Copyright Held to be ‘Precious’

//Copyright Held to be ‘Precious’

Copyright owners will welcome the recent decision of the Federal Court in Tolkien Estate Limited v Saltalamacchia [2016] FCA 944, where the estate of famous author J. R. R. Tolkien was awarded a smorgasbord of remedies for infringement of its copyright.

Copyright generally

Copyright is a statutory right under the Copyright Act 1968 (Cth) (‘the Act’) that protects certain forms of creative output, including the expression of ideas or information. Unlike patents or trade marks, copyright arises automatically; there is no requirement for any formal registration.

The bundle of rights that you receive under the Act depends on the type of copyright material that you own, whether that be art, literature, music, film, broadcasts, computer programs and the like.

Background to the case

In 1937 J. R. R. Tolkien released his fantasy novel named The Lord of the Rings. Set in a fictional world named “Middle-earth”, the novel is centred on the “One Ring”, a weapon that could be used to conquer and rule all of Middle-earth. As depicted below, the One Ring is inscribed with a language that was created by JRR Tolkien and known as “Black Speech”.

ONERING(‘the One Ring Inscription’)

Until the Federal Court handed down its judgment in August this year, the Respondent had been using several online platforms to sell gold rings bearing the One Ring Inscription.

Accordingly, Tolkien Estate Limited (‘the Estate’), the successor in title to J. R. R. Tolkien, brought an action against Alexander Saltalamacchia (‘the Respondent’) for infringing its copyright in One Ring Inscription.

The proceeding

In February and March this year the Estate issued several letters to the Respondent demanding that he stop selling the rings. After receiving no response to the letters, the Estate commenced proceedings.

At trial the Estate sought summary judgement on the basis that the Respondent had no reasonable prospect of successfully defending the proceeding. Justice Beach agreed with the Estate and found that the evidence (as summarised above) clearly demonstrated that the Respondent had infringed the Estate’s copyright.

It was undisputed that the Book is a literary or artistic work for the purposes of the Act, so the Court only had to consider the extent of the infringing conduct and the remedies that should be awarded to the Estate.

The Respondent argued that the inscription on his rings were not an exact replica of the One Ring Inscription because of a gap in the lettering. Justice Beach rejected this, noting that the law only requires the plaintiff to prove that the Respondent has reproduced a substantial part of its copyright.

Orders made

Justice Beach held that the Respondent infringed the Estate’s copyright by:

  1. Reproducing a substantial part of the One Ring Inscription;
  2. Selling rings bearing a reproduction of a substantial part of the One Ring Inscription;
  3. Offering for sale rings bearing a reproduction of a substantial part of the One Ring Inscription;
  4. Communicating a substantial part of the One Ring Inscription to the public; and
  5. Exhibiting by way of trade rings bearing a reproduction of a substantial part of the One Ring Inscription on www.ebay.com.au , www.ebay.co.uk, www.ebay.com and www.australianjewellerysales.com.

 
Accordingly, the Respondent was ordered to:

  1. Be permanently restrained from infringing the Estate’s copyright;
  2. Deliver up all material in his possession that infringed the Estate’s copyright;
  3. Pay damages or an account of profits to the Estate in an amount to be determined;
  4. Disclose all essential details relating to the sale of the infringing rings; and
  5. Pay the Estate’s costs in the proceeding.

 
 Importance of the case

This case serves as a cautionary tale: the Respondent did not obtain from the Estate the consent or licence to use the One Ring Inscription, nor did he respond to infringement notices issued by the Estate.

Significant amounts of time and effort are invested in the creation of copyright material and it represents a valuable commodity to individuals and businesses. Accordingly, copyright owners can and will go to great lengths to enforce their intellectual property rights and seek a broad range of remedies where there is evidence of infringement.

Pointon Partners has extensive experience in copyright law and can assist with the protection, assignment, sale and licensing of copyright.

If you have any queries regarding copyright law or intellectual property more generally then please contact David Mazzeo or Lachlan Chisholm of our office on (03) 9614 7707.

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2018-08-08T16:59:43+00:00December 12th, 2016|Categories: Intellectual Property|