A fictional phrase in a fictional language from Lord of the
Rings was protected by copyright, and its unauthorised reproduction
infringed that copyright.
The importance of obtaining all relevant consents and licences
from copyright owners - and the considerable financial consequences
of not doing so, and ignoring owners' complaints - have been
recently illustrated by the Federal Court's decision in Tolkien
Estate Limited v Saltalamacchia  FCA 944.
Saltalamacchia makes a not so precious ring
The Tolkien Estate Limited is the owner of copyright in the late
JRR Tolkien's The Lord of the Rings books. Central to
its plot is the One Ring which was created to gain domination over
Middle-earth. The One Ring also displays an inscription in a
fictional language called Black Speech. Saltalamacchia was a
Melbourne jeweller, who made and sold online rings bearing the
well-known "One Ring" inscription from "Lord of the
The Tolkien Estate alleged that the inscription was an artistic
work in which copyright subsisted, and that copyright had been
infringed by Saltalamacchia manufacturing and selling his
It argued that Saltalamacchia infringed section 36 (infringement
by doing acts comprised in the copyright) and section 38
(infringement by sale and other dealings) of the Copyright Act 1968
(Cth), by depicting, promoting and selling rings which bore the
"One Ring" inscription without the approval of the
Tolkien Estate. These rings were sold on eBay and on
Saltalamacchia's personal website, and he continued to sell the
rings even after he had received three letters of demand from the
Tolkien Estate's lawyers and proceedings had been
The Estate then brought an application for summary judgment,
alleging that Saltalamacchia had no reasonable prospect of
successfully defending the allegation that he had infringed the
Tolkien Estate's copyright.
Because of this conduct, the Tolkien Estate argued that
Saltalamacchia knew, or ought reasonably to have known, that the
making of the rings in Australia constituted an infringement of the
Tolkien Estate's copyright.
Decision: Copyright in the inscription, and summary judgment is
Justice Beach concluded that Australian copyright protection
extended to the One Ring inscription as an original artistic
Saltalamacchia filed no evidence. The only argument he did put
forward was that the rings he was selling were not an exact replica
of the One Ring inscription, because of a gap in the inscription on
his rings. Justice Beach rejected this argument on the basis that
the inscription on Saltalamacchia's rings still reproduced a
substantial part of the One Ring inscription.
Justice Beach gave summary judgment in favour of the Tolkien
Estate on the basis that Saltalamacchia had no reasonable prospect
of defending the proceeding.
Justice Beach declared that Saltalamacchia:
infringed the Tolkien Estate's copyright in the One Ring
Inscription by reproducing the One Ring Inscription or a
substantial part of it to the public, without licence or consent
from the Tolkien Estate; and
infringed the Tolkien Estate's copyright by offering and
advertising rings with the One Ring Inscription for sale on eBay
and Saltalamacchia's personal website, without the licence or
authority of the Tolkien Estate.
Justice Beach ordered that Saltalamacchia:
be permanently restrained from reproducing in a material form
the One Ring Inscription or a substantial part of it,
deliver up to the Tolkien Estate all goods in
Saltalamacchia's possession that reproduced the One Ring
Inscription, as well as all catalogues, price lists, brochures and
other advertising documents and materials;
pay the Tolkien Estate damages or an account of profits to be
disclose details relating to the number of the infringing rings
purchased or acquired, identity of the vendor of the infringing
rings, details of all rings purchased and sold, the purchase and
sale price of the infringing rings and the website or medium
through which the infringing rings were sold.
pay the Tolkien Estate's costs of the proceedings.
Clayton Utz communications are intended to provide
commentary and general information. They should not be relied upon
as legal advice. Formal legal advice should be sought in particular
transactions or on matters of interest arising from this bulletin.
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This case set a new benchmark in Australia for future patent infringement damages claims against generic manufacturers.
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