Shoshana Pty Ltd & Anor v 10th Cantanae Pty Ltd & Ors [1987] FCA 786

the basis of the fee that would have been required for an authorized use of the applicant's name.

Trade Practices Act 1974, ss.52, 53(c) and (d), 80(4)

SHOSHANA PTY LIMITED and SUE SMITH -V- lLOTH CANTANAE PTY LIMITED & ORS.

Applicants AND: 1OTH CANTANAE PTY LIMITED First Respondent AND: HEATHCLIFF GEORGE TEAL Second Respondent AND:

Judge Making Order: Burchett J. Where Order Made: Sydney Date of Order: 16 June 1987

There be judgment in favour of the applicants against each of the first, second and third respondents in the sum of fifteen thousand dollars ($15,000-00).

The first, second and third respondents pay the applicants' costs of and incidental to the proceedings, to be taxed 1f not agreed.

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

NEW SOUTH WALES DISTRICT REGISTRY No. G.171 of 1985

When Shakespeare, in Venus and Adonis, pictured the -

",... true-love in her naked bed, Teaching the sheets a whiter hue than white,"

he was not advertising a washing powder, but, as it happens, his language 1S remarkably evocative of a modern technique of

selling, by which a product 1s associated with a desirable

personality, in whose reflected light it will appear more pleasing. The technique is called character merchandising. One

form 1t takes (see Article on Character Merchandising by Jill

McKeough, 1984 U.N.S.W.L.J. 97 which discusses also another type involving fictitious or cartoon characters) 1s the practice of obtaining for a product the endorsement of an admired television personality, or other celebrity, and it is out of this practice

The second applicant (whose corporate vehicle 1S the first applicant) is widely known in New South Wales and elsewhere in Australia as a prominent figure on national television screens. She has appeared in numerous capacities since about 1970, particularly as interviewer and presenter for various news and current affairs programmes, In consequence, like other television performers, she has become the subject of comment, news items, and articles in the press. Her achievements have included being first woman to compere the well known "Mike Walsh Show", telecast nationally throughout Australia (she was compere intermittently between 1977 and 1981), and being the first woman to appear as "front person" for the leading public affairs programme "A Current Affair", also telecast nationally. In 1977 she won a Logie award for her performance as "front person" in "A Current Affair"; in 1978 she won a Logie award as "Most Popular Female Personality"; and in 1983 she shared with Ross Symonds the

Managing director of the third respondent, who gave evidence on

behalf of the respondents, that Sue Smith "has had extensive exposure in the media for many years." In the light of that exposure, he agreed that "she had a name which had a commercial value to advertisers", and that "the value of that name was not confined to advertising in New South Wales, but extended to advertising around Australia." Mr. Abbott had had experience in obtaining the services of well known personalities to appear in advertisements, having worked in the advertising industry since

I am satisfied that in 1983 the name Sue Smith was extremely well known throughout Australia as the name of a popular television personality, particularly admired for the clarity of her presentation of information. I am assisted un

understanding the evidence concerning her last mentioned

attribute by having heard and observed her in the witness box. I am satisfied of these matters quite apart from certain survey

The evidence also satisfies me that persons in Sue Smith's position are, according to modern advertising practice, in significant demand for their endorsement of various products which are commonly sold by character merchandising. In particular, these products include television and video equipment. A theatrical agent representing a large and varied clientele, including many celebrated names, gave evidence that "over half my work concerns the negotiation of fees for television commercials and press advertisements for actors and

personalities whom I or my agency represent." He also gave

evidence that at the present time "there 1s widespread advertising over the public media, especially over commercial television in Australia, of video products, with a consequent use of and demand for actors and personalities to present or endorse those products." It 18 clear that Miss Smith stood high 1n the category of persons suitable to be employed in this kind of work.

A feature of the technique of character merchandising, appreciation of which is essential to an understanding of the import of the events to be related, is that the advertiser uses the public image of the personality concerned to develop in the minds of consumers an identification of the product with that personality. As a result, Sue Smith's endorsement of a particular product is likely in practice to preclude her

obtaining a contract to endorse a competing product.

Until at least the beginning of the year 1983, Sue Smith had not regarded herself as free of restrictions upon her right to engage in advertising campaigns. This was because of the value, to the television network which telecast her programmes in the area of current affairs and news, of an appearance of disinterested objectivity. Until 9 January 1983, she was bound by a contractual term guaranteeing the performance by the first applicant of its agreement to ensure that she should not "appear or perform in or lend her name to any commercial advertisement... without the consent of the Company's Director of News which such consent shall not be unreasonably withheld" (the company referred to was the licensee of Sydney commercial television station 19).

There was some argument about the precise effect of this term,

but there was no dispute between the parties that both Miss Smith, and the management of the television station in question, took the view that advertising of the kind to which I have referred would generally be inimical to her career while she continued to take a prominent part in news and current affairs programmes. However that situation changed at some time after 9

virtually identical, advertisements appeared in the journals The

Bulletin (twice), Video Age (twice), Video and Communication (once), and Australian Business (twice). In each case, the advertisement was a prominent one extending horizontally across two pages of the journal, and taking up about half of each of those pages. Across the top in very heavy print were the words:

"Sue Smith just took total control of her video recorder."

Those words formed the caption to a picture of a young woman sitting up in bed nursing a cat and watching a television set eguipped with a video recorder. On the screen of the television set appears the face and shoulders of a female performer, and close to the viewer's hand 1s a remote control device. The third prominent feature of the advertisement, after the caption and the picture to which I have referred, 1s at the bottom right-hand corner of the advertisement, where there is a separate picture of the video recorder (with its remote control device) identifted in heavy print as a "BLAUPUNKT by BOSCH Total Control Video". There

1s also in ordinary print at the bottom of the advertisement a

"The movie 1s spine chilling. The video recorder 1s the front-loading Blaupunkt 322. Even while frozen with fright, Sue can turn the movie on and off, play it in slow motion, even watch it backwards. She can see the movie one frame at a time in crystal detail... The secret is Blaupunkt's 24 function remote control. It gives Sue total control... Sue also has control of what she wants to watch for up to two weeks ahead.

So while Sue may always be a slave to her emotions she'll never again be a slave to her

Neither of the two females pictured appears actually to be the second applicant, though both are brunettes as 1S Sue Smith. One of the theatrical agent witnesses gave the following answer 1n cross-examination:

the cat may not be Sue Smith; the lady on the television could be Sue Smith."

The lady holding a cat appears younger than Sue Smith, but both the pictured ladies seem to me to bear some resemblance to her such as might lead a casual reader of the advertisement, or a person not very familiar with Sue Smith's appearance but having a general recollection of 1t, to suppose that Sue Smith 1s pictured. As the answer I have quoted indicates, the performer pictured on the television screen could be Miss Smith, even to the eye of a more attentive reader with a fairly good recollection of her appearance, but 1f such a person read the small print as well as the caption with attention, he would see that the advertisement attributes the name Sue Smith to the other

Of course, the advertisement would convey at a glance a good impression about the Blaupunkt video (as no doubt was intended), and that impression would be likely to be enhanced by

Neither Shoshana Pty Limited (as the company through which Sue Smith enters into contractual arrangements in the pursuit of her profession), nor Sue Smith herself, had been asked

to give permission to enable these advertisements to appear.

They were brought to her attention as a result of their being seen by the general manager of Channel 10, George Brown, who made 1t clear that he regarded them as cause for concern, and by certain radio personalities. Mr. Brown gave evidence before me, from which it plainly appeared that he had associated the advertisement with Miss Smith, and had made enquiries to satisfy himself that she had not lent her name to 1t voluntarily. Had he found that she had done so, and had she persisted in it, he would have had her "taken out of front line news reading". There was no challenge to the proposition that this was the television station's attitude towards the advertisement, but it was put, and Mr. Brown agreed, that the advertisement did not picture Sue Smith. Mr. Brown said: "It was the headline which was the grab,"

referring to the words: "Sue Smith just took control of her

Her attention having been drawn to the advertisement, Sue Smith wrote a letter dated 30 May 1983 addressed to the

distributor named in it (a business name under which the first

respondent trades), containing the following statements:

"Your company's conduct in using my name without consent constitutes misleading and deceptive conduct within Section 52 of the Trade Practices Act 1974 and a false representation within Section 53(c) and (d) of that Act. In addition, it constitutes passing off of the video cassette recorder sold by your company as being approved or endorsed by me, and similarly passing off

The letter concludes with a request that undertakings including an undertaking to withdraw the advertisement from all future editions and publications be given by 10 June 1983, and with a threat of legal proceedings. Having had no response, Sue Smith placed the matter in the hands of her solicitor, who on 14 June 1983 wrote threatening an injunction unless he received an immediate undertaking to cease further publication. He also made a number of telephone calls to the second respondent and solicitors acting for the respondents, without securing any withdrawal of, or any promise to withdraw, the advertisement. Finally, on 29 June 1983, solicitors for the third respondent replied, by telephone and in writing, denying that "it could be conceived by the public that the said advertisement refers to your client", but stating that the advertisement had been changed except in relation to two publications which had aJjJready been printed. The change referred to was from the name "Sue Smith" to

The respondents do not dispute responsibility for the advertisement. It was inserted by the third respondent as agent

for the first and second respondents. Its language was composed

by a Mr. Trinidad James at the request of a director of the third respondent. Mr. Trinidad James gave evidence that he did not intend the name "Sue Smith" to be understood as referring to a real person. But he did not think the advertisement would work in the same way (in fact it might be thought rather flat) if the girl depicted in it had no name, just as the characters 1n a novel or movie should not be nameless. His point may be 1llustrated from the famous llth century literature of Japan, including the Tale of Genji itself, in which conventionally many characters had no names, but have had to receive them from translators and commentators because of the stiltedness the ancient Japanese convention produces. The respondents claim that Sue Smith's name was used in ignorance by Victorian advertising agents who were unaware of her existence. Extraordinary though 1t may seem that a practitioner in this field could fail to know a name which over a number of years had regularly appeared on national television screens, the bona fides of the assertion 1s

But innocence of intent does not deny liability under sections 52 and 53 of the Trade Practices Act (see Parkdale

Custom Built Furniture Proprietary Limited v. Puxu Proprietary Limited (1982) 149 C.L.R. 191 at 197; Hornsby Building

Information Centre Proprietary Limited v. Sydney Building

Information Centre Limited (1978) 140 C.L.R. 216), nor does it

deny passing off (see B.M. Auto Sales Pty Ltd v. Budget Rent A

Car System Pty Ltd (1976) 51 A.L.J.R. 254 at 258; Draper v. Trist {1939} 3 All E.R. 513 at 517; Stringfellow v. McCain Foods (GB)

Limited (1984) 3 I.P.R. 71 at 81-2: Ricketson on The Law of

There 1s an argument, which 1s discussed in Ricketson Op. cit. 581-2, that the remedy of damages, other than nominal damages, should not be awarded for passing off, as distinct from breaches of sections 52 and 53, in respect of passing off which is not deliberate. However counsel did not urge this view upon me, though he did contend that only a moderate award could be justified in such a case. I note that Greene M.R. expressed in Draper v. Trist (supra at 517) the view that damages could be

awarded. See also Kerly's Law of Trade Marks and Trade Names,

llth ed. (1983) 399, where the same opinion 18S expressed.

Damages were awarded for an unintentional passing off (by the use

of a name implying an endorsement of a product) in Stringfellow v. McCain Foods (GB) Limited (1984) 10 F.S.R. 175 (see 183-4 and

197-8), though the decision was reversed on appeal upon the facts

(supra). In the Budget Rent A Car case Gibbs J. (with whom

Barwick C.J. and Murphy J. were in agreement) at 258 stated:

"It 1S unnecessary to consider whether proof of fraud was necessary to support' the recovery of nominal damages. eee The evidence in the present case left no doubt that the appellants persisted in the use of the name with full knowledge that 1t had

become distinctive of the respondent's business and that the use of the name was

I do not think any inference can be drawn (though Ricketson op. cit. 582 suggests otherwise) from the use of the word "nominal" in this passage, since at the hearing of that case, apart from the injunction which was the real subject of the appeal, only nominal damages had been sought and awarded (see page 255). But

what 18 important to note is the emphasis placed upon persistence

(with knowledge) in the passing off. In the present case, the

advertisement was published after notice on several occasions, and indeed no reply at all was vouchsafed to Miss Smith's

The possibility that publication of fictitious material, which includes by chance the name of an actual person, may incur liability 1s not at all novel in the law. A famous example 1s E.

Hulton & Co. v. Jones [1910] A.C. 20, affirming Jones v. E.

Hulton & Co. [1909] 2 K.B. 444, where the publisher of a

fictitious account of the flirtations of one Artemus Jones while

on holiday in Dieppe was held liable in defamation to the real

Artemus Jones, of whom the author claimed never to have heard.

But Artemus Jones, though like Miss Smith he had a common surname, had a most distinctive first name. In the present case, the respondents say that the name Sue Smith 1s too common to permit a reader of the advertisement to identify 1¢€ with the name of the second applicant. At the same time, it is said that the viewers of Miss Smith's programmes would realize that the Sue Smith pictured un the advertisement must be someone else. I think this argument fails to recognize sufficiently the weight of a widespread reputation, and inappropriately focuses upon only the attentive reader of the advertisement. In my Opinion, there would be likely to be many readers who would associate an advertisement concerned with television, and Picturing an attractive brunette, with the well known television image of Sue Smith, without subjecting the advertisement to the kind of analysis that might introduce doubt. Such a reader might

well be led to believe that Sue Smith was endorsing the Blaupunkt

video. The prevalence, on the evidence, of the practice of

sponsorship of products by celebrities (cf. Stringfellow's case

(supra, at 10 F.S.R. 196) where the practice was described as "a

commonplace of today", and see also I.P.C. Magazines Limited v.

Black and White Music Corporation (1983) 9 F.S.R. 348 at 352)

assists me to conclude that this advertisement was likely to, and

I do not think sections 52 and 53 should be read as excluding readers of the kind I have mentioned from consideration

as not being "reasonable members of the class" of consumers

affected by the respondents' conduct (see Parkdale Furniture case

at 199). There is a great difference between the publishing of an advertisement in a form likely to be deceptive to a casual reader (who must be one of the classes of readers in contemplation), and the display of a relatively expensive item of furniture ina showroom where its label can readily be examined, and where no untending purchaser would be in contemplation who would behave so unusually as to assume the identity of the manufacturer without bothering to read the label before his eyes. (In the Parkdale Furniture case, 1t is true, there was evidence the label had been removed on some occasions, but that does not affect the point because the High Court held the manufacturer was not responsible for what had occurred on those occasions.) In my opinion, the respondents cannot properly claim that their advertisement is aimed only at readers who would not be deceived. It is of the nature of glossy advertisements of this sort that they create an impression; analysis is not expected. They will not be studied

like text books, nor are they only for the eyes of the

discerning. There 1s also no warrant for limiting the effect of the advertisement to those persons who can clearly discriminate between Sue Smith's photograph and the photograph of some model generally resembling her. Readers must include many people who could not recognize that she 1s not pictured but, by reason of the wide publicity given to her name in the press and on the television screen, would immediately associate that name with Sue

To suggest that such a view would impermissibly equate

confusion or the effects of a consumer's own error with deception

(see McWilliam's Wines Pty Ltd v. McDonald's System of Australia

Pty Ltd (1980) 49 F.L.R. 455; Parkdale Furniture case, supra at 203, 225) is not, 1n my opinion, correct. The cases cited do

not, aS was pointed out in Taco Company of Australia Inc. v. Taco

Bell Pty Ltd (1982) 42 A.L.R. 177 at 201 et seq., establish "a necessary dichotomy between 'confusion' on the one hand and 'misleading or deception' on the other." Deception commonly feeds on error and confusion. Where a corporation's conduct has caused confusion, 1t may be a short step, though necessary before liability can be found under s.52, to conclude that 1t has also been "misleading or deceptive or 1s likely to mislead or deceive": Bridge Stockbrokers Ltd v. Bridges (1984) 57 A.L.R. 40l.

In the McDonald's case, an erroneous preconception caused error, and therefore the impugned conduct could not be held the cause of deception. By contrast, in the present case

deception is struck by the advertisement out of a correct public

understanding that television personalities use the images conveyed by their well known and admired names for commercial

The respondents then point to the fact that there is another Sue Smith, Suzanne Roguet Smith, a journalist known as Sue Smith who writes in the area of home furnishing and renovation in a number of Melbourne journals. I think counsel for the applicants is correct in his contention that this 1s an 1rrelevancy. It could not be suggested on the evidence that Suzanne Roquet Smith has any reputation associated with the television industry, or that consumers would be likely to identify her, instead of or in addition to the second applicant, with the Sue Smith in the advertisement. Her existence does not dilute the right of the applicant Sue Smith, in respect of the use made of her name, into something less than sufficient to

Nor does 1t matter that, as the respondents urged, both "Sue" and "Smith" are common names. The same 1s true of "Dick" and "Smith". But when these pairs of names are put together they identify easily recognized individuals. I do not think either the name "Sue Smith" or the name "Dick Smith" would ordinarily be understood, in the context of the advertisement in question, as standing for every man or every woman. Perhaps, though I doubt it, a different impression would have been conveyed by the name "Eve Smith". The respondents' argument that the advertisement should be read in a symbolic sense excluding any reference to the

Then it was put that no evidence had been called from any person who was misled by the advertisement. I leave aside the question whether the evidence of Mr. Brown, the General Manager of Channel 10, does not answer this description by indicating that he took the advertisement to be an endorsement by Sue Smith of the Blaupunkt video, demanding investigation of whether she had authorized the claim of that endorsement to be made. The more direct answer to the submission is that 1t 1s for the Court to determine whether the conduct of the respondents has the character alleged, and no evidence need be called from any individual deceived: McDonald's case (supra, at 460-1 and

476-7); Lego Australia Pty Ltd v. Paul's (Merchants) Pty Ltd (1982) 42 A.L.R. 344 at 347, 351.

I find that the publication of the advertisement contravened section 52 of the Trade Practices Act, and that it also represented that the Blaupunkt video had the sponsorship and approval of Sue Smith which 1t did not have, and that the first named respondent had her sponsorship and approval which it did not have (see section 53(c) and (d)). It was accepted that instructions in respect of the advertisement were given by the second respondent, and no argument was put that 1f I reached these conclusions I should not also find him liable pursuant to

sections 75B and 82 as a "person involved in the contravention".

Although "the operation of s. 52 is not restricted by the common law principles relating to passing off", and "the

section provides the public with wider protection from decestion

than the common law" (per Mason J. in the Parkdale Custom Built Furniture case, supra, at 205), there 1s in cases of this kind,

as Wilcox J. pointed out in Hutchence v. South Seas Bubble Co.

Pty Ltd (1986) 64 A.L.R. 330 at 339 "considerable overlap between claims under ss. 52 and 53(c) and the common law claim of passing off." Wilcox J. went on to point out that claims for passing off have succeeded where there has been a use of the plaintiff's name

even in respect of a totally different tyoe of product. He cited

Lego System Aktieselskab v. Lego M Lemelstrich Ltd (1983) 9 F.S.R. 155 and Radio Corporation Proprietary Limited v. Disney (1937) 57 C.L.R. 448. In an article "Reaping Without Sowing:

Unfair Competition and Intellectual Property Rights in Anglo-Australian Law" by S. Ricketson (1984 U.N.S.W.L.J. 1 at

19-22), a number of authorities are cited for the provosition that, to establish passing off, "any representation that the Plaintiff 1s ain some way associated with the defendant's business, whether by way of partnership, sponsorship or licensing, will suffice." It is pointed out that where the parties are in different fields of activity damage may still be suffered in respect of the plaintiff's good will - as for example where the plaintiff would otherwise have sold his endorsement for reward, so that a defendant acting without authority "has deprived the plaintiff of an opportunity of exploiting the valuable reputation which he has built up." (A quite different,

but telling, example is afforded by Stringfellow's case (supra).)

In the often cited case Henderson v. Radio Corporation Pty Ltd (1960) S.R.(NSW) 576 at 603 Manning J. referred to the

ability of a person, such as a well known actress or sporting

figure, to earn a fee for a recommendation "to an almost infinite

"I can see no distinction in any such cases provided (as has been established in this case) that the activity of the party concerned has resulted in their recommendation becoming a saleable

In their joint judgment, Evatt C.J. and Myers J. state at 592:

not easy to see the justification for introducing another factor as a condition of

They held that the wrongful appropriation of the names and

reputation of the plaintiffs, who were well known ballroom dancers, by the publication of their photograph without their permission on a record jacket, was in itself an injury. At 595

respondents was and still is theirs, to withhold or bestow at will, but the appellant

has wrongfully deprived them of their right to do so and of the payment or reward on which, if they had been minded to give their approval to the appellant's record, they could have insisted."

Workshop Inc. v. Woolworths (NSW) Ltd [1981] 1 N.S.W.L.R. 273 and

in Nostac Enterprises Pty Ltd v. New Concept Import Services Pty Ltd (1981) 3 A.T.P.R. 43,133 at 43,137-8 (though in that case

relief was granted under section 52 of the Trade Practices Act).

With these cases may be contrasted Newton-John v. Scholl-Plough

(Australia) Ltd (1986) 11 F.C.R. 233 and Sitmar Cruises Ltd v.

Carnival Cruise Lines Inc. (1986) A.T.P.R. 47,942, where no

misrepresentation was involved, and as a consequence neither a

breach of section 52 nor a passing off was established.

In the present case, in my opinion, liability is established for passing off, as well as under the Trade Practices

Act, in accordance with the principles to which I have referred.

The first relief which the applicants seek 1s an injunction, However, the respondents' conduct, which was not intentional in the first place, was discontinued within a relatively short time (though not remarkably promptly) after the second applicant's initial complaint had been reinforced by a solicitor's demand. An appropriate change was made in the wording of the advertisement, and 1t 1S not suggested that there has since been any actual or threatened resumption of the original advertisement. The present proceeding was not commenced until some two years later. In these circumstances, I do not think it 1s appropriate to grant an injunction, notwithstanding

that section 80(4) of the Trade Practices Act empowers the Court

I come to the question of damages. On this issue, evidence was tendered of the very substantial fees paid for Sue Smith's endorsement of "Pears" brand products over the past two years. Expert evidence was led the effect of which was that the appropriate fee for a series over three to s1x months of

advertisements of the kind involved in this case, had they neen

authorized, would have been between $20,000 and $25,000 (or up to $5,000 per insertion 1f individual advertisements only were negotiated), but that Sue Smith and other comparable television personalities would have been generally reluctant to enter into a contract unless a longer period of advertising, and hence higher fees, had been involved. A reason for this reluctance 1s the likelihood that the endorsement of a particular video would preclude the obtaining of any other contracts to endorse similar

products, which generally command the highest endorsement fees.

For the respondents, as I have said, it was conceded that Sue Smith had a name which had a commercial value to advertisers extending to advertising around Australia, but evidence was tendered that the cost of the name of a well known personality to sponsor such a series of advertisements as that involved would have been in 1983 between $1,500 and $2,500. I do not accept this evidence. I prefer the evidence of the experts called by the applicants, confirmed as it is in some degree by the actuality of the very large fees the name of Sue Smith has been able to command in respect of the "Pears" advertisements. While it is true that those advertisements involve much more on her part, I accept the proposition that no comparable performer would be likely to accept fees anything like those suggested by the respondents for a contract which might well shut the door on

In addition to the expert and other evidence to which I have referred, evidence was also tendered by the applicants

through a Mr. Vohralik of the ratings achieved by Sue Smith, over

a period of years, according to regular surveys of television personalities carried out by Audience Studies Inc. Australia Pty Limited. That company numbers amongst its clients television stations, radio stations, production organizations, and leading advertising agencies, as well as large corporations which frequently engage in advertising campaigns. Mr. Vohralik is the Managing Director of Audience Studies Inc. Australia Pty Limited, and I am satisfied that he is qualified to give expert evidence on the subject of surveys to determine audience reaction to particular television personalities. The techniques he employs for this purpose are also used in centres such as Tokyo and Los Angeles. They involve careful controls to ensure the representativeness of the sample audiences used. The surveys are extensively utilized by television stations and advertisers as the basis of decisions concerning the employment of particular

The company's surveys of female television personalities showed Sue Smith ranking highly in the late 1970s and early 1980s, though in June 1983 a drop was recorded from her September 1982 ranking in the top quintile of female performers to fractionally below the average of female television personalities

Objection was taken to the admissibility of these survey results. It was said the answers of persons interviewed in such a survey are mere hearsay, inadmissible without the calling of

the persons who gave the answers. It was further submitted that

in the present case hearsay is piled on hearsay because the

interviewers also were not called. As to the latter point, the applicants relied on the business records provisions of the Evidence Act 1905 to establish that the answers had been given. The applicants also relied on the proposition that Mr. Vohralik's evidence was expert evidence and that his opinion was admissible notwithstanding that he had utilized material which included hearsay. But the applicants' primary argument was that the response of a person interviewed was a statement indicating the state of his mind, admissible as such and not to prove the truth of any opinion held by him. These questions touch upon a very

live controversy in the law: see article by James Farmer on The

Admissibility of Survey Evidence in Intellectual Property Cases 1984 U.N.S.W.L.J. 57; Ricketson on The Law of Intellectual

Property (1984) 561; and cf. Phipson on Evidence, 13th ed.,

553-4, and Cross on Evidence, 3rd Australian ed., 724-5.

It is convenient to dispose first of the question under the Evidence Act. If evidence from those who interviewed the members of the audiences surveyed concerning the answers given to them in respect of the questions asked in the surveys would have been admissible, I think the records of the business of Audience Studies Inc. Australia Pty Limited reproducing those answers in statistical tables, or derived from those answers by statistical procedures, are admissible under section 7B of the Evidence Act. On the stated assumption, they would be statements, as defined in section 7A, of facts (which include by section 7B(3) opinions) in documents, as defined in section 7A, forming part of a record of a business made in the course of the business (and also for its

purposes) reproducing or derived from (by section 7A(1) "derived"

includes derived by statistical procedures) information in statements made by qualified persons (as defined in section 7A, being agents employed or engaged in the business who had or may reasonably be supposed to have had personal knowledge of the facts stated, that is of the statements expressing their state of mind made by the persons interviewed in the surveys), in the course of, or for the purposes of, the business. By section 7B(2) a statement admissible under section 7B(1) 1s so admissible notwithstanding the rules against hearsay and the rules against secondary evidence of the contents. of a document, and notwithstanding that the statement is in such a form that it would not be admissible if given as oral testimony, but a statement is not made admissible which 1s inadmissible for reasons other than those set out in subsection (2). Among the other sections relating to business records, sections 7F, 7H, and

But would the evidence of persons who carried out an Opinion survey, or of experts basing themselves upon such a survey, be admissible, and 1f admissible would evidence of that kind carry weight? On a number of occasions, such evidence has been rejected or criticised. In Stringfellow's case (supra at

"I confess that my experience in the past so far as public opinion surveys in proceedings of this kind are concerned has not been a happy one and this case has been = no exception. I do not say that the day may not come when I shall find such a survey or such surveys of value; I say only that it has not come yet."

He criticised the forms of questions and their seauence as possibly influencing the answers, but accepted that particular questions were "of a nature such that the answers given might be considered as being reasonably reliable". He concluded that "the significance of this evidence is that, to my mind, 1t undoubtedly reinforces the other evidence as to the plaintiffs' reputation «se «" I should mention that the evidence admitted by Whitford J. was apparently admitted by consent, but at the same time I note that Phipson on Evidence, ubi supra, and several authorities

to which I shall refer make 1t clear that evidence of this kind

has frequently been received in England and in other

A detailed examination of the admissibility and weight of market research surveys was made by Mahon J. in Customglass Boats Ltd. v. Salthouse Brothers Ltd. [1976] R.P.C. 589; [1976] 1 N.Z.L.R. 36. The question at issue in a passing off sult was whether the name "Cavalier" had become by user distinctive of the plaintiff's yachts in the minds of the relevant section of the public. In deciding that question Mahon J. considered scientific market research survey evidence. Although the opposing counsel contented himself with attacking the weight of the evidence, Mahon J. in fact considered its admissibility as well. Mahon J. referred to American and English authority permitting the use of

public opinion survey evidence. At 595 (N.Z.L.R. 41) he

"The unsworn persons responding to a questionnaire and the anonymous customers who order or inquire about goods are all people making statements out of Court to a witness called in the proceedings, and although the

basis of admissibility does not appear to be overtly founded upon anything except established practice and procedure under the trademark and patent legislation, I can for myself see no objection to the classification of such evidence either as proving a public state of mind on a specific question, which is an acknowledged exception to the hearsay rule, or as proving an external fact, namely, that a designated opinion is held by the public or a class of the public, this not being a matter of hearsay at all. eee

There are obvious' difficulties in the acceptance of testimony which purports to convey to the appropriate legal tribunal a number of individual assertions or opinions uttered in relation to the subject matter of the inquiry by persons not called as witnesses and, therefore, not subject to cross-examination, but the considerations which I have mentioned lead me to. the conclusion that the result of a market research survey 1s admissible in this class of case to prove a fact in issue, whether it be reputation or likelihood of confusion or deception, even though the persons responding to the form of questions are not called as witnesses. The weight of such evidence, which was the basis of Mr. Gault's objection in this case as opposed to technical admissibility, will depend upon the circumstances. ... A properly drawn market research questionnaire, carefully framed so as to elicit opinions or beliefs held by persons adequately informed, can only reveal in my opinion the existence or otherwise ina defined proportion of the persons interviewed, of the relevant opinion or belief, and I do not think 1t can be right in cases involving trademark infringement or passing off where evidence of reputation is relevant, and especially in a passing off action where affidavit evidence 1s not receivable, to compel a party to produce in the Courtroom an interminable parade of witnesses to depose individually as to their knowledge and understanding of the trade association involved in a particular trademark or design, so long as there are followed the cautionary procedures [Mahon J. referred to survey procedures recommended as appropriate]. The evidence obtained by research survey is in my view legitimate proof of the fact the opinions obtained had in fact existed, whether rightly held or not, and on that view of the matter 1t is my opinion that such evidence 1s not hearsay at

all and that, even if 1t did fall within the technical concept of hearsay or representing a collation of individual statements made out of Court, then the evidence would still be admissible by way of exception to the hearsay rule because it exhibits the existence of a state of mind shared in common by a designated class of persons. In the present case the method and procedure of taking this research survey has already been described and I am satisfied that those methods and procedure were not only adequate but exemplary, and that the results thus obtained are admissible in evidence as proving the reputation of the name in guestion in relation to the manufacturer and the designer and the place of origin as held by persons properly informed on the general subject matter of the relevant enguiry."

The Customglass Boats case was not followed by Franki J. in McDonald's System of Australia Pty Ltd v. McWilliam's Wines Pty Ltd (1979) 28 A.L.R. 236 at 251 et seq. I note however that at 253 Frankl J. sald:

Kingdom or Australian cases [his Honour was referring to cases dealing with the question

whether opinions expressed by respondents to a survey were hearsay] was made before me."

At 254 his Honour seems to me to have indicated some doubt about the proposition, for which Phipson on Evidence had been cited to him, that "whenever the opinion of a person is material to be proved his statements indicative thereof made at or about the time in question may be given in evidence", and about the application of that statement if 1t were correct. From this point of view, it is relevant to observe that the statement in question is repeated in section 7-34 at page 92 of the later 13th edition of Phipson on Evidence, and that in Dobson v. Morris,

which was decided in 1975 but not reported until 1986 in 4

N.S.W.L.R. 681, and was not referred to in the McDonald's case, the Court of Appeal Division of the Supreme Court of New South Wales, following authorities relied on by Phipson and contrary to the view of Cross (see discussion in Phipson, op. cit., 93-4 and cf. Cross, op. cit. 1000), held that "evidence of an extra curial statement of existing intention is admissible to prove its existence ... not (as) hearsay but ... as direct evidence" (per Reynolds J.A. at 681); and "where it 1s relevant to prove the untentions of a person, declarations by him as to his state of mind are admissible in evidence ... . It 18 ... immaterial whether or not the declaration was contemporaneous with some conduct for which 1t provides an explanation. Whether the intention proved by the declaration to subsist at one point of time has been shown to continue or relate back to a later or

earlier time 1s governed by ordinary rules of evidence." (Per

The view adopted in Dobson v. Morris was also taken in

Concrete Constructions Pty Limited v. The Plumbers and Gasfitters Employees' Union of Australia (1987) A.T.P.R. 40-775, where

evidence of statements made by employees of personal willingness to return to work, and of their belief that their union constrained them from doing so, was admitted over objection that

the evidence was hearsay. At p. 48,473 Wilcox J. said:

"I considered that the evidence was admissible as proof of the readiness of the respondent employee to work and as proof of his opinion that he was constrained by union policy not to do so. The relevant principle 1s stated

"Whenever the physical condition, emotions, opinions and state of

mind of a person are material to be proved, his statements indicative thereof made at or about the time ln question may be- given in evidence.'

As the following discussion in Phipson makes Plain there has been controversy as to whether this principle operates as an exception to the hearsay rule; as to which see also Dobson v. Morris and Anor. (1986) 4

N.S.W.L.R. 681. However, it is now authoritatively established that such

evidence is not hearsay; but primary evidence of the person's condition etc."

Recent English authority is strongly supportive of the view taken by Mahon J. in the Customglass Boats case. In Lego System Aktieselskab v. Lego M Lemelstrich Ltd (1983) 9 F.S.R. 155

at 173 et seq. Falconer J. considered a submission that answers

in questionnaires utilized in a market research survey were hearsay. After a detailed analysis of the GE Trademark case [1969] R.P.C. 418 (at first instance); [1970] R.P.C. 339 (Court

of Appeal); and [1973] R.P.C. 297 (House of Lords), he said at 176:

"The GE case is in my judgment sufficient authority that such expert evidence based on the results of a survey carried out ona representative sample of the relevant public On accepted market research principles is admissible, although, no doubt, the value of the evidence will be subject to any criticism which may properly be made as to such matters as the representative value of the sample, the form of the questions and the manner in which the survey has actually been carried out."

He went on to discuss the Customglass Boats case, and concluded at 178-9:

"I respectfully agree with the view expressed by Mahon J. ... that such evidence 1s not

hearsay at all, but is evidence proving an external fact, namely, that a particular opinion was held by the public or class of public."

Even more recently, in Noel Leeming Television Ltd v. Noel's Appliance Centre Ltd (1985) 5 I.P.R. 249 Holland J., of

the High Court of New Zealand, in a passing off action, admitted evidence of a public survey after referring at 251 to criticism

of the Customglass Boats case in Cross on Evidence 5th ed. at

589, and to support which Mahon J.'s judgment derived from the Chadbourn revised 1976 ed. of Wigmore on Evidence vol. 6

"With respect to the learned textbook writers, I am of the view that the evidence given here 1s not hearsay at all. The evidence given by the interviewers of the results of their interviews was no more than testimony tendered as a foundation for the expert opinion evidence ... . Had there been no evidence from the duly gualified experts the evidence of the interviewers might well have been inadmissible as containing hearsay and no more. I have not regarded the evidence of the results of the interviews standing alone as being evidence in this case, and had there been produced before the court no more than the fact that a series of questions had been submitted and a series of answers given, the evidence would have been ruled inadmissible. The important evidence was the opinions and conclusions of those specially trained in market research based on these questions and answers. It is those conclusions' and opinions which are of assistance to the court in determining primarily whether there 1s goodwill in the trade name and to some limited extent whether there is room for confusion. ..

It 1s clear that in England evidence of surveys has been admitted for many years and long before the recent substantial statutory changes to the admissibility of hearsay evidence. Whether the evidence is admissible as not being hearsay at all or as an exception to the hearsay rule 1s probably

immaterial. For my part I prefer to admit the evidence as not being hearsay at all."

Holland J. went on to refer to the decision of Whitford J. in Imperial Group PLC v. Philip Morris Ltd (1984) R.P.C. 293, where at 302-3 there 1s a discussion of survey evidence, without any query as to its admissibility. The discussion includes the statement at 303:

"(T)here ais an increasing reliance upon material of this character ... ."

Like the passage I have cited earlier in these reasons from another judgment of Whitford J. in Stringfellow's case, this passage goes on to criticise the use of defective survey evidence, but it shows that, at least when not defective, it 1s commonly received in England. For myself, I think there is a distinction to be drawn, from that point of view, between survey evidence obtained specifically for a case, where the risk of the introduction of biased questions and methods 1s. greater, demanding meticulous care if the results are to be convincing, and the use of survey evidence (such as is involved in the present case) obtained for purposes having nothing to do with the immediate dispute between the parties to the litigation, in pursuance of the normal survey activities of a _ business specializing in the regular conduct of such surveys' for commercial purposes. Indeed the opinion expressed by Cross _on Evidence 3rd Australian ed., section 15.32 at page 725, which accepts the McDonald's System case as indicating the correct view

of the law, at the same time includes the following:

(that 1s opinion survey material) compiled over a field which is wider than the issue before the court. Where he gathers raw data specifically for the court hearing, this must be authenticated like any evidence."

On this view, since Mr. Vohralik's opinion 1s based upon material

compiled over a wide field of survey of television personalities

during a period of years preceding the accrual of the cause of

action in the present case, his evidence is admissible, but 1f he

had conducted a survey specifically for the purposes of the

applicant's case, his evidence would not have been admissible.

Cross recognizes that this "conclusion may produce anomalous

necessarily inconsistent with the views expressed in

McDonald's System case for at page 252 Franki J. says:

"The question I have to decide 1s not simply whether a market survey should be admitted in all circumstances but whether the particular material now being tendered should be admitted."

At the same time, he also contemplated that in some circumstances

an opinion survey obtained specifically for the purposes of a

"This ruling is not intended to be taken as one necessarily applicable to all types of what might broadly be called market surveys, and 1t may very well be that in an appropriate case in the future some form of market survey could be worked out at a directions hearing or shortly thereafter, which would permit some improvement on the traditional way cases are conducted in Australia where the type of fact now sought to be proved 1s involved."

An authority relied on by the respondents 1s Mobil Oil

Corporation v. Registrar of Trademarks (1983) 51 A.L.R. 735. In

that case King J. of the Supreme Court of Victoria discussed the

"I think that all that such evidence as that before Mahon J. can prove 1s that certain opinions were expressed by the individual persons interviewed. It cannot show, in the absence of thelr direct evidence to the court, that such opinions were genuinely held

by them or how they arrived at them. It may be arguable that, in some circumstances,

probably reliable trends of public opinion can be ascertained on a statistical basis by

assuming that non-genuine expressions of opinion will cancel one another out, without any assumption that any particular interviewee is telling the truth. However, I think that there is much more to. be considered where expressions of opinion are involved, and I know of no other authority which supports the view that the right to cross-examine members of the public who furnish opinions to market surveyors can be dispensed with for this reason."

At 740 King J. again referred to Mahon J.'s decision and said:

"But I think with respect that such answers would be inadmissible in Victoria because they were expressions of opinion, and that the corresponding answers in this case are inadmissible for the same reason."

King J. does not cite a number of the recent decisions to which I have referred and, with respect, it seems difficult to reconcile his views about the admissibility and genuineness of expressions of opinion with Dobson v. Morris and other modern

authority including the Court of Appeal decision in Process

Church of the Final Judgment v. Rupert Hart Davis Ltd noted in Phipson on Evidence 13th ed. pages 94-95, Statements of

religious belief made out of Court were there held to be admissible, not being hearsay but evidence of what the beliefs

were of the persons who had professed those beliefs.

In the article, which I cited earlier, by James Farmer

on The Admissibility of Survey Evidence in Intellectual Property Cases (1984) U.N.S.W.L.J. at 64 et. seq. authorities are cited

which make it clear that in the United States and in Canada

opinion research evidence has for some time been admitted.

In the present case, what has to be proved 1s not that the opinions surveyed are true. True or false, a good opinion of Sue Smith held by a large number of people is relevant to establish her capacity to attract engagement for reward to endorse products which are to be sold through character merchandising. Indeed, in the present case the evidence shows

that advertisers and others involved in the television industry

accept as a guide for relevant decisions the opinions of Mr. Vohralik and the recorded results of the surveys which he carries out. Accordingly, even if the objection were correct (as I do not think it is) that evidence of an expression of an opinion is not evidence that that opinion is actually held, 1t would not matter for present purposes. For a multitude of such opinions, statistically analysed, has been on the evidence accepted by Mr. Vohralik. It is represented in the survey results he has obtained, and it is his opinion and his survey results, not the raw material processed by him, on which reliance is placed. The point may be illustrated from another field: if the racing

industry accepted an unscientific theory of genetics, a yearling

bred according to that theory might still have great value. To prove the theory unscientific would not be to prove the yearling worthless in the marketplace. Here, of course, there is no suggestion that the market research in question 1s other than in accordance with the accepted principles of statistics and market research: a fortiori, it establishes that there 1s value in the name of Sue Smith once I accept, as I do, that advertisers act on

In any case, what the opinion survey evidence established about the name of Sue Smith was also independently established by other evidence which I accept. At the relevant time she was a personality whose name had a substantial value for the endorsement of products including the products in question, and that value is fairly indicated by evidence, quite apart from

the survey evidence, to which I have already referred.

I turn to the estimation of the damages. Counsel for the applicants asked me not only to bear in mind that Sue Smith's apparent endorsement of a particular brand of video recorder would be likely, on the evidence, to preclude her obtaining any engagement to endorse any other video or similar equipment, such as television receivers, but also to assess damages on the basis of an appropriate fee for the unauthorized use of her name in the advertisements. Of course, in a particular case, an assessment on these two bases might involve some overlapping, which should be avoided. But 1s it open in an assessment of damages under the Trade Practices Act, or for passing off, to adopt the measure of

In the ordinary case, the measure of damages under sections 52 and 53 of the Trade Practices Act 1s as indicated by

the High Court in Gates v. City Mutual Life Assurance Society Ltd

The plaintiff's entitlement in a passing off action was stated in Draper v. Trist (supra, at 520) by Sir Wilfrid Greene M.R. to be "such sum as we think is properly and reasonably shown to be, by taking all proper inferences into account, the damage suffered by the plaintiff by reason of the wrongful acts of the defendants." It was not suggested that there was any difference

in the measure of damages between the two types of proceeding.

Counsel for the applicants referred me to the Zecision

of Bowen C.J. in Eq., as he then was, in Interfirm Comparison

(Australia) Pty Ltd v. Law Society of New South Wales [1975] 2 N.S.W.L.R. 104. That was a suit for infringement of copyright

and breach of confidence. At 124 Bowen C.J. in Eq. said:

"The measure of damage would appear in the circumstances to be that which was adopted in Stovin-Bradford v. Volpoint Properties Ltd [i971 1 ch. 1007. In other words, it appears to me that the plaintiff is entitled to an award of damages assessed on the basis of what would be fair remuneration to the plaintiff for permission to the defendant to use its 1972 guestionnaire in the way in which the defendant did in fact use it ~ that is, by sending a copy of it to the University of New England for use, but not copying. In this regard the fact that the University, according to my finding, is not shown to have used it, does not destroy the plaintiff's

entitlement to the amount equivalent to the fee it would have charged."

Stovin-Bradford v. Volpoint Properties Ltd was a suit by an

architect for infringement of his copyright 1n certain plans. At 1016 Lord Denning M.R. said: "They ought to pay as damages an amount

equivalent to the fee which they would have had to pay for a licence."

Salmon L.J. at 1020 and Megaw L.J. at 1022-3 took the same view.

However, counsel for the respondents submitted that these cases should be distinguished as dependent upon principles of patent and copyright law concerning unauthorized use of a species of property, for which an award of damages on such a basis seems an appropriate remedy. He claimed there was no passing off case in which damages had been so assessed. Whatever may be said about the normal measure of damages for passing off, I do not think counsel's distinction is valid in point of principle. High authority establishes that the basis of a passing off action, no less than the basis of a copyright action, is the infringement of a right of property. In Erven Warnink Besloten Vennootschap v. J. Townend & Sons (Hull) Ltd [1979] A.C. 731 at 741 Lord Diplock referred to "the right the invasion of which is the subject of passing off actions as being the "property in the business or goodwill likely to be injured by the

misrepresentation'." In Cadbury Schweppes Pty Ltd v. Pub Squash Co Pty Ltd [1980] 2 N.S.W.L.R. 851 at 857 the advice of the Privy

Council cites Hornsby Building Information Centre Proprietary

Limited v. Sydney Building Information Centre Limited (1978) 140 C.L.R. 216 at 227 for "the principle that the tort of passing-off

is essentially an infringement of the 'plaintiff's intangible

property rights' in the goodwill attaching to his product." At 861 the advice describes such an infringement as "the foundation of the tort". In Ricketson op. cit. at 582 the conclusion is drawn that the principle upon which damages for passing off are to be assessed 1s "the same as that applied in other instances in which a plaintiff seeks damages for the infringement of a

But quite apart from the question whether' the distinction propounded by counsel is theoretically valid, there is at least one decision which is based on the proposition that damages for passing off (by the unauthorized use of a name

associated with the plaintiff) might properly be assessed on the

basis claimed by the applicants. In I.P.C, Magazines Limited v.

Black and White Music Corporation (1983) 9 F.S.R. 348 at 354 Goulding J. said:

"(I) think that if on a favourable view of the law and on a consideration of live evidence at the trial the plaintiff succeeds, almost certainly it will be adequately compensated by damages worked out as the eguivalent of a reasonable royalty in accordance with prevailing rates."

It was on this basis that he refused an interlocutory injunction to restrain the use of the name in question by the defendant in a

I think that, provided I am careful not to overlook that an authorized use of the name Sue Smith would have had at least as serious an effect upon her ability to endorse other products

as the unauthorized use proved in this case, 1t is appropriate

that I should take into account both the aspects of the matter urged by the applicants. I also bear in mind the nature of the unauthorized use of the name Sue Smith, the extent of it, and the probability on the evidence that any commercial arrangement actually negotiated with anyone would have authorized use varying substantially from the unauthorized use which was in fact made. Taking these matters into account, and in the light of the evidence, I think the damages should be assessed at the sum of

$15,000, and I award the applicants that sum together with costs.

I certify that this and the preceding thirty-six (36) pages are a true copy of the Reasons for Judgment herein of his Honour Mr. Justice Burchett.

Counsel for the Applicants: Mr. J. Garnsey with Mr. T. Golding Solicitors for the Applicants: Gillis Delaney Counsel for the Respondents: Mr. D. Catterns Solicitors for the Respondents: Moore & Bevins