A recent decision of the Federal Court of Australia confirms that businesses interested in protecting their valuable trading names and slogans ought to register trade marks rather than seeking to rely upon copyright.
In State of Victoria v Pacific Technologies (Australia) Pty Ltd (No 2) [2009] FCA 737, Pacific Technologies claimed to be the owner of copyright in the phrase:
The proceeding before Justice Emmett in the Federal Court arose out of proceedings in the Copyright Tribunal in which Pacific Technologies sought a determination on the royalty payable by the State of Victoria for its use of that phrase.
The State of Victoria contended that copyright did not subsist in the relevant phrase on the basis that the phrase was too trivial, ordinary, insubstantial and commonplace to constitute an original "literary work" under the Copyright Act 1968 (Act). It also said that the phrase was but an "idea" and therefore was not protectable under the Act.
Transport (Taxi Cabs) (Safety Devices) Regulations
It is useful, by way of background, to say something about the use of the phrase by the State of Victoria.
The Governor in Council of Victoria had, pursuant to powers under the Transport Act 1983 (Vic), made Regulations that required the licence holder or owner of a taxi cab:
- to fit the safety cab with an approved driver duress alarm, and
- to ensure that the driver duress alarm could display, to the outside of a taxi cab, a message (in an approved form) that the taxi driver is in danger.
The Victoria Taxi Directorate subsequently issued specifications for the driver duress alarms prescribed by the Regulations. Relevantly, they provided that the alarm must be programmed to display a repeating message in correct word sequence consisting of the phrase "Help-Help-Driver-in-Danger-Call-Police-Ph.000".
Copyright in a Name or Phrase?
In Australia, it is not necessary (or indeed possible) to register copyright. Rather, copyright subsists in original "works" when they are created in some material form. This is subject to various qualifying matters being satisfied (for example, relating to publication and the nationality of the author).
The Act does not contain a definition of "literary work". Although it does state that literary works include tables or compilations expressed in words, figures or symbols, as well as computer programs, none of these types of subject matter were relevant in the Pacific Technologies case. Therefore, the Act itself was of little assistance.
The Court recognised the fundamental principle of copyright: that copyright is concerned with the protection of the expression of ideas and not with the protection of ideas themselves. Justice Emmett recognised that a literary work may be expressed in print or writing irrespective of whether the quality or style of that writing is high and that this means that things that have "no pretensions to literary style can be the subject of copyright".
However, his Honour considered it necessary that an author add something of substance in the form of their expression of an idea. Whether or not what the author adds is sufficient is a question of degree in a given case. Importantly, it is the originality of the expression of the idea or thought and not the inventiveness of the idea which is relevant. His Honour considered that, as a rule, titles and other short phrases do not involve literary composition and are not sufficiently substantial to warrant copyright protection. He referred to a number of cases in which claims to the following phrases were rejected:
- the title, "Miss World"
- the phrase, "Doc Martens"
- the title of a novel, "Splendid Misery", and
- the title of a television program, "Opportunity Knocks".
In Justice Emmett's view, a "literary work" is intended to afford information, instruction and pleasure in the form of literary expression.
No Copyright for Pacific Technologies
Turning to the phrase at issue in the case, Justice Emmett said that the phrase was not a form of literary expression but, instead:
His Honour remarked that the phrase did no more than "state an idea" and in a case such as the present, in which the expression of an idea is inseparable from the idea itself, expression merges with the idea and is not entitled to copyright protection.
From a policy perspective, Emmett J considered that it would be inappropriate for the phrase to be unavailable for use without the consent of Pacific Technologies.
For all of these reasons, his Honour ruled that copyright did not subsist in the phrase, signalling the end of Pacific Technologies' claim for royalties in the Tribunal.
Trade Marks not Copyright
Copyright has consistently been denied to short phrases such as those in issue in State of Victoria v Pacific Technologies. Courts typically take the view that such short phrases, single sentences and the like are too insubstantial to qualify as a literary work for the purposes of the Act. That is the case, even though substantial skill, labour and expense may have been invested by the relevant business in their creation. Although it was not referred to by his Honour, Justice Emmett's decision in Pacific Technologies is also consistent with the High Court's recent copyright judgment in IceTV Pty Limited v Nine Network Australia Pty Limited [2009] HCA 14.
The case serves as a timely reminder that the most appropriate and powerful form of protection for such investment is registered trade mark protection.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
