FEDERAL COURT OF AUSTRALIA

Rexlynne Nominees Pty Ltd v Last Frontier Picture Co Pty Ltd [1999]

FCA 1380

INTELLECTUAL PROPERTY – copyright – interlocutory injunction – previously unused footage from television series used to produce video – joint owners of copyright – bad language in video – contract between joint owners – whether consent to exploitation unreasonably withheld

WORDS AND PHRASES – “larrikin”

Trade Practices Act 1974 (Cth) s 52, 53(c)

Pacific Dunlop Ltd v Hogan (1999) 23 FCR 553 at 555 mentioned

Secured Income Real Estate (Australia) Ltd v St Martins Investments Pty Ltd (1979) 144 CLR 596 at 610 applied

REXLYNNE NOMINEES PTY LTD & ORS v LAST FRONTIER PICTURE CO PTY LTD & ORS

NO. V547 of 1999

HEEREY J

8 OCTOBER 1999

MELBOURNE

THE COURT ORDERS THAT:

1.         The first and second respondents, whether by themselves, their directors, officers, servants or agents or otherwise howsoever, be restrained until the hearing and determination of this proceeding or further order from

(a)        producing;

(b)        releasing to the public; and/or

(c)        offering for sale or in any way distributing beyond the parties to the copyright agreement entered into by, inter alia, the first applicant, the first respondent and third respondent dated 21 December 1993 (the copyright agreement)

            a cinematic film production comprising extracts from the cinematograph film the subject of the copyright agreement. 

2.         Liberty to apply on 24 hours notice is reserved.

3.         The costs of the application for an interlocutory injunction are reserved.

4.         The directions hearing is adjourned to 3 November 1999 at 9.30 am.

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

REASONS FOR JUDGMENT

1                     The first applicant Rexlynne Nominees Pty Ltd (Rexlynne) is controlled by Mr Rex Hunt.  Mr Hunt has become very well known as the presenter of television and radio programs about fishing, and also as a football commentator on Radio Station 3AW and Channel Seven.  Some years ago Mr Hunt presented several series of television programs on fishing.  Also involved were the second respondent Mr Collin Christmas and his company, the first respondent Last Frontier Picture Co Pty Ltd (Last Frontier), the fourth respondent Mr Stephen Edwards and his company, the third respondent Stephen G Edwards Productions Pty Ltd (Edwards Productions). 

2                     Following some litigation Rexlynne, Mr Edwards, Mr Christmas, Last Frontier, Edwards Productions and two other companies entered into a formal agreement dated 21 December 1993 (the 1993 agreement).  The agreement recited that Mr Edwards and Mr Christmas had produced Series 1, 2 and 3 of “Rex Hunt’s Fishing World” and that Last Frontier and Mr Edwards had produced Series 4 and were currently producing Series 5. 

3                     By cl 1.2 “Series” was defined to mean “the cinematographic work comprising the television series known as ‘Rex Hunt’s Fishing World’ or any part thereof”.  The recitals also spelled out some details as to the subject matter and format of subsequent programs.

4                     Clause 2.1 of the 1993 agreement relevantly provided:

“2.1     The parties acknowledge:

(a)       that all right title and interest in the copyright in or in relation to Series 1, Series 2, Series 3, Series 4 and Series 5 of the series including all wild footage … has always been, is and shall remain the joint property of Rexlynne, Last Frontier and Edwards in equal shares; and

(b)       that all right, title and interest in the copyright in or in relation to any subsequent series is and shall remain the joint property of Rexlynne and [Edwards] Productions in equal shares;

(c)        That the parties shall use all reasonable endeavours to exploit copyright in the Series including the wild footage … and none of the parties shall unreasonably withhold their consent to exploitation.”

5                     The term “wild footage” refers to footage filmed but not used in the broadcast programs.

6                     Mr Christmas and Last Frontier have used some of the wild footage to compile a one hour video program entitled “Rex’s Bigguns” (the video).  They wish to sell the video through video outlets.  It is not proposed to sell it to television stations.  Rexlynne has refused consent.  Its ground for doing so is that the video shows Mr Hunt using much bad language and this would be damaging to his reputation.  Rexlynne seeks an injunction pending trial.  It is said that if the video is published it and Mr Hunt will sustain irreparable damage.  Mr Christmas and Last Frontier say that consent is being unreasonably withheld.  Mr Edwards and Edwards Productions have been joined as respondents but have taken no active part in the proceedings.  When I speak of “the respondents” hereafter I am referring only to Mr Christmas and Last Frontier. 

7                     On the present application there are two issues.  First, have the applicants shown that there is a serious case to be tried?  This injunction application has been brought on very quickly.  The issues have not been the subject of the full evidence and argument that they would receive at a final hearing.  So I am not deciding the ultimate merits of this case one way or the other.  If the applicants have established there is a serious case to be tried, the second issue arises.  Does the balance of convenience favour the grant of an injunction?  This means I have to compare the harm the applicants would suffer if they were refused an injunction but succeeded at trial against the harm the respondents would suffer if an injunction were granted but the applicants failed at trial. 

8                     Central to this case is the public perception of Mr Hunt and the persona he presents in his media work.  It was not seriously disputed that Mr Hunt’s persona is an important factor affecting the exploitability and hence the ongoing commercial value of the copyright in the material the subject of the 1993 agreement. 

9                     The respondents put in evidence an article from the Business Review Weekly dated 31 March 1997.  Counsel for the applicants embraced it as a fair description notwithstanding that it is two and a half years old.  The article appeared in an issue of BRW which featured “Top 50 Entertainers”.  The cover displayed a photograph of Mr Hunt and the legend “Fishing and Footy earned Rex Hunt $2.5 million last year”.  The article itself relevantly said:

“Rex Hunt is loud, proud and laughing all the way to the river bank.

Yibbida Yibbida, I’m Rex Hunt and you’re not.

With this glib catch phrase and by simply being himself, the doyen of Australian fishing has made a fortune.  The creation of this persona has been much more intricate.  To his legion of fans around the world, Hunt is a loudmouth larakin [sic] who calls games of Australian Rules football, kisses fish and sells fishing rods.  Rex Hunt is also a multi-million-dollar empire with a full-time staff of 35. 

…

Hunt’s empire covers television production, local and overseas sales, clothing, fishing products, a charter business, books, videos, a monthly magazine and endorsements including Nissan, Shimano, Thomas Cook and Ansett.”

10                  After detailing other widespread commercial activities the article noted that Mr Hunt’s television programs were sold to 106 countries.  The article continued:

“Not bad for a boy who says he failed year nine and was told he would never amount to anything.  ‘I have always been a struggler’, he says ‘I can see myself as a boy, so unsure and so pitiful in his lack of confidence … I had the ugly duckling syndrome’.  Not any more.  Now he says: ‘I’m flamboyant, over-the-top and absolutely, extremely confident … I get high on my own adrenaline’.  Like him or loathe him, it is hard to ignore Hunt.  And that is why would-be sponsors court him so assiduously.”

11                  The origin of the word “larrikin” is shrouded in mystery.  The Australian Macquarie Dictionary suggests “(? Brit. Warwickshire and Worcestershire)”.   However the Oxford English Dictionary opts for “Chiefly Austral.” and states:

“The word seems to have originated in Melbourne not long before 1870; but the story that it was evolved by a reporter from an Irish policeman’s pronunciation of larking, heard in a Melbourne police-court in 1869, appears to be a figment, no trace of the incident being found in the local papers of the time.”

12                  The meaning given by the OED is “A (usually juvenile) street rowdy; the Australian equivalent of the ‘hoodlum’ or ‘hooligan’”.  The Macquarie gives two meanings: (1) a lout, a hoodlum (2) a mischievous young person. 

13                  Notwithstanding those dictionary definitions, I think in current usage in Australia the term is not necessarily confined to young people.  It also has connotations of being cheerful, disrespectful of authority and propriety, noisy and a bit wild, but not in any really aggressive or offensive way.  In Pacific Dunlop Ltd v Hogan (1999) 23 FCR 553 at 555, Sheppard J described the character Crocodile Dundee played in the film of that name by Paul Hogan as being portrayed

“… in a laconic, laid-back style and yet [the feats of the character in the film] are all pervaded with a certain cockiness and insolence.  All these characteristics are said to be dear to the hearts of many Australians and indeed to reveal the type of personality which Australians like to think they have, even if this involves a certain amount of self-deception.”

14                  To my mind the term “larrikin” as used in Australia today also conveys the kind of characteristics of which Sheppard J speaks.  The term indeed has an element of endearment.  Leading figures in the world of sports, entertainment and even politics might not be totally displeased to be described as “something of a larrikin”.  By the same token, the darker shades of meaning suggested by the dictionary definitions have receded.  While one could well speak of a person as a “lovable larrikin”, the expressions “lovable lout” or “lovable hoodlum” do not ring true. 

15                  Turning to the video itself, Mr Hunt deposed that he was “shocked” at its contents.  He said:

“At no time did I intend for these, often private, moments to be captured on film which might be made public.

A few segments of the ‘tape’ are humorous and without the explicit language may be suitable for viewing, however, this would only amount to about 10 per cent of the one hour long tape.  In my opinion, the rest of the video is not suitable for public viewing and is not a production with which I would choose to be associated with or which I would seek to have produced.”

16                  Mr Neil Coulston, Program Director of Channel Seven Melbourne, deposed:

“In my opinion the off-cuts used in this video are typical of off-cuts obtained in this type of production.  That is, the use of foul language is and has always been a release for many performers as a result of nervous tension experienced while facing the camera and ‘fluffing’ lines.  Never would anyone, and in particular performers, think that the day would come when a video of this kind of off-cuts would ever be released commercially.”

17                  Mr Christmas deposed that he selected parts from the wild footage consisting of  “humorous antics and mistakes”.  Almost all the footage of Mr Hunt was taken with him speaking directly into the camera or for the benefit of the camera.  The segments are connected by a young female speaker who introduces them.  Mr Christmas deposed:

“Due to the colourful nature of the language used by Mr Hunt in the out-takes I believe that the video market was the appropriate market for this video and not television.”

18                  He made enquiries of the Office of Film and Literature and was advised that it is likely that the video would receive an MA classification.  That classification requires that a warning label appear on the front cover and at the beginning of the tape.  Mr Christmas deposed that he did not believe that the video would have the effect of destroying Mr Hunt’s reputation.  He said:

“The video contains many humorous off-cuts which I believe will appeal to a (largely male) adult audience with an interest in fishing.”

19                  Mr Coulston deposed that Mr Hunt’s fishing program has experienced long-term success throughout Australia on the Seven Network.  He said:

“The people who follow and watch his fishing program are usually middle to low income earners with a young family.  Rex Hunt also has a very high following of children from the age of five to sixteen years of age.”

20                  I have seen the video.  It is made up of numerous short segments.  Insofar as there is any connecting theme, apart from fishing, it is the relentless use of the word “fuck”. 

21                  I am satisfied that the applicants have made out an arguable case that if the video were released publicly, the sort of audience described by Mr Coulston might well see it, notwithstanding the MA rating.  It is also at the very least arguable that many such people seeing the video would be startled at the contrast between what is shown and Mr Hunt’s previously accepted persona and that their perception of him would change for the worse. 

22                  It is not to the point that many people, if they thought about it at all, might not be surprised that Mr Hunt uses bad language.  Many people in Australia today, in many different walks of life, use bad language from time to time.  But there is a time and place for everything.  The real thrust of the complaint here is that the release of the video would result in Mr Hunt being seen to be exploiting commercially the use of bad language and presenting a form of entertainment to the public vastly different from that on which his reputation has been built.

23                  The question then is whether consent is being unreasonably withheld.  A closely analogous issue frequently arises where a landlord refuses consent to a proposed assignment of a lease by a tenant.  Leases usually contain a provision that consent to an assignment should not be unreasonably withheld.  To be reasonable, the reason for the refusal must be something affecting the subject matter of the contract which forms the relationship between the landlord and the tenant, and not something extraneous and dissociated from the subject matter of the contract:  Secured Income Real Estate (Australia) Ltd v St Martins Investments Pty Ltd (1979) 144 CLR 596 at 610 per Mason J.

24                  In the present case, counsel for the respondents argued that the refusal of consent was not reasonable because it was based upon the effect that the proposed exploitation may have on other business interests of the applicants.  She pointed out that cl 2.1 of the 1993 agreement placed a positive duty on the parties to exploit the footage, which was the very material in respect of which the 1993 agreement operated.  So, the argument went, a ground could not be reasonable if it related to aspects of the footage itself.  This is something of which the parties must be taken to have been aware.

25                  However, it seems to me at least arguable that concern as to any deleterious impact the particular form of proposed exploitation might have on the commercial value of the copyright material could be reasonable for the purposes of cl 2.1(c).  Mr Hunt’s evidence was that the release of the video would

“… substantially damage the public persona that I have established over the last nine years.  This will in turn substantially diminish the value of the copyright which Rexlynne holds in the [material the subject of the 1993 agreement].”

26                  This potentially is supported by the evidence of Mr Coulston as to Mr Hunt’s appeal to families and children. 

27                  Counsel for the respondents argued that the reputation of Mr Hunt would not be harmed by the release of a video in which he “uses colourful language and engages in antics”.  In support of that argument counsel sought to rely on pages downloaded from Mr Hunt’s “Fish’n Tips” website page which were said to display “uninhibited use of colourful language”, “homophobic” and “extremely racist” messages.  However it was not suggested that those messages emanated from Mr Hunt himself or were approved or adopted by him.  At worst he might be criticised for not taking sufficiently prompt steps to remove such material from his website.  It did not seem to me that such material was relevant to support the proposition counsel advanced.

28                  The only other evidence relied on to show Mr Hunt had a public persona which would not be damaged by the video was a report in the Spy column of the Sunday Age of 12 September 1999.  This concerned an incident in which Mr Hunt, while on air on his radio fishing show, summarily dismissed his Goulburn River correspondent Mr Bill Bourke for writing a letter to a country newspaper about fishing in Lake Eildon.  Mr Hunt said to Mr Bourke, who had telephoned the program: “This is 3AW fishing giving Bill the arse”.  While perhaps a term not used in the politest of company, the word “arse” has had general currency for a long time, notably in the Ascot scene from My Fair Lady, a film which certainly never had an MA rating. 

29                  I think therefore there is a serious issue to be tried on the question whether Rexlynne unreasonably withheld consent to publication of the video. 

30                  The applicants’ amended statement of claim alleges a breach of the terms of the 1993 agreement and also an infringement of Rexlynne’s copyright.  If the withholding of  consent by Rexlynne was reasonable, publication of the video would make out both causes of action.  Reliance is also placed on s 52 and s 53(c) of the Trade Practices Act 1974 (Cth).  It is alleged that publication would represent that the video had the sponsorship or approval of Rexlynne or Mr Hunt.  The question here is essentially the same.  If consent was unreasonably withheld, publication of the video would not amount to any misleading or deceptive representation because consent would have been given by means of the 1993 agreement. 

31                  As to the balance of convenience, if no injunction is granted but the applicants ultimately succeed at trial, the video will have been published.  I am satisfied that there would be a real risk of significant adverse effect on the marketability of Mr Hunt’s persona and hence on the value of the copyright.  This would be difficult (and expensive) to quantify and prove as damages.  On the other hand, if an injunction is granted but the applicants fail at trial, the only hardship suffered by the respondents is a postponement of the time for the exploitation of the video.  No case was made that there was any particular urgency in this.  Given that Mr Hunt has been a prominent figure in the entertainment industry for up to eighteen years (the time for which his 3AW fishing program has been running) the commercial value of the video is not likely to diminish in the meantime. 

32                  The applicants have therefore made out a case for an interlocutory injunction.  Counsel for the applicants has given the ordinary undertakings to damages.  Upon those undertakings there will be orders as follows:

1.         The first and second respondents, whether by themselves, their directors, officers, servants or agents or otherwise howsoever, be restrained until the hearing and determination of this proceeding or further order from

(a)        producing;

(b)        releasing to the public; and/or

(c)        offering for sale or in any way distributing beyond the parties to the copyright agreement entered into by, inter alia, the first applicant, the first respondent and third respondent dated 21 December 1993 (the copyright agreement)

            a cinematic film production comprising extracts from the cinematograph film the subject of the copyright agreement. 

2.         Liberty to apply on 24 hours notice is reserved. 

3.         The costs of the application for an interlocutory injunction are reserved.

4.         The directions hearing is adjourned to 3 November 1999 at 9.30 am.

Associate:

Dated:              8 October 1999