REASONS FOR JUDGMENT
Introduction
1 The first applicant ("Telstra") and the second applicant ("Sensis"), which is a wholly owned subsidiary of Telstra, claim declaratory and injunctive relief, as well as damages or an account of profits, against the first respondent ("Royal") and the second respondent ("Wilson Everard") in respect of their advertising of car insurance to the public under the name of Shannons Insurance ("Shannons").
2 The applicants claim the advertising infringes copyright, constitutes passing off and contravenes ss 52, 53(c) and 53(d) of the Trade Practices Act 1974 (Cth) ("the TPA"). The applicants contend that Royal and Wilson Everard appropriated the format, story and character they created in the Yellow Pages Goggomobil advertising campaign conducted by them during the 1990s. The riposte of Royal and Wilson Everard is that, insofar as any of the Shannons advertisements might be perceived to be similar to the Yellow Pages campaign or to have used any of the concepts employed in that campaign, their advertisements were clearly branded as Shannons advertisements, were no more than a "satirical take" on the Yellow Pages campaign and they created their own original form of expression in doing so.
The Yellow Pages Goggomobil advertising campaign
3 Yellow Pages business directories are distributed free of charge to households and businesses throughout Australia. Information concerning the businesses listed in the directories are also available on the internet and over the telephone. The revenue earned by selling space to businesses advertising in the directories is said to be nearly $1 billion. The directories are widely used by, and are well-known to, consumers throughout Australia.
4 During 1991 Sensis (which was then called "Pacific Access") planned an advertising campaign to improve the image and goodwill of the Yellow Pages directory, which was seen as a dull, but functional, product. The objective of the campaign was to establish an "emotional rapport" with potential users of the directory and to "strengthen their bond with the Yellow Pages Brand". Although the campaign featured a number of television advertisements the advertisements with which the present litigation is concerned are the first and second Goggomobil advertisements, which involve a central character who became known as "Mr Goggomobil".
5 At the time of the campaign the Goggomobil, which was manufactured in the 1950s, was a rare, inexpensive and relatively unknown car. The first Goggomobil advertisement commences in the driveway of a suburban house, in which a yellow Goggomobil is parked on a jack with a man underneath it. The man, portrayed by the actor Tommy Dysart ("Dysart"), crawls out from underneath the car. He is middle-aged, heavy-set, dressed in overalls and wears a pendant. The car is leaking oil. The scene moves to inside the house where the man, with a heavy Scottish accent, tells his wife "I've broken Fritz". He then flicks through a publication, picks up the telephone and, after dialling a number, asks "I was wondering if you could help me" stating that "I've got a problem with my Goggomobil". He pauses, and slowly repeats the word "Goggo-mobil". He rings up another number and again says he has a problem with his Goggomobil. The man, becoming increasingly frustrated, is required to spell in his Scottish brogue, "G-O-G-G-O". He rings again to say he has a problem with his Goggomobil, pauses, and cautiously says "yeah, 1954" and, getting excited, says "Yeah, no not the dart. Not the Dart. They always think it's the Dart!". The Dart is a particular Goggomobil model of that era. The man, with his wife smiling at him, starts laughing uproariously and, simultaneously, the advertisement fades to the well-known yellow and black Yellow Pages walking fingers logo, with the man's laughter and joyous voice calling out in the background "It's a wee ripper".
6 The first Goggomobil advertisement featured a likeable and memorable character, an unusual and distinctive motor vehicle, the use of the telephone to help solve an obscure problem, and tells its story in a humorous manner. The advertisement was successful and highly popular. It was televised extensively throughout Australia between 1992-1996 and again in 1998. In a 1997 publication edited by Griggs and Thoeming entitled Superbrands: An Insight into 65 of Australia's Superbrands vol 1, twelve senior and experienced Australian executives in the areas of marketing, sales, market research, advertising and public relations, (at p 141) made certain observations about the advertising campaign of Yellow Pages which "emphasises warmth, humour and familiarity" that resulted in Yellow Pages being viewed as "a likeable brand". The authors stated in respect of the first Goggomobil advertisement:
"Building this perception of a likeable Yellow Pages through the advertising has meant the creation of a whole series of endearing and funny situations where Yellow Pages saves the day.
One of the best loved of these is the advertisement which features a man trying to locate a special part for his rare Goggomobile. After the advertisement went to air, the name of the vehicle became a household word and Yellow Pages become an overnight hero for people looking for the impossible. Ever since that Gogomobile commercial, Yellow Pages has reinforced its role as the humble hero."
7 In 1998 Sensis produced a second advertisement using Dysart, who by then had become known as "Mr Goggomobil", his wife and the same yellow Goggomobil. This advertisement showed "Mr Goggomobil" and his wife, who was sitting with him in the Goggomobil, being prevented from driving the Goggomobil out of their driveway by two Yellow Pages directories placed under one of the rear wheels of the vehicle. The advertisement promoted the "Out Now" campaign - a campaign to advise people to look out for the delivery of their new Yellow Pages directories. The second advertisement was shown in 1998 in a campaign that also featured the first Goggomobil advertisement. It was also shown on its own in 1999. The second Goggomobil advertisement did not use "Mr Goggomobil" in the same problem-solving context but, rather, utilised his character and its well-known connection with the Yellow Pages brand.
8 Professor Widing, a marketing professor and consultant, explained the success and popularity of the Yellow Pages Goggomobil campaign as follows:
"50. In my opinion, the Yellow Pages 'Goggomobil' campaign was a major campaign in terms of the size of audience reached, the impact of the campaign on consumers with regard to brand awareness (including ad recognition linked to the Yellow Pages brand) and brand associations (e.g. liking, affinity), and the length of time over which the campaign has run (i.e. more than ten years).
…
51. The Yellow Pages Goggomobil campaign had a significant impact, in my opinion, because it communicated to viewers in both rational and emotional ways.
51.1. On the emotional side, the campaign and its central character Mr Goggomobil became well known, well liked, well accepted, and were likely to be considered funny and engaging …
51.2. On the rational/functional side, the campaign communicated clearly the central proposition that Yellow Pages helps people solve unusual or difficult problems …
51.3. In my opinion, these functional and emotional benefits are likely to have been key elements of the relationship between Yellow Pages and its customers."
9 As a result of budgetary constraints neither advertisement was shown between 2000 and 2002 and no decision has been made in respect of the use of the advertisements in the future.
10 Dysart had appeared in a number of productions and television commercials prior to being engaged to appear in the first Goggomobil advertisement. In particular, in 1990 he featured prominently in advertisements promoting Don Smallgoods, a role for which he became well-known. In those advertisements Dysart adopted an Eastern European accent. After the first Goggomobil advertisement Dysart, in his role as "Mr Goggomobil", appeared on a number of television programmes, often spelling out in his Scottish brogue, "G-O-G-G-O", a spelling that had become famous after the first Goggomobil advertisement. The appearances were largely self-promotional and were not organised by Yellow Pages. In 1994 Dysart and his wife also made a CD and video-clip which featured the Goggomobil. The CD and video-clip were ultimately sponsored by Yellow Pages. Dysart appeared in a Mobil advertisement in 1994 which, with the consent of Pacific Access, used the "Mr Goggomobil" character and setting. However, the evidence was that, subsequently, Pacific Access considered it had made a mistake in giving its consent.