The Polo/Lauren Company L.P. v Ziliani Holdings Pty Ltd

In the Federal Court of Australia, The Polo/Lauren Company L.P. initiated proceedings against Ziliani Holdings Pty Ltd, seeking to restrain the latter from importing and selling goods bearing a copyrighted polo player logo in Australia. The logo in question was created by Mr Torre in 1971 and assigned to Polo Ralph Lauren Corporation, which later transferred its interest in the logo to Polo/Lauren. Ziliani Holdings, under the direction of Mr Ziliani, sourced and imported clothing bearing the logo from the United States, intending to sell them at discounted prices in Australia.

The court was required to determine whether Polo/Lauren’s copyright in the polo player logo could be enforced to prevent Ziliani from importing and selling these goods. This involved interpreting the provisions of the Copyright Act, particularly section 44C, which deals with the use of copyrighted material as an accessory to an imported article. The central issue was whether the embroidered logo constituted a non-infringing accessory under the Act when attached to the imported clothing.

The court found that the embroidered polo player logo was indeed a non-infringing accessory, as it was embroidered onto the garments with the permission of the copyright owner in the country of manufacture. According to section 44C(1) and 44C(2) of the Act, such an accessory could be imported without the copyright owner’s consent. The court relied on the explanatory memorandum of the Copyright Act, which indicated that the amendments were intended to prevent exclusive market access through copyright in packaging or labelling. This interpretation aligned with the decision in Bailey 4 NSWLR 701, reinforcing the notion that the importation of goods with copyright material as an accessory does not constitute an infringement if the copyright owner had consented to its use.

Consequently, the court dismissed Polo/Lauren’s proceedings, ruling that the importation, sale, and offering for sale of the garments by Ziliani did not infringe the copyright in the polo player logo. The court ordered that the proceedings be dismissed with costs.