FINDINGS AND REASONS
INTENTION
88 I now turn to the question of whether it has been shown that Next was aware of, and intended to copy, the successful format used by Pacific in "Total Girl". The presence, or lack of, a conscious intent can be relevant, as a matter of evidence, in establishing whether there has been any unlawful copying, passing off, misrepresentation or deceptive conduct: Australian Woollen Knitting Mills Ltd v F S Walton & Co Ltd (1937) 58 CLR 641 at 657 per Dixon and McTiernan JJ; Kettle Chip Co Pty Limited v Apand Pty Limited (1993) 46 FCR 152 at 162-63 per Burchett JJ.
89 In my view, it has been established that Next, through its officers and employees, was aware of "Total Girl" by about June 2004. Mr Keir impressed me as an experienced magazine publisher and, as a consequence, it is most likely that he and those engaged in the design and production of "Girl Power" would have been aware of the publications of his competitors, in particular, "Total Girl". However, I am not persuaded that he was aware of the Girl Power Issue or the Poster Book, and the publicity surrounding them by June 2004.
90 I am satisfied that "Girl Power" was under serious consideration by Next as the title of its new tween magazine by mid-June 2004. I accept that the commitment to this title was not made until about 22 July 2004. It was pointed out in cross-examination, and evidenced in the documents that were put to the witnesses, that the evidence of Mr Keir, Ms Gover, Ms Prohm and Ms Sheffield as to the circumstances in which the masthead was selected were inconsistent in a number of respects. However, notwithstanding this, I am not persuaded that Pacific has established that Next intended to copy "Total Girl" in any relevant respect or to appropriate or take advantage of the magazine's commercial success by closely imitating it. Rather, I am satisfied that independent thought and attention was given to the formulation of the theme, format, presentation and content of "Girl Power". In particular, independent consideration was given to a number of features of the content of the proposed new magazine that differentiated it from "Total Girl". This is not a case in which Next endeavoured to reproduce the "Total Girl" format or theme in any of its aspects so as to appropriate the magazine's success in the marketplace or aimed to create an overall impression that "Girl Power" was associated or affiliated with "Total Girl" or intended to sail as close to the wind as possible without affecting, infringing or encroaching upon the reputation built up by Pacific in "Total Girl". The evidence relied on by Pacific is not sufficient to cross the threshold.
WHO IS DECEIVED OR MISLED
91 In this case, an important burden which needs to be discharged by Pacific concerns the identity of the group or class of persons who are said to have been misled, or potentially misled, into believing that there is an association, link, approval or some other connection between the entities producing or publishing "Total Girl" and "Girl Power". Pacific's submission is that it is either the tweens themselves or their parents, guardians or carers who purchase the magazines on their behalf who may be misled. An unusual feature of this case is that the characteristics of these two groups or classes are not clearly described.
92 The principal difficulty in Pacific's case is that there is insufficient evidence to discharge the "heavy burden", as it is described in the authorities, of establishing that either tweens or the persons who purchase tween magazines on their behalf could be considered reasonably likely to be misled. In considering whether the representation or conduct is likely to mislead, it is necessary to consider the precise nature of the misrepresentation. In this case, the misrepresentation is broadly said to arise from the resemblance between "Total Girl" and "Girl Power" so as to create an impression in the minds of the two aforementioned groups that there is an association between the persons responsible for the publication or production of the two magazines. In this case, no evidence has been given as to the patterns of behaviour of tweens or their parents in considering the appearance or contents of the magazines either at the point of sale or when the magazines are distributed amongst the readers. There is also no evidence as to the impression formed by these two groups of the provenance, endorsement or formulation of the two magazines. Although assertions and speculative remarks have been made, there is an important evidentiary gap in Pacific's case. There is no reliable evidence before me as to the reactions of such a reader or purchaser in relation to the misrepresentations alleged.
93 It is important to determine the addressee when considering the likely effect of conduct said to be misleading and deceptive and the respects in which any misrepresentation can be said to have created a false impression in the minds of such readers or purchasers. In this case, it is not suggested that the parents of tween girls read the magazines, although some may have. The real focus of attention is on the tween reader or purchaser.
94 In my view, there is substantial force in Next's submission that, given the age of the tween market and the absence of any evidence concerning the people who purchase magazines on behalf of tweens, these two groups would give no consideration at all to whether there is any association or affiliation between the publishers, producers or sources of the magazines or any links between the magazines so far as ownership, proprietary rights, reputation or approval are concerned. These matters are left by Pacific to the suggestion that somehow the combination of the common features of the two magazines engenders an impression in the minds of these two groups that the two magazines are in the same "publishing stable" or that permission, approval or a licence has been granted by the owners or publishers of "Total Girl" to the publishers of "Girl Power".
95 In my view, the subject matter of the representation is a sophisticated conclusion and one that is by no means self-evident in the present case. Concepts such as "source", "publication", "same stable", "licence" or "approval" are complex concepts and are probably not considerations that would be important to girls in the six to twelve year old age bracket. The primary interest of such an audience is likely to be to read an attractive, interesting and topical presentation of subjects that are admired by their peer group rather than to consider whether an association exists between "Total Girl" and "Girl Power".
96 The difficulty with the case presented by Pacific is that, on the evidence before me, there is a significant evidentiary gap as to what impression is, or would be likely to be, created in the minds of the tween readers of "Total Girl" and "Girl Power". For example, there is no evidence, as distinct from assertion and speculation, that the expression "Girl Power" had developed a denotation or connotation associated with "Total Girl". There is evidence of the expenditure of a great amount of time and money by Pacific in promoting the Girl Power Issue and Poster Book, but, for the reasons given below, I do not consider that this was sufficient to establish "Girl Power" as a sub-brand of "Total Girl" or as being closely associated with "Total Girl". The use of the word "issue" in relation to the Girl Power Issue of "Total Girl" suggests a one-off situation and carries the implication that other issues will be distributed using different themes such as "do it yourself" and fashion. This is in fact what occurred both before and after the Girl Power Issue. In any event, the impression conveyed by the Girl Power Issue was, at best, a mixed one involving "Girl Power" and the "Win a Pony" competition.
97 For the reasons given earlier, I do not accept that the assertions by Mr Lindstrom are of any assistance on this question. While I accept the evidence of Dr Driscoll as to the conclusions she derives from her studies concerning the behaviour of tweens and the topics that appeal to them, Dr Driscoll does not address the central question as to who may be misled. I am not persuaded that any person could be misled, or even confused, as alleged.
COMPARISON OF "TOTAL GIRL" AND "GIRL POWER"
98 In addition, I am not satisfied that sufficient similarity has been shown between the two magazines to enable me to reasonably infer that there has been any copying by Next or misrepresentation or misleading or deceitful conduct in relation to the origin, development, promotion, sale and distribution or circulation of "Girl Power" or any impression created of an association between the two magazines. I do not consider that the "Girl Power" magazines would be likely to be mistaken for "Total Girl".
99 I accept that it is necessary and useful to consider the numerous detailed characteristics of the two publications as explained by the evidence and as pointed out in submissions, including the cover elements and the internal elements. It is useful to bear in mind the views of those persons engaged in the industry and to refer to the evidence of Dr Driscoll in relation to the context in which the expression "girl power" is used. However, it is essential to step back from the particular enumerated detailed similarities in relation to individual elements such as the cover elements, the internal elements and the masthead, together with the themes, and to consider the overall impression created by the magazines having regard to the cumulative effect of the above elements. While keeping in mind the detailed analytical specific similarities of some features of the two magazines, one must look at the overall impression created by the magazines. At the point of sale, it may be that the masthead and cover elements, onsets and inclusions have a particular impact on the purchaser and the impression created in the mind of the purchaser. Later, when the publication is read or distributed amongst readers and friends, it may be the case that the contents, including the subject-matter of the articles, layouts, colours, shading and configuration, assume importance. It will not simply be the location and shape of stars or hearts, for example, that determine the issue, or even some combination of the individual elements, but rather the overall impact created by these elements. No doubt any impression created in the minds of the consumers of the magazines, namely, tween girls, would be influenced by the previous issues which they have read.
100 A comparison of the two magazines with a range of other similar magazines indicates that the title of the magazine is important. The auralimpression created by the words "Total Girl" and "Girl Power" are quite distinct. If one asks for "Total Girl" in an outlet, the sound is quite different to a request for "Girl Power". From a semantic viewpoint, the words of the title are different so that the points of reference in the masthead are different. While there are similarities in the font used for the title of each of the magazines, the titles themselves are different. A publication directed at girls might tend to use the word "girl" in its title, although this does not necessarily follow. There is, however, a differentiation between the titles in that, in one case, the word "total" is used and, in the other case, the other word "power" is used. These words are used in different positions in relation to the word "girl". The word "total" precedes the word "girl" in "Total Girl" whereas the word "power" is placed after the word "girl" in "Girl Power".
101 In addition to the pronounced aural and semantic differences between the titles of the two magazines, in the case of "Total Girl", the masthead is strongly linked with the tagline "no boys allowed". This tagline points to a significant differentiation between the two magazines both so far as the overall impression is concerned and as regards the theme or approach of the two magazines. The evidence indicates that in the fan-mail sent to "Total Girl", a number of tweens linked the title "Total Girl" with the tagline. Each issue of "Total Girl" in Exhibit A (3 of 3) carries the tagline "noboysallowed", which is placed in a prominent position on the cover. This tagline might be said to create a distinct impression because of the continuous reinforcement of this slogan in each issue of the magazine. I accept that the emphasis in "Total Girl" is on the absence of boys, that is, it suggests a girls' club with a certain degree of exclusivity based on a bonding between girls. However, in the case of "Girl Power", there is no such reference or indication of any similar theme of exclusivity or "clubiness" adopted by the magazine. The evidence suggests that "Girl Power" has a stronger emphasis on female improvement, achievement and independence. In the course of the evidence, there was also some discussion as to the significance of the use of a star in the masthead of "Total Girl" and a heart in the masthead of "Girl Power".
102 It is correct to note that there are many similarities between the magazines in relation to, for example, the use of cheerful rainbow colours, bands containing messages at the top and bottom of the pages, onserts such as lip gloss, pictures of tween celebrities, references to competitions and the use of words such as "win", "cool" and the like. It is to be expected that tween girls will tend to have shared opinions and interests and will be attracted to similar colours, layouts, subject matters and celebrities. In my view, there can be no specific proprietary right in relation to these individual elements and, in the case of "Total Girl", the combination of these elements does not serve to create a distinct impression that would warrant any proprietary right in relation to those elements either taken together or separately. After considering the two magazines as a whole, I am satisfied that there is an important difference between the covers and titles of the two magazines and also their thematic approach.
103 The parties tendered numerous copies of the covers and internal elements of not only the two magazines in suit but also a large number of other magazines. In relation to some of these other magazines, for example, "Disney Girl" and "Barbie", it was suggested that they are significantly different to the two magazines in suit because their popularity and meaning depends on the fame and promotion of Disney and Barbie products. This does not mean, however, that a consideration of these magazines is not relevant to the issues in the present case. In my view, it is appropriate to take into account the format, colouring, content, presentation and overall impression of these other magazines when deciding the issues before me. This is because these elements have been selected by persons with considerable experience in the tween magazine market based on their knowledge of what elements and impressions will attract, and have attracted, the same tween readers who are being targeted by "Total Girl" and "Girl Power".
104 When these other magazines are considered, it is clear, in my view, that many of the elements relied on by Pacific are identical or very similar to the colours, fonts, celebrities, symbols, content and themes used by "Disney Girl" and "Barbie". This similarity substantially weakens the case sought to be made out by Pacific, namely, that "Total Girl" has a collocation of elements that give it a distinctive character. In my view, almost all of the individual elements relied on by "Total Girl", including the use of words such as "cool", "funky" and "win", are common to many of the wide range of magazines in evidence. For example, the September, November and December 2004 issues of "Barbie" have many elements in common with "Total Girl". The colours are upbeat and optimistic and both magazines use celebrities such as Hilary Duff, Reese Witherspoon and Delta Goodrem. It is not surprising that the same icons or celebrities should appeal to a wide cross-section of the teen market. In my view, this does not support any suggestion of copying and it may simply be seen to reflect the current interest of tweens in that particular celebrity.
105 Finally, Pacific placed some reliance on the fact that "Total Girl" and "Girl Power" are placed in close proximity to each other in shops and distribution outlets, which, together with the shared cover elements of the magazines, thereby suggests that there may be an association between the two magazines. However, is no evidence before me of any such effect. Given the differences between the two magazines in relation to their titles and mastheads, I am not persuaded that this fact would materially contribute to any deception or misleading representation as to any association between the magazines.