Peter Carstairs is a solicitor with the Arts Law Centre of Australia
A recent case involving the Yellow Pages' Mr Goggomobil advertisement highlights the limited way in which copyright law protects ideas. It also shows how the Trade Practices Act and the law of passing off may be a more effective avenue in protecting marketing ideas.
As many will remember, Telstra (through a subsidiary company, Sensis) created the highly successful Goggomobil TV advertisements in 1991. The ads featured actor Tommy Dysart playing a man with a Scottish accent going through the Yellow Pages trying to find a car parts dealer with a part for his Goggomobil. He makes several phone calls during which he repeats the spelling of the word 'Goggomobil' and making it clear that his model is "not the Dart. They always think it's the Dart".
Subsequent to Telstra's ads, an insurance company, Shannons (which specialises in insuring vintage and classic cars), hired an advertising company, Wilson Everard, to create a TV and radio advertising campaign for their business. Wilson Everard suggested using a concept involving Tommy Dysart in his Mr Goggomobil character, a Goggomobil car and a telephone being used to find a car insurer, as they would be ‘instantly recognisable'. Two Shannons TV ads and four radio ads were then produced.
The first Shannons TV ad involved Mr Dysart playing his Mr Goggomobil character making a number of phone calls in his Scottish accent, spelling out "Goggomobil". This time, however, he says, "Aye, that's' right – it is the Dart. Aye!", the character finds a car insurer and, at the end of the ad, the Shannons logo is displayed.
Telstra sued Shannons alleging that the first TV ad infringed Telstra's copyright in their ads. They also alleged that all of the Shannons ads were ‘passing off' that Shannons had some kind of association with Telstra Yellow Pages that it did not have.
The court held that the Shannons ad did not infringe any copyright in Telstra's Goggomobil ads or the script. This was because copyright does not protect ideas or concepts, but only the material form in which these ideas or concepts are expressed. The court held that the scripts for the two rival ads bore little resemblance to each other. Telstra's script involved a man working on a yellow Goggomobil, then in a house, talking with his wife and calling parts retailers on the telephone. The script for the Shannons's ad, by contrast, involved a man polishing a green Goggomobil and calling insurance companies. As such, although Shannons had copied the ideas of (1) an unusual car, (2) Tommy Dysart playing a distinctive character who (3) uses a telephone to resolve his conflict, the ad had not copied the expression of those ideas (such as the dialogue or setting) substantially enough to amount to an infringement of copyright.
Section 52 of the Trade Practices Act prohibits conduct that is misleading or deceptive or that is likely to mislead or deceive. Further, section 53(d) of the Act prohibits representations by a corporation that it has a sponsorship, approval or affiliation that it does not have.
The court held that the first Shannons ad was a ‘passing off' and breached sections 52 and 53(d) the Trade Practices Act. It concluded that the Telstra Goggomobil ads had had so much public exposure that the idea behind the ad had become part of the Yellow Pages' image. The use of the same idea by Shannons in an ad that borrowed heavily from the Yellow Pages ads implied that the Shannons ad was associated with the Yellow Pages (even though the ad did not expressly refer to the Yellow Pages).
This type of advertising (using well-known images or ideas which are associated with a particular brand that it implies a connection with the brand) is known as ‘suggestive' or ‘secondary' branding. In this scenario, therefore, the Trade Practice Act prohibited the use of suggestive branding by Shannons and allowed Telstra to protect its ideas even where the ideas had been expressed differently by Shannons.
Copyright does not protect an idea, concept or character in itself, but rather their material expression.
An idea, concept or character may, however, be protected if it has become part of a company's brand image. Where this is the case, other companies may be liable under the Trade Practices Act for falsely representing that they have an affiliation with the first company if they've appropriated its idea, concept or character. This may be the case even where the second company (eg Shannons) displays its own logo rather than that of the first company (eg. Telstra or Yellow Pages).