TWENTIETH CENTURY FOX FILM CORPORATION AND MATT GROENING PRODUCTIONS INC v. THE SOUTH AUSTRALIAN BREWING CO LTD AND LION NATHAN AUSTRALIA PTY LTD

No. NG 155 of 1996 FED No. 365/96

THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY
GENERAL DIVISION

[Ed:  The full text of the opinion may be found at http://www.austlii.edu.au/au/cases/cth/federal_ct/unrep8336.html]

TAMBERLIN J

1. This application is brought by Twentieth Century Fox Film Corporation ("Fox") and Matt Groening Productions Inc ("Groening"), (which I shall refer to collectively as "the producers") to restrain the South Australian Brewing Co Limited ("SABCO") and Lion Nathan Australia Pty Limited ("Lion"), (which I shall refer to collectively as "the breweries") from promoting or dealing with any product in the form of a can, (the " breweries' can") with the wording, get-up and name as illustrated below.  The basis of the claim is that such activities are said to constitute deceptive conduct and breach the Trade Practices Act 1974 (Cth) ("the Act"), and also to falsely pass off the breweries' can and product as being associated with "The Simpsons" television series.  ***
 
2.  The producers also seek to restrain the breweries from using the name "Duff" or any deceptively similar name, in relation to beverages and from representing that:
    (a) The "Duff Beer" they produce is the product of the producers,
    (b) The "Duff Beer" which they produce has the sponsorship or  approval of either or both of the producers,
    (c) The breweries have the sponsorship and approval of either or both of the producers. ***

"The Simpsons"
5.  Groening and Fox are United States Corporations, organised and existing under that Law. Groening is owned by Fox.  Groening is the employer of Matt Groening who is the creator of the characters, stories and titles which comprise the animated television series, known as "The Simpsons". Fox is the maker and producer of "The Simpsons" television series.

6.  The central characters of "The Simpsons" comprise a somewhat dysfunctional family. "Homer Simpson", the father, is a world famous and well-recognised television character. "Homer" is married to "Marge". They have three children, a son "Bart", his younger sister "Lisa", and an infant "Maggie". "Homer" is also given a father and two formidable sisters-in-law, Selma and Patty, to fill out the family tree.

7.  Each member of the family has a strong and distinctive image, character traits, habits, and levels of intelligence. "Homer" and "Bart" (unlike the female family members), could not be described as endowed with much intelligence, taste or common sense. "Homer" is depicted as inept and bumbling but good natured. His preferred drink is "Duff Beer". His attachment to this beer is a prominent characteristic of his fictional personality. He is regularly depicted clutching or consuming this beer, on occasions, in copious quantities. It is fair to say that the beer and its consumption are not shown
in a favourable light.

8.  In 1989, Matt Groening  conceived the name "Duff" as the name of an imaginary beer which would be associated particularly with "Homer" and also with his "bar-fly" friends and associates. Depictions and references to "Duff  beer" pervade many of the animated cartoon episodes, which comprise the series.

9.  The evidence is that "Duff Beer" appears in nearly all episodes of the series broadcast in Australia up to April 1996, with varying degrees of prominence. These appearances range from the common scenario of "Homer" going to the refrigerator to pull out a can of "Duff Beer", to "Homer" and his friends sitting in "Moe's Bar" ordering "Duff Beer". There is one whole episode substantially devoted to the theme of "Duff Beer" ("Duffless") and the name "Duff" features prominently and repeatedly in another 22 minute episode, "Selma's Choice". "Duff Beer" is assigned an important role in the series viewed as a whole.

10.  The series was first screened on television in Australia on 10 February 1991, and has been regularly broadcast and repeated nationally since that date during prime time through to the present. Exhibit B lists broadcast dates and times in relation to the broadcast of specified episodes of "The Simpsons" and it is quite clear from this comprehensive list that the series has achieved wide coverage, deep market penetration, and broad recognition. Other evidence shows wide recognition among the 18 to 25 year age group.

11.  In addition to the publicity generated in relation to the "The Simpsons", since 1989 Fox has licensed the use of the characters' names and images which appear in the series for use on, and in relation to, a wide range of merchandise, which has been extensively promoted and sold throughout Australia.

12.  The merchandise comprises T-shirts, caps, sweat shirts, tank tops, ceramic mugs, trading cards, greeting cards, mouse pads, swim wear and canvas show bags to mention only a few. It is proposed to license and market boxer
shorts and other goods depicting characters from the series.

13.  Licensed merchandise relating specifically to "Duff Beer" and sold prior to the hearing date, include T-Shirts and caps marketed by "Top Heavy Pty Limited".

14.  The merchandise contains references to copyright and to the reserved rights of Groening or Twentieth Century Fox.

15.  In Australia and New Zealand "Duff Beer" caps sold over 900 units between October 1995 and April 1996. T-shirts showing "Duff Beer" have been sold during various periods between January 1995 through to April 1996 in Australia and New Zealand, in the order of 24,000.

16.  In addition, comics of "The Simpsons" have been sold in Australia since June 1994. One of these comics entitled "The Amazing Colossal Homer]", a story about "Duff Beer" and the "Duff Brewery" was sold in Australia from 22 June to
27 July 1994. Approximately 15,900 copies were sold. Another comic relating to "Duff Beer" was sold from 24 January to 21 February 1996. Approximately 26,300 copies were distributed to retailers. The 1996 "Simpsons' Diary" which
contained nine specific references to "Duff Beer' has been sold throughout Australia since 30 November 1995, and is still on sale. Fifty thousand of these have been distributed to retailers.

17.  The inroads made by the series into consumer consciousness has therefore taken place at many levels and in many different ways.

18.  The producers claim, and I accept, that the series has acquired substantial goodwill and reputation in Australia in relation to the characters, names and images appearing in "The Simpsons" including the name "Duff Beer".

19.  In about November 1995, the breweries launched and promoted a beer, using the name "Duff Beer" in the get-up and style depicted above as the breweries' can.

20.  The producers say that by manufacturing, promoting and selling beer under and by reference to the name "Duff Beer", the breweries have represented that the product is made with the permission of the producers, when the true position is that no such licence or permission has been granted.

21.  The producers also allege that the breweries adopted the name "Duff Beer" and the get-up and style in the knowledge and for the reason that the name "Duff Beer" had acquired a substantial reputation as a consequence of its
association with "The Simpsons" and that the breweries intended to exploit that reputation in relation to their beer product.***

24.  Fox has consistently refused to grant licences to parties who have sought to use "The Simpsons" in connection with alcohol and tobacco products, or other substances considered detrimental to children.***

36.  The evidence clearly establishes that throughout the series there is a clear and pervasive association of "Duff Beer" with "Homer" and other characters such as "Barney", his friend.

37.  The market penetration of the program is extensive. The number of times on which the program has been broadcast from 1991 to date in prime time slots are eloquent as to the drawing power and attractiveness of the program. Mr. John Grono, a client Service Manager, employed by A C Nielsen Australia Pty Ltd (Nielsen), since 1977, sets out the ratings and audience figures for "The Simpsons" during 25 April 1993 (when "Duffless" was broadcast), through to and including January 1996. Ratings are an estimate of the percentage of the given audience watching a particular program at a specified time. Audience figures are an estimate of the absolute number of the given audience watching a particular program. On the figures recorded by Nielsen, the ratings are consistently high, with respect to both males and females in the 16-24 year age group.  The target age range for the breweries' promotion of "Duff Beer" is the 18 to 25 age group. Broadcasts have been made by the Ten Network Stations and affiliates in most if not all states.***
 
 

Legal Principles

75.  It is well settled that a word which has an ordinary dictionary meaning can become distinctive of a particular trader as well as having its primary dictionary denotation. The tort of passing off is wide enough to include descriptive material such as slogans or visual images which television advertising campaigns might lead the market to associate a trader with a
product. The test is whether, for example, a product has derived a distinctive character which the market recognises. See Cadbury-Schweppes Pty Ltd v Pub Squash Co Ltd (1980) 2 NSWLR 851 at 858 per Lord Scarman.

76.  In the present case, the word "Duff" cannot be said to be descriptive of the beer's qualities but even if it were descriptive, a secondary distinctive meaning might in some circumstances be established. See Apand Pty Ltd v The
Kettle Chip Company Pty Ltd (1994) 52 FCR 474, where it was argued that the word "kettle" could refer to the method of manufacture.

77.  Once a secondary meaning is established the fact that there may be a descriptive dictionary meaning will not of itself defeat a claim for passing off. The relevant question is whether the use of the word or name will convey the secondary meaning to consumers.

78.  The name or word under consideration does not have to be associated with goods manufactured by the trader. In Radio Corporation Pty Ltd v Disney (1937) 57 CLR 448 (the Mickey Mouse Case) at 453, Latham CJ in relation to the names "Mickey Mouse" and "Minnie Mouse" considered that these were:

“so closely associated in the public mind, with … Walter E. Disney and his activities, that the use of either the
the names or the figures in the connection with any goods at once suggests that the goods are in ‘in some way’

or other connected with … Disney.”                                                  

79.  So that, a name without an image may be sufficient to suggest an "association".***

85.  Character merchandising has been recognised as  attracting the protection of the law in a number of recent cases. In Fido Dido Inc v Venture Stores (Retailers) Pty Ltd (1988) 16 IPR 365, Foster J said at 371:
    "With some hesitation, I have come to the view that it is reasonable in this day and age to assume a state of
    knowledge in the buying public that characters appear in character merchandising as a result of some system of at
    least sponsorship or approval by a character himself in the case of a living person, or the owner of a character in the
    case where it is inanimate." (Emphasis added)

86.  That case concerned a stick-like cartoon character known as "Fido Dido". The applicants were in the business of licensing the "Fido Dido" image in relation to garments. The respondents advertised and offered for sale garments
which were considered deceptively similar to "Fido Dido" range. It was held that the fictional character had acquired sufficient reputation and goodwill in Australia to be capable of being damaged by passing off and that it was unnecessary that the public should know the precise identity of the applicants to establish the tort of passing off. His honour observed that the doctrine of common field of activity was not necessary but in any event it did exist in that case.  Accordingly his Honour granted an interlocutory injunction.

87.  In modern times there have been a number of cases which considered whether in particular circumstances the protection of law should be given to particular examples of character merchandising. See Henderson v Radio Corp Pty
Ltd (1960) 60 SR(NSW) 576 (the ballroom dancing case); Newton-John v Scholl-Plough (Aust) Ltd (1986) 11 FCR 233 (the Maybelline case); 10th Cantanae Pty Ltd v Shoshana Pty Ltd (1988) 79 ALR 299 (the Sue Smith case);
Hogan v Koala Dundee Pty Ltd (1988) 83 ALR 187; Pacific Dunlop Ltd v Hogan (1989) 23 FCR 553 (the Crocodile Dundee case); Honey v Australian Airlines Ltd (1990) 18 IPR 185 (the Gary Honey case) and Talmax Pty Ltd v Telstra
Corporation Ltd (Byrne J, unreported, Supreme Court of Queensland, 14 March 1996), Byrne J (the Kieran Perkins case). A number of these decisions are helpfully discussed in an article by Susan M Crennan QC in "The Commercial
Exploitation of Personality" (1995) 8 IPLB 129.
 

Secondary Meaning

88.  In this case, it is clear that the name "Duff" has acquired a powerful secondary meaning when used in the collocation "Duff Beer".

89.  An examination of the dictionary meanings of the word "duff" is not particularly helpful. The word is used in relation to golf to refer to striking a ball clumsily or failing to play a shot. The word "duffer", which is perhaps more relevant, connotes a plodding, stupid or incompetent person. However, in my view it would be artificial in the extreme to suggest that consumers would be attracted by the concept of "Duff" on the basis of its dictionary meaning.

90.  Indeed, one of the expert advertising research reports specifically advised against using other dictionary meanings of the word "duff" when it advised:
    "Our attempts to portray Duff as a brand without any association with the Simpsons (by using alternative meanings
    from the Dictionary) also doesn't work as it removes the brand from its source of current franchise and its fun
    positioning"

91.  The word "Duff" does not describe the contents of the product nor on the evidence does it conjure up connotations of being "fun", "cool" or "trendy". These key attractive features arise from the association with "The Simpsons" and not from any literal dictionary meaning of the word "duff."***
 

92.  The present case is not analogous to the Solar Tint case, (Dodd's Family Investments Pty Ltd v Lane Industries Pty Ltd (1993) 26 IPR 261), where the Full Federal Court held that the applicants had failed to establish a distinct
or secondary meaning for the essentially descriptive words "solar tint" in connection with their services. See also The Kettle Chip Company Pty Ltd v Apand Pty Ltd (1993) 46 FCR 152 and on appeal Apand Pty Ltd v The Kettle Chip
Company Pty Ltd (1994) supra.
 

Character Merchandising - prop or background?

93.  The applicants submit that there is a vast gulf between the prominence given to "The Simpsons" names and images when compared to the prominence given to "Duff Beer".

94.  An unusual aspect of this case, is that it concerns not a fictional "character" as such, but a "make-believe" product, namely the fictional "Duff Beer" which is coupled with a character, a background institution, ("Duff Brewery"), and also with the associated advertising signs, posters and images of the beer, which play an important role in the series. These features form part of the fictional "environment" in which the stories are played out. It plays a background role as part of the fictional world which the characters inhabit. No doubt, the assignation of the name "Duff" to the product was
designed to achieve a more believable specific fictional effect than to have an anonymous generic "beer" can and it serves to endow the characters with more focussed identifiable "human" traits.

95.  The evidence shows that the use of the "Duff Beer" name on the breweries' can is sufficient to invest the beer in the minds of consumers with many of the associations of "The Simpsons". Accordingly, in my view, the principles which apply to character image or title association are equally applicable to the name of a product which features in the program, in this instance, "Duff Beer".

96.  There is no need to reinforce the name with an image of any character or any other title or description or indeed any reference to the words "The Simpsons". To paraphrase the words of Dixon J in the Disney case, supra at 457, the breweries, in using the name "Duff Beer", are making use of an element which belongs to "the reputation and fame" of Matt Groening's creations to create the association. Association.***

99.  Intention to take advantage of the goodwill of another, does not of itself establish a cause of action, nor can there be a monopoly in the use of an ordinary English word. A court will, however, more readily infer where there is intention, that the promoters who know the field of business well, were justified in entertaining the hope or expectation that the attempt would succeed and it assists the conclusion that the public was so influenced. Cf Australian Guarantee Corporation Ltd v Sydney Guarantee Corp Ltd (1951) 51 SR(NSW) 166 at 170-1, applied by Gummow J in Telmak Teleproducts (Australia) Pty Ltd v Coles Myer Limited (1988) 84 ALR 437 at 445. His Honour points out that acting in the hope or expectation of depriving a benefit from a resemblance to the plaintiff's name is no substitute for the primary requirement of distinctiveness or reputation but it is evidence which can assist an applicant's case.***

125.  On a literal reading of s52 of the Act, the deliberate creation by the breweries of an association by use of the name "Duff" between the breweries' beer can with "The Simpsons'" program, in circumstances where there is no association and indeed, where such an association is contrary to the express policy of the producers, amounts to misleading and deceptive conduct. There is no necessity to demonstrate that the viewer or consumer must think in specific terms of permission or allowance in order to constitute deceptive conduct. The intentional use of the name "Duff Beer" which produces the false association is sufficient, in my view.

126.  As indicated above, I am satisfied on the balance of probabilities that consumers are in fact likely to assume sanction, permission or allowance on the part of the producers. This is not caused by any erroneous assumption on their part, but by the deceptive conduct of the breweries.
 

Distancing and Disclaimers

127.  It is submitted by the breweries that steps were taken to ensure that there would be no suggestion to consumers that the product was manufactured or sold with the license or permission of the applicants.

128.  It is important to note that there is no disclaimer to consumers on the can, or in the retail advertising or promotional material, to the effect that the beer is not that referred to in "The Simpsons" program. An express disclaimer, can if sufficiently prominent, destroy any suggestion of association between a character and the product under consideration. For example, in the Maybelline case, the controlling consideration was, that across the top of the picture in large and striking letters were the words "OLIVIA? NO, MAYBELLINE]" Given this express statement it would be difficult to assert any relevant association between "Maybelline" and Olivia Newton-John.

129.  The steps which are said to have been taken to disassociate, the "Duff Beer" from "The Simpsons" in the present case, include ensuring that the words "The Simpsons" were not referred to on the can and the design, colour and
get-up of the yellow can was said to be quite different from that featured in "The Simpsons". Nor did the image of any "Simpsons" character appear on the can.

130.  Consideration of the letters sent to Swan Liquor Retailers and other retailers in Western Australia, South Australia and Victoria indicate the "tongue-in-cheek" nature of the attempts at "disassociation". A circular letter sent to retailers contains the following note:

“… Oh and (to be serious for a moment) yes we’re aware of the fact that another “Duff Beer” features in

in “The Simpson’s” TV show.  Please note Homer’s favourite drop is a completely separate, fictitious product. 

We would encourage you not to use “Simpson’s” imagery or logs in supporting “Duff Beer” as these are not

By us and in doing so you may run the risk of infringing legal copyright.”
 

131.  There is a notable lack of any attempt to drive this message home to the "consuming public".

132.  These letters indicate a view, on the part of the breweries, that if "The Simpsons" image or title appeared on the can, there was a real risk of infringing copyright. Far from indicating a disassociation, these letters relied on by the brewery, reinforce the conclusion that the beer was intended to be marketed with a keen awareness of the existence of "The Simpson" program and of the force of "The Simpsons" association.***
 

Passing Off

139.  The tort of passing off is not limited to protection of a name or trademark. The tort can cover visual images which television advertising campaigns lead the market to associate with a plaintiff's product. See Cadbury-Schweppes Pty Ltd v Pub Squash Co Pty Ltd (1980) (supra) per Lord Scarman at 858.

140.  The elements of the tort were enunciated by Lord Diplock in Erven Warnink Besloten Vennootschap v J Townend and Sons (Hull) Ltd (1979) AC 731 at 742 as follows;
    "... five characteristics ... must be present ... to create a valid cause of action for passing off:
    (1) a misrepresentation (2) made by a trader in the course of trade, (3) to prospective customers .. or ultimate
    consumers of goods supplied by him, (4) which is calculated to injure the business or goodwill of another trader (in the
    sense that this is a reasonably foreseeable consequence) and (5) which causes actual damage to a business or goodwill                of of the trader by whom the action is brought or (in a quia timet action) will probably do so."

141.  In the light of the evidence and the reasoning earlier in this judgment, I consider that the above elements have been made out. There has been a misrepresentation as to the association of the goods with "The Simpsons", made
by breweries in the course of trade, to prospective customers or ultimate consumers.  It is reasonably foreseeable that the business or goodwill of "The Simpsons" and their licensing and merchandising rights could be adversely affected, particularly in the light of the policy in relation to alcohol promotion. If the product is permitted to be marketed it will probably cause actual damage to the producers. There will be loss of licensing fees. Ian Gaffney, whose company is Gaffney International Licensing Pty limited, gave evidence that the rights retained by the producers are valuable intellectual property rights and any infringement of those rights would cause harm and damage and would interfere with the integrity of the licensing and merchandising programs implemented by his company under license from the
producers. Mr Gaffney was not required for cross-examination.

142.  I consider that the producers have made out their case in relation to passing off.
 
 

Conclusions

143.  My conclusion is that the breweries have engaged in a course of conduct calculated to achieve and exploit a strong association between their use of the name "Duff Beer" and "The Simpsons", which in fact is deceptive, while at the same time, hoping to avoid legal liability. In fact, their hope of avoiding legal liability were not realised in that they have breached the Act and the charge of passing off has also been made out.

144.  The producers have succeeded in relation to both the Trade Practices claims under s52 and also in relation to passing off.

145.  As the present hearing was limited to the question of liability, I direct the applicants to bring in Short Minutes of Order to give effect to these reasons and also draft directions in order to progress the further hearing in relation to relief sought.