Using a company’s logo to criticise the company

AGL v Greenpeace
AGL, an Australian energy company, used the logo:

AGL claimed ownership of the copyright in this logo as well as having registered the logo as a trade mark. Copyright works can include artistic works, such as a logo, and literary works, including business documents.

Greenpeace has a long history of environmental activism. It launched a campaign against AGL which involved using the AGL logo with the words “Australia’s Greatest Liability”. Here is an example:

On other occasions Greenpeace used the AGL logo on its own, without the tagline. AGL sued Greenpeace for copyright infringement and trade mark infringement: AGL Energy Limited v Greenpeace Australia Pacific Limited [2021] FCA 625 (8 June 2021)

Greenpeace was partly successful, except where it had used the AGL logo on its own.

Fair dealing defences

Greenpeace argued that it had defences under the Copyright Act for fair dealing for the purposes of “parody or satire”, or for “criticism or review”. There are many different defences to copyright infringement in Australia, each with their specific requirements. The defence of parody or satire is relatively new, having been introduced in 2006 to promote a degree of free speech and freedom to comment. Parody essentially involves imitation to ridicule, whereas satire is a form of ironic, sarcastic or ridiculing criticism not necessarily involving imitation.

In order to establish a fair dealing defence, the defendant must satisfy the relevant statutory purpose as well as proving that their use was “fair”. What will be fair will depend on the nature of the work, the character of the dealing and which fair dealing purpose defence is claimed. The genuineness of the purpose is important. Having more than one purpose is acceptable, provided that one purpose is a statutory purpose. However, a dealing with a copyright work will not be “fair” if the work is used solely to capitalise on or “cash in” on the work’s originality and popularity.

Parody or satire
The trial Judge held that Greenpeace succeeded with the defence of parody or satire where it had used the AGL logo in combination with the darkly humorous “Australia’s Greatest Liability”, but not where this tagline was absent, because then there was no use of irony, sarcasm or ridicule. Even though AGL may suffer damage from Greenpeace’s conduct, this was not due to the use of the AGL logo itself, but rather because of the environmental criticism of AGL.

Criticism or review
Where Greenpeace had used the AGL logo on its own, Greenpeace tried to rely on the defence of fair dealing for criticism or review. This did not succeed because this defence is limited to criticism or review of a work, either the work that has been copied or another work. (The parody or satire defence is not so limited.) Greenpeace was criticising AGL, not its logo or any other work.

Trade mark infringement
AGL also argued that Greenpeace had infringed its trade mark registration in its logo. However, the trial Judge held that Greenpeace had not used the logo “as a trade mark”. Greenpeace was not using the AGL logo to refer to its own services and distinguish them from the services of other traders. Rather, Greenpeace used the AGL logo to refer to AGL, and this is not an infringement.

This is why some companies can engage in comparative advertising, using a rival’s trade mark and suggesting that their product is better. Note that comparative advertising is risky because it is guaranteed to upset the competitor. If there is the slightest factual mistake in the advertisement, the competitor may have a claim of misleading and deceptive conduct against the advertiser.

The Australian Copyright Act is a long and complex act, with many twists and turns to trap the unwary. Expert advice is important before copying third party material in a commercial context or where a business believes that their material is being copied. I have practised in this area for over 30 years and can help clients with any of the issues raised in this blog. I can be contacted here.

This article provides general information only, and is not intended as legal advice specific to your circumstances. Please seek the advice of a legal professional if you have any particular questions.

Fearless Girl meets Australian Intellectual Property Law

Fearless Girl is the name of a bronze statue of a strong and confident girl created by Kristen Visbal and installed in New York City in 2017.  The statue was funded by financial company State Street US and its unveiling was timed to coincide with a marketing campaign by State Street US that sought to improve gender diversity in senior business leadership.

In 2019 the artist entered an agreement with Maurice Blackburn Lawyers (MBL), an Australian law firm, to supply a replica of the Fearless Girl statue for installation in Melbourne as part of MBL’s campaign for gender equality and equal pay.  MBL secured the sponsorship of two superannuation funds, HESTA and Cbus, for its campaign.  Here is a copy of an invitation to the launch event unveiling the statue in Melbourne:

 

State Street US was not happy about this and, together with its Australian subsidiary State Street Australia, sued MBL, HESTA and Cbus, making a wide range of claims, almost all of which failed.  The Federal Court judgment can be found here.  The judgment is lengthy, and I will just comment on a few points of interest relating to intellectual property.

Contracts and copyright

State Street US claimed that the Australian companies had infringed copyright by reproducing and communicating to the public 2D copies of the Fearless Girl (in promotional material such as the invitation above).  This was because it had an exclusive copyright licence from the artist.  An exclusive licence of copyright gives the licensee the right to sue for copyright infringement.

The difficulty for State Street US was that its licence was narrowly limited to:

  • two-dimensional copies of the artwork in connection with gender diversity issues in corporate governance and in the financial services sector; and
  • in connection with State Street US and its products and services.

The judge held that MBL’s campaign covered gender equality and equal pay – not “gender diversity issues in corporate governance and in the financial services sector”.  Even the involvement of the two superannuation companies did not mean that the copies of Fearless Girl were made in connection with “financial services”.  State Street US was trying to sue on the basis of rights that it did not have.  Thus there was no copyright infringement by MBL, HESTA or Cbus.

It is common in intellectual property licences, especially patent licences, for the rights owner to divide the right to use the IP into different fields, thereby maximising the return on the investment in the IP.  But there may be an overlap between the fields, or the dividing line may be unclear or, as in the Fearless Girl case, the licensee may not receive the rights it believed it was gaining.  In addition, if a patentee carves up the right to exploit the patent between different licensees, no licensee can sue for patent infringement.

If an IP owner wishes to divide its rights into different fields between different licensees, the implications need to be carefully thought through by both licensor and each licensee.  Careful consideration of the drafting of such clauses is also essential.

Passing off and misleading and deceptive conduct

The State Street companies also claimed that MBL, by its use and promotion of the replica Fearless Girl, represented that it was associated with the State Street companies and their gender diversity initiatives.  But, to succeed on this basis, they needed to establish a sufficient reputation in Australia as being associated with the Fearless Girl so that members of the public, on seeing MBL’s conduct, would believe that there was a connection between the State Street companies and MBL.  The State Street companies were unable to prove this.  Rather, the evidence of an association between them and the New York Fearless Girl was dwarfed by the fame of the New York statue itself.

State Street Australia’s clients were sophisticated wholesale investors and there was no promotion of its services to retail markets or consumers.  The judge did not consider that the clients of the Australian financial company would make any connection between MBL and the State Street companies just because they had used a statue to promote a financial product two years before.  MBL’s reputation was very different to theirs as it was known for its social justice work and “fight for fair” against big corporate and government interests.

Sometimes an overseas company can show that there is a “spill-over” reputation in Australia from its overseas activities, arising from the Internet, use of its trade mark in movies, travel to overseas destinations etc.  However, this can be difficult to prove, and in the Fearless Girl case, the judge held that there was no spill-over reputation.

If a local company is faced with a claim from an overseas company that alleges a reputation in Australia (which can happen in a trade mark opposition or in a claim for passing off or misleading conduct), the claim should be examined carefully to see if the overseas company could be exaggerating its rights in Australia.

Trade mark infringement

State Street US also claimed infringement of its Australian registered trade mark for FEARLESS GIRL.

Not all uses of a trade mark infringe a registration, even if the use is exactly the same as the registered mark.  One reason is if the allegedly infringing use is not for a trade mark purpose – which is to distinguish the goods or services of the alleged infringer from those of other traders.  Here the judge considered that MBL, HESTA and Cbus were simply using the words FEARLESS GIRL as the name of the statue.  Indeed, there was no other way to properly describe it.  Even use in the hashtag #fearlessgirl did not infringe because the judge held that hashtags identify the topic or subject of a post, not its maker or source.

The judge also rejected the argument that MBL used FEARLESS GIRL for services covered by the trade mark registration. These included publicity services as well as financial services.  MBL was simply not in the business of providing publicity services, much less financial services.  Trade marks must be registered for specific goods and/or services and this confines the protection that they receive.  It is therefore important, when applying for a trade mark, to list all the goods and/or services for which the mark is being used or intended to be used.

Intellectual property is a specialist area of law.  I have practised in this area for over 30 years and can help clients with any of the issues raised in this blog.  I can be contacted here.

 

This article provides general information only, and is not intended as legal advice specific to your circumstances. Please seek the advice of a legal professional if you have any particular questions.

Is copying another’s product legal?

This question was answered “no” in the case of Lumen Australia Pty Ltd v Frontline Australasia Pty Ltd [2018] FCA 1807but the answer may be different in other circumstances.

The facts

Lumen supplied Frontline with electronic automotive components for inclusion in towbar kits that were supplied by Frontline to Mitsubishi and Mazda.  Frontline, for profit reasons, decided to replace these components with components made by Vision, without telling either Lumen or its customers or obtaining their approval. To facilitate this substitution, Frontline provided Vision with samples of the Lumen products (including the Engine Control Unit (ECU) which carried copyright markings) as well as Lumen engineering drawings and the Lumen installation instructions.  Vision created almost identical copies and these were supplied as part of the towbar kits by Frontline to Mitsubishi and Mazda.  When this substitution came to light Lumen sued Frontline and Vision.

Infringement by Frontline

This was a clear case of infringement of Lumen’s rights by Frontline.  At the beginning of the trial, Frontline admitted copyright infringement in the ECU markings, engineering drawings and installation instructions, as well as breach of confidence and breach of contract with Lumen and passing off its towbar kits to its customers as still containing Lumen parts.  What is significant is:

  1. There was no claim of infringement in the copied parts themselves.  This was because there was no design registration for the Lumen parts.  In addition, the Copyright Act provides that there is no copyright infringement of design drawings or the parts themselves where there is no design registration and the design of the parts is industrially applied (generally where more than 50 items are produced).
  2. Despite this, Lumen was able to rely on incidental copyrights – in the ECU markings, in the installation instructions and in drawings that were copied plan to plan.
  3. Lumen was awarded about $140,000 against both Frontline and Vision for the lost sales of its parts.
  4. Lumen was also awarded $500,000 against Frontline only as “exemplary damages” for passing off (which would have been the same for “additional damages” for copyright infringement).  This is a very substantial amount which was intended to punish Frontline and deter it from similar conduct in future, especially because of its deliberate and involved planning of the infringement over a significant period of time.

Frontline’s conduct was intentional, extremely serious, had safety implications and covered a period of roughly three years until the substitution of the Lumen parts was discovered.  $500,000 for exemplary/additional damages is at the high end for this type of damages.

Copying another’s product

Copying another’s product can be fraught with danger, especially if, as in this case, the copier owes obligations in contract or confidence to other parties.  Assuming that there are no such obligations, it may be possible to copy a product, but this involves undertaking patent and design searches as well as considering precisely what is proposed to be copied to make sure that no incidental copyrights or trade marks are infringed.  I can assist businesses if they wish to pursue this course. https://ipbymargaret.com.au/contact/

This blog entry provides general information only, and is not intended as legal advice specific to your circumstances.  Please seek the advice of a legal professional if you have any particular questions.

Liability limited by a scheme approved under Professional Standards Legislation

© Margaret Ryan, Melbourne, Australia, 2018

The Internet is not the Wild West – (although it can seem to be)

Some people seem to think that no laws apply to the Internet – or that anything that appears on the Internet is free to be copied and used however they like. This is not true.

Much of the material on the Internet is protected by copyright laws, both in Australia and around the world. Certain material, especially if posted on social media sites, may be designed or intended to be shared, such as funny cat videos and other memes. But this is not true of everything on the Internet.

Some websites, such as Shutterstock, permit downloading of images and videos for a fee. Other websites are essentially advertisements for their business and may also enable sales through the website. These businesses would not expect that material on their website could be copied and used, for example, by a rival trader.

Even material intended to be shared on social media may not be able to be re-purposed. A funny cat video shared by the cat’s owner cannot normally be taken and incorporated in a compilation of cat videos on a YouTube channel without permission.

An example of unlawful copying from the Internet, with expensive consequences, was the case of Henley Arch Pty Ltd v Del Monaco [2019] FCCA 3848 (13 November 2019). A photo was taken of a floor plan of a Henley Arch project home found on the Henley Arch website by either Mr Del Monaco or a friend. Mr Del Monaco then emailed the image to his builder and instructed them to prepare plans and build a house in accordance with the floor plan.

The photo, the further plans and the house were all infringements of Henley Arch’s copyright in the floor plan (copyright in a 2D drawing can be infringed by a 3D building). Mr Del Monaco was held to have authorised the plans and building the house and so had infringed Henley Arch’s copyright. He was ordered to pay compensation of $42,000 plus $4,800 in interest. He also had to pay $40,000 in “additional damages” which the Judge ordered to show her condemnation of all persons who consider it “’all right’ to appropriate copyright”. Mr Del Monaco is also likely to be required to pay a portion of Henley Arch’s legal costs.

Downloading an image or other copyright material from the Internet can seem so simple and easy. However, if this is done to save time and money instead of seeking the permission of (and possible payment to) the copyright owner, this can have very serious consequences, especially if the material is then exploited commercially.  If you are thinking of using someone else’s material or have discovered that someone else is using your material, I can help.

This article provides general information only, and is not intended as legal advice specific to your circumstances. Please seek the advice of a lawyer if you have any particular questions.

© Margaret Ryan, Melbourne, Australia, 2020
Liability limited by a scheme approved under Professional Standards Legislation

I paid for it – why don’t I own it? – the copyright trap

If your business commissions a graphic artist to create a logo and brand collateral for the business, who owns the copyright in the artwork?  Have you thought about this?

It is important that businesses do think about copyright ownership when commissioning third parties to create artistic works and literary works.  These works can include:

  • logos;
  • artwork and wording on product packaging and brand collateral;
  • product information such as manuals;
  • photographs;
  • advertising; and
  • social media.

This is because the default position in Australia is that the author or his/her employer will own the copyright, not the commissioning party.  This usually comes as a shock to most businesses because they assume that “if I pay for it, I own it”.  In order to own the copyright, it is normally necessary to obtain a written copyright assignment from the author or his/her employer, such as the graphic design company or advertising agency.

It is best that this be done at the start of the engagement, when the business can exercise the maximum leverage over the author/employer.  If the author is not prepared to assign the copyright, the business can go elsewhere.

If there has not been a copyright assignment, the business can still use the copyright material for the purpose for which it was prepared.  However, problems can arise if the business wishes to use the material for a different purpose – for instance, instead of just using artwork on shopping bags, caps and T-shirts promoting the products, the business wants to use the artwork on a wide range of merchandise to be sold separately.  Without a copyright assignment or an agreement from the author to use the artwork in such a broad way, the business would need to go back to the author and ask for permission to do this – and possibly pay an additional fee.

The question of ownership of copyright often comes up when someone else is copying the logo or collateral of the business.  This may amount to a copyright infringement, which can be a useful claim for the business to be able to make to stop the infringing conduct.  However, unless the business owns the copyright (or at least has a written exclusive licence to use the copyright) the business cannot make this claim.  It is often at this time that a lawyer will suggest that the business try and get an assignment of the copyright.  However, this may not be so easy if there is no ongoing relationship with the author or the author is difficult to locate.  Alternatively, the author may be prepared to assign the copyright but only for a (sometimes substantial) fee.

I recommend that a business think about copyright ownership at the outset of commissioning artistic or literary works so that they can agree in writing on who owns the copyright.  This is best practice for businesses who understand that copyright is an important business asset.  I can draft a copyright assignment or amend a draft commissioning agreement to make sure that this asset is protected.  You can contact me here.

This information sheet provides general information only, and is not intended as legal advice specific to your circumstances.  Please seek the advice of a legal professional if you have any particular questions.

Liability limited by a scheme approved under Professional Standards Legislation

© Margaret Ryan, Melbourne, Australia, 2020