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Case Name: Hogan and Another / Koala Dundee Pty Limited and others

Key Words: Association with film character; character merchandising

Court: Pincus J.; Federal Court

Country: Australia

Citation: 20 FCR 314

Date: 23 September 1988

Case No.: -

Importance: Extension of passing off action; mere association with a film character is sufficient for an injunction; damage calculation (held not calculable)

Facts: Paul Hogan, the inventor of the Crocodile Dundee films, and one of his companies which had produced the film, brought an action against the proprietors of ‘Koala Dundee’ stores. These stores sold T-Shirts and other items recognised from the films to be typical of those coming from the Australian outback. The stores’ logo was a Koala Bear in Crocodile Dundee ‘get- up’. Hogan sought injunction and damage as compensation.

Decision and Reasoning: The court accepted an extended version of the action of passing off.  It held that an action can be brought in respect of an image, including a name, which is unconnected with a business.

‘It is now the law of Australia, that the creator of a sufficiently famous character having certain visual or other traits may prevent others using his character to sell their goods and may assign the right so to use the character; furthermore, the inventor may do these things even where he has never carried on any business at all, other than the writing or making of the work in which the character appears’. (p. 323) 

Reference was made to  Henderson / Radio Corporation Pty Ltd [1960] SR (NSW) 567 in which the court had found that misappropriation of reputation was an injury in itself. 

In Australia, reputation is construed to encompass real and fictitious characters.  In Children’s Television Workshop / Woolworths 1 NSWLR 273 [1981] the Supreme Court of New South Wales had barred a store from selling toys which looked like characters from the programme, Sesame Street.  

The ruling in Hogan confirmed that rule and prohibited the defendants use of the ‘Koala Dundee’ sign and the misleading use of the word ‘Dundee’. The court did not award damages as it was considered that there was insufficient evidence to assess a fictional licence: The licence agreements that had been put before the court concerned relationships between large-scale industrial entities rather than two small shops.

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Case Name: Pacific Dunlop Ltd. / Hogan and Another

Key Words: Association with film character; character merchandising

Court: Federal Court, Sheppard, Beaumont and Burchett JJ

Country: Australia

Citation: 23 FCR 553

Date: 25 May 1989

Case No.: -

Importance: Extension of the passing off action; mere association with a film character is sufficient for an injunction; damage calculation (held not calculable)

Facts: Paul Hogan and others who had an interest in the film Crocodile Dundee and its merchandising spin-off activities brought an action against a free rider. (See also Hogan/Koala).

The defendant was a company selling “Grosby shoes”. They had chosen a television advertisement to sell their products that adapted a scene from the film. The male actor in the advertisement was clearly distinguishable from, but dressed in a similar fashion to, the character Mick Dundee in the film. The female character was blonde in both the film and the advertisement, but not similar in any other respect. The advertisement could be described as a caricature of the film scene. The same look and feel was created.  The plot, where some muggers assaulted a couple and were repelled in a surprise action, remained the same. Instead of ending the scene with “This is a knife”, the advertisement character said “These are leather shoes”.

The claimant argued passing off and infringement of a section of the Unfair Trade Practices Act (not further dealt with here). Copyright infringement was not relevant (563)

Decision and Reasoning: The Federal Court extended the action for passing off.  From the facts it was clear that Hogan had not endorsed the clip. (562) See  Henderson and the English case Irvine.    

I. Sheppard J.’s dissenting speech

Sheppard J. named the elements of passing off in accordance with Erven Warnink / Townend. (563) although in a different order: 

1. Trade and in the course of Trade

This applied to the instant case without further discussion. 

2. To prospective customers or ultimate consumers

If there was a misrepresentation, this requirement was met, too, for the advertisement was addressed to final consumers. 

3. Calculated to injure business / actual damage

Sheppard J. considered damage arose from the fact that Hogan had not chosen to advertise the products of the defendant. Hogan had agreed to do only a limited number of advertisements.  The advertisement by the defendant had impaired the impact of future campaigns using Hogan’s picture. To this end the judge also found the defendant’s action to be calculated. (563) 

4. Misrepresentation

The main question was whether there was any misrepresentation. Sheppard J. asked whether a significant section of the public could believe that Hogan had somehow endorsed the advertisement. He thought not. The actor in the unauthorised advertisement was visibly not Hogan (567). No endorsement could be construed. He then referred to merchandising cases such as Lyngstad / Anabas, but considered them unhelpful for the task before him which was judging the reactions of the audience. (571) He decided that the audience could not be misled by the advertisement. This was because the advertisements authorised by Hogan were formulated such that the endorsement was obvious.  This was not the case with the advertisement made by the defendants.  

II. The majority opinion

The majority did not agree with Sheppard J. on that point: Beaumont J. pointed to the image of “Crocodile Dundee” (582) He considered this portrayed a “variant of the Dundee figure” who was endorsing the shoes. This was sufficient for him.

Burchett J. agreed with Beaumont J.  “What the 30 seconds caller would leave behind would be a satisfying feeling that it would be good to have these “Crocodile Dundee” shoes associated with Hogan.” (585) 

The case thus extended passing off to the stage where mere association with a character is sufficient for the action.

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Case Name: Australian Broadcasting Corp. / Lenah Game Meats Pty Ltd.

Key Words: No right to privacy for corporations even after an action for trespass. 

Court: Federal Court

Country: Australia

Citation: [2001] 208 CLR 199

Case No.: -

Date 15 November 2001

Importance: The case did not result in a free standing right to privacy in Australia (but see now Grosse v Purvis).

Facts: The plaintiffs produced meat from possums. Some activists had secretly entered the plaintiffs premises and installed a camera in a possum slaughterhouse. The trespassers anonymously sent the tape to an animal rights organization. This organization provided the defendant ABC (a TV station), with the footage. ABC wanted to broadcast it. The plaintiffs sought an injunction.

Decision and Reasoning: The court, in a  5:1 split decision did not grant an injunction.

The reasoning of the majority differed: 

I. Gleeson CJ

Gleeson CJ stressed that, on the facts, no property rights, intellectual property rights or trade secrets were at risk. He compared the facts of the case to a hypothetical scenario where trespassers hid in the slaughterhouse and later told the story to the public. (29) Although the means of production was not secret as such, the claimants had argued the film should be treated as confidential information as it was filmed while the defendants were trespassing on property. (30) The claimants did not argue breach of confidence (33) but for a new tort “invasion of privacy” which should also apply to corporations.

Gleeson CJ accepted the validity of a breach of confidence action in cases where privacy was implicated. (39) But he was not eager to create a new tort as there are subtle mechanisms at work balancing freedom of the press and individual privacy. (41) As for the facts in the instant case, he noted that not every act done on private ground is considered to be private. (43) He asked the question as to whether a violation of a criminal law could lead to the grant of an injunction  (48) but considered that was not relevant in the instant case where the defendant was not party to the criminal action. Gleeson CJ’s position can be summed up as follows: First, he would grant an injunction if the information was confidential. This was not so in the instant case. Second, if the criminal himself was the defendant, or if the defendant had sought information of a criminal nature, an injunction was possible. In the instant case where non-confidential information had emerged from the commission of a crime, but obtained by a third party, no injunction would be granted.  Thus the information could be published.   

II. Gaudron J.

Gaudron J. did not see any legal entitlement that the claimants could possibly argue. (62) He concurred with Gummow and Hayne JJ. 

III. Gummow and Hayne JJ: 

Gummow and Hayne JJ looked to the approaches of other common law jurisdictions. They did not feel comfortable granting privacy protection to corporations: “What ever development may take place in that field will be to the benefit of natural, not artificial, persons.”  

As to a emerging tort of privacy, they noted:

“It may be that the development is best achieved by looking across the range of already established legal and equitable wrongs. On the other hand, in some respects these may be seen as representing species of a genus, being a principle protecting the interests of the individual in leading, to some reasonable extent, a secluded and private life, in the words of the Restatement, free from the prying eyes, ears and publications of others”. (132) 

IV. Kirby J.

Kirby J. based his decision on the requirement that constitutional animal rights have to be observed. (217 et seq.) 

V. Callinan J. (dissenting)

Callinan J. examined the foundations of a free press at length in his judgment (270 et seq.) before arguing that a free standing injunction could be granted to restrain the enjoyment of property unlawfully obtained when the person to be enjoined knows or ought reasonably to know of its illegal genesis. (287) He considered  that the action for breach of confidence applied in the instant case. (312). In an obiter dictum, he addressed the question as to whether there was a new tort of privacy. (313) He seemed confident that such a new tort might evolve in Australia. Finally, he rejected the idea that the intrusion might be justified on constitutional grounds.

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Case Name: Grosse v Purvis

Key Words: Intrusion into privacy; Right of Privacy

Court: District Court, Brisbane, Queensland

Country: Australia

Citation: [2003] QDC 151

Case No.: -

Importance: This case is the first in Australia where a claimant has successfully sued for the tort of privacy.  It creates a right of action independently of statute.  The decision is by the District Court in Queensland and therefore not binding on interstate jurisdictions.  Apparently the case is likely to be appealed.  If sustained on appeal the decision would not be limited in its effect to facts where stalking had occurred.

Facts: The defendant stalked the claimant.  The defendants’ activities included following and loitering near the claimant; loitering near, watching and approaching the places where the claimant lived and worked; giving the claimant offensive material; intimidating and harassing the claimant; threatening violence against the claimants property.  Damages of $178,000 were awarded.

Decision and Reasoning: Prior to the instant case, and as a result of  ABC v Lenah Game Meat Pty Limited, Australians did not enjoy a right to privacy which gave rise to an enforceable remedy for interference with privacy interests.  Privacy protection was derived from specific legislative measures including the Federal Privacy Act 1988; the NSW Privacy and Personal Information Protection Act.   

In the instant case Judge Skoien held that Australian law allows an individual to recover damages for mental, psychological or emotional harm including embarrassment, hurt, distress and post traumatic disorder.  Judge Skoien did not see it as his task to state the limits of the cause of action, nor any special defences.  However in his view the essential elements would be:

(a)    a willed act by the defendant;

(b)   which intrudes upon the privacy or seclusion of the claimant,

(c)    and which causes the claimant harm or distress or which prevents or hinders the claimant from doing an act which se is lawfully entitled to do [444]. 

Judge Skoien recognised that what he was doing was a ‘bold sep’ and that it would be ‘the first step in [Australia] to hold that there can be a civil action for damages based on the actionable right of an individual person to privacy.’  However, he saw it ‘as a logical and desirable step.  In my view there is such an actionable right’.   [442]

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