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On Your Marks

07 Apr 2009

High Court Acknowledges Copyright in Slogans – There’s copyright in this slogan

The primary issue for determination by the High Court in Sunlec International Pty Ltd v Electropar Ltd was whether copyright could subsist in the caption 'Field Friendly - the best choice for field work'. Other copyright works were pleaded, but as Electropar admitted that it had infringed Sunlec's copyright in those works they were not rigorously discussed.

The judge approached the issue in predictable fashion. Taking as his starting-point the definition of 'literary work' in the Copyright Act 1994, the judge noted that subject to the requirement that the work be original, there is no requirement that the work have any literary merit (citing the usual fare of examination papers and the like which have qualified for copyright protection). While the definition of 'literary work' does not elaborate on what is necessary to constitute a literary work, he noted that it has been said that a literary work is something intended to give information, instruction or pleasure.

His Honour proceeded to cite a number of seminal copyright texts and cases from the United Kingdom and Australia, all to the effect that copyright cannot generally subsist in slogans. While the Judge was careful to emphasise that these authorities did not entirely foreclose the possibility that copyright could subsist in a slogan, he did not point to a single case in which it was held that copyright did subsist in a slogan.

Observing the paucity of New Zealand authority on this point, His Honour focussed on the High Court decision of Green v Broadcasting Corporation of New Zealand (1983) 2 IPR 191 (affirmed on appeal), in which it was held that copyright did not subsist in the title of a talent quest show, 'Opportunity Knocks'. In turn, Green relied on the Privy Council decision of Francis Day & Hunter Limited v 20th Century Fox Corporation Limited [1940] AC 112, where it was said that, as a rule, a title does not involve literary composition, and that it is not sufficiently substantial to justify claims of protection.

It was, however, acknowledged that in particular cases a title may be on so extensive a scale and of so important a character as to be a proper subject of protection against being copied. Green was upheld on appeal, where it was said that the decision that there was no copyright in the title 'Opportunity Knocks' was 'inevitable in light of the judgment of the Privy Council'.

Inexplicably, after this exhaustive survey of singularly negative treatment of the proposition that copyright may subsist in a slogan, His Honour went on to find that copyright did in fact subsist in the slogan 'Field Friendly - the best choice for field work'.

If it could not be asserted that copyright cannot exist in a slogan, simply because it is a slogan, His Honour advocated a return to first principles, saying that the inquiry must be made into the circumstances of the slogan's creation. If independent skill, labour and judgment have been involved in the slogan's creation such that it satisfies the requirement of originality, and if it conveys information, instruction, or pleasure, then a slogan can attract copyright protection.

His Honour proceeded to find that, as the plaintiff maintained that he had spent 'a lot of time' devising the slogan and as that evidence had not been contradicted, sufficient independent skill, labour, and judgment was exercised in the creation of the work. Although the language used was taken from the stock of the English language, His Honour considered that the slogan used language in a succinct and relatively memorable way which was not 'hackneyed' and conveyed information about both the product and the case in which it was contained. The Judge then went on to find that inclusion of the Field Friendly slogan in relation to a competing travel case in an advertising flyer amounted to an infringement.

While not strictly wrong in its return to first principles, the Sunlec decision flies in the face of decades of authority. Simply put, there is a presumption that a small expression is not of sufficient substantiality to warrant copyright protection. This presumption was not adequately rebutted by the Judge in Sunlec. The decision is particularly difficult to justify in light of the slogan at issue, the relatively banal 'Field Friendly - the best choice for field work'. It is difficult to see why this slogan was regarded as sufficiently substantial to attract protection when more memorable titles such as 'The Man Who Broke the Bank of Monte Carlo' have been declined protection.