On 11 August 2016, the Federal Court of Australia made summary orders in favour of the Estate of JRR Tolkien, author of The Lord of the Rings trilogy and The Hobbit, in Tolkien Estate Limited v Saltalamacchia  FCA 944.
Tolkien’s estate sought summary judgement against Melbourne jewellery retailer Alexander Thomas Saltalamacchia for copyright infringement. Saltalamacchia had sold rings on eBay and his own website bearing the well-known inscription from the ‘One Ring’ featured in the famous book series.
For those who (heaven forbid) are unfamiliar with the famous book series, his Honour Justice Beach summarised the storyline in two concise sentences:
‘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.’
In the series, the ‘One Ring’ is inscribed with three sentences written in the fictional ‘Black Speech’, created by JRR Tolkien (the One Ring Inscription).
The Court’s judgement included the following image of the inscription –
In the books, when the ring was heated with fire it would reveal the above inscription, which translated into English reads, ‘One ring to rule them all, one ring to find them, one ring to bring them all and in the darkness bind them’.
An Artistic Work?
Tolkien’s estate argued that Black Speech was either an original artistic or original literary work in which copyright subsisted, under sections 32(2) and 184 of the Copyright Act 1968 (Cth) (the Copyright Act). The Court did not decide on whether Black Speech was either of these. However, Justice Beach concluded the One Ring Inscription was an artistic work.
Section 10 of the Copyright Act defines an artistic work to include, ‘a painting, sculpture, drawing, engraving or photograph, whether the work is of artistic quality or not’.
A Literary Work?
It would have been interesting to have the benefit of the Court’s view on whether a fictional language such as Black Speech can be classified as a ‘literary work’. Section 10 of the Copyright Act defines this as including ‘a table, or compilation, expressed in words, figures or symbols’.
In Computer Edge Pty Ltd v Apple Computer Inc (1986) 161 CLR 171, the High Court said it is well settled that copyright exists in the particular form of expression in which ideas or information is conveyed. The Court concerning source code for computer programs noted that a literary work “need not be expressed in ordinary language”.
The Court also cited Hollinrake v Truswell  3 Ch 420, which courts still commonly cite today, stating that literary works are creations intended to afford either “information or instruction, or pleasure, in the form of literary enjoyment”.
This would suggest that a fictional language created within a novel may be a literary work in its own right. If it were, other fictional languages such as Klingon from Star Trek, or Dothraki from Game of Thrones, may also attract copyright protection.
To be afforded copyright protection, the work must satisfy the requirement of ‘originality’. As the High Court noted in IceTV v Nine Network Australia  HCA 14, this requires the work to be the author’s original, and not merely a copy of another work.
Presumptions as to Ownership of Copyright
Numerous presumptions exist under the Copyright Act relating to the existence, ownership and authorship of copyright – the Tolkien Estate raised three. These can be summarised as follows:
- Ownership and Existence: Section 126 of the Copyright Act states that if a defendant does not raise the issues of existence and ownership of copyright, then it is presumed copyright exists in the work and the person bringing the claim is the owner.
- Authorship: Unless proved otherwise, section 127 of the Copyright Act provides that a person is presumed to be the author of a work where their name or the name by which they are commonly known appears on their work.
- Author that has died: Where the author has died, Section 129 provides that a work is presumed to be an original work unless otherwise established.
In Tolkien Estate, the respondent (Saltalamacchia), didn’t file any evidence and did not provide a defence to any of the points above. Tolkien’s Estate presented sufficient evidence to prove copyright subsisted in the One Ring Inscription. JRR Tolkien’s name was printed on the books, and the One Ring Inscription appeared in Volume 1, Book 1, Chapter 2 of the Book. The Tolkien Estate Ltd, being the successor in title to the author, was the owner of the copyright in the Book.
Copyright Infringement Under the Copyright Act
Copyright in artistic works involves the exclusive right to reproduce, publish and communicate the work to the public (s31). Section 36 of the Copyright Act describes copyright infringement which occurs where a person, who is not the copyright owner, does an act comprised in the copyright of that work (for example reproducing a photograph by printing it onto a t-shirt). The respondent in Tolkien Estate had replicated a “substantial part” of the One Ring Inscription which is all that the Copyright Act requires.
Section 38 states that infringement also occurs where a person, without a licence, sells an item, and they knew or ought reasonably to have known that making the item would amount to copyright infringement.
In the Tolkien Estate case, Justice Beach held the respondent ought to have known he would be infringing a copyright protected work, due to the fact the books are well known, and he promoted the rings by reference to the books and characters. The respondent had also been placed on notice of the copyright infringement well before the proceedings were initiated, and had ignored two letters of demand.
The Federal Court of Australia Act 1976 gives the Court power to give judgement for the party bringing the claim if satisfied the other party has no reasonable prospect of successfully defending the proceedings (section 31A). After concluding the copyright infringement had been established, the Court concluded the respondent had no reasonable prospect of defending the proceeding. There was no dispute over the alleged conduct, and the respondent had not provided any relevant defence.
What Did the Court Order?
The Court ordered an injunction prohibiting the respondent from any further copyright infringement, and damages or an account of profits to be assessed at a later date. The Court also made an order for the respondent to deliver up the infringing goods to be destroyed. However, due to the fact the rings were only replicas, the respondent was not ordered to venture into Mordor to ensure their destruction.
Although this article made many points, there is really only one appropriate conclusion: “There is only one Lord of the Ring, only one who can bend it to his will. And he does not share power.”
Unless you sign a Licence Agreement and pay licence fees, that is.
Questions? Get in touch with our IP lawyers on 1300 544 755