On 11 August 2016 the Federal Court of Australia granted a summary judgement in Tolkien Estate Limited v Saltalamacchia  FCA 944. The Tolkien Estate brought the case against Mr Alexander Thomas Saltalamacchia. We explain the Court’s orders below and their findings on copyright infringement.
What Was the Problem?
Tolkien Estate (the Applicant) applied for summary judgement (i.e. without a full trial) against Mr Saltalmacchia (the Respondent) as they believed the Respondent had no reasonable prospect of defending the allegations of copyright infringement. The background facts of the case are outlined as follows.
Between 1937 and 1949, Mr John Ronald Reuel Tolkien wrote the original literary work “The Lord of the Rings” (the Book). The Judge noted the Book centres on the powerful “One Ring” whereby some of the characters seek to obtain or destroy “this apparently precious ring”. The inscription on the One Ring (the One Ring Inscription) is written in “Black Speech”, a fictional language created by Tolkien as the primary tongue spoken in Mordor. The One Ring Inscription is in the Elvish script or alphabet known as Tengwar, also created by Tolkien. The applicant alleged that the language and alphabet used for the One Ring Inscription were either an original artistic work or a literary work in which copyright subsists. While the Court did not consider that copyright subsists in the languages created by Tolkien, it did establish that the One Ring Inscription was iconic and therefore an artistic work that attracted copyright protection.
Ownership of the Material
Since 10 November 2011, the Applicant had been incorporated in the United Kingdom and registered as the owner of legal rights to the Book and One Ring Inscription. Relevantly, the United Kingdom was a signatory to the Berne Convention for the Protection of Literary and Artistic Works (Berne Convention) at the time Tolkien created the One Ring Inscription (See sections 32(2) and 184 of the Copyright Act 1968 (Cth); and regulation 4 of the Copyright (International Protection) Regulations 1969 (Cth)). Tolkien’s Estate is therefore in possession of the copyright in the book and the One Ring Inscription in the UK and in all countries that have signed the Berne Convention, which includes Australia.
The Infringement Issues
The Respondent hosts a website called “Australian Jewellery Sales”. Over the course of eight years, the Respondent sold approximately 1300 rings with the One Ring Inscription between $5 and $30 AUD each. He advertised the rings by referencing phrases such as: “The Lord of the Rings”; “The Hobbit”; and “Bilbo Baggins”.
The Respondent has about 50 remaining rings with the One Ring Inscription left. Right up until the date of the proceedings he continued to offer them for sale. The Respondent argued his rings did not accurately replicate the One Ring Inscription. It is important to note, here, that reproduction of copyright work does not need to be exact. The infringement must be a “substantial part”.
What Was the Outcome?
Infringement by Doing Acts Comprised in the Copyright
The Court declared the Respondent reproduced the One Ring Inscription, or at least a substantial part of it, to the public, without licence or consent from the Applicant, in breach of sections 14, 31 and 36 of the Copyright Act 1968 (Cth).
Infringement by Sale and Other Dealings
The Court declared the Respondent infringed the Applicant’s copyright by offering and advertising rings with the One Ring Inscription for sale, in breach of sections 14, 31 and 38 of the Copyright Act 1968 (Cth).
The Respondent was found to have reasonably known that the One Ring Inscription would be protected by copyright. The point was supported because of the way the Respondent advertised the ring (as set out above) and because he was first put on notice by the Applicant on 11 February 2016.
What Were the Court’s Orders?
The Court declared the following orders:
1. The Respondent is permanently restrained from:
- Reproducing the One Ring Inscription or the substantial part of it;
- Communicating the One Ring Inscription to the public;
- Selling the products that bear the One Ring Inscription;
- Offering to sell products bearing the One Ring Inscription; and
- Exhibiting for trade products bearing a One Ring Inscription on relevant websites (i.e. eBay and australianjewellerysales.com).
2. Within 14 days of the orders, the Respondent must deliver:
- The remaining rings to the Applicant for destruction;
- All catalogues, price lists, brochures and other materials that reproduce the One Ring Inscription to the Applicant for destruction.
3. The Applicant has the option to elect that the Respondent pay the Applicant the damages for infringements; or an account of profits made by the Respondent.
4. Within 14 days of the order, the Respondent produce all relevant invoices, receipts and sales documents.
5. The Respondent pay the Applicant’s costs of the proceedings
This case shows the importance of receiving all relevant consents and licences from copyright owners when looking to use their literary or artistic works. Further, if you have been given notice that you are infringing someone’s rights, you must respond promptly and appropriately, and not ignore the issue. Otherwise, you put your products and yourself at risk.
Like the One Ring, copyright is precious, and people will go to great lengths to protect it. If you are a copyright owner, take surveillance tips from the Eye of Sauron and be as vigilant as you can with monitoring any unlawful use of your copyright. If you are using someone else’s work, ensure you have permission and are not breaching anyone else’s rights, so as to avoid an encounter with the fires of Mount Doom (a.k.a IP Australia).
Questions? Get in touch with our intellectual property lawyers on 1300 544 755.
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