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The recent decision of the Full Federal Court of Australia in Knight v Beyond Properties Pty Ltd looks at whether the producers and distributors of the popular TV series, Mythbusters, engaged in misleading or deceptive conduct and passing off. The case highlights the importance of obtaining a trade mark registration to protect your rights in a trade name which is to some extent descriptive.The Full Federal Court unanimously dismissed a claim that Beyond Productions, the Discovery Channel,[link widoczny dla zalogowanych], SBS and Foxtel ("Beyond") engaged in misleading and deceptive conduct (under section 52 of the Trade Practices Act) and passing off in producing and distributing a series of television programs entitled "MYTHBUSTERS" ("the Mythbusters TV Show") and three spin-off books from the series. FactsThe allegations of misleading and deceptive conduct and passing off were made by author, Mr Andrew Knight who, in the early to mid 1990s, wrote the fictional children's books "Mythbusters: First Cases", "Mythbusters: Nut Cases" and "Mythbusters: Real Life Adventures in the World of the Supernatural" ("the Mythbuster books"). The books deal with themes of fantasy and are about a group of people who pursue mystery, myths and ghost stories. Mr Knight also had plans to produce a Mythbusters television series based on the concept of his books. In 1997, Beyond started work on preliminary concepts which, although different from the Mythbusters TV Show, ultimately led to the show's creation. In January, 1999 Mr Knight (and his partner) wrote to Beyond enclosing material concerning the Mythbusters Books' concept for television. Although it was clear that Beyond were at that time aware of the name "MYTHBUSTERS", the primary judge found no-one at Beyond ever considered the material sent by Mr Knight and that the material contained in the Mythbuster Books did not have any significant resemblance to that contained in the Mythbusters TV show.Pre-production work on the Mythbusters TV Show commenced in late October 2001 and shooting commenced in June 2002. Between October 2002 and November 2006, 70 episodes were produced. The Mythbusters TV show uses modern day science to separate fact from fiction using semi-scientific experimentation and methodology to demonstrate the incorrectness of common misconceptions about physical phenomena. The Mythbusters TV Show first aired (in Australia) on Foxtel in September, 2004 and has become a popular series.FindingsInsufficient reputation amongst the television viewing publicThe Full Court upheld the primary judge's finding that Mr Knight did not have a sufficient reputation among members of the television viewing public such that Beyond's use of the name "MYTHBUSTERS" in the Mythbusters TV Show would cause the viewers to incorrectly associate the Mythbusters TV Show with Mr Knight's Mythbuster Books. In particular, the Full Court noted that:(a) although Mr Knight had some reputation amongst the general public in Australia as the author of children's books bearing the name Mythbusters,[link widoczny dla zalogowanych], he did not have the requisite reputation among members of the television viewing public; (b) Mr Knight failed to produce satisfactory evidence of the sales of the Mythbuster Books and did not provide any convincing explanation about the absence of this evidence. The Full Court therefore accepted the primary judge's conclusion that the evidence concerning the sales was insufficient to reach a conclusion that a viewer would make the connection between the Mythbusters TV Show and the Mythbusters Books; and (c) a number of the events and activities Mr Knight relied upon to establish his reputation occurred either overseas or in private (as part of his attempts to generate interest in producing a TV series based on his Mythbuster Books) and few of these activities occurred during the period in which the Mythbusters TV Show was being produced and screened. The name "MYTHBUSTERS" is broadly descriptiveMr Knight did not have a registered trade mark for the name "MYTHBUSTERS". The primary judge therefore found that as the name "MYTHBUSTERS" is,[link widoczny dla zalogowanych], "to an extent at least, descriptive" of busting myths,[link widoczny dla zalogowanych], Mr Knight needed to show that the name "MYTHBUSTERS" had acquired a secondary meaning such that the name was distinctively associated with him. According to the primary judge, Mr Knight failed to establish that "MYTHBUSTERS" had become associated with him in this way.According to the Full Court, "MYTHBUSTERS" describes in general terms the breaking of beliefs or understandings wrongly held in relation to a certain topic or proposition. On this basis,[link widoczny dla zalogowanych], the Full Court accepted that the name is broadly descriptive. On the other hand, the Full Court acknowledged that MYTHBUSTERS is not descriptive in the sense that it does not describe the types of myths addressed,[link widoczny dla zalogowanych], the format or methods used in the Mythbusters TV Show. In any event, the Full Court accepted that the term "MYTHBUSTERS" is broadly descriptive and upheld the finding that Mr Knight had not shown that "MYTHBUSTERS" was distinctively associated with him. Misleading or deceptive conduct �C transient misapprehensionThe primary judge considered that any misapprehension on the part of the television viewing public that there was an association between the Mythbusters TV Show and the Mythbusters books would be "insubstantial and impermanent" and therefore not sufficiently misleading. Any misconception which might arise from the use of the name "MYTHBUSTERS" in the Mythbusters TV Show would last for only "a few seconds" and be "immediately dispelled" on watching the show and observing the differences in content, style and context. When characterising a course of conduct as misleading or deceptive, the practical consequences and effect which the conduct is likely to have must be taken into account. The Full Court accepted the primary judge's findings regarding the transitory nature of the misapprehension but also noted that transient misapprehensions would not always mean there was no misleading and deceptive conduct. The Full Court observed that if the conduct which has resulted in transient misapprehension leads the person under the misapprehension to take action of a substantive nature and causes significant detriment or financial loss,[link widoczny dla zalogowanych], the conduct may still be characterised as misleading or deceptive. The commercial significance of the misapprehension is therefore important in determining whether the conduct is misleading or deceptive.ConclusionsMr Knight failed in his action against Beyond and his appeal for the following reasons:(a) Mr Knight failed to establish a sufficient reputation in the name "MYTHBUSTERS" amongst members of the television viewing public;(b) the name "MYTHBUSTERS" is broadly descriptive; and(c) any misapprehension resulting from Beyond's conduct would be almost immediately corrected and would not lead a person to take action of a substantive and commercially significant nature.Implications 1. If Mr Knight had obtained an earlier trade mark registration for "MYTHBUSTERS" in relation to books and TV programs he would also have had recourse available under the Trade Marks Act 1995. 2. Misapprehensions that are immediately corrected,[link widoczny dla zalogowanych], for example, by a comparison of the products, may not be enough to constitute misleading or deceptive conduct or passing off. Misleading or deceptive conduct and/or passing off is more likely to be found if the fleeting or transient misapprehension causes the person/s under the misapprehension to take substantive action or causes some significant detriment or financial loss.3. It is important to keep accurate and sufficiently detailed business records of product sales or services rendered so reliable calculations of actual sales can be made and used to substantiate reputation based claims like the ones raised in this case.
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