Warner Bros. Entertainment Inc. v Rex Dubai LLC - [2008] ATMO 78

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Opposition by Warner Bros. Entertainment Inc. to registration of trade mark application 1083324(43) - CENTRAL PERK & DEVICE - filed in the name of Rex Dubai LLC.

Delegate:

Michael Kirov

Representation:

Opponent: Spiro Pappas of Chrysiliou Law

Applicant: No appearance

Decision:

2008 ATMO 78

S.52 opposition-ground pursuant to s.42(b) established-registration refused

Background

This is an opposition brought by Warner Bros. Entertainment Inc. (“the Opponent”) pursuant to s.52 Trade Marks Act 1995 (“the Act”) to registration of the trade mark CENTRAL PERK & Device, subject of application number 1083324 in the name of Rex Dubai LLC (“the Applicant”).
Details of the opposed application are as follows:

Application Number: 1083324

Priority Date: 31 October 2005

Services:Class 43: Cafes; cafeterias; catering (food and drink); restaurants; restaurants (self service) snack bars; camp services (holiday); canteens; rental of chairs, tables, table linen, glassware; reservations (temporary accommodation) tourist homes; hotel reservations; hotels; houses (boarding); motels; rental of temporary accommodation

Trade Mark:

The Opponent filed its Notice of Opposition (“the Notice”) on 2 June 2006. It is a given that the Opponent bears the onus of establishing one or more grounds of opposition on the balance of probabilities[1].
[1] Registrar of Trade Marks v Woolworths Limited (1999) 45 IPR 411
The parties lodged Evidence in Support, Evidence in Answer and Evidence in Reply as set out below:

Evidence in Support

▪Statutory Declaration by Janet Kobrin made 10 April 2007, with Annexures JK-1 to JK-31

▪Statutory Declaration by Spiro Pappas made 1 May 2007, with Exhibit SP-1

Evidence in Answer

▪Statutory Declaration by Mojtaba Asadian made 15 October 2007

Evidence in Reply

▪Statutory Declaration by Janet Kobrin made 30 January 2008, with Exhibit JK-1

I mention that the Applicant also served and filed a Statutory Declaration by May Ling, Marilyn Lim made 31 October 2007, together with Exhibits MLL-1 and MLL-2 thereto, which was intended to form part of its Evidence in Answer. Both Exhibits were however in the French language and no translation was provided. After IP Australia raised this by telephone with Ms Lim, (who is the Applicant’s attorneys’ Practice Manager), Ms Lim advised by email on 8 November 2007 that the Applicant had instructed that her declaration be disregarded, adding “For further clarification, the Evidence in Answer should now only consist of the statutory declaration of Mr Mojtaba Asadian.” Although nothing turns on this, I note the Opponent was advised of this for the first time at the hearing itself.
The matter was heard before me as delegate of the Registrar of Trade Marks on 22 July 2008 in Sydney. Spiro Pappas of Chrysiliou Law appeared for the Opponent. The Applicant’s attorneys, Pipers Patent & Trade Mark Attorneys, advised IP Australia by fax on 16 July 2008 that the Applicant would not be represented at, nor be attending, the hearing. Nor did the Applicant file any written submissions it wished to be taken into account.

Grounds of Opposition

The Notice lists several grounds corresponding in the main to various provisions of the Act, in addition to a general request for exercise of the Registrar’s discretion in the Opponent’s favour. At the hearing itself Mr Pappas pressed the ground based upon s.42 of the Act only. In doing so Mr Pappas indicated this was being done for the sake of expediency in view of the perceived strength of the Opponent’s position under this ground and not because other grounds listed in the Notice were not supported by the evidence filed. The s.42 opposition ground only is accordingly discussed below. While I accept the Opponent’s evidence may well be sufficient to establish one or more of the further grounds listed in the Notice I have not considered any of these further grounds and, as a formal matter therefore, I mention those further grounds listed in the Notice are not established.

Discussion

The ground based on section 42 is indicated in the Notice as follows:
Use of the trade mark by the Applicant would be contrary to law. Accordingly, the registration of the Opposed Trade Mark must be refused pursuant to the provisions of Section 42 of the Act.
Section 42 of the Act is reproduced below:
42. An application for the registration of a trade mark must be rejected if:
(a) the trade mark contains or consists of scandalous matter; or
(b) its use would be contrary to law.
At the hearing Mr Pappas confirmed that the Opponent’s objection was based on s.42(b) only and in particular was that use of the opposed trade mark by the Applicant would be contrary to the Copyright Act 1968, contrary to the Trade Practices Act 1974 and would constitute the tort of passing off at common law. However, again for the sake of expediency in view of the perceived strength of the Opponent’s position under the Copyright Act 1968, Mr Pappas pressed the copyright issue only and limited his submissions accordingly. In this regard I accept the Opponent’s evidence may well be sufficient to establish its s.42(b) ground based on breach of the Trade Practices Act 1974 and/or based on the tort of passing off, but confirm I have not addressed these issues in this decision. I turn now specifically to the copyright issue.
Mr Pappas began his submissions by referring to the decision of Madgwick, J in Advantage Rent-a-Car Inc v Advantage Car Rental Pty Ltd (2001) 52 IPR 24 (“the Advantage case”) and several subsequent decisions made by IP Australia[2] In all of these cases it was held the opposed trade mark contained or consisted of matter whose copyright was owned by a party other than the trade mark applicant and the oppositions were upheld under s.42(b) of the Act once it was established the copyright owner had not authorized use of the copyright. Mr Pappas submitted that the facts in the current opposition were directly analogous to those in these earlier cases.
[2] Erbak-Uludag Mesrubatve Gida Sanayi Anonim Sirketi v Michael Rainbow and Yasar Yuksel (2002) 58 IPR 24; Body Tease Inc v D&Y International Trading Pty Ltd (2002) 56 IPR 543 and Hisense Corp v Zheng Shi (2005) 66 IPR 413
The relevant matters to be considered were succinctly summarized by Madgwick, J in paragraphs 16-20 of his judgement in the Advantage case:
[16] Section 32(1) of the Copyright Act provides that “copyright subsists in an original literary, dramatic, musical or artistic work that is unpublished and of which the author was a qualified person at the time when the work was made”. A qualified person is defined in s 32(4) as an Australian citizen, an Australian protected person or a person resident in Australia. However, s 184(1)(c) allows for the provisions of the Copyright Act to apply to persons who are citizens of another country in the same manner that they apply to persons who are Australian, by the making of regulations. Regulation 4 of the Copyright (International Protection) Regulations 1969 (Cth) does what is allowed by s 184(1)(c). Schedule 1, Pt 1 of the regulations lists the United States of America as one of the countries to whose citizens the protection of the Copyright Act applies.
[17] It was submitted by counsel for the applicant that the applicant's trade mark is an “artistic work”. An artistic work is defined in s 10(1)(a) of the Copyright Act to include a drawing whether it is of artistic quality or not. Although the applicant's trade mark is not what one would consider to be particularly artistic and uses common words, the authorities are clear that the threshold for what is an artistic work is low and, for copyright to subsist, the work does not need to be remarkably artistic: see Re Karo Step Trade Mark [1977] RPC 255 per Whitford J at 273; British Northrop Ltd v Texteam Blackburn Ltd [1974] RPC 57 per Megarry J at 68–9; Roland Corp v Lorenzo & Sons Pty Ltd (1991) 33 FCR 111 at 114 ; 22 IPR 245 at 249 per Pincus J.
[18] The next requirement for copyright to subsist in an artistic work is that the mark must be original. The concept of originality is also not a particularly rigorous one. What is required is that the creator of the work should not have copied it from some other work: see University of London Press Ltd v University Tutorial Press Ltd [1916] 2 Ch 601 at 608–10; (1916) 1B IPR 186 at 191, and Victoria Park Racing & Recreation Grounds Co Ltd v Taylor (1937) 58 CLR 479 at 511 ; 1A IPR 308 at 320 per Dixon J. The evidence of Ms Kich was that she alone created the applicant's trade mark as an original work.
[19] Although, in contested copyright cases in this court, whether or not a device such as the applicant's mark is in fact an artistic work and original could be debated, this is not such a case and there was no evidence presented to the court to contest the applicant's claim that its trade mark is an artistic work, or the evidence of Ms Kich as to her creation of the trade mark. Accordingly, I am prepared to accept that the applicant's trade mark is an artistic work and is original for the purposes of the Copyright Act and that, therefore, copyright subsists in the applicant's trade mark. Whether or not the owner of the copyright is the applicant, as a result of an oral agreement between the applicant and Kich & Company (the advertising company that designed the mark), as was said to be the case by Ms Kich in her evidence, or Kich & Company, is not an issue that needs to be determined in these proceedings. Whichever of those two entities owns the copyright, the evidence is that neither has licensed the respondent to use the work.
[20] Section 36 of the Copyright Act provides that the copyright in an artistic work is infringed if a person, who is not the owner of the copyright, does any act comprised in the copyright without the licence of the owner. Section 14 deems acts done in relation to a substantial part of the work to be done in relation to the whole of the work. Section 31(1)(b) provides that copyright in an artistic work gives the owner the exclusive right, among other things, to reproduce the work in a material form (subpara (i)) and to publish the work (subpara (ii)). In my opinion, on the evidence presented, the first respondent's mark is reproduction of a substantial part of the applicant's trade mark, namely the use of a white five point star cut into a dark mass so as to form a stylised block letter “A”, with the word “ADVANTAGE” in bold capitals directly beneath the “A”: see the judgment of Lehane J in Australian Home Loans (t/as Aussie Home Loans) v Phillips (1998) 40 IPR 392 where a rather less similar mark was held to be a reproduction. Furthermore, as counsel for the applicant correctly submits, use by the respondent of its trade mark would necessarily involve publishing it, which is the exclusive right of the copyright owner.
The relevant evidence supporting the Opponent’s case is contained in the Kobrin declaration of 10 April 2007 (“Kobrin 1”). Ms Kobrin is the Opponent’s Vice President and her evidence on the copyright issue, which I find to be cogent and well documented, is summarised in paragraphs 14 to 19 below.
The Opponent is the creator and producer of the popular television sitcom called “Friends”, which is one of the longest running sitcoms in television history and has been aired throughout the world since 1994. “Friends” has been broadcast in Australia continuously since August 1996 and rated “number one regular program for the year in 1998, 1999, 2000, 2001 and 2002” (Kobrin 1, paragraphs 2, 13 and 27).
One of the principal locations where scenes in the “Friends” sitcom regularly take place is a coffee shop named “Central Perk”, which was introduced in the very first episode of “Friends” in 1994. The logo of the coffee shop (“the CP Logo”), to which the opposed trade mark is identical, can be seen in most episodes of the “Friends” sitcom (Kobrin 1, paragraphs 4, 5 and 6). I note Kobrin 1 also includes many further documented examples of the Opponent’s use of the CP Logo during the period from 1994 to the date application 1083324 was filed on 31 October 2005. The Opponent had thus continuously used the CP Logo for some 11 years before the Applicant filed application 1083324.
The Opponent is the owner of the copyright in the CP Logo by virtue of an assignment from Warner Bros. Television Production (“WBTP”). WBTP is a division of Time Warner Entertainment Company, L.P. and, while nothing turns on this, I understand both of these entities are related to the Opponent. Although the date the assignment took place is not specified it is apparent from Exhibit JK-3 that the assignment was recorded on the United States Register of Copyrights on 19 July 2004 (Kobrin 1, paragraph 7).
Exhibit JK-3 to Kobrin 1 contains copies of two documents. The first is a copy of the “Certificate of Registration” of the CP Logo dated 19 July 2004 issued under the auspices of the United States Register of Copyrights. The Certificate states that the CP Logo was originally created in 1994 and that the Opponent was recorded as the registered claimant of the copyright in the United States as from 19 July 2004 under registered number VAu624-175. A copy of the CP Logo is attached to the Certificate and it appears to be identical to the opposed trade mark. The Certificate indicates the copyright was assigned to the Opponent by its “author”, being “Warner Bros. Television, a division of Time Warner Entertainment Company, L.P.”. (While not of direct relevance to my decision, I am presuming in light of the contents of the second document in Exhibit JK-3 that the reference to “Warner Bros. Television” was intended to refer to WBTP.)
The second document copied in Exhibit JK-3 is headed “ARTIST’S CERTIFICATE AND ASSIGNMENT---CENTRAL PERK COFFEE HOUSE LOGO---MICHAEL BRUZA”. In the document a person named Michael Bruza certifies he designed “the original Central Perk coffee house logo” and “the revised logo appearing on door stickers and chalkboard stickers for the Central Perk coffee house” (collectively “the Material”) pursuant to written agreements with WBTP dated 11 and 24 August 1994. Mr Bruza acknowledges he did so “at [WBTP]’s request during the course of [his] employment with or engagement by [WBTP]” and that “[WBTP] is and shall be the author of said work-made-for-hire and the exclusive owner of the Material and of all rights in and to the Material throughout the universe, in perpetuity and in all languages, for all uses, exploitation and media, now known or devised later, including, without limitation, the copyrights…”. To the extent the Material “is not recognized as a work-made-for-hire” such that authorship rights in it would automatically vest in WBTP Mr Bruza, in the alternative, formally assigns whatever rights he may have in the Material to WBTP. Mr Bruza executed the document on 26 April 1999 and it is countersigned by the then Senior Vice President and General Counsel of WBTP.
The Opponent has not authorized the Applicant to use the CP Logo (Kobrin 1, paragraph 36).
I accept, as Mr Pappas submitted, that the evidence detailed above does make out a strong case on the issue of copyright which demands a satisfactory response from the Applicant. In particular and in terms of Madgwick, J’s discussion in the Advantage case quoted earlier I am satisfied that:

the evidence indicates the Opponent’s related company and/or predecessor in title created, or caused to be created, the CP Logo in 1994;
the creator of the CP Logo was a “qualified person” as required by s.32(4) of the Copyright Act 1968 (“the CA”), bearing in mind the combined operation of ss. 32(4) and 184(1)(c) and (e) of the CA and of regulation 4 and Schedule 1, Part 1 of the Copyright (International Protection) Regulations 1969;
the CP Logo qualifies as an “artistic work” as defined in s.10 of the CA;
the CP Logo is “original” (in that there is no evidence before me suggesting Mr Bruza copied it from some other work) and thus copyright subsists in it pursuant to s.32(1) of the CA.

The Applicant’s response to the matters raised in Kobrin 1 is contained in the statutory declaration of Mojtaba Asadian, Chief Executive Officer of the Applicant, made 15 October 2007. As Mr Pappas highlighted in his submissions, however, Mr Asadian fails to address the copyright issue at all, other than to make the unsupported statement “The applicant is the owner of the trademark ‘Central Perk & Device’ in many countries…” (paragraph 4) and to make the curious observation that “The sitcom ‘FRIENDS’ has nothing to do with this case whether or not it is registered in copyright or used with respect to goods in any class other than class 43.” (paragraph 9). As noted by Mr Pappas Mr Asadian does not attempt to explain how the applicant came to “own” the opposed trade mark, nor to mention its creation. He does not dispute the Opponent’s evidence that the Opponent has used the CP Logo continuously since 1994 and he does not dispute the Opponent’s claim to the copyright, which he appears to believe is irrelevant to the opposition.
I note too that the earliest use of the opposed trade mark by or on behalf of the Applicant claimed in Mr Asadian’s declaration can only “be traced back to 1999”, when the Applicant apparently purported to license its use to an individual named Louis Perdrizat in Switzerland “for services relating to cafés”. While not relevant to my decision I note Mr Asadian does not provide any details or documentation concerning this or any other use by the Applicant.
In light of the evidence discussed above I have no hesitation in finding on the balance of probabilities that a party other than the Applicant owns the copyright in the opposed trade mark. Section 31(1) of the CA grants the owner of the copyright in an “artistic work” such as the opposed mark the “exclusive right” to, inter alia, “reproduce the work in a material form” and to “publish the work”. In this regard I consider that use of the opposed trade mark in the course of trade for any goods or services, including of course services in class 43, would necessarily involve “publication” of the trade mark as defined in s.29 of the CA. Indeed, the very filing of application 1083324 effectively amounts to publication on the face of it since, inter alia, s.30 of the Act (that is the Trade Marks Act 1995) requires the Registrar of Trade Marks to “publish particulars of the application in accordance with the regulations”. In practice, details of a newly filed application are generally available to the public within a matter of days.
There is no evidence before me that the copyright owner has authorized the Applicant’s use of the opposed trade mark; indeed, the evidence is to the contrary. In this regard s. 36(1) of the CA states that the copyright in an artistic work “is infringed by a person who, not being the owner of the copyright, and without the licence of the owner of the copyright, does in Australia, or authorizes the doing in Australia of, any act comprised in the copyright”.
I consider that the Applicant’s use of the opposed trade mark would on the face of it be in breach of s.36 of the CA and would thus be contrary to law. The Opponent has accordingly established its opposition based upon s.42(b) of the Act.

Decision

Section 55 of the Act provides:
Unless the proceedings are discontinued or dismissed, the Registrar
must, at the end, decide:
(a) to refuse to register the trade mark; or
(b) to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then
specified in the application;
having regard to the extent (if any) to which any ground on which the
application was opposed has been established.
Note: For limitations see section 6.
I have found the opposition to be successful on the ground raised pursuant to section 42(b) of the Act. I accordingly refuse to register trade mark application number 1083324.

Costs

Mr Pappas requested an award of costs in the Opponent’s favour. As the successful party, the Opponent is entitled to its costs and I accordingly award costs against the Applicant as per Schedule 8 of the Trade Marks Regulations 1995.

Michael Kirov

Hearing Officer

08 September 2008