“You shall not pass” – summary judgment for Tolkien copyright infringement. And in other news…

Copyright – infringement of the Lord of the Rings “One Ring Inscription” – summary judgment.

After twelve years, in 1949, JRR Tolkien completed his book, The Lord of the Rings.  As Beach J observed, the book is set in a fantasy world called Middle-earth, and centres on the “One Ring” which has the power to rule all of Middle-earth.  Some of the characters in the book seek to retain, obtain or destroy this “apparently precious ring”.  The book explains that, on the One (precious) Ring was inscribed some text:

Aficionados and scholars of foreign languages alike will no doubt be aware that the inscription on the One Ring is in an invented language of JRR Tolkien called “Black Speech”.

The respondent sells jewellery through a website and on e-bay, through which he also offered to sell and sold at least 1,300 rings bearing the One Ring inscription.  Those websites depicted the rings with the inscription on them.  He promoted the impugned rings by reference to the name “Lord of the Rings” and the names “The Hobbit” and “Bilbo Baggins”.  His Honour explained for those that have been hiding in a non-Hobbit hole for the past 10 years, that “Hobbits are central characters in the Book and Bilbo Baggins (a hobbit) is an important character in the Book (and a related work by JRR Tolkien called The Hobbit)”.

War ensued.  The successor in title to JRR Tolkien of copyright in the book, Tolkien Estate Limited, commenced a proceeding for copyright infringement against the respondent and then sought summary judgment.  It asserted that the inscription was an original artistic work or an original literary work in which copyright subsists.  It would have been interesting to know whether the Court was of the view that text of an invented language could constitute a “literary work” but his Honour did not venture out on that path (or back again).

Unsurprisingly, Beach J held that the respondent had no reasonable prospect of defending the proceeding or any part of it.  Given the respondent’s past conduct (in failing to accede to letters of demand) and retaining stock of the, no doubt, precious rings, his Honour was of the view that an injunction was warranted, notwithstanding the respondent stating he no longer intended to sell the impugned rings and would abide by the Court’s ruling.  His Honour concluded that the respondent shall not pass the interlocutory stage of the proceeding, and ordered summary judgment accordingly.

And in other news:

• In a case concerning whether Century 21 Australia Pty Ltd had entered into a franchising agreement within the meaning of the Estate Agents Act 1980 (Vic), a question arose as to whether a registered trade mark, “CENTURY 21”, could be a “name” within the definition of “franchising agreement” in s 43(5) of that Act.  “Franchise agreement” is defined to mean “an agreement whereby an estate agent is authorized to carry on business under any name in consideration of any other person entitled to carry on business under that name receiving any consideration whether by way of a share in the profits of the estate agent’s business or otherwise”.  Ginnane J held that “a name which is a trade mark” can still be a name for the purposes of the definition because a trade mark can be used by a licensee of a trade mark “even if the licensee is not the registered owner and has not registered the name as a business name”:  Secretary to the Department of Justice & Regulation v Century 21 Australia Pty Ltd [2016] VSC 590.

• The first respondent’s name, Lucky Homes, proved to be something of a misnomer in a copyright infringement action against it by Henley Arch.  Henley Arch claimed that the respondents had infringed or authorised the infringement of its “Amalfi Avenue” house design by copying a substantial part of the floorplan in drawing up a floorplan for the third and fourth respondents (the Mistrys), and ultimately by building a three dimensional reproduction (that is, the house) of that two dimension work.  The Mistrys had progressed some way in engaging Henley Arch to have a modified version of the Amalfi design built for them, but instead engaged Lucky Homes and its managing director (the second respondent) to build their “dream home”.  To that end, the Mistrys handed over a copy of the initial Amalfi floorplan and communicated the changes to it that they wanted; the modified floorplan was then given to Lucky Homes’ third party draftsperson to prepare the final floorplan.  In the circumstances, it is unsurprising that Beach J rejected the Mistrys’ defence of innocent infringement, and awarded Henley Arch both compensatory and additional damages: Henley Arch Pty Ltd v Lucky Homes Pty Ltd [2016] FCA 1217.

• Vertical Leisure Limited describes itself as the international and Australian “market leader” in the manufacture of pole-dancing poles, including Vertical Leisure’s “X-Pole”.  It is the registered owner of the X-POLE mark and logo, and the owner of copyright in that logo and instructional videos on the proper use of the X-Pole.  It is also the beneficiary of an  injunction, granted in September 2014, against various parties preventing them from using Vertical Leisure’s intellectual property and from passing off those parties’ inferior (and potentially hazardous) poles as those of Vertical.   One of those parties created a new corporate trading vehicle, which from around October 2014 took over the infringing conduct.  Unsurprisingly, Vertical Leisure is now also the beneficiary of a further injunction against that respondent and his new company, with the prospect of damages (and contempt of court) determinations to follow: Vertical Leisure Limited v Auz Origin Pty Ltd [2016] FCCA 2372.