With the 2016 Rio Olympic Games underway, many have been caught up in the hype and excitement of the world’s biggest sporting event. However, Telstra’s Olympic fever landed them in Federal Court with the Australian Olympic Committee (‘AOC’), which alleged Telstra had engaged in ambush marketing in its recent ‘Go To Rio’ campaign and associated promotions.
The dispute centred largely around one television advertisement which featured the protected expressions ‘Olympics’ and ‘Olympic Games’, describing the telco as the “official technology partner of Seven’s Olympic Games coverage”, and was generally themed around the upcoming Games. After the AOC initially expressed concern, Telstra amended the advertisement to include a text disclaimer that they were not an “official Olympic sponsor”. Despite this, the AOC still sought to stop the campaign from running, contending that it contravened section 36 of the Olympic Insignia Protection Act 1987 (Cth) (‘the Act’) which protects the commercial use of Olympic properties, and also amounted to misleading and deceptive conduct, or conveyed a false misleading representation, under section 18 and section 29 respectively of the Australian Consumer Law (‘ACL’).
The court ultimately found that Telstra’s campaign merely demonstrated their sponsorship arrangement with Seven, who is the official broadcaster for the 2016 Rio Olympic Games, and was not in contravention of the Act or the Australian Consumer Law.
The Olympic Insignia Protection Claim
Under section 36 of the Act, in order to use protected Olympic expressions for commercial purposes, a licence must be granted from the AOC. There was no question that Telstra had in fact applied protected Olympic expressions without a valid licence; the crux of the dispute was whether Telstra’s promotions and advertisements amounted to commercial use. Under section 30 of the Act, commercial use would be made out if Telstra’s advertisements and related promotions would suggest to a reasonable person that Telstra was a sponsor of, or provided sponsorship-like support, to bodies or individuals associated with the Rio Olympic Games.
Relevantly, when considering Telstra’s television advertisement, the court took into account that while the Olympic Games provided the underlying theme or story of the advertisement, the advertisement itself made no express mention or reference to the International Olympic Committee (‘IOC’), the AOC or any Australian Olympic athletes, let alone express reference to a sponsorship arrangement between Telstra and any of these bodies. It was also relevant to the court’s decision that the advertisement did not feature other protected assets such as the five ring symbol or the torch.
Ultimately, the court determined the critical question was whether the advertisement made it sufficiently clear that Telstra’s sponsorship-like arrangement was with Seven, and not any Olympic body. The court decided that while the original advertisement was “borderline”, on the balance of probabilities, the revised advertisement did not “cross the line” to suggest to a reasonable person that Telstra was a sponsor of the Olympics or any Olympic body, but rather sufficiently conveyed the commercial arrangement between Telstra and Seven.
Australian Consumer Law Claim
In regards to the AOC’s claim for a false or misleading representation, and misleading and deceptive conduct, the court considered firstly that the viewership of the television advertisement was likely to be “very broad and wide-ranging” and the advertisement itself was inherently transient in nature. Furthermore, it was likely that the viewer would only take in the main message or theme of the advertisement, observing it casually and subject to distraction.
Secondly, the court found the key question for determining whether Telstra’s marketing efforts amounted to a false or misleading representation was whether they conveyed, or were likely to convey, to a reasonable person that Telstra had some form of sponsorship, licencing or affiliation arrangement with an Olympic body or the Olympic Games. While this test was similar to the Olympic Insignia Protection Claim, the court stated that the ACL claim was more concerned with the “overall impression” conveyed by the ‘Go To Rio’ campaign.
The court found that it was unlikely a reasonable person would regard Telstra as directly affiliated with any Olympic body or the Rio Olympic Games, and thus Telstra’s campaign did not convey a false or misleading representation. Furthermore, the court held that the AOC failed to demonstrate to the requisite standard that Telstra’s conduct was misleading or deceptive.
Overall, the court considered that it would be unwarranted to prevent Telstra from promoting its arrangement with Seven and it would be difficult to promote it without using the protected expressions or by making reference to the Olympic Games. Ultimately, the court found that while there was no doubt that Telstra intended to capitalise on the forthcoming Rio Olympic Games and foster some sort of connection, it had done so by effectively promoting its sponsorship arrangement with Seven in relation to Seven’s Olympic broadcast, rather than with an Olympic related body or with the Olympic Games directly.
Given neither of the AOC’s claims were made out, the application was dismissed with costs.
Lessons learned for marketers
This ruling provides some valuable guidance for marketers who want to leverage Olympic assets. While Telstra’s campaign has been allowed to run, this is not to say marketers can blindly use protected expressions. Telstra was in a unique position due to its commercial arrangement with Seven and therefore had valid reason to be using protected Olympic expressions in order to promote that relationship.
Ultimately, marketers must ensure they do not “cross the line” by creating advertisements that suggest to a reasonable person a sponsorship arrangement or sponsorship-like support of the games, any Olympic related bodies or its members, if such an arrangement does not exist. Whilst the court has established that this test is not to be “over-intellectualised”, brands “walk a fine line” when employing Olympic assets and caution should be exercised.
Hashtags have become a powerful social media marketing weapon in the battle for consumer attention and brand engagement online. Thanks to the indexing power of the lowly hash symbol (#) on social media, it is now common for hashtags to take centre stage in the development and execution of advertising campaigns as a tool that can place a brand at the centre of customer conversations.
But while marketers and brands have been effective early adopters of hashtags, the law, as always, has been slow to adapt. In the world of intellectual property and marketing law, the hashtag phenomenon has numerous implications, raising interesting questions such as who ‘owns’ hashtags and how does the law help brands to protect them.
What is a hashtag?
For those who are late to the party, a hashtag is simply a keyword or phrase preceded by the hash symbol (#). Their use was popularised in social media by Twitter when the platform formally adopted hashtags as a means of indexing tweets. They are now a feature of most social media platforms, including Instagram and Facebook. Hashtags categorise messages by aggregating all posts with the same hashtag in real-time, allowing users to search and view related content, for example, to pick some of our favourite topics, #copyright or #defamation (we admit it, we are #nerds).
Hashtags are commonly used to describe or ‘label’ a social media post, for example, someone interested in flying might use the hashtag #pilot. Hashtags also often take on a life of their own and go beyond mere descriptors. For example, hashtags have sometimes become the de facto slogans or taglines at the centre of many online conversations and social media movements, such as the recent #destroythejoint and #illridewithyou movements in Australia, acting as a loudspeaker amplifying the conversation.
How are marketers using hashtags?
The power of hashtags as an indexing tool has not been lost on savvy brands and their marketing agencies, who have witnessed online conversations develop organically around popular hashtags, without the need for excessive media spending. Developing a ‘viral’ hashtag that leads to increased engagement, traffic and sales can be thought of as the holy grail of social media marketing.
Encouraging the growth of popular hashtags is also big business, with a growing number of brands and agencies partnering with increasingly powerful social media influencers – ‘trend setters’ with large followings on social media – who are paid to post content about the brand’s products and services and get the social media conversation started. Effective hashtag campaigns can also have public relations value, with ‘viral’ campaigns commonly the subject of news reports in the mainstream media, expanding a brand’s reach even further.
There are countless examples of where brands and other organisations have done it well. Famous recent examples include:
- #SFBatKid, where the city of San Francisco was transformed into Gotham City to grant a Make-A-Wish dream for a 5-year-old cancer patient, who became BatKid and had to save the city from villains while millions of people followed along on social media using the #SFBatKid hashtag. The #BatKid and #SFBatKid hashtags were reportedly tweeted more than 545,000 times in three days and Make-A-Wish saw an enormous boost in website traffic during the peak of the campaign.
- Calvin Klein’s #MyCalvins campaign, which encouraged Instagram users to upload photos in their Calvin Klein underwear with the hashtag #MyCalvins. As part of the campaign, the brand engaged more than 100 social media influencers to contribute to the hashtag, boosting the conversation. The campaign generated over 179,000 photos and proved effective in capturing attention and encouraging online engagement.
- The Air New Zealand and Qantas #AirlineWager campaign, which saw the rival airlines agree to a ‘friendly’ wager over the result of the 2015 Rugby World Cup final, with the loser’s staff to wear the winning team’s uniform the day after the match (unfortunately for the Aussies, the #allblacks won – you can see the results here. The campaign was covered extensively in the press without the need for any media expenditure.
Social media platforms: the rules of engagement
The popularity of hashtags as a marketing tool has developed as a result of their role as an indexing system on social media. While the system itself is owned by the relevant platform, specific hashtags are generally subject to the same ownership rules as other content posted on social media.
While the social media platforms themselves do not claim ownership over the actual wording of a particular hashtag, the person who creates the hashtag does not automatically have the exclusive right to use it. Such a claim could only be made where the relevant creator can establish a legal ownership right, such as via copyright or a trade mark law. None of the major social media platforms impose rules on the ways in which hashtags can to be used, other than limitations on some platforms on the number of hashtags that can be used in each post. Given that neither the social media platform nor the author of the hashtag may be able to claim legal ownership of the hashtag, the result is a Wild West scenario where brands can create their own hashtags, co-opt already popular hashtags or seek to undermine competitor hashtags, seemingly all within the rules of the platform.
So what about copyright?
So how can a brand establish an ownership right in a hashtag? Is it even possible?
There has been some speculation as to whether hashtags may be protected under copyright law. In Australia, copyright protection extends automatically to literary, dramatic, musical and artistic works. However, like advertising slogans (State of Victoria v Pacific Technologies (Australia) Pty Ltd (No 2)  FCA 737) and headlines (Fairfax Media Publications Pty Ltd v Reed International Books Australia Pty Ltd  FCA 984), in most cases hashtags are likely to be too short and insubstantial to constitute original ‘literary works’ and therefore are unlikely to attract copyright protection.
While the question of hashtags is yet to be directly considered by the courts, the courts have considered the question of copyright in advertising slogans. Like slogans, marketing hashtags are generally short and snappy, designed to be memorable. In Sullivan v FNH Investments Pty Ltd t/as Palm Bay Hideaway  FCA 323, the court considered the advertising slogans “Somewhere in the Whitsundays” and “the Resort that Offers Precious Little”, finding that the slogans did not demonstrate the requisite degree of judgement, effort and skill to be original literary works in which copyright might subsist. Similar decisions in Australia and abroad reinforce the view that copyright is unlikely to be established in hashtags in the majority of cases.
In the absence of copyright protection, the answer for brands looking to protect their hashtags is much more likely to be found in the law of trade marks.
How to trade mark a #hashtag
In the United States, it is already well established that hashtags are registrable as trade marks where they function as an identifier of the source of the applicant’s goods or services. A similar conclusion is likely in Australia. In fact, a brief review of the trade marks register shows that some brands have already registered trade marks incorporating the word “hashtag”, for example “Hashtag Yolo”, which is registered in relation to energy control devices.
The trend of seeking trade mark protection for hashtags is likely to increase as brands settle upon and build value in hashtags as part of their overall branding.
Section 17 of the Trade Marks Act 1995 defines a trade mark as follows:
“A trade mark is a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person.”
There is no doubt that a hashtag, being the # mark followed by a word or words, is capable of falling within this definition. The question in most cases will therefore become whether the particular hashtag is capable of distinguishing the applicant’s goods or services from those of other traders.
As with any other trade mark, where a trade mark consists of the # symbol followed by descriptive or non-distinctive elements, it will likely not be registrable. For example, #SYDNEY would be rejected as Sydney is a well-known location and should be available for other traders to use to indicate the origin of their goods or services. IP Australia has indicated that other examples such as #PLAYNETBALL for sporting services or #FINDADATE for dating services would run into similar issues. Guidance from IP Australia suggests that, in most cases, the distinguishing element of the trade mark will not be the inclusion of the # symbol, but the words that follow it. Simply placing a # symbol in front of ordinary generic or descriptive words is unlikely to allow you to register them as a trade mark because other trader’s will still need to use those words in the course of business.
However, in some cases it may be arguable that the hashtag itself is an essential part of the company’s branding, especially where the brand has already used the hashtag to such an extent in the market that it has acquired a reputation in the hashtag, with a high degree of consumer recognition. Again, the courts are yet to consider the question directly, but a parallel can be drawn with domain name trade marks, which have been the subject of judicial consideration.
Many brands choose to trade mark their domain name where it forms an essential part of their branding. However, the top level domain (e.g. .com or .com.au) will not normally be the distinctive feature of the trade mark. The website name itself (e.g. ‘Google’ in google.com) must generally be capable of distinguishing the goods or services in order for a trade mark to be registered. In REA Group Ltd v Real Estate 1 Ltd  FCA 5593, however, the Court found that top level domains could be essential elements of a brand. In that case, the Court held that Real Estate 1 had infringed realestate.com.au’s registered composite “realestate.com.au” trade mark on the basis of evidence of widespread consumer recognition of the mark. This evidence supported the proposition that the essential or distinguishing feature of the “realestate.com.au” logo was the domain name in its entirety, rather than simply the words “realestate”. The inclusion of .com.au as part of that essential feature was necessary because “realestate” on its own would not be sufficiently distinctive to establish brand identity, being a term commonly required in the industry. The Court found that the use of “realestate1.com.au” as part of an internet address on a search results page was deceptively similar to the registered “realestate.com.au” trade marks and therefore infringed those trade marks. A similar conclusion may be reached in respect of hashtags, where the hashtag itself becomes an essential feature of the brand recognised in the market, however, this remains to be seen.
Infringing a protected #hashtag
Of course, registering a hashtag trade mark does not necessarily mean that brands will be able to prevent anyone from using their trade mark on social media. To establish infringement, brands would need to show that the competitor had used as a trade mark a substantially identical or deceptively similar sign in relation to the same or closely related goods or services or in relation to unrelated goods or services where the registered trade mark is well known.
One of the key issues likely to arise is whether using a hashtag on social media is use as a trade mark, as a badge of origin to distinguish the brand’s goods or services.
Imagine that a brand had registered as a trade mark a popular hashtag such as #lol in relation to certain goods, say clothing. If another clothing brand were to post on their Twitter account a humorous tweet of a celebrity’s wardrobe malfunction with the #lol included, would that constitute an infringement? In many cases, the answer is likely to be no, because the alleged ‘infringing’ use would merely be use of the hashtag in its ordinary sense, in this case to indicate that the subject matter of the tweet is funny, rather than as a badge of origin (i.e. use as a trade mark). As with potential claims for misleading and deceptive conduct, the answer will usually lie in the content and context of each post.
The courts have considered a similar issue in the context of search engine results and advertising keywords. In Lift Shop Pty Ltd v Easy Living Home Elevators Pty Ltd  FCAFC 75, the court considered whether a composite trade mark featuring the words “LIFT SHOP” was infringed by use of the same words in the title of a webpage, as shown by search results. Lift Shop – the owner of the trade mark – alleged that using the keywords in this way amounted to trade mark infringement. But the court decided that use of the words as keywords “lift shop” was descriptive for the purpose of taking advantage of the operation of search engines, the words being descriptive in the business of selling lifts. Similar conclusions may be reached where brands seek to enforce trade marks over descriptive hashtags. Other brands using the hashtag descriptively for the purposes of taking advantage of a social media platform’s indexing system would be unlikely to constitute use “as a trade mark”. On the other hand, use of a highly distinctive hashtag trade mark may still raise questions of infringement.
Protect your #brand
The law is still catching up with the hashtag phenomenon and it is clear that achieving legal protection for the use of hashtags on social media may require a creative approach.
The primary function of hashtags is to act as an indexing system on social media, which means that, at present, there is no way for brands to filter ‘approved’ brand content (e.g. authorised KFC content featuring the #KFC) from the thousands of unauthorised posts that may include the same hashtag. However, as hashtags become more important in the development and execution of advertising campaigns, more brands are expected to consider their options when it comes to protecting and using these potentially valuable assets. Especially where brands develop a distinctive hashtag to be used as a badge of origin, an application to register the hashtag as a trade mark should be considered.
Two children’s toy manufacturers have gone head to head in a trade mark dispute heard before the Federal Court of Australia.
The dispute arose when Australian company Playgro alleged its PLAYGRO trade marks were infringed contrary to s 120(1) of the Trade Mark Act 1995 (Cth) by Playgo Art & Craft Manufactory and Playgo Toy Enterprises, both incorporated in Hong Kong.
During 2013 and 2014, Playgo sold and delivered in China toys bearing its PLAYGO Device Mark to Myer and to a subsidiary of Woolworths, for sale to customers in Australia. The toys were then sold to Australian consumers at Myer, Woolworths and Big W stores.
The key issues in the case turned upon two main questions:
- Was the PLAYGO Device Mark substantially identical with or deceptively similar to Playgro’s registered trade marks?
- Did the Playgo companies ‘use’ as a trade mark in Australia the Playgo Device Mark, when the toys were in fact sold by the various retailers?
One of the PLAYGRO trade marks and PLAYGO Device Mark are reproduced below:
The court ultimately found that the PLAYGO was not ‘substantially identical’ to Playgro’s trade marks, but it was ‘deceptively similar’. Playgo also ‘used’ as a trade mark the PLAYGO Device Mark in relation to toys in Australia and therefore infringed the Playgro trade marks.
Substantially identical or deceptively similar
To determine whether the PLAYGRO and PLAYGO trade marks were substantially identical, the Court examined the marks side-by-side, noting their similarities and differences. The Court ultimately found that the marks could not be substantially identical because the PLAYGO device mark, with its white lettering on a red background and the words PLAY and GO on separate lines, had a distinct appearance from the PLAYGRO mark.
When considering deceptive similarity, however, the Court does not carry out a side-by-side comparison, but rather compares the trade marks from the perspective of the ordinary person’s imperfect recollection of an applicant’s mark and their impression of a respondent’s mark. The Court found that the marks were deceptively similar because the first syllable ‘Play’ in each mark was identical, the last syllable was almost identical and was visually and phonetically very similar (i.e. ‘GRO’ and ‘GO), varying only through the presence of the letter ‘R’, and, when considered as a whole, the marks looked and sounded very similar. On this basis, the Court considered it was likely that there was a real danger of confusion arising from the imperfect recollections of an ordinary person, particularly the imperfect recollections of consumers who only occasionally purchase children’s toys. Such consumers might very well be caused to wonder whether the two products in fact come from the same source. Playgro was thus successful on the ground of deceptive similarity.
Use as a trade mark in Australia
The issue of whether the PLAYGO Device Mark was used as a trade mark in Australia arose in circumstances where Playgo actually sold and delivered the toys bearing the mark to Myer and Woolworths in China, but knowing that they were ultimately for sale to customers in Australia. Notwithstanding that Playgo sold the products in China, the Court found that Playgo had used the PLAYGO Device Mark in Australia because it was used as a ‘badge of origin’ to indicate a connection in the course of trade between the goods and Playgo. Playgo did not cease to use the PLAYGO Device Mark upon delivery of the goods to Myer and Woolworths in China; rather, the mark was being used by Playgo so long as the goods were in the course of trade and it was indicative that they were the Playgo’s products. The goods remained ‘in the course of trade’ until their ultimate sale to customers in Australia by the various retailers and, as such, infringement was established.
This month, the Court made further orders in the dispute because the parties were unable to agree on orders to give effect to the Court’s first judgment. One of the key bones of contention in these new proceedings was whether the declaration of infringement should extend to the use of the word ‘Playgo’ in addition to the PLAYGO Device Mark.
In this case, Playgo argued that using the word ‘Playgo’ in the fine print on their packaging was not ‘use as a trade mark’, but merely use as a legend to refer to the Playgo Device Mark. The Court was not moved by this argument and found that the use of the word ‘Playgo’, even only in the fine print on product packaging, was ‘use as a trade mark’ because it would have appeared to consumers to indicate a connection in the course of trade between Playgo and the products. This view was supported by the fact that Playgo had used the word ‘Playgo’ immediately followed by the letters ‘TM’ and the words “is a trade mark of, which were strong indicators the word was being used as a trade mark.
Having established that the use of the word was ‘use as a trade mark’, the Court considered whether the word ‘Playgo’ was deceptively similar to ‘Playgro’. For the same reasons given in the first case, the Court found that the words were deceptively similar and therefore made a declaration of infringement in relation to the word in addition to the Playgo Device Mark.
Lessons for brands & their agencies
In a crowded market such as children’s toys, it is not surprising that conflict arises as companies try to protect their valuable brand assets and intellectual property. This dispute is another reminder to brands and their agencies that a trade mark does not have to be strictly identical to an existing trade mark in order to be found to infringe that trade mark. It is therefore essential that brands and their agencies carry out proper checks and due diligence for potentially infringing trade marks before launching their products in Australia. This due diligence should include exhaustive searches for existing trade marks along with reputational searches for any common law trade marks, to determine whether or not there are likely to be any barriers to the registration or use of your proposed trade mark in Australia.
For assistance with trade mark and brand protection matters, contact us on (02) 8221 0933.
In a blog post last year we discussed The Seven Network’s (Seven) failed attempt to obtain an interlocutory injunction against The Nine Network (Nine), alleging that The Hotplate infringed Seven’s copyright in My Kitchen Rules. The crux of the dispute was the similarity in format, with Seven arguing that it owned the copyright separately in both the original format and production elements of My Kitchen Rules, as well as in the physical production “bibles” and related documents.
Now, Seven and Nine have reportedly reached a mutually-agreed settlement. Nine has agreed to not produce any further series of the program, nor to ever broadcast or redistribute its first series; and both sides will pay their own legal costs. Whilst both parties purport to be pleased with this outcome, the result appears to be more favourable for Seven.
It is notoriously difficult to establish copyright infringement in Australia when it comes to TV formats and the mere fact that two programs have the same premise, or similar features, is unlikely to be sufficient to demonstrate infringement. The Courts have considered the question on several occasions, including in Green v Broadcasting Corporation of New Zealand  All ER 1056 and Nine Film & Television Pty Ltd v Ninox Television Ltd  FCA 1404. For more information and practical tips on protecting formats, see our original post.
On Tuesday 13 October 2015, the amendments to the Telecommunications (Interception and Access) Act 1979 came into effect. The amendments are more commonly known as the “Data Retention Regime” and were passed as a security measure to aid in the investigation of terrorism and serious crimes.
How does it affect your business?
The Data Retention Regime applies to telecommunications companies (telcos) and certain internet service providers (ISPs). Telcos and ISPs are required to store a range of metadata for up to two years. The metadata that is required to be stored includes data associated with communications via email, mobile phones and landlines. Web browsing history is specifically excluded from the regime and data associated with third-party services (e.g. Facebook, Skype and WhatsApp) are also excluded.
Unless you are a telco or ISP, you are not under any data retention obligations as a result of the Data Retention Regime. Agencies in the communications space do not have any new obligations as a result of the introduction of the Data Retention Regime. However, if you are a telco or ISP, we recommend that you seek legal advice in determining the extent to which you have data retention obligations under the regime and the most effective way to comply with the amendments to the law.
The metadata collected by telcos and ISPs will include metadata contained in business communications. But what exactly is metadata? There is currently no definition provided in the Telecommunications (Interception and Access) Act 1979 and it is difficult to provide a definition that covers all types of metadata. It can be described as a set of data that is created when electronic communications and other activities over the internet and phone lines are conducted. It is a set of data that creates a map or a log of activity rather than data that provides detail of the contents of communications.
The metadata required to be retained by telcos and ISPs under the Data Retention Regime is grouped into six categories of information:
- type of communication;
- identity of the customer involved in a communications service;
- source of the communication;
- destination of the communication;
- date, time and duration of the communication; and
- location of the equipment used in the communication
The metadata to be retained will be protected as personal information under the Privacy Act 1988 and the Australian Privacy Principles (APPs) if the organisation has the capacity and resources to link that information to an individual/identify an individual.
Reminder: obligations under the Privacy Act 1988
Although your business may not be under any requirement to retain data as a result of the Data Retention Regime, this is an opportune time for a refresher on business obligations in regards to storage and security under the Australian Privacy Principles (APPs).
The APPs do not provide any time limits on the length of time personal information should be retained for. However, APP 11 –security of personal information, places an obligation on an APP entity to take reasonable steps to destroy or de-identify personal information that is no longer required. Exceptions to this destroy or de-identify obligation include personal information contained within a Commonwealth record and compliance with a court/tribunal order. APP 11 also places an obligation on APP entities to take reasonable steps to protect personal information from misuse, interference, loss, unauthorised access and unauthorised disclosure.
What steps are considered to be reasonable will depend on the circumstances which may include the entity’s size, resources, the sensitivity of the personal information, possible consequences of a breach and practicality. The Office of the Australian Information Commissioner (OAIC) has placed a large focus on governance, culture and staff training and it is important that a good compliance program is in place within your organisation.
There is currently no mandatory reporting for data breaches under the Privacy Act 1988 however the Federal Government has indicated that they plan to introduce a mandatory data breach notification scheme in the near future. In the meantime, the OAIC has provided a breach notification guide which is useful in shaping your corporate policies and compliance framework.
If you have questions about how privacy or data retention affect your business, please do not hesitate to get in touch on (02) 8221 0933.
There is nothing new about television executives complaining that rival network has ripped-off one of their shows. But getting a court to agree is another story altogether, as Channel 7 recently found out!
In a high ‘steaks’ legal stoush, Channel Seven tried to have Channel Nine’s new cooking show The Hotplate taken off the air on the basis that the show infringed Seven’s copyright in My Kitchen Rules. But the Court judged Seven’s arguments to be underdone, again highlighting the difficulties that networks and producers face when trying to protect the ‘format’ of a television show.
With Season 1 of The Hotplate now wrapped up, we look back at the court’s reasoning in the dispute between Seven and Nine.
Copyright in television formats
So what are formats and why are they so hard to protect?
A format is essentially the underlying idea and branding that makes up a television show. For networks, formats are also big business. Securing the rights to an exciting format can be the key to ratings success and the advertising dollars and licensing revenue that follows. So it is little wonder that TV execs opt for lawyers at 20 paces when someone starts muscling in on their ratings turf!
But formats can be notoriously difficult to protect through copyright arguments, and the reason boils down to one of the fundamental principles of copyright law, namely that copyright protects only the expression of “ideas” in a material form, rather than the ideas themselves. In the absence of a specific “format” right at law (which does not exist!), the mere fact that two programs have the same premise or features is unlikely to be sufficient to demonstrate copyright infringement.
The Hotplate v MKR cook-off (Seven Network (Operations) Limited v Endemol Australia Pty Limited  FCA 800), is not the first time the question of copyright in TV formats has been considered by the courts. In fact, in 2005 Nine was accused of ripping off another program. In Nine Film & Television Pty Ltd v Ninox Television Ltd  FCA 1404, the makers of television show Dream Home alleged that Nine had infringed its copyright by creating The Block. The court held that the broad similarities were not sufficient to constitute copyright infringement, and since then The Block has gone on to become a ratings winner for Nine. However, it was a different story in Zeccola v Universal City Studios Inc (1982) 46 ALR 189, where the court held that the makers of a killer shark movie, The Great White, infringed the copyright of Jaws, in the film, screenplay and book. The judge held that the film substantially reproduced several situations and characters from Jaws.
Out of the frying pan, and into the courtroom
Of course, as Hotplate and MKR are both so-called ‘reality’ TV shows, Seven was not able to point to a script or screenplay that was clearly copied. Instead, Seven claimed that it owned the copyright in:
- various literary works associated with My Kitchen Rules, including the format pitch, format presentation and production bible; and
- various dramatic works consisting of the combination and series of incidents, plot, images and sound reduced to a material form in certain episodes and series of My Kitchen Rules.
At this interlocutory stage, Seven wanted the court to grant an injunction preventing Nine from broadcasting The Hotplate until the matter had been decided.
When deciding whether or not to grant the injunction, the court must undertake two enquiries. Firstly, it needs to consider the strength of the applicant’s claim (i.e. is there a sufficient likelihood of success at the hearing). Secondly, it must consider the ‘balance of convenience’, which involves an assessment of the risk of doing an injustice by either granting or withholding the relief sought.
Seven argued that The Hotplate was a clear rip-off, pointing to similarities like the fact that both were cooking competitions amongst pairs of contestants, there are two ‘expert judges’, the teams take turns to cook in ‘Instant Restaurants’ in their homes, etc.
Nine, of course, highlighted the differences between the shows, including the fact that The Hotplate was based on professional restauranteurs, whereas MKR involved amateur cooks. Nine also argued that many of the key elements of MKR’s format were themselves unoriginal and had been used in other food reality programs such as Masterchef and non-food reality programs such as The Block.
Nicolas J noted that to reproduce in a material form elements of a dramatic work which themselves are unoriginal will not normally constitute an infringement of copyright because what has been taken will not be a ‘substantial part’ of the copyright work. However, he also said that, as with a compilation, a dramatic work which consists of a combination of stock elements “brought together by the exercise of skill, judgment or labour may constitute an original dramatic work even through some, or perhaps even most, of the elements would themselves individually be unprotectable due to lack or originality”. Where some elements are taken, or they are combined with different elements, the question of whether the original dramatic work was infringed becomes very difficult to answer.
Ultimately, Nicholas J found that, despite the differences between the programs, the format seemed to be “very similar”. The court was satisfied that Seven had a reasonably arguable case that the formats were similar and that the close similarity was the result of copying. However, whether a ‘substantial part’ was reproduced in the relevant episode of The Hotplate will depend on the quality of the elements allegedly taken. While the case was reasonably arguable, Nicholas J did not accept that Seven had a ‘strong prima facie case’.
On the question of the balance of convenience, the Court considered Seven’s arguments that allowing the program to continue on air would interfere with its commercial relationships and diminish the strength and value of these arrangements and the MKR brand. However, the Court found this was unlikely, noting that Seven would have the opportunity to vindicate its rights fully at an early final hearing. Seven also suggested that Nine could recommence broadcasting at a later date if a permanent injunction was not granted, but the Court found that this would likely not be as simple as suggested.
Nine, on the other hand, argued that Hotplate was a key piece of programming to be broadcast in prime time with a view to obtaining good ratings for the show itself and other programs. The court found that the balance of convenience fell in Nine’s favour, and refused to grant the injunction.
Lessons for producers and networks
Protecting copyright in formats can be difficult, especially for unscripted and ‘reality’ style shows.
Practical tips include making sure you have proper confidentiality agreements in place before pitching new formats or shows, ensuring that pitch and concept materials are as detailed as possible (and therefore attract copyright protection!) and registering slogans and brand names as trade marks.
You may remember Katy Perry wearing a Moschino-designed ‘graffiti’ dress at the Met Gala earlier this year?
Or maybe you remember Gigi Hadid wearing it at the 2015 Moschino runway show?
Last month, an American street artist known as ‘Rime’ (aka Joseph Tierney) filed a copyright infringement claim in a federal Californian court against both Moschino and designer of the dress Jeremy Scott. Tierney believes that the printed design on the dress is taken from his mural in Detroit entitled ‘Vandal Eyes.’
The basis for Tierney’s claim is that Moschino and Scott used his artwork without obtaining a license from him and without properly crediting him, particularly because of the high publicity the Met Gala and the Moschino runway show would have received. Tierney has been approached previously to have his work used under a licence by Disney, but has declined on numerous occasions. This would suggest that he doesn’t want to commercialise his IP, particularly with big corporations.
Whilst it must be noted that this lawsuit is presently occurring in America, Australia has specific laws regarding copyright in street art and graffiti. In Australia, it is generally held that if you are the artist who has created a work of street art, you are the copyright owner of the artwork in question. Artistic works are protected under Copyright Act 1968 (Cth) (‘The Act’), so long as it is expressed in material form. Section 10 of The Act classifies ‘material form’ as ‘any form (whether visible or not) of storage of the work or adaptation, or a substantial part of the work or adaptation. ’Material form’ does extend to murals, graffiti, posters and tag, even though graffiti as an art form is generally transient in nature.
It is important to remember that if you take a photo of a graffiti artwork and use or modify commercially, you may be infringing the copyright and the moral rights of the graffiti artist. In these circumstances, licenses of the copyright in the image, as well as moral rights consents should be obtained. Additionally, street artists may also have a claim to moral rights over their work, specifically the right of attribution, that is, to have their name referenced anytime a substantial amount of their work is reproduced.
Celebrity endorsements can be a powerful tool to strengthen a brand’s reputation and recognition with consumers. However, trying to steal or borrow a celebrity’s limelight without permission can be a costly mistake, as an aged-care company that used Ita Buttrose’s image recently discovered.
The media doyenne and former Australian of the Year last year sued The Senior’s Choice and its director Andrew Philpot, arguing that they illegally used her image and content from an ABC interview on their website and SEEK page to promote their business. Ms Buttrose, the National President of Alzheimer’s Australia, claimed that she suffered loss “to her very substantial and reputable” public standing after The Senior’s Choice failed to pay her $75,000 endorsement fee.
In the Federal Circuit Court, Judge Jones found that Senior’s Choice had no prospect of defending their claim and that the conduct constituted misleading and deceptive conduct under s.18(1) and s.29(1) of the Australian Consumer Law, as well as copyright infringement and passing off. Senior’s Choice was required to pay Ms Buttrose’s legal fees, which were rather extensive (Buttrose & Anor v The Senior’s Choice (Australia) Pty Ltd & Anor  FCCA 2050).
Philpot said that The Senior’s Choice had been “steamrolled” by the decision, and suffered a significant financial loss from a mistake they claim was unintentional. The decision stands as a strong warning about the risks of linking brands to celebrities without their permission.
Other celebrity cases:
There are many examples of brands or companies getting into trouble for claiming that they have an affiliation with a particular celebrity or using images of celebrities without permission.
Famous legal examples include Hogan v Koala Dundee Pty Ltd (1988) 83 ALR 187, which involved a company registered as ‘Koala Dundee Pty Ltd,’ deriving their name from the hugely popular film ‘Crocodile Dundee’. The company used the name ‘Dundee’ and an image of a koala wearing a bush hat and sleeveless vest, and holding a knife similar to Paul Hogan’s character in the famous films. The judge held the range of merchandise was “strongly reminiscent of Hogan’s role in the film” and that Koala Dundee passed it off as being in connection with Crocodile Dundee when no such association existed. The company was ordered to cease using the name immediately.
Another well-known example involved the prominent rugby player Andrew Ettinghausen, who brought a defamation action against Australian Consolidated Press (ACP) for publishing explicit nude photos of him without permission. ACP-owned magazine GQ obtained images of Ettinghausen showering the dressing rooms, taken by a cameraman with backstage access, which showed Ettinghausen’s genitalia. Without his knowledge or approval, GQ published the photos, alongside text which implied that the publisher had obtained permission to take the photographs of his genitalia for the purpose of widespread distribution. A jury found ACP guilty of defamation and Mr Ettinghausen was awarded $250,000 in damages. (Ettingshausen v Australian Consolidated Press Limited  NSWSC 176 (28 December 1995).
Earlier this year actress Katherine Heigl sued a New York pharmacy chain who retweeted a photo of her carrying shopping bags with the pharmacy’s logo on them. Duane Reade’s tweet read: “Love a quick #DuaneReade run? Even @KatieHeigl can’t resist shopping #NYC’s favourite drugstore” with the paparazzi’s image attached. Ms Heigl sought $6 million in compensatory and punitive damages for the use of her image in an advertisement without her permission. In August the two parties came to a mutual, confidential agreement which reportedly required Duane Reade to donate to a charity founded by Ms Heigl.
Lessons for advertisers
Star power can put your brand firmly in the spotlight, but as the above examples (and many others!) demonstrate, brands that use celebrities or their images without permission expose themselves to a wide variety of legal risks.
In particular, brands should be aware of the risk of misleading and deceptive conduct and the tort of passing off. While for the majority of people the simple use of their image in connection with a brand or product is unlikely to be misleading or deceptive, where the person is a celebrity or a well-known endorser of products, falsely suggesting that they have endorsed a brand or product or that there is a connection that does not actually exist has the potential to land advertisers in hot water.
Brands should also be aware of the copyright issues that may arise if an image of a celebrity is used without the permission of the copyright owner, while actions for defamation may be available to celebrities if a brand’s use of their image or likeness exposes them to hatred, contempt or ridicule, causes them to be shunned or lowers the public’s opinion of them.
Using celebrities in advertising can be a legal minefield, so if in doubt make sure you get the proper legal advice so you can keep the spotlight on your brand for the right reasons.
A ‘selfie’ snapped by a mischievous macaque who stole a photographer’s camera has demonstrated once again that there is no monkeying around when it comes to copyright law.
Wildlife photographer David Slater was understandably miffed when Wikipedia denied his request to take down the photograph – which has since gone viral – on the grounds that the photo was not subject to copyright as US copyright law does not extend to animals.
So who exactly does own the copyright in selfies? Monkey business aside (monkeys can’t own copyright in Australia), a brief analysis of Australian copyright law can lead us to the answer without going bananas.
It is not unusual for marketers and advertisers to attempt to capitalise on our love of selfies (and our love of memes) to push their products or services, like asking people to snap and upload a selfie in order to enter a competition or promotion. Utilising this social trend can be a powerful marketing tool.
In Australia, photographs are protected by copyright from the moment the shutter falls. Section 10 of the Copyright Act 1968 (Cth) defines the ‘author’ of a photograph as the person who took the photograph. This means the photographer owns the copyright – even if they don’t own the camera. So to all those people who lent their iPhones to Kevin Rudd for a selfie during the last election campaign, sorry, but there’s an argument that he owns them!
Of course, like any good legal principle, there are exceptions. Where the photograph is taken in the course of the author’s employment, for example, the employer owns the copyright. A slightly different rule applies to newspaper and magazine photographers, who own the rights in their photographs for the purpose of including them in a book or for photocopying, while all other rights are owned by their employer.
Section 35(5) of the Act also contains exceptions for commissioned photographs taken for private or domestic purposes, such as wedding or family photos. In these circumstances, the person who commissions the work is the owner. But does this mean that if you ‘commission’ a friend to take a selfie that the picture belongs to you? The answer, unfortunately, is no. The Act also requires “valuable consideration” in order for this exception to apply. So unless you’re paying them, your friend probably owns the pic.
Of course, where someone lends their phone to another person for the purpose of taking a ‘selfie’ (noting, of course, that a ‘selfie’ by definition is a photo taken by yourself), it could also be argued that there is an implied licence for the owner of the phone to use the photograph for whatever purpose they want, including capitalising on the image commercially using a sub-licence. But in the absence of a written agreement (and let’s face it, there is almost never going to be one), the validity of such an argument would ultimately be a matter for the courts to decide.
Identifying the owner of a photograph is important because of the exclusive rights that copyright confers, including the right to reproduce, publish and communicate the image to the public (such as placing it on a website). Marketers who want to publish or share selfies therefore need to ensure that they have the rights to do so, such as by including an assignment of rights in their competition terms and conditions.
Other issues to bear in mind when thinking about selfies include moral rights, which are separate to copyright and can only be held by the creator of a work. Moral rights include the right of attribution of authorship, the right not to have authorship falsely attributed, and the right to of integrity of authorship (which protects the creators from having their work subjected to derogatory treatment).
Three teenagers head across town in the hope of spotting their favourite celebrity. And there he is, sitting on a bench alongside ANOTHER famous face! The teenagers, of course, start snapping selfies and sharing them on social media. The best picture goes viral, bringing fame to one of the teens. The question is who owns the ‘selfie’?
Most people will recognise this scenario as that involving three US teenagers who snapped a photo featuring ex-Beatle Paul McCartney and billionaire Warren Buffett. The shot was featured in news publications internationally, rocketing one of the group to fame. Under Australian copyright law, if the now-famous teen had taken the ‘selfie’ himself, he would be the owner. However, as one of his friends actually took the photo in question, the copyright would vest in the friend even though it wasn’t his camera.
Key points for Brands & Advertisers
It is important to recognise that content that is freely viewed does not correspond to content that can be freely used. As such, brands and advertisers should seek to obtain the necessary consents from copyright owners to allow them to use selfies or other images in the way they want, such as in marketing materials or by editing or changing them. If you run a promotion and collect contestants’ images, be sure to include permission to use the image in your terms and conditions if you wish to use those images for your firm’s marketing. Whilst finding the original creator of works may present a challenge, it is the best way to avoid future liability issues. When the images are ‘orphan works’ (i.e. you cannot find the creator of the image), it is important to manage your copyright risks and perhaps seek legal advice.
From Cadbury’s purple to Tiffany & Co’s robin egg blue, distinctive colours have become synonymous with the brands they represent. Branding – in particular colour – is a powerful form of consumer recognition and brand distinction. Thus, the legal protection of colours has on a number of occasions become a hot-headed issue as companies aggressively try to protect their brand identity from competitors. The issue of whether you can trademark a colour arose again recently when British Petroleum (BP) tried to trademark a shade of green.
When can you trade mark a colour?
Trademarking of colours has traditionally been a shady area, with resistance from authorities to recognise them as the legal property of a brand. To use a colour as a trade mark, the colour must be specifically identifiable with a company’s goods or services and distinguishable from others. Just as authorities won’t grant a monopoly on words or expressions which are likely to be needed to describe goods and services, they are unwilling to do the same for colours. IP Australia, the body who regulate trademarks, has stated that a single colour “will generally be regarded as being devoid of inherent adaption to distinguish.” Thus, it requires continual use (as a trademark), colour recognition by consumers, and distinct parameters of use for colour trademarks to be granted. We’ve outlined some examples of where the trademark of colours has been successful, and where it has failed.
BP Green with Envy:
IP Australia rejected BP’s application in July this year to trademark a shade of green known as Pantone shade 348C. BP faced resistance from Woolworths who hold a trademark for a similar colour for their well-known apple-shaped logo. IP Australia said that if the colour was used alone it would fail to be distinguishable and was not indelibly linked in the average petrol consumer’s mind to BP. Just think, would you recognise BP’s shade of green if it wasn’t accompanied by their brand name or logo? The finding concludes 12 years since BP original filed for the colour trademark in Australia. However, BP has successfully obtained colour trademarks for the same shade of green in the United Kingdom and Europe.
Other Trademarked colours:
In Australia and abroad, there have been companies which have successfully trademarked their colours. Here are a few examples:
Fada bananas, the supplier of ecologically-grown bananas, successfully trademarked their distinctive red wax tip. The ecologically grown bananas were held to be recognisable to consumers and easily distinguished from traditional bananas. Whilst this isn’t an example of colour per se, it reflects how the distinct use of colour can be trademarked.
Louboutin successfully trademarked their famous red soled high heels in the USA after a long uphill battle with reluctant courts. The exception to the trademark is for other shoes which are monochromatically red and wish to include a red sole.
Cadbury successfully trademarked their distinct purple shade, Pantone 2685C, in the UK in 2012. The British colour trademark emerged as Cadbury were embroiled in an Australian litigation against competitor Darrell Lea. The five year litigation ended in 2008 when the Federal Court held that Darrell Lea had not breached the Trade Practices Act or engaged in misleading or deceptive conduct by using purple. The Court noted that a “cause to wonder” is not adequate to amount to misleading or deceptive conduct, and the name Darrell Lea on a purple chocolate wrapper could not confuse a consumer to thinking it was a Cadbury product. The colour purple was never used in isolation without some branding or script, allowing other competitors, such as Darrell Lea and Nestlé for Violet Crumble bars, to use other shades of purple. In Australia, Cadbury was not able to trademark the colour purple in general, however it was able to protect the specific shade it has used on its packaging since 1914.
Telstra was unable to trademark the word “YELLOW” for their online telephone directories, as competitors or other traders would use the word honestly and commonly for similar phone directory products. The Federal Court of Australia emphasised that they would not grant monopolies lightly, and in the circumstances of Telstra it was not appropriate.
Caterpillar Inc, known for their tractors and other agricultural equipment, were able to trademark “Caterpillar yellow.” The difference here was the distinct colour not closely associated with the agricultural machine industry, and the bright yellow shade was accompanied with the brand name Caterpillar. Of course, the trademark only limits other machinery companies from using the same or a similar shade, not an overall ban on the use of yellow.
Other trademarked colours include Barbie pink, UPS brown and Tiffany blue. The trademarking of colours limits the protection to competitors in the same industry and therefore the companies discussed do not hold the boundless exclusive rights to the use of the colour. An application to legally trademark a colour will be an uphill battle for any brand with high evidentiary burdens and an overall reluctance to monopolise the use of colours. It’s important to remember that each case will turn on its own facts and factors such as the combination of distinct colours will more likely be successful. Therefore it is always favourable to take a vigilant approach when branding or rebranding as competitors will seek to protect their brand identity. Choose colours which are not closely associated with competitors or with the product itself, or use a distinct combination of colours. The failure to think about competitors and trademarks may result in expensive and time-consuming litigation, regardless of whom the Court holds as the winner.
For any questions you may have in relation to brands and trade marks, please feel free to give our team a call: 02 8221 0933.