Tolkien Estate Limited v Saltalamacchia

Case [2016] FCA 944

FEDERAL COURT OF AUSTRALIA

Tolkien Estate Limited v Saltalamacchia [2016] FCA 944

File number(s): VID 347 of 2016
Judge(s): BEACH J
Date of judgment: 11 August 2016
Catchwords: COPYRIGHT – infringement – original literary work – original artistic work – application for summary judgment – whether any reasonable prospect of successfully defending – whether appropriate to grant permanent injunction
Legislation:

Copyright Act 1968 (Cth) ss 14, 31, 32, 36, 38, 115, 126, 127, 129, 184

Copyright (International Protection) Regulations 1969 (Cth) reg 4

Federal Court of Australia Act 1976 (Cth) s 31A

Federal Court Rules 2011 (Cth) r 26.01
Date of hearing: 11 August 2016
Registry: Victoria
Division: General Division
National Practice Area: Intellectual Property
Sub-area: Copyright and Industrial Designs
Number of paragraphs: 32
Counsel for the Applicant: Mr L Merrick
Solicitors for the Applicant: Corrs Chambers Westgarth
Counsel for the Respondent: The Respondent appeared in person (via telephone)

ORDERS

VID 347 of 2016
BETWEEN:

THE TOLKIEN ESTATE LIMITED

Applicant
AND:

ALEXANDER THOMAS SALTALAMACCHIA

Respondent

JUDGE:

BEACH J

DATE OF ORDER:

11 August 2016

THE COURT DECLARES THAT:

1.The respondent has infringed the applicant's copyright in the copyright work set out in the annexure to these orders (the One Ring Inscription) by:

(a)reproducing in material form the One Ring Inscription or a substantial part of it;

(b)communicating the One Ring Inscription or a substantial part of it to the public;

(c)selling rings bearing a reproduction of the One Ring Inscription or a substantial part thereof;

(d)offering or exposing for sale rings bearing a reproduction of the One Ring Inscription or a substantial part thereof;

(e)by way of trade exhibiting in public rings bearing a reproduction of the One Ring Inscription or a substantial part thereof,

including:

(f)on the websites located at the domain names and the website located at the domain name COURT ORDERS THAT:

2.The respondent be permanently restrained, whether by himself, his employees or agents or otherwise howsoever from, without the licence or authority of the applicant:

(a)reproducing in material form, or authorising any third party to reproduce in material form, the One Ring Inscription or a substantial part of it;

(b)communicating the One Ring Inscription or a substantial part of it to the public, or authorising any third party to do so;

(c)selling products bearing a reproduction of the One Ring Inscription or a substantial part thereof;

(d)offering or exposing for sale products bearing a reproduction of the One Ring Inscription or a substantial part thereof;

(e)by way of trade exhibiting in public products bearing a reproduction of the One Ring Inscription or a substantial part thereof,

including:

(f)on the websites located at the domain names and the website located at the domain name 14 days of the date of these orders, the respondent deliver up to the applicant or its duly authorised agent for destruction under supervision all goods in the possession, power, custody or control of the respondent (whether by himself, his employees or agents or otherwise howsoever) which reproduce the One Ring Inscription…

Continue reading Tolkien Estate Limited v Saltalamacchia

Sign in free to access the full text

Details
AGLC
Tolkien Estate Limited v Saltalamacchia [2016] FCA 944
Case
[2016] FCA 944
Decision Date

CaseChat Overview and Summary

The case of Tolkien Estate Limited v Saltalamacchia involves the Tolkien Estate Limited, the plaintiff, and the respondent, who has been accused of infringing the copyright of the One Ring Inscription, an original literary work. The plaintiff, as the owner of the copyright, brought the case to the Federal Court of Australia to seek relief from the respondent's alleged infringement. The plaintiff sought a declaration of copyright ownership, a permanent injunction against further infringement, delivery-up of infringing items, and either damages or an account of profits. The plaintiff also sought an order for the disclosure of information to facilitate the inquiry into pecuniary remedies and costs.

The primary legal issue before the court was whether the respondent's actions constituted copyright infringement under sections 36 and 38 of the Copyright Act. The court had to determine if the respondent had reproduced a substantial part of the One Ring Inscription or communicated it to the public without the plaintiff's authorisation. The court also had to assess if the respondent had a reasonable prospect of successfully defending the proceeding and if it was appropriate to grant the relief sought by the plaintiff.

The court found that the respondent had engaged in copyright infringement by reproducing and communicating a substantial part of the One Ring Inscription without the plaintiff's authorisation. The respondent's actions constituted an infringement of the plaintiff's copyright, as there was no real dispute about the respondent's conduct. The respondent did not provide any relevant or real defence to the allegations, leading the court to conclude that the respondent had no reasonable prospect of successfully defending the proceeding. The court granted summary judgment in favour of the plaintiff, finding that the relief sought was appropriate, given the respondent's ongoing infringing conduct and the lack of any real prospect of a successful defence.

The court made several orders, including a permanent injunction restraining the respondent from reproducing, communicating, selling, offering for sale, or exhibiting products bearing a reproduction of the One Ring Inscription. The respondent was also ordered to deliver up all infringing goods and documents to the plaintiff for destruction. The court gave the plaintiff the option to elect either damages or an account of profits for the infringements. Finally, the respondent was ordered to pay the plaintiff's costs of the proceeding and to provide detailed information regarding the sale and purchase of the infringing products.

Orders

Orders of the court

2. The respondent be permanently restrained, whether by himself, his employees or agents or otherwise howsoever from, without the licence or authority of the applicant:

(a) reproducing in material form, or authorising any third party to reproduce in material form, the One Ring Inscription or a substantial part of it;

(b) communicating the One Ring Inscription or a substantial part of it to the public, or authorising any third party to do so;

(c) selling products bearing a reproduction of the One Ring Inscription or a substantial part thereof;

(d) offering or exposing for sale products bearing a reproduction of the One Ring Inscription or a substantial part thereof;

(e) by way of trade exhibiting in public products bearing a reproduction of the One Ring Inscription or a substantial part thereof,

including:

(f) on the websites located at the domain names www.ebay.com.au, www.ebay.co.uk and www.ebay.com;

(g) on the website located at the domain name www.australianjewellerysales.com.

3. Within 14 days of the date of these orders, the respondent deliver up to the applicant or its duly authorised agent for destruction under supervision all goods in the possession, power, custody or control of the respondent (whether by himself, his employees or agents or otherwise howsoever) which reproduce the One Ring Inscription or a substantial part thereof.

4. Within 14 days of the date of these orders, the respondent deliver up to the applicant or its duly authorised agent for destruction under supervision all catalogues, price lists, brochures and other documents and materials (including materials which are or which are capable of being stored, generated or transmitted via any electronic media) in the possession, power, custody or control of the respondent (whether by himself, his employees or agents or otherwise howsoever) which reproduce the One Ring Inscription or a substantial part thereof.

5. At the applicant's election, the respondent pay to the applicant:

(a) damages, and additional damages if the Court subsequently thinks fit, for infringement of the copyright in the One Ring Inscription, to be assessed together with interest thereon; or

(b) an account of profits made by the respondent by the said infringements, to be assessed together with interest thereon.

6. Within 14 days of the date of this order, the respondent file and serve a statement setting out the following information and annexing any supporting purchase orders, invoices, receipts or like sales documentation:

(a) the number of products bearing the One Ring Inscription which have been purchased or acquired by him or on his behalf;

(b) the purchase price of each item referred to in sub-paragraph (a);

(c) the identity of the vendor of each item referred to in sub-paragraph (a);

(d) a list setting out details of each product bearing the One Ring Inscription sold or disposed of by him or on his behalf including (in the case of each item):

(i) the product description;

(ii) the date of sale;

(iii) the specific website or other medium through which the product was sold; and

(iv) the sale price.

7. The respondent pay the applicant's costs of the proceeding to date forthwith, to be taxed in default of agreement.

8. The further hearing of the proceeding be adjourned for directions to 7 October 2016 at 9.30am.

Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

ANNEXURE – ONE RING INSCRIPTION

Background

Background to the litigation

Full text does not contain this section.

Evidence

Evidence Before The Court

Full text does not contain this section.

Decision

Reasons for decision

The respondent has submitted that the impugned rings do not exactly replicate the One Ring Inscription. It appeared to me that the respondent was under the misapprehension that the applicants were concerned about his conduct because the inscription of the impugned rings had a “gap” and was not an exact replica of the One Ring Inscription. Regardless, the respondent’s conduct constituted copyright infringement by the fact that he has and continues to reproduce a substantial part of the One Ring Inscription and/or communicate a substantial part of the One Ring Inspection to the public without the licence or authority of the applicant.SUMMARY JUDGMENT In my view, it is appropriate to grant summary judgment against the respondent. He has no reasonable prospect of defending the proceeding (or part of it). The principles applicable to the grant of summary judgment are the following:(a)The Court must assess the strength of the allegations made by reference to the pleadings, the affidavits and any other evidence adduced.(b)The applicant bears the onus of demonstrating that the respondent has no reasonable prospect of successfully defending the proceeding. However, if the applicant establishes a prima facie case for summary judgment, the respondent must identify factual or evidentiary matters which necessitate a trial. The respondent has not done so in the present case.(c)In order to have reasonable prospects of success, the respondent must have prospects of success that are “real” and not “fanciful” or even “merely arguable”. In my view, the Court should grant summary judgment. The applicant has established that it is the owner of copyright in the One Ring Inscription. Moreover, there is no real dispute that the respondent has engaged in the impugned conduct described above, which involves unauthorised use of the applicant's copyright work in contravention of both ss 36 and 38 of the Copyright Act. The respondent has not put forward any relevant and real defence to the allegations of copyright infringement. It follows that the respondent has no reasonable prospect of successfully defending the liability aspects of the proceeding. The applicant has sought a declaration, a permanent injunction, orders for delivery-up, an order for damages or (at the applicant’s election) an account of profits, and an order requiring the disclosure of information to facilitate the inquiry as to pecuniary remedies and costs. The declaration proposed by the applicant accurately identifies the infringing conduct of the respondent. As to injunctive relief, section 115 of the Copyright Act identifies injunctions as one of the forms of relief that the Court may grant in infringement proceedings. Permanent injunctions are the conventional remedy in cases involving the infringement of intellectual property rights and an on-going threat of infringement. Usually, the form of the injunction restrains the respondent from infringing the intellectual property generally, and not merely from repeating the particular example of infringing conduct which was the subject of the evidence. The applicant’s proposed injunction is appropriate for the following reasons:(a)The applicant initially made demands of the respondent through letters sent by its UK solicitors. Those letters of demand were sent by email, the first on 11 February 2016. Such letters placed the respondent on notice that the applicant owned the copyright in the One Ring Inscription and that the applicant considered the respondent’s dealings with the impugned rings to be an infringement of that copyright. Those letters went unanswered.(b)On or about 24 March 2016, the applicant’s Australian lawyers sent a pre-action letter of demand to the respondent, but they did not receive any response. The present proceeding was then commenced on 21 April 2016.(c)Notwithstanding the demands made on behalf of the applicant by both its UK and Australian lawyers, the respondent has not offered any undertaking to cease the impugned conduct. Further, the respondent’s impugned conduct has continued for months after the commencement of this proceeding.(d)The respondent has admitted that he has further stock of the impugned rings on hand which he wishes to retain.(e)Taken together, such matters warrant the grant of the injunction sought.

Ratio Decidendi

Legal Principle Established

Full text does not contain this section.