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HG Alert: Protecting marketing slogans and sentences - 03 Aug 2009

A recent Federal Court decision illustrates the importance of seeking trade mark protection for phrases or slogans which are used as marketing tools. This decision confirms the reluctance of courts to recognise that phrases or slogans constitute literary works which are capable of copyright protection.

Background

Regulations were enacted in the State of Victoria in 1995 which required licence holders or owners of taxis to fit their cab with a driver duress alarm, which would display a message to people outside the cab if the driver was in danger.

The alarms had to be programmed to display a repeating message in “correct word sequence” consisting of the “help words” Help-Driver-in-Danger-Call-Police-Ph.000.

The respondent in the Federal Court proceedings, Pacific Technologies (Australia) Pty Ltd, had previously lodged a patent application for a “vehicle alarm system”, which referred to a “dot matrix display sign which is programmable and capable of displaying a large variety of messages”, including the help words.

The respondent began proceedings in the Copyright Tribunal of Australia against the State of Victoria, in which it asserted that:

  • it was the author of the “help words”;
  • copyright subsists in the “help words”; and
  • it should be paid a “reasonable remuneration” for the use of the “help words” by the State of Victoria.

The State of Victoria began the Federal Court proceedings as a consequence of the Copyright Tribunal of Australia proceedings, which were adjourned pending the decision in the Federal Court. In the Federal Court, the State of Victoria sought a declaration that the “help words” do not constitute a literary work in which copyright would exist pursuant to section 32 of the Copyright Act.

The decision

The issue at the centre of this case was whether the “help words” constituted a literary work, in which case copyright would exist and would be owned by Pacific Technologies (Australia).

Emmet J stated that even though a literary work may be expressed in print or writing, there must be some work involved in the production of a literary work “in the sense that it is necessary for the author to add something of substance in the form of the expressions of ideas” (which will be assessed on each specific case).

His honour went on to say that “whilst the required skill or labour necessary for the creation of a literary work in which copyright may subsist is not large, it must not be insubstantial”. Importantly, his honour emphasised that short sentences, including titles, slogans and other short phrases have been consistently refused protection by both Australian and English courts, citing a number of cases in which such decisions were held.

His honour refrained from considering whether trade mark protection could be granted to these types of phrases (which will need to be assessed on a case by case basis) and held that “short phrases, single sentences and the like are too insubstantial or too short to qualify as a literary work for the purposes of the Copyright Act”, even if skill and labour were expended on their creation.

In this context, the question was then whether “a piece of writing or collection of words” can be recognised as a literary work in light of the kind of skill and labour expended and the nature of copyright protection intended by the policy under the Copyright Act.

As his honour considered that the “help words” were no more than “several simple words” saying something in the “ordinary parlance” which stated “the obvious words for use in drawing attention to a taxi driver requiring urgent assistance”, they were not entitled to copyright protection - the expression of the words did not contain sufficient substance.

This decision serves as a reminder that, given the consistent reluctance of courts to recognise copyright in slogans, short phrases, sentences in advertisements and sentences of an instructive nature, trade mark protection is likely to be the best and only way to provide exclusive rights in relation to the use of those words (provided that such words are registrable as a trade mark) in connection with the goods and/or services traded under those words.