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 a descriptive trade mark the best mark for your business?

Businesses often choose a trade mark that exactly describes their business or product eg Smith & Co Plumbing, being the plumbing business run by Mr Smith.  There is nothing wrong with this.  The name is easy to remember and easily searchable.  If the business is likely to remain a small, family owned business that will never take legal action against anyone else with a similar name, it is a perfectly satisfactory name.

However, if the business has ambitions to grow and may wish to stake out its territory against similar businesses, a descriptive mark is perhaps not such a good idea.  This is because names that are descriptive (Plumbing) as well as names that include common surnames (Smith) are generally not registrable as trade marks before the Trade Marks Office.  Even if they do achieve registration (eg because of long and extensive use eg McDonalds) the registration may provide only limited protection against a business with a similar name because small differences may be sufficient to distinguish the two businesses.  The reason is that, as a matter of policy, trade marks law does not allow businesses to monopolise common names and words that other traders are likely to want to use as trade marks.

I acted in a trade mark opposition against an application for the logo mark: for non-alcoholic drinks.  Although the application was accepted by the Trade Marks Examiner, the decision was overturned because the word “ICY” was a synonym of the word “cold” and so descriptive of a cold drink.  The word could not work as a trade mark because other traders would want to use the mark or something similar for cold drinks.

Similar difficulties apply to descriptive words used as trade marks even if they are not registered.  The Sydney Building Information Centre Ltd tried to stop another company, Hornsby Building Information Centre Pty. Ltd., from using its name.  Customers were confused about whether the two were connected.  However, the High Court held that the problem arose not because of any misleading conduct by the Hornsby Centre, but because the Sydney Centre had chosen such a descriptive name in the first place.

The best trade mark is a mark that has an indirect reference to the business/goods or services but is sufficiently clever/vague that it does not directly describe them eg TUB HAPPY for washable clothes.

I can provide advice on the registrability of a proposed trade mark or the invalidity of a registered trade mark. https://ipbymargaret.com.au/contact/

 

This post 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 Curious Case of Pinnacle and the Bikinis

Facts
The case of Pinnacle Runway Pty Ltd v Triangl Limited [2019] FCA 1662 (10 October 2019) considered whether Pinnacle’s trade mark DELPHINE, which was registered in class 25 for clothing, headwear and swimwear, was infringed by use of the word DELPHINE as a style of one of Triangl’s bikinis. 

Triangl sold a range of approximately 35 styles of bikini over the Internet.  These were all displayed on a page of its website when the “View All” button was clicked.  Each bikini would appear above the style name for that bikini. One of these styles was called DELPHINE.  Clicking on the “New Arrivals” button of Triangl’s website would take a consumer to a selection of four new bikini styles – PALOMA, LOTTE, BIBI and DELPHINE.  

Triangl’s DELPHINE bikini was sold in three colour/pattern variants – FIORE, FIORE ROSA and FIORE NERO.  One internal page of its website showed all three variants with the words DELPHINE FIORE, DELPHINE FIORE ROSA and DELPHINE FIORE NERO in small writing.  Clicking on the DELPHINE FIORE ROSA bikini image displayed the following internal page.

Triangl also sent direct email communications to three persons who had signed up on its website.  These communications included the following image:

Pinnacle claimed that these uses of the word DELPHINE infringed its trade mark registration.

Evidence showed that, within the women’s fashion industry, style names, which were frequently female names, were used as product names because this was more convenient than using a number or code.

Decision
Justice Murphy held that there was no trade mark infringement of Pinnacle’s mark because Triangl had not used DELPHINE as a trade mark.

Reasoning
The Pinnacle case is a demonstration of the principle that, for trade mark infringement, context is all-important.[1]  At first blush, the way the word DELPHINE is used in the two images above looks like use as a trade mark.  It is not used as a description.  It is capitalised and prominent.

Pinnacle’s marketing evidence referred to TOYOTA which has sub-brands such as YARIS, COROLLA and RAV4.    A consumer may refer to any of these without using the corporate brand name TOYOTA.  However, the Judge considered that the situation was different in the fashion industry, where many hundreds of products are named after women’s names.  There was also evidence that consumers do not remember fashion style names and only remember the head brand.   A similar situation arises for different colours of paints and different styles of carpets and other floor coverings. 

Justice Murphy held that consumers were likely to scroll through Triangl’s numerous bikini styles on its website, showing their different style names, and understand that Triangl offered a range of bikini styles, each with a name, including DELPHINE, but that TRIANGL was the source of the bikinis.  His Honour rejected the argument that DELPHINE and the rest of the 35 names were sub-brands like YARIS, COROLLA and RAV4. 

Justice Murphy commented that, in Triangl’s marketing, the word DELPHINE was never used without the brand TRIANGL.  Normally this would not assist a defendant as it is well established that use of an infringing mark as a trade mark in conjunction with the defendant’s trading name does not avoid infringement.  (This can, however, be relevant to the separate action for passing off.[2])

However, the critical issue was whether DELPHINE was used as a trade mark.  Section 17 of the Trade Marks Act 1995 (Cth) provides:

 A trade mark is a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person.

His Honour considered that Triangl did not use DELPHINE as a trade mark, or badge of origin, to distinguish Triangl’s bikinis from the bikinis of other traders, but rather to differentiate between products within the Triangl brand. 

Use as a trade mark
“Use as a trade mark” is probably the most difficult concept in trade mark law.  It is hard to explain to a client how a word exactly the same as the registered trade mark that appears in relation to goods exactly covered by the registration (as was the case here) does not infringe a mark.[3]

All cases turn on their own facts.   The manner of use of the allegedly infringing mark in its context must be analysed carefully. Is it used to show that goods or services come from a particular source, even if the source is not known, or is it used for some other purpose, such as a description or, as here, as a code to identify a style?  The distinction recognised by Justice Murphy between a style and a trade mark can be difficult to draw and Pinnacle has appealed this decision.  The Full Court decision will be very interesting if the matter proceeds to a hearing. 

I can advise on questions of trade mark infringement and send a cease and desist letter to someone infringing your mark, as well as helping you out of a tight spot if you have received such a letter.  You can contact me here.

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

Liability limited by a scheme approved under Professional Standards Legislation

© Margaret Ryan, Melbourne, Australia, 2020


[1] Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407 (26 July 1963) Kitto J [4].

[2] Saville Perfumery Ltd v June Perfect Ltd (1941) 58 RPC 147.

[3] See for example Re Johnson and Johnson Australia Pty Limited v Sterling Pharmaceuticals Pty Limited [1991] FCA 310 (the CAPLETS case).

Is a descriptive trade mark the best for your business?

Businesses often choose a trade mark that exactly describes their business or product eg Smith & Co Plumbing, being the plumbing business run by Mr Smith.  There is nothing wrong with this.  The name is easy to remember and easily searchable.  If the business is likely to remain a small, family owned business that will never take legal action against anyone else with a similar name, it is a perfectly satisfactory name.

However, if the business has ambitions to grow and may wish to stake out its territory against similar businesses, a descriptive mark is perhaps not such a good idea.  This is because names that are descriptive (Plumbing) as well as names that include common surnames (Smith) are generally not registrable as trade marks before the Trade Marks Office.  Even if they do achieve registration (eg because of long and extensive use eg McDonalds) the registration may provide only limited protection against a business with a similar name because small differences may be sufficient to distinguish the two businesses.  The reason is that, as a matter of policy, trade marks law does not allow businesses to monopolise common names and words that other traders are likely to want to use as trade marks.

I acted in a trade mark opposition against an application for the logo mark: for non-alcoholic drinks.  Although the application was accepted by the Trade Marks Examiner, the decision was overturned because the word “ICY” was a synonym of the word “cold” and so descriptive of a cold drink.  The word could not work as a trade mark because other traders would want to use the mark or something similar for cold drinks.

Similar difficulties apply to descriptive words used as trade marks even if they are not registered.  The Sydney Building Information Centre Ltd tried to stop another company, Hornsby Building Information Centre Pty. Ltd., from using its name.  Customers were confused about whether the two were connected.  However, the High Court held that the problem arose not because of any misleading conduct by the Hornsby Centre, but because the Sydney Centre had chosen such a descriptive name in the first place.

The best trade mark is a mark that has an indirect reference to the business/goods or services but is sufficiently clever/vague that it does not directly describe them eg TUB HAPPY for washable clothes.

Please contact me here if you need advice on the registrability of a proposed trade mark or the invalidity of a registered trade mark.

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, 2019