JWR Productions Australia Pty Ltd v Duncan-Watt (No 2)  FCA 236 (5 March 2020)
This involved unsuccessful actions for defamation and misleading and deceptive conduct arising from a Facebook post which provided a link to a newspaper article.
There were also some copyright claims as well as a claim for wrongly retained goods which also largely failed.
Mr Rockefeller (the second applicant) collaborated with Mr Duncan-Watt in the production of a show called “Thank You For Being A Friend” which was a puppet parody of The Golden Girls television series. They subsequently entered into an exclusive licence with Mr Gooding and Mr Henderson to produce a revised version of this show for the purpose of staging this show throughout Australia and internationally. Steps were taken to bring this show to the USA.
Despite this licensing arrangement and at the request of Rockefeller, Duncan-Watt subsequently wrote a new script for a show to be called “The Goldenish Girls: A Puppet Parody” which was to debut in New York and produced internationally. Rockefeller contributed to this script.
Rockefeller purported to terminate the agreements with Duncan-Watt. He then opened a show in New York called “That Golden Girls Show”. It was also a puppet parody of The Golden Girls television show which was based on the production format and set design of Thank You For Being A Friend and used the same plot in the script prepared for The Goldenish Girls. The New York show was promoted by Rockefeller as solely his creation. Rockefeller supplied reviews of Thank You For Being A Friend to US reviewers as a means of promoting That Golden Girls Show but, at the same time, told Gooding and Henderson that he had assiduously differentiated his US show from the Australian Thank You For Being A Friend show and that it had no connection with the Australian show.
Gooding and Henderson commenced proceedings in New York against Rockefeller alleging that he falsely claimed to be the sole creator of That Golden Girls Show when, in truth, Rockefeller had taken the script for The Goldenish Girls written by Duncan-Watt and applied it to the production format and set design of Thank You For Being A Friend. These proceedings were reported in a New York Times newspaper article which summarised the allegations which had been made against Rockefeller and quoted Duncan-Watt and Gooding as well as reported comments from others, including Rockefeller’s legal representatives who were contacted by the journalist.
Gooding made a Facebook post which asserted that Rockefeller had stolen his show and included a link to the New York Times article. For the purposes of the defamation action, there was no dispute that Gooding could be liable as a publisher of this article by reason of his repeating its contents. It was also not disputed that the Facebook post and the article identified Rockefeller.
Thawley J found that one of seven alleged imputations were conveyed by this Facebook post, specifically that Rockefeller is a liar in that he claims to be the writer and creator of the off-Broadway show “That Golden Girls Show” when in truth he stole that show from his collaborator, Duncan-Watt. This imputation was defamatory in that the ordinary reasonable reader would think less of Rockefeller.
Gooding relied on the defences of justification, contextual truth, honest opinion and fair comment, and publication of public documents. The defence of justification succeeded because the defamatory imputation was substantially true. His Honour also commented that Gooding could partially rely on the contextual truth defence. However, the defences of honest opinion and fair comment, and publication of public documents were not made out.
The claims under the Australian Consumer Law (ACL) were based on the conduct of the respondents speaking to the journalist of the New York Times article and, in the case of Gooding, publishing the Facebook post.
Against Gooding, Rockefeller alleged such conduct misrepresented firstly, that Duncan-Watt was the owner of all rights in the Thank You For Being A Friend show and secondly, that Rockefeller stole this show. Thawley J found the first alleged representation was not conveyed by Gooding’s conduct. The second representation was accepted by Gooding as being in trade or commerce and conveyed by the Facebook post. His Honour considered this representation was a statement of fact, rather than opinion. However, after considering the licence agreement relating to the Thank You For Being A Friend work, Thawley J found that this representation was not misleading or deceptive.
Against Duncan-Watt, Rockefeller alleged that, in speaking to the journalist, Duncan-Watt represented firstly, that he was the owner of all rights in the Thank You For Being A Friend show and secondly, that Rockefeller, callously and without just cause, stole that show. Duncan-Watt admitted that most of the matters attributed to him in the newspaper article were accurate, but asserted that the reference to stealing the show was to The Goldenish Girls. In any event, Thawley J found the conduct of answering questions about the New York proceedings was not engaged in by Mr Duncan-Watt in trade or commerce, so the ACL claim based on that conduct failed. Further, the alleged first representation was not conveyed. His Honour found the second representation was also not in trade or commerce. Although it was conveyed, it was not misleading or deceptive.
Duncan-Watt and Rockefeller also collaborated on a novel where copyright was jointly owned. Rockefeller wrongly terminated the underlying agreement on this collaboration. Rockefeller alleged Duncan-Watt’s website also gave rise to conduct involving various false representations. Thawley J considered that maintaining this website was conduct in trade or commerce and that one of the alleged misrepresentations was conveyed and was misleading or deceptive, namely a representation that Duncan-Watt was the sole author of the relevant novel. However, his Honour declined to provide the declaratory relief sought by Rockefeller having regard to all the circumstances.
Rockefeller also made various copyright infringement claims against Duncan-Watt.
In the first claim, Rockefeller alleged that the novel was an unauthorised adaptation of a screenplay in which Rockefeller owned the copyright, but Thawley J found this was not the case and there was no intent to publish this novel, so injunctive relief was inappropriate.
The other copyright claim concerned two portrait photographs on Duncan-Watt’s website. The original owner of copyright in these photographs transferred the copyright rights to Rockefeller some two years after the photographs were originally taken. Thawley J found that, at the time these photographs were taken, Duncan-Watt was free to use them. The subsequent transfer document did not operate retrospectively. His Honour found no infringement but, if there was, only nominal damages could be awarded.
Rockefeller also alleged Duncan-Watt had wrongly retained certain documents which were given to him, relying on the tort of detinue. However, Thawley J found these claims failed, except perhaps with respect to one book which became lost and it was inappropriate to make an order for delivery up.
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