## Facts

- Twentieth Century Fox Film Corporation (Fox) produced the animated television series *The Simpsons*, and Matt Groening Productions Inc. (Groening) created the characters, stories, and titles of the series.
- From about 1991, *The Simpsons* was regularly broadcast in Australia during prime time and developed a substantial Australian audience.
- A recurring element of the series was “Duff Beer,” which was depicted as the beer consumed by Homer Simpson; his attachment to Duff Beer was a distinctive feature of his character.
- Duff Beer appeared in almost all episodes broadcast in Australia up to about April 1996.
- In late 1995, The South Australian Brewing Co. Ltd. and Lion Nathan Australia Pty Ltd (the brewers) began manufacturing and selling a real beer under the name “Duff Beer.”
- The brewers did not refer to *The Simpsons* or its characters in their advertising materials, but the appearance of the can and overall get-up closely resembled the fictional Duff Beer as depicted in the series.
- The producers commenced proceedings seeking to stop the brewers’ continued use of “Duff Beer,” alleging that the brewers’ conduct misrepresented an authorized connection with *The Simpsons* and amounted to passing off (and related statutory consumer-protection misconduct).

## Issues

1. Whether the brewers’ sale of “Duff Beer,” including the can design and overall presentation, was likely to mislead or deceive ordinary consumers into believing the beer was licensed, approved, or otherwise associated with Fox, Groening, or *The Simpsons*.
2. Whether the producers had protectable goodwill in the “Duff Beer” name and get-up arising from its established recognition through the series, and whether the brewers’ conduct constituted passing off by misrepresenting an authorized association likely to cause damage.

## Decision

- The Federal Court found for Fox and Groening.
- The court held that using “Duff Beer” with a presentation closely matching the fictional product conveyed a likely false suggestion of licensing or sponsorship connected with *The Simpsons*.
- The court held that the elements of passing off were satisfied: the producers had relevant goodwill connected to the Duff Beer indicia; the brewers made a misrepresentation of association through name and get-up; and the misrepresentation was likely to cause damage.
- The court granted injunctive relief restraining further use of “Duff Beer” (and associated packaging/get-up) in connection with the brewers’ beer.

## Legal Principles

- Misleading or deceptive conduct is assessed objectively by reference to the overall impression on ordinary or reasonable members of the relevant class of consumers; widespread proof of actual confusion is not required.
- A representation of sponsorship, approval, or licensing can be conveyed by branding and get-up alone; an express reference to the film or television property is not necessary.
- In passing off, the plaintiff must show (i) goodwill, (ii) a misrepresentation by the defendant likely to deceive consumers into believing there is an authorized connection, and (iii) a likelihood of damage.
- Goodwill may attach to indicia originating in a fictional work where the indicia has become distinctive to the public and is capable of commercial exploitation through the plaintiff’s business activities (including licensing and merchandising), even if the plaintiff has not itself produced the defendant’s type of product.
- A defendant’s knowledge of the association and decision to trade on it is not a formal element of liability, but it may support an inference that consumers are likely to take away the implied association.

## Conclusion

Because “Duff Beer” was strongly identified in Australia with *The Simpsons*, the brewers’ use of the identical name and a closely similar can presentation was found likely to convey an unauthorized association with the producers, amounting to misleading conduct and passing off; the court therefore restrained continued use of the “Duff Beer” branding and get-up on the brewers’ product.


Twentieth Century Fox Film Corp. v. The South Australian Brewery Co. Ltd., [1996] FCA 1484, 1996 WL 1745933 (1996)