Christodoulou v Disney Enterprises Inc

REASONS FOR JUDGMENT 1 On 4 October 2005, Crennan J dismissed the appellant's application to the Court for relief against the respondents for alleged infringement of the appellant's registered trade mark for the words 'The Hunchback of Notre Dame': see Christodoulou v Disney Enterprises Inc [2005] FCA 1401. Her Honour, applying a line of well-established authority, concluded that the allegedly infringing uses by the respondents of the words 'The Hunchback of Notre Dame' in relation to films and related products were not uses of the words 'as a trade mark'. Her Honour concluded (at [71]): 'Like the appellant in Rolling Stones, the appellant's case appears to be "an attempt to obtain a monopoly over words used to describe a lawful product" (per Gummow and Heerey JJ at 377). The words used by the respondents in the promotion of the Disney films are use of an established title of the story portrayed. A recognised title of an adaptation or cartoon version of a well-known story is descriptive. The descriptive meaning of these words was established well before the applicant applied for registration of his trade mark. The purpose and nature of each use is to describe the respondents' products accurately. The uses are not for the purposes of indicating a relevant connection in the course of trade or to distinguish the respondents' goods from those of other traders. The uses do not amount to "use(s) as a trade mark" within the meaning of s 120 of the Act.' 2 On 25 October 2005, the appellant filed a 36 page notice of appeal. On 23 November 2005, the respondents moved the Court for orders requiring that the Notice of Appeal be amended because it did not comply with O 52 r 13(2)(b) of the Federal Court Rules which requires that the notice state 'briefly, but specifically, the grounds relied upon in support of the appeal'. The respondents also sought an order for security for costs in the amount of $70 000. 3 On 20 December 2005, I ordered that the notice of appeal be struck out because it failed to comply with O 52 r 13(2)(b). Pursuant to leave granted, the appellant subsequently filed a notice of appeal which narrows and limits the grounds of appeal. 4 On 20 December 2005, I adjourned the respondents' application for security for costs to allow that application to be considered in the context of any amended notice of appeal. 5 The appellant is self-represented, impecunious and appears to be unable to meet any order for security for costs. Thus, an order for security is likely to stultify the appeal. However, as was pointed out by the respondents, it does not follow that security for costs should not be ordered. 6 Order 52 r 20 of the Rules provides that no security for costs of an appeal shall be required 'unless the Court or a Judge otherwise directs'. It is accepted by the respondents that the cases establish that they have the onus of satisfying the Court that the appeal is without real merit or substance, and that the prospect of the respondent being left without remedy in respect of a costs order is significant. 7 In the detailed written outline of their submissions, the respondents set out the reasons why both criteria are satisfied in the present case. In my view those submissions should be accepted. 8 In support of their contention that the appeal is 'without merit or substance' the respondents stated: 'As the reasons of Crennan J indicate, this case is simply an application of simple facts to a well developed body of law which has been established by the High Court and Full Court in cases such as Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd (1963) 109 CLR 404, Johnson & Johnson Australia Pty Ltd v Sterling Pharmaceuticals Pty Ltd (1991) 30 FCR 326, Musidor BV v Tansing (1994) 52 FCR 363 and Registrar of Trademarks v Woolworths Ltd (1999) 93 FCR 365.' 9 The submissions also state: 'With respect, Christodoulou appears to continue to misunderstand basic trade mark law. The cost of educating him of the same should not be borne by Disney. It appears that Christodoulou has mistakenly applied the monopoly rights of copyright and patent law to trade marks in that in his opinion, any use of a registered trade mark is use as a trade mark. With respect, this would mean, in Christodoulou's view, as can be clearly seen from his affidavit and notice of appeal, simply using the words "The Hunchback of Notre Dame" in any context at all is "use as a trade mark". As Crennan J said at [71], citing Gummow and Heerey JJ in the Rolling Stones case (Musidor BV), "the appellant's case appears to be 'an attempt to obtain a monopoly over words used to describe a lawful product'".' (emphasis in original) 10 While I am conscious of the difficulties involved in a single judge speculating on the prospects of success of an appeal, the appellant has failed to satisfy me that it is reasonably arguable that the decision of the primary judge is attended by any appellable error. 11 As to the second criterion, there can be no doubt that there appears to be no real prospect of the respondents recovering any costs if they succeed on the appeal. 12 Having regard to all the circumstances, I have concluded that the present appeal is one in which security for costs should be ordered. However, as the appellant has narrowed and limited his notice of appeal, which essentially raises a question of law, the amount of security that is appropriate in the exercise of my discretion is $10 000. 13 I am also satisfied that the appellant should be ordered to pay the respondents' costs of and incidental to their motion of 23 November 2005. I certify that the preceding thirteen (13) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Merkel J.