FEDERAL COURT OF AUSTRALIA

Knight v Beyond Properties Pty Ltd (No 3) [2006] FCA 193

ANDREW KNIGHT v BEYOND PROPERTIES PTY LTD & ORS

NSD 131 of 2005

LINDGREN J

10 MARCH 2006

SYDNEY

THE COURT ORDERS THAT:

1.         The motion brought by the first and second respondents/cross-claimants by notice of motion filed on 17 February 2006 be dismissed.

2.         The first and second respondents/cross-claimants pay the applicant/cross-respondent’s costs of the motion.

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

REASONS FOR JUDGMENT (No 3)

introduction

1                     The first respondent, Beyond Properties Pty Ltd, and the second respondent, Beyond International Ltd, being also the cross-claimants (collectively ‘Beyond’) move for an injunction restraining the applicant (‘Mr Knight’) pending the determination of this proceeding or further order, from making certain representations to persons including customers and prospective customers of Beyond, generally to the effect that Beyond has infringed Mr Knight’s rights by its use of the name ‘mythbusters’, and that if they broadcast or otherwise deal with Beyond’s ‘mythbusters’ television series, they may be joined as additional respondents in this proceeding.

background

General

2                     Mr Knight claims to be an internationally acclaimed writer and to be, and at all material times to have been, involved in the writing of novels and the development of television programs. 

3                     Beyond is involved in the production and distribution of television programs. 

4                     Mr Knight claims that since 1988 he has continuously carried on in Australia and internationally the business of, inter alia, developing, writing, producing and selling television programs, screen plays and novels, concerning the investigation of myths, under or by reference to the name and mark ‘mythbusters’.  He claims that since 1994 he has promoted a ‘mythbusters’ television series in Australia based on the investigation of myths and mysteries contained in his ‘mythbusters’ books. 

5                     Mr Knight alleges that, without his authority, Beyond has produced a television series entitled ‘mythbusters’ concerned with the investigation of myths, and that Beyond has permitted the other respondents to broadcast, or permit or procure the broadcasting of, the series in Australia and elsewhere.

6                     Mr Knight commenced this proceeding on 25 January 2005 seeking declaratory and injunctive relief as well as damages or an account of profits in respect of alleged contraventions of s 52 of the Trade Practices Act 1974 (Cth)(‘TP Act’) and passing off.  He did not seek interlocutory injunctive relief and still has not done so.

7                     On 27 May 2005, Beyond filed a cross-claim against Mr Knight.  The cross-claim asserted that Mr Knight had misrepresented to customers and prospective customers of Beyond, including but not limited to the third, fourth and fifth respondents, to the effect that the production or broadcast of the ‘mythbusters’ television series constituted a contravention of ss 52 and 53 of the TP Act and passing off, by reason of the fact that Mr Knight was the owner of the (common law) trade mark ‘mythbusters’, and that the use of the mark in connection with the production and broadcast of the series constituted a representation of affiliation with, or connection to, Mr Knight’s business.  The cross-claim asserts as particulars of falsity that Mr Knight does not own a registered trade mark of ‘mythbusters’ and has used that name only in connection with the publication of books.  The cross-claim seeks, inter alia, an injunction restraining Mr Knight from making misrepresentations to Beyond’s customers and prospective customers.

8                     Beyond did not accompany its cross-claim with an application for interlocutory relief. 

9                     Accordingly, although both Mr Knight and Beyond have been seeking final injunctive relief against each other, neither has moved for interlocutory relief – that is, until Beyond’s present motion.

10                  What has prompted the motion is that Mr Knight has, in recent times, written to British Broadcasting Corporation (‘the BBC’) and Qantas Airways Ltd (‘Qantas’) asserting his entitlement to the ‘mythbusters’ mark and reputation, referring to the present litigation and indicating that if the BBC and Qantas screen the series made by Beyond they may be joined as additional respondents to this proceeding.

The BBC

11                  The first letter to be written was that to the BBC.  On 1 December 2005, Mr Knight wrote to the BBC advising that he had seen a press release to the effect that it had bought the rights to distribute a program called ‘mythbusters’ produced by Beyond.  He advised the BBC that he was the author of a series of ‘mythbusters’ books and referred to other mythbusters-related activities.  He advised that in 1998/9, his writing partner, Bruce Harley, had approached Beyond in Australia and sent Beyond promotional material for a mythbusters television series, and later a ‘pilot’ for the series.  According to the letter, the discussions came to nothing.

12                  The letter continued by advising that, at least since late 2004, Beyond had produced a ‘mythbusters’ series that has been broadcast by Discovery Channel in Australia and in the United Kingdom.  The letter next referred to Mr Knight’s issuing of this proceeding as well as his opposition to applications by Beyond to register a ‘mythbusters’ trademark in Singapore, the United States and the European Union.  He attached a copy of the statement of claim and the defence in this proceeding.  (He did not enclose a copy of Beyond’s cross-claim which would have informed the BBC that Beyond was seeking an injunction restraining Mr Knight from making representations of the kind described earlier.)  Mr Knight said that he had also instructed his United Kingdom lawyers to commence a proceeding in which he would seek an injunction restraining use of the ‘mythbusters’ name by Beyond and Discovery in the United Kingdom.

13                  He concluded by advising that he was contacting the BBC only because he had seen the press release and wanted the BBC to be aware of the situation.

14                  On 23 December 2005, the BBC replied stating that it had been assured by Beyond that Mr Knight’s claim for passing off was ‘without merit’ and that Beyond did not consider that he had any prospect of successfully obtaining an injunction.  The letter advised that the BBC would be relying on that assurance.

15                  On 16 January 2006, Mr Knight again wrote to the BBC expressing surprise that Beyond had given it that assurance.  He urged the BBC to reach its own independent view of the case.  He mentioned that he had now issued the foreshadowed proceeding against Beyond and Discovery in the High Court of Justice, Chancery Division, and enclosed a copy of the claim form and particulars of claim.  He stated that it was his main intention to seek an injunction to stop the screening of Beyond’s ‘rogue mythbusters on UK terrestrial television’, as it would do untold damage to the reputation in his mark that had been built up over the previous 17 years.  He concluded by expressing the hope that the BBC would, at the very least, wait for the High Court in the United Kingdom to determine the issue before the BBC did anything which could damage his rights permanently and irreparably.

16                  On 20 January 2006, Phillips Fox, on behalf of their client, Beyond, wrote to Mr Knight’s Australian solicitor, Ms Ciccocioppo with a copy to his London solicitors, Field Fisher Waterhouse, complaining that Mr Knight had been ‘making certain assertions and allegations that [were] clearly incorrect and demanding that the BBC refrain from broadcasting [their] clients’ mythbusters program’.

17                  Finally, on 3 February 2006, Mr Knight wrote to the BBC’s Director-General and Board of Governors.  The letter again outlined Mr Knight’s association with the ‘mythbusters’ name.  He referred to his earlier correspondence with the BBC’s Litigation Department and said that he was ‘appalled’ at its response to the effect that the dispute was one between Mr Knight and Beyond upon which it was not appropriate for the BBC to comment substantively.  He claimed that the broadcasting by the BBC of the foreshadowed series would be ‘a mortal blow to the goodwill and reputation’ he had built in the mythbusters name over most of his adult life.  He referred to proceedings he had commenced against Beyond in Australia, Singapore and the United States of America.  He requested that the BBC either desist using the name ‘mythbusters’ until the hearing by the High Court or to broadcast the series under a name other than ‘mythbusters’.

18                  The BBC replied on 10 February 2006 advising that it had not changed its position from that which it had advised previously, and that it still considered the matter should be resolved between Mr Knight and Beyond.

Qantas

19                  The letter to Qantas was written on 8 February 2006.  Again, Mr Knight referred to his books, this proceeding and other matters, then turned to a ‘mythbusters’ program which Qantas was screening as part of its in-flight entertainment.  He pointed out that the program would be seen by people from many jurisdictions where his mythbusters name and reputation would be well-known.  He referred to the proceedings pending in Singapore and the European Union and to his opposition to registration of the trademark ‘mythbusters’ by Beyond (later assigned to Discovery) in the United States of America.

20                  Mr Knight requested that, within seven days, Qantas withhold screening any further episodes of the mythbusters series on any of its flights, until ‘the legal proceedings’ are complete.  He said that he did not wish to add Qantas as a respondent to this proceeding and requested an assurance that Qantas would accede to his request.  Later in the letter, he warned Qantas that he would be very wary of relying on any assurances provided by Beyond in relation to the matter and requested Qantas to reach its own independent view of his claim.

21                  On 9 February 2006, Phillips Fox wrote a letter of protest to Ms Ciccocioppo concerning Mr Knight’s letter to Qantas, requesting an undertaking to desist, failing which Beyond would seek an interlocutory injunction.

22                  Ms Ciccocioppo replied on the same day (9 February) asserting Mr Knight’s rights.

consideration

23                  Beyond complains that by making representations to Beyond’s customers and prospective customers, Mr Knight is seeking to pre-empt the result in this proceeding and that he should be prepared to await the result.  Mr Knight complains that in seeking injunctive relief, Beyond is seeking to pre-empt the result in this proceeding, and that it should be prepared to await the result.

24                  There has been no final hearing of this proceeding.  Mr Knight has not been held to be right or wrong in his claims.  Beyond has not been held to be right or wrong in its claims. 

25                  Beyond must show that there is a serious question to be tried that it will obtain relief on its cross-claim.  Yet the cross-claim is, generally speaking, defensive.  It is a little odd to speak of a serious question to be tried on the cross-claim: the notion of a serious question to be tried fits more readily to the case initiated by Mr Knight.  In effect, Beyond must show that there is a serious question to be tried that Mr Knight will fail.  If he succeeds, we will know that he would have been entitled to write to the BBC and Qantas.

26                  Beyond submits that the particular representations Mr Knight has made fall into three broad categories:

(a)        representations to the effect that any broadcast, use or other dealing with Beyond’s ‘mythbusters’ television series or spin-offs from the series will constitute an infringement of Mr Knight’s rights by reason of contravention of the TP Act and passing off;

(b)        representations that any person dealing with Beyond’s mythbusters series or any spin-off from it will be joined as a respondent to the present proceeding; and

(c)        representations that Beyond is ‘unreliable or untrustworthy (in some murky sense)’ or that Beyond is dealing with the mythbusters series or spin-offs from it, knowing that it is infringing Mr Knight’s rights.

27                  Beyond accepts, as it must, that the first representation raises the very issue yet to be determined in this proceeding and that it is difficult to assess the strengths and merits of the parties’ cases at this stage because, although Mr Knight has filed his evidence-in-chief, Beyond and the other respondents are yet to file their evidence.  Importantly, on the hearing of its motion, Beyond does not seek to adduce evidence going to this issue.

28                  Beyond’s submissions concentrated on the second and third alleged misrepresentations.

29                  Beyond submits that whether or not Mr Knight has threatened to join Qantas as a respondent to this proceeding is a matter of construing his letter, and that I should infer that he has no real intention of joining Qantas. 

30                  Mr Knight’s letter to Qantas stated:

‘I have no wish to add Qantas to the list of respondents to the proceedings and would appreciate your assurance that Qantas will accede to my request.  The screening of the Offending Series by Qantas has, to my mind, already caused massive damage to the goodwill I have built in my MYTHBUSTERS brand over the past eighteen years.

............................................................................................................................

For all the reasons stated above I do not wish Qantas to be joined to proceedings, however further screening of the Offending Series will continue to cause me damage.  So I must request that Qantas refrains from broadcasting the Offending Series until the Court has heard this matter, or alternatively broadcast the Beyond program without using the name or mark MYTHBUSTERS.’

31                  Mr Knight is not saying that if he does not receive an assurance from Qantas within a certain period, he will join Qantas as a respondent.  His statement is equivocal.  He is voicing his anxiety over the question whether Qantas should be joined as a respondent.  Qantas would understand the letter correctly.  Qantas would understand Mr Knight to be stating that there is a possibility that Mr Knight may join it as a respondent;  that he would wish to avoid doing so if possible;  that the only way Qantas can be sure that it will not be joined is to cease screening the mythbusters film;  and that even if Qantas continues to screen the film, Mr Knight may still not join it as a respondent.

32                  I do not infer that Mr Knight conveyed or intended to convey a threat which he had no intention of carrying into effect.

33                  In relation to the third alleged representation, while I understand that Beyond may have felt stung by Mr Knight’s statement that he would not rely on Beyond’s assurances, it was its assurances ‘in relation to this matter’ to which he was referring.  In substance, and I think he would have been so understood, he was urging the BBC and Qantas not to take Beyond’s word for it but to carry out their own independent investigations as to his claim.  Apparently, neither has seen fit to embark upon the very task which befalls this Court.

34                  The BBC and Qantas are well-resourced corporations that have ready access to legal advice on matters of the present kind.  They would no doubt make their own informed assessment of letters of the kind that Mr Knight has sent to them.  They would not be misled by Mr Knight’s letters.

35                  I do not think that on the evidence before me on Beyond’s motion there is a serious question to be tried that Mr Knight has been misleading the BBC or Qantas, or, if there is, that the balance of convenience calls for the granting of an injunction.

36                  If Mr Knight succeeds on the final hearing, letters of the general kind he has sent to the BBC and Qantas will be supported.  If he fails on the final hearing, and if Beyond suffers loss as a result of the writing of letters of that kind, the damages for which he will be liable to Beyond will be so much the greater.

37                  There should be as early a final hearing as possible of this proceeding.  I will have the matter listed for directions with a view to the fixing of an early hearing date.

conclusion

38                  Beyond’s motion brought by notice of motion filed on 17 February should be dismissed with costs.

Associate:

Dated:              10 March 2006