What’s in a name: One, or two directions?
Thought our One Direction song title puns were good? Check out the music puns in this post. Thanks to our Twitter follower @wenhwu for picking up that the One Direction name dispute (see our previous posts here and here) was a remix of Snoid v Handley (1981) 54 FLR 202. We’ve had a closer look and now sound out some of the similarities and differences between the cases.
Rewind to the late 1970s and early 1980s. Queen reigned and Kiss rocked it. Closer to home, boy bands took centre stage in the court room with the ‘ownership’ of band names in dispute between Sydney group “Popular Mechanics” and New Zealand
based “Pop Mechanix” in Snoid. Both bands played ‘new music’ (read: rock and roll) with similar performance styles. Further, the records of both bands were sold in the same retail outlets on the same racks.
The Federal Court considered that there was great similarity in the names “Popular Mechanics” and “Pop Mechanix”. In the Court’s view, it was “almost inevitable” that “Pop Mechanix” would mislead or deceive a significant number of persons interested in music of the kind played by the two bands.
The Australian group’s reputation, however, was geographically confined to Sydney and Canberra. The public outside those places was not likely to be misled or deceived by the conduct of the NZ group. As a result, the injunction against the NZ band was restricted to conduct in those areas.
The case involved an interesting discussion on the likelihood of confusion, which has since been on replay in courts (see Re Lego Australia v Paul’s* and Re Starcross v Liquidchlor**). That said, having been questioned by Finkelstein J in .au Domain Administration v Domain Names Australia,*** the music from the Snoid bench may prove dated.
Fast-forward decades and boy bands are back in a big way. As discussed in our earlier posts, UK One Direction is being pursued by US One Direction and, the UK group, has filed a counterclaim against the US group. We are yet to hear the final lyrics for this matter.
Snoid and One Direction are in the same range on the facts. The cases track the trends in boy bands names throughout the times. Both involve bands popular with the same demographic of young people, namely, swooning and shrieking school girls. They are also similar in tone with consumer confusion being relevant to both cases.
The legal arguments in the two cases, however, follow different beats. Snoid is a song of misleading and deceptive conduct claim under s 52 of the Trade Practices 1974 (now s 18 in Schedule 2 of the Competition and Consumer Act 2010). By contrast, the One Direction case is a tune of trade mark infringement.
Ultimately, the Snoid case played out in the Australian court system and is likely to be an unheard melody in the One Direction matter at its American venue.
* (1982) 60 FLR 465.
** (1981) 61 FLR 102.
*** (2004) 207 ALR 521 at 530.