However, there are still some grey areas to consider. For example, it is not clear from the passages in Evatt’s judgment in Henderson v Radio Corporation Pty Ltd as to the different types of misrepresentation which render a remedy in passing off. Would it be limited to misrepresentations, which might result in damage to the plaintiffs’ business or profession; or would it also propose a remedy in cases of misinterpretation, amounting to an appropriation of personality in the case where there was no injury to the plaintiffs in such a capacity?
Furthermore, could liability be based on misappropriation of such a property right; or is there still a need to show a misrepresentation, thereby deceiving the consumer and making them more comfused? Evatt CJ and Manning J seems to indicate the need for elaboration on the issue of misrepresentation, rather than a misappropriation of an independent property right. The vagueness has led some commentators to argue that the courts have developed a legal fiction that cannot be a reality.
In many instances, when establishing an action in the tort of passing off becomes difficult due to the vagueness in some of its elements, the Trade Practices Act is applied instead. Whilst the intention of the Trade Practices Act was not to secure goodwill in one’s personality, it is useful in an indirect manner as it protects individuals against misleading and deceptive conduct. 4- The TPA 1974 (s52 and s53). In the first place, it is importantly to present the content of those two sections from the TPA as a following: Section 52 of the TPA 1974 provides:
"A corporation shall not, in trade or commerce, engage in conduct that is misleading or deceptive or likely to mislead or deceive". Respectively, section 53(c) and (d) of the TPA 1974 provide: "A corporation shall not, in trade or commerce, in connection with the supply or possible supply of goods or services or in connection with the promotion by any means of the supply or use of goods or services: (c) Represent that goods or services have sponsorship, approval, performance characteristics, accessories, uses or benefits they do not have.
(d) Represent that the corporation has a sponsorship approval or affiliation it does not have". In order to explain those two provisions, it is better to look at the case law. Wickham v Associated Pool Builders Pty Ltd is one of the significant sport cases that related to s52 and s53 (c), (d). In that case, Miss Tracey Wickham was a plaintiff and Associated Pool Builders (APB) was a defendant. The plaintiff had a valuable personality and considered as a celebrity because she won medals in international swimming competitions.
Thus, the defendant signed a promotional agreement with her to market its products. The agreement gave the APB an authorization to use the name and photograph of Miss Wickham in the promotion of swimming pools marketed by APB. In return, Miss Wickham would be paid a royalty for every swimming pool sold and she would make herself available for personal appearances to promote the swimming pools. The agreement was meant to be terminated after three years by either parties or any time by the plaintiff for reason of non payment of her fees.
The agreement was applied for a period of time, and through that time the plaintiff argued that she did not consent to the defendant to carrying out business under the names (Tracey Wickham) and (Tracey Wickham Pools). Further, she claimed that this conduct constituted a misrepresentation for the consumers to believe that she owned such business. Consequently, the agreement was terminated but the APB continued to use the name (Tracey Wickham) in its business.
Thus, an action was taken by Miss Wickham against the defendant alleged that the use of the name by the APB was misleading or deceptive conduct which breached s52 and s53(c), (d) of the TPA and also amounted to passing off. The defendant disagreed with the above argument and argued that it was allowed to use the name (Tracey Wickham) in their business. Also, it claimed that even the termination of the agreement, such name was sold for it for ever as a result of the terminated agreement. The court held that defendant was in breach of s52 and s53(c) of TPA for the following reasons: 1.
The agreement between the parties was a license agreement for the promotion and endorsement of the defendant's products. It permits the defendant to use the name (Tracey Wickham) throughout the agreement period, but it did not give the respondent such permit for ever. 2. The use of the name during the period of the agreement did not breach the TPA nor did it amount to passing off because it was the main reason for the establishment of such agreement. Also, any misunderstanding from the public during that period that the defendant owned the defendants’ business was a false assumption and did not constitute any breach.
3. The continued action of the defendant after the agreement was terminated was in breach of s52 of TPA because there was no legal ground to use the plaintiff's name. Also, because this continuation could portray that the plaintiff still has connection with the defendant which ended by termination of such agreement. 4. The conduct of the defendant breached s53(c) because it represented "the existence of a form of approval, rather than simply an acceptance of the use of the name, by Miss Wickham". However, the conduct of the defendant did not constitute a breach s53 (d). 5.
The alleged of passing off was not established because the plaintiff never had a business same or similar to the defendant's business. 5- Remedies under the tort of passing off To begin with, most of plaintiffs prefer injection as a quick remedy for their issues. This is because the plaintiff is looking for a temporary and immediate trial that brings him/her a reward and to stop the defendant from infringing on his/her' rights. So, interim injunction is a quick remedy from the court and it is designed for the plaintiff if he/she is suffering an injury because some one infringing his/her rights and can not wait until the end of the trial.
However, the interim injunction should not be given by the court easily, unless it is made sure that such an injunction would not result in any harm or damages for the defendant in a situation whereby the defendant’s conduct was originally legal. There was a case of a soccer player who played in one team and planned to break his contract with that team in order to play with another team which offered him higher salary. The court was not indulgent and refused to give an injunction. However, this does not mean that the court does not give an injunction at all.
The previous case was too old, but now all the stakeholders in sport are protected by the law and interim injunction could be issued in relevant circumstances. 6- Remedies under the Trade Practices Act 1974 In general, the TPA provided remedies more extensively than that provided from the tort of passing off as a following: In accordance with the s80 of the TPA , an injunction can be provided through the application of the Australian Competition and Consumer Commission (ACCC) or by ‘any other person’. This means that any person who suffers damages even general can take an action, such as, sport supporters.
Moreover, corrective advertising can be provided to clear a misrepresentation or misleading conduct at will. Further, the intention is not required to be proved in such action, just that the plaintiff has to prove that the relevant action was misleading or deceptive. Furthermore, in accordance with the s53 (c), (d) and s79 of the TPA, the defendant shall be punished with a heavy fine up to forty thousand for the natural person and up to two hundred thousand for the firms. This shows how the statute law has more advantages than the common law which might lead the action to be taken under the TPA rather than the tort of passing off.
7- Conclusion For sportsmen who have achieved a level of success, commercial exploitation of their personality is a way of making money. Through the tort of passing off or through an action under the TPA, the law gives some protection against the unauthorized use of a sports person’s name, image, and reputation by others. There are advantages and disadvantages to both, but if the sport person (plaintiff) wants monetary damages, as well as an injunction to prevent the defendant from continuing the misappropriation, the TPA may be more satisfactory. Kieran Perkins in Talmax Pty Ltd v Telstra Corp. Ltd has shown how this can be done.