judge concluded that none of the material contained in Mr Knight’s Mythbusters Books, which Mr Knight alleged was sent to Beyond, had any significant resemblance to the content of Mythbusters TV Show subsequently produced by Beyond.  His Honour concluded at [97] that, even assuming Beyond received the material allegedly sent by Mr Knight, there was no foundation for a suggestion that Beyond used Mr Knight’s concept to develop the Mythbusters TV Show.  His Honour noted that no suggestion was seriously pressed to the effect that content had been copied and that it was the use of the ‘Mythbusters’ name which was at the heart of the case rather than the replication of the substance of Mr Knight’s ideas or storylines.

32                  His Honour accepted that the relevant date at which to test the respondents’ conduct in relation to Mr Knight’s claim was 27 September 2004, and with reference to the audience described as members of the television viewing public.  In relation to the narrower group relied on by Mr Knight, which comprised TV broadcasters and television production executives, his Honour took the relevant date as 12 September 2001.  However, in the light of his conclusions on the substance of Mr Knight’s case, nothing turned on the selection of these dates.

33                  A final point considered relevant to the issue of reputation was the chronology of events, and the selection by the primary judge of 27 September 2004 as the date at which the comparison for the purposes of reputation should be made.  Counsel for Mr Knight prepared a detailed chronology, listing events and activities by both Mr Knight and Beyond in relation to the use of the ‘Mythbusters’ name between 1988 and January 2006.  However, as counsel for Beyond points out, many of these events on which Mr Knight relied to establish reputation relate either to private activities and correspondence between Mr Knight and prospective television broadcasters, or activities he pursued outside Australia.  Examples of the former include “Meetings with Rising Sun Pictures in Australia with regard to the MYTHBUSTERS CD-Rom” in July 1996, “MYTHBUSTERS promoted to Imagination Entertainment” in 2000, and Mr Knight “commenced negotiations with Bookwise International” in 2003.  Examples of events in the chronology said not contribute to the reputation of Mr Knight’s Books because they occurred outside Australia include “Appearance on BBC Southwest Today programme” in November 1993, “MYTHBUSTERS is promoted in The Western Mail, UK newspaper” in July 1996, and “MYTHBUSTERS is pitched to the BBC” in 1998. 

34                  As is evident from this chronology and the submissions made by counsel for Beyond, a large number of the events and activities relied upon by Mr Knight to establish his reputation occurred either overseas or in private, and relatively few of them during the period in which Beyond and television broadcasters were producing and screening the Mythbusters TV Show.  When looking at this chronology, it is important to bear in mind that the relevant time for considering the questions of passing off and deceptive or misleading conduct is approximately September 2004, many years after the initial publication and public release of Mr Knight’s Mythbusters Books.  This supports a finding that any reputation vested in Mr Knight’s Mythbusters Books, quite apart from being limited to a narrow class of television broadcasters and executives, was not sufficiently widespread to create an association in the mind of the ordinary television viewing public with the Mythbusters TV Show when that show entered the public arena in late 2004.  Accordingly, in our view, the matters referred to in Mr Knight’s chronology do not provide a reason to conclude that his Honour erred in his findings concerning reputation.

35                  In view of this conclusion, it is not necessary for us to consider the claims relating to the Spin-off Books produced alongside the Mythbusters TV Show.  If it were found, which it is not, that Mr Knight succeeds in relation to the Mythbusters TV Show, then it would follow that the Spin-off Books would be caught by the same finding.

DESCRIPTIVENESS

36                  Mr Knight submits that the ‘Mythbusters’ name is now distinctive and memorable.  He says it is a neologism first coined and used by him, and therefore it is not descriptive.  He says that the primary judge erred in finding that the name ‘Mythbusters’ is descriptive.

37                  The finding of the primary Judge at [146] is that

‘Because the essence of Mr Knight’s complaint is the use, by the respondents, of the title ‘Mythbusters’, and he has no statutory right to protected use of the term, he must show that he has acquired a proprietary interest in it.  Because the name is, to an extent at least, descriptive he cannot do this if the name has not acquired a secondary meaning distinctively associated with him.’

His Honour rejected at [199] the proposition that the word ‘Mythbusters’ was devoid of any descriptive character whatsoever.  Mr Knight says this is an error in approach because the word is artificial and invented, does not describe the nature or contents of the program, and is therefore inherently distinctive: cf Angelides v James Stedman Hendersons Sweets Ltd (1927) 40 CLR 43 at 60.

38                  In the present case, we are of the view that the term ‘Mythbusters’ describes, in general terms, the breaking of beliefs or understandings wrongly held in relation to a certain topic or proposition, and is therefore in a broad sense descriptive.  It is, however, also true that when one looks at the Mythbusters TV Show, the type of myths it addresses, the personalities of the presenters, the format of the show, the script, and the methods used are not described by the term ‘Mythbusters’, and to this extent the term is not descriptive.  His Honour so concluded, and he used the expression “to an extent at least” at [146] to indicate that the name ‘Mythbusters’ was only broadly descriptive of the process of “busting” myths, and did not describe the detailed content of the program with any specificity.  In our view, His Honour was correct in this analysis, and did not err in finding that the term was “descriptive” in broad terms.

39                  In addition, Mr Knight submits that the primary judge failed to consider the fact that the alleged contravening conduct of the respondents was the use by them of the name ‘Mythbusters’, and that his Honour wrongly focused on the difference in content between the Mythbusters TV Show and Mr Knight’s Mythbusters Books.

40                  We do not accept this submission.  His Honour’s judgment demonstrates that he was alive to the issue being the use of the name and not a question of comparing content.  At [97], his Honour observes that “[i]t is use of the name ‘Mythbusters’ which is at the heart of the case, rather than any replication of Mr Knight’s ideas or storylines”, and again at [179] that “[i]t was the use of the name that was at the heart of Mr Knight’s case”.  This is further reinforced by his Honour’s statement at [198] that “Mr Knight’s complaint … depends on the notion that the name‘Mythbusters’ is his and cannot be used without his permission”.

41                  While we note that at [176] and [180] his Honour adverted to the difference in content between the Mythbusters TV Show and Mr Knight’s Mythbusters Books, these references were made only in the context of his observation that it would be immediately apparent, after a few seconds of watching the show, that it was so different from the books as to dispel any misrepresentation or confusion regarding an association arising from the use of the name ‘Mythbusters’.

42                  Accordingly, we consider that his Honour correctly addressed and answered the question concerning the issue of descriptiveness.

CLASS OF ADDRESSEES

43                  On the appeal, counsel for Mr Knight submitted that those people who were likely to be misled could be considered as comprising two broad classes:

(a)        ordinary consumers who watch television and/or read books; and

(b)       members of the television production and book publishing trade.

44                  Because his Honour referred to ordinary consumers who watched television, Mr Knight submitted that the primary judge had erred because he excluded from consideration those consumers who read books and/or were familiar with Mr Knight’s Mythbusters Books. 

45                  The reasoning of his Honour in relation to reputation and class of addressees is found at [152]-[162] of his judgment.  As noted above, his Honour found at [154] that Mr Knight had some success in Australia as an author in part due to Mr Knight’s Mythbusters Books.  His Honour found that Mr Knight had succeeded in establishing that he had a reputation in Australia as the author of children’s books which had the name ‘Mythbusters’.  His Honour also took into account at [155] the evidence of promotion by Mr Knight of his books, including newspaper articles and radio and television interviews.

46                  His Honour then reasoned at [156] that the next question was whether the reputation of Mr Knight’s Mythbusters Books which he found to exist was held by members of the television viewing public in a way and at such a level that it could be said to be likely that a number of those viewers would misapprehend an association between the books and the Mythbusters TV Show.  His Honour found at [157] that there was no sufficient basis in the evidence as to the limited reputation shown by Mr Knight from which to infer an association in the mind of members of the television viewing public between Mr Knight’s Mythbusters Books and the Mythbusters TV Show.  Mr Knight, his Honour observed, had no television presence in Australia other than as an occasional interviewee and had not produced any television show.  In other words, the awareness of Mr Knight’s reputation among ordinary members of the television viewing public was, as a matter of fact and degree, insufficient to give rise to any real prospect of a misleading belief in their minds of an association between him and the Mythbusters TV Show being generated.

47                  Having set out these findings, the primary judge ultimately at [176] addressed the question whether an ordinary or reasonable member of the public familiar with Mr Knight’s Mythbusters Books,or even the content proposed by Mr Knight for his television show, would be subject to any significant non-ephemeral deception.  In our view, this is clearly the correct question to be addressed, and it was correctly answered in the negative.

48                  The way in which his Honour sought to answer the question posed was to read Mr Knight’s Mythbusters Books, watch the video which Mr Knight had made for demonstration purposes, study Mr Knight’s proposal for his own television program, watch various episodes of the Mythbusters TV Show, and review all the other relevant documents.  In considering the evidence and submissions in this way, it is evident that his Honour addressed the correct and relevant question in relation to the class of persons who were capable of being misled or deceived as Mr Knight contended.  In no way does his Honour exclude from consideration, as counsel for Mr Knight submitted, those persons within the class of ordinary television viewers who were familiar with Mr Knight’s Mythbusters Books.  On the contrary, the broader class selected by his Honour was sufficiently wide to include those persons who were familiar with the books and saw the allegedly deceptive or misleading Mythbusters TV Show on television.

49                  Consequently, in our view, the approach and findings of his Honour do not disclose any error in relation to the selection of the class of addressees in respect of whom a finding of misleading or deceptive conduct must be made.  Nor has it been shown that the primary judge erred in his conclusion that Mr Knight failed to demonstrate that the Mythbusters TV Show constituted a misrepresentation to ordinary reasonable members of the television viewing public that it had some association with Mr Knight’s Mythbusters Books.

MISLEADING OR DECEPTIVE CONDUCT

50                  Having separated the issues of selecting the proper class of addressees and ascertaining whether the respondents’ conduct was misleading or deceptive, his Honour found that, even assuming that Mr Knight established a sufficient reputation, the respondents’ conduct was not misleading or deceptive.

51                  We are of the view that, although it was not necessary for the primary judge to separate and address in sequence the two questions, his Honour’s conclusions in respect of both were open and have not been shown to be incorrect.  The better approach in our view is to address the composite question, namely, whether the respondents’ conduct was misleading or deceptive in relation to a reasonable member of the public who watches television and who is familiar with Mr Knight’s Mythbusters Books: see Campomar Sociedad, Limitada v Nike International Ltd (2000) 202 CLR 45 at 84-85.  To divide this single question into two questions – that is, first, whether there is a reputation in respect of the selected class of addressees, and secondly, whether there is misleading or deceptive conduct – tends to creates a false distinction.  The class of addressees is relevant when an investigation of certain conduct is made to determine whether those addressees have been or are likely to be misled or deceived.  However, in the end result it was open to his Honour to identify the relevant class and hold that there was no misleading or deceptive conduct.

52                  In relation to the issue of misleading or deceptive conduct, counsel for Mr Knight submits that, if a member of the television viewing public is likely to be confused and decides to tune into the Mythbusters TV Show due to a misapprehension that it is associated with Mr Knight’s Mythbusters Books, then damage has been done at that stage and it makes no difference that the person is immediately disabused.  This is said to be because the deception has by then occurred, and the addressee has laboured under an erroneous assumption.  Therefore, it is said, even prior to tuning into the show, that person has been relevantly deceived and the respondents’ conduct has been misleading or deceptive.

53                  His Honour’s identification of the greatly different content and format between Mr Knight’s Mythbusters Books and the Mythbusters TV Show, and the consequent transitory nature of any possible misapprehension of an association between the two, does not disclose any error.  Where a transitory association between the names of two products in the mind of a member of the public is immediately dispelled upon a comparison of those products, this brief association will generally be of no significance and therefore will not give rise to misleading conduct or deception.  This approach was adverted to Conagra Inc v McCain Foods (Aust) Pty Ltd (1992) 33 FCR 302 at 350, where Lockhart J held that the appellant had failed to prove that there was a substantial proportion of persons in Australia who were aware of the appellant’s product, and that as a result the appellant’s reputation, on which an association between the appellant’s product and the respondent’s product was sought to be grounded, could not sustain a claim for passing off or an application under s 52 of the TPA.

54                  In Conagra 33 FCR at 380-381, French J referred to the test for whether a claimed reputation is sufficient to ground an application for passing off as being whether “a substantial number of persons” were aware of the product.  The reference to ‘substantial’ involves considerations such as the size and distribution of the population of prospective consumers.  His Honour referred to the concept of a “threshold” of requisite reputation, and noted that the question was one of characterising the impugned conduct and not assessing the reaction of consumers or others to that conduct.  Finally, his Honour referred to the proposition that, where the similarity complained of is “commercially irrelevant, having regard to the number of people who know of it”, then, despite that similarity, any association made by that small number of people will not be the result of misleading or deceptive conduct for the purposes of s 52 of the TPA.  A transitory or ephemeral impression, if misleading, but which is immediately dispelled, may, depending on the circumstances, be of no commercial significance and therefore not misleading conduct within s 52 of the TPA.

55                  The conclusion of French J is supported by the observation of Lockhart J in Lumley Life Ltd v IOOF of Victoria Friendly Society (1990) 16 IPR 316 at 324, where his Honour stated:

‘A temporary and commercially irrelevant confusion would not constitute or misleading or deceptive conduct.’ 

56                  The question of duration of an impression was also adverted to by Deane and Fitzgerald JJ in Taco Co of Australia Inc v Taco Bell Pty Ltd (1982) 42 ALR 177, where, after observing at 201 that a tendency to cause confusion or uncertainty would not of itself establish conduct that contravenes s 52 of the TPA, their Honours observed at 205 that the section contains no requirement that deception continue to the point of sale.  In other words, the fact that a person may be disabused of the misconception at the point of sale does not necessarily mean there has not been a contravention of s 52.  However, each case depends on the factual context and submissions advanced.  In the present case, the appellant has not based its claim on any ground that members of the public may be misled at the time of, for example, reading a television guide, and only later be disabused of their belief.  This is not surprising, given that it is difficult to see how any such transient belief might be of commercial significance in the present matter.

57                  The gravamen of the primary judge’s reasoning in this case in respect of whether the conduct of the respondents was misleading or deceptive, was to characterise the conduct surrounding the production, advertisement and screening of the Mythbusters TV Show by reference to the superficiality and transience of any impression of association arising out of the use of the name ‘Mythbusters’ in the show’s title.  His Honour considered at [176]-[181] that any misapprehension would be so insubstantial and impermanent as to justify the conclusion that the conduct was not in any significant way misleading.  He concluded at [176] that an ordinary or reasonable member of the public familiar with Mr Knight’s Mythbusters Books, or even with the content proposed by Mr Knight for his television show, would be likely to entertain any misapprehension of association for only “a few seconds”.  Any misconception or confusion which might arise from the use of the name would be “immediately dispelled” on actually watching the show and observing the clear differences in context, content and style.

58                  When characterising a course of conduct as misleading or deceptive, the practical consequences and effect which the conduct is likely to have must be taken into account.  In this case, even if one assumes that a person consults a television guide and momentarily apprehends that there may be some association between Mr Knight’s Mythbusters Books and the Mythbusters TV Show, but on closer inspection is immediately disabused of that false or confused impression, then it is open to find that the respondents’ conduct is not misleading or deceptive.  On the other hand, if the conduct leads that person to take action of a substantive nature or causes some significant detriment or financial loss, then the position may be different, and one may characterise the conduct in a different way.  The descriptions “misleading” or “deceptive” in relation to the conduct are indicative of the importance of looking to the impact of that conduct.  Put another way, if the conduct only produces the effect of misleading a person for a transient period and to an insubstantial extent, as it did in this case, then this indicates that the conduct is not likely to be misleading or deceptive in any commercially significant sense.

59                  We are of the view that, in considering the effect of the use of the name ‘Mythbusters’ upon the understanding of a reasonable member of the public familiar with Mr Knight’s Mythbusters Books, his Honour applied the correct test: see Campomar 202 CLR at 84; .au Domain Administration Ltd v Domain Names Australia Pty Ltd (2004) 207 ALR 521 at 529.

60                  The evidence before his Honour left it open for him to find that the respondents’ conduct was only capable of giving rise to confusion or misapprehension of an ephemeral nature, and only in relation to a reasonable member of the public who was aware of Mr Knight’s Mythbusters Books.  It was open, therefore, for his Honour to find that this conduct was not of a quality which was misleading or deceptive.  The distinction between confusion or self-generated misapprehension is an important one, because, without more, mere confusion or misapprehension does not suffice to make out a case of deceptive or misleading conduct under s 52 of the TPA or supply the essential ingredient of the tort of passing off, because it is to be regarded as commercially irrelevant or insignificant: see Conagra 33 FCR at 381 (per French J); Lumley Life 16 IPR at 324 (per Lockhart J).

61                  As noted earlier, we do not accept the submission that his Honour focused on the wrong question or treated the case as one in which alleged similarity of content was the essential ingredient.  His Honour’s reasoning is directed to an examination of the conduct of the alleged contravener.  He considered the significance and transience of any misapprehension in order to determine whether the conduct of the respondents was misleading or deceptive.  The primary judge made a finding, which was open on the evidence, that the conduct was not at such a level or of such a degree or extent as to amount to deceptive or misleading conduct.  Accordingly, no error has been shown in the approach adopted towards the characterisation of the conduct.

62                  In relation to the narrower group of persons alleged to have been deceived or misled, namely, Australian television executives and organisations, it was open to the primary judge to conclude at [185]-[186], on the evidence relating to the process of developing television programs, that persons in this narrow class would have a special awareness of the distinction between the Mythbusters TV Show and Mr Knight’s Mythbusters Books over and above that of the general television viewer, and therefore would apprehend that there was no relevant association: see Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191 at 209-211 (per Mason J).  His Honour pointed out that a member of this class, even on an initial encounter, would note the differences in content and style between the two products so that any association would be dispelled.  In addition, his Honour noted at [187] the lack of any evidence indicating there was likely to be any “lingering mistake” in relation to this group.

63                  Accordingly, we are satisfied that his Honour did not err in his reasons and conclusions regarding misleading or deceptive conduct. 

CONCLUSION

64                  For the above reasons, we dismiss the appeal.  As a result, there is no need for us to make a finding on the respondents’ Notice of Contention.  The appellant is to pay the costs of the respondents.  Finally, we are of the view that his Honour’s orders regarding costs on the cross-claim should not be disturbed, and accordingly the cross appeal is dismissed.

Associate:

Dated:         19 November 2007