First published as part of Lauren Eade, Jodie Goonawardena, Miriam Zanker and Courtney White 'Current Developments - Australia': AGL Energy Limited v Greenpeace Australia Pacific Limited [2021] FCA 625 (8 June 2021) 125 Intellectual Property Forum 76.
Background
The case concerned claims by AGL Energy Limited ("AGL") of trade mark infringement and copyright infringement against Greenpeace Australia Pacific Limited ("Greenpeace") which related to an advertising campaign in the context of an "Exposing AGL" report. As part of the campaign, content to the following effect was included in online banner advertisements, street posters, placards, social media uses and on a website:
AGL's logo, 
, is both an Australian
registered trade mark (trade mark no. 1843098) and an artistic
work. The relevant infringing article was the modified AGL logo,
which comprised Greenpeace's reproduction of the AGL logo with
the added tagline "Australia's Greatest Liability"
(as pictured above). Greenpeace's campaign, in particular the
modified AGL logo, exemplifies the practice referred to as
"brandjamming" or "culture-jamming" which
involves doctoring existing advertisements in an attempt to change
the behaviour of a company.
Issues in dispute
The primary issue in dispute in relation to the trade mark infringement claims was whether Greenpeace had used the various AGL marks as trade marks so as to infringe AGL's trade mark registration. In relation to the copyright infringement claim, the primary issue for determination was whether Greenpeace's use of the modified AGL logo amounted to fair dealing for the purpose of criticism or review or alternatively, parody or satire within the terms of Copyright Act ss.41-41A.1
Trade mark infringement
Trade mark use
The Federal Court of Australia found that the impugned uses did not involve use of the modified AGL logo as a trade mark, as those uses identified AGL itself and not the source of goods or services offered by Greenpeace. The Court commented at [102] that
.... the use of the modified AGL logo is to identify that brand, and the company that it represents, as the subject of criticism. [Consumers] would not perceive Greenpeace to be promoting or associating any goods or services by reference to that mark. Rather, it is the use of the modified AGL logo to refer in terms to AGL and the goods and services that AGL provides.
The trade mark infringement claim therefore failed.
Similar services
In addition, the Court went on to comment that the use of the marks in the context of an educative campaign also did not amount to a use of the mark for similar services to those of AGL's registration. In particular, the Court held that use did not involve a use for educational services, or information and services, or consultancy services.
Copyright infringement
The primary issue for determination in relation to the copyright infringement claim was whether Greenpeace's use of the modified AGL logo (in online banner advertisements, street posters, placards, social media and on a website) fell within certain express fair dealing exceptions to copyright infringement. Subsistence and ownership of copyright in AGL's artistic work was not an issue and there was no dispute that Greenpeace had reproduced the entirety of AGL's artistic work.2
The onus was on Greenpeace to establish two elements in order to rely on the exceptions: (1) that the use of the modified AGL logo was a "fair dealing" of the artistic work, and (2) that such dealing was for the purpose of criticism or review or parody or satire.3 The former fair dealing purpose has an additional element of "sufficient acknowledgement" of the work, which is defined in Copyright Act s.10. These elements are set out in further detail below.
Fair dealing
The Court noted at [51], ". what will be fair will depend on the nature of the work, the character of the impugned dealing, and the particular fair dealing purpose invoked." In this case, the nature of the work was an artistic work comprised of a corporate logo, the character of the impugned dealing was for "sparking public debate about the important issue of climate change" and the particular fair dealing purposes that Greenpeace attempted to invoke were parody or satire or criticism or review.4 Despite the character of Greenpeace's impugned dealing, the Court held that Greenpeace could also rely on the purpose of parody or satire because "fair dealing defences are not so constrained that another purpose is not also permissible."5
The judgment offers guidance as to what other factors and principles may be taken into account for determining fair dealing. The Court agreed with Katzmann J's findings in Universal Music Publishing Pty Ltd v Palmer (No 2) [2021] FCA 434 ("Palmer") that the non-exhaustive factors listed in Copyright Act s.40(2)(a)-(e) have a bearing on the question of fairness for the purpose of s.41A. Further to this, some of the eight principles referred to in TCN Channel Nine Pty Ltd v Network Ten Pty Ltd [2001] FCA 108 may be considered of general application to the concept of "fair dealing"6 and are apposite to s.41.7
Purpose of parody or satire
The fair dealing exception for the purpose of parody or satire under Copyright Act s.41A was introduced in 2006. The then Attorney-General described the purpose of the additional exception as to allow "our comedians and cartoonists to use copyright material for the purpose of parody or satire."8 Despite being neither a comedian nor a cartoonist, Greenpeace was successful in establishing that some of its uses of the modified AGL logo were for the purpose of parody or satire.
The words "parody" and "satire" are not defined in the legislation,9 and to date there has been limited judicial consideration of s.41A, with only three Federal Court cases (including this case) considering the exception.10
In finding that some, but not all, of Greenpeace's uses of the modified AGL logo fell within the parody or satire exception, Burley J considered that some of the uses would be viewed by people as "darkly humorous" because the combined effect of the "corporate look" and the "obviously non-corporate message" is "ridiculous."11 Further to this, viewers "would understand that the message came from Greenpeace" (as opposed to AGL).12 Some of the uses that did not fall into this exception, such as the protest poster, did not include the tagline "Australia's Greatest Liability".13
Purpose of criticism or review
Unlike the defence of fair dealing for the purpose of parody or satire, fair dealing for the purpose of criticism or review is not a recent defence to copyright infringement under Australian law.14
The Court only considered the criticism or review exception in respect of the impugned uses of the modified AGL logo that did not fall within the exception of fair dealing for the purpose of parody or satire (namely, some of the social media posts, the protest poster and some photographs of placards).15 The Court held that the exception of fair dealing for the purpose of criticism or review did not apply to those remaining impugned uses because the social media posts did not "possess the character of critical comment or judgment"16 and readers would not regard the material to be for the purpose of criticism or review.17 Accordingly, those uses constituted copyright infringement of the AGL logo.18 Burley J granted injunctive relief in respect of those infringing uses, but held that an award of additional damages was not appropriate.19
Key points
The decision demonstrates that while Australian trade mark law does not include specific defences for parody or criticism (unlike Australian copyright law), or "nominative fair use" in American parlance, the basic requirement of "use as a trade mark" can be a threshold obstacle to trade mark infringement proceedings where the use of the mark is to reference the trade mark owner itself. That may often be the case in parodic or critical uses of a trade mark, as such uses must evoke the object of the parody or critique to be effective.
Even though Australian copyright law does include a specific defence of parody or satire for infringement, judicial consideration of the defence under Copyright Act s.41A is limited. This decision therefore contributes to the currently limited judicial consideration of the parody or satire defence and offers guidance for what additional factors and principles can be taken into account when considering the fair dealing exceptions to copyright infringement. It also reinforces that "fair dealing defences are not so constrained that another purpose is not also permissible."20
This article forms part of DCC's Sustainability and IP initiative.
Footnotes
AGL Energy Limited v Greenpeace Australia Pacific Limited [2021] FCA 625, [5].
2. AGL Energy Limited v Greenpeace Australia Pacific Limited [2021] FCA 625, [26].
3. AGL Energy Limited v Greenpeace Australia Pacific Limited [2021] FCA 625, [36].
4. AGL Energy Limited v Greenpeace Australia Pacific Limited [2021] FCA 625, [59].
5. AGL Energy Limited v Greenpeace Australia Pacific Limited [2021] FCA 625, [68].
6. AGL Energy Limited v Greenpeace Australia Pacific Limited [2021] FCA 625, [56].
7. AGL Energy Limited v Greenpeace Australia Pacific Limited [2021] FCA 625, [90].
8. AGL Energy Limited v Greenpeace Australia Pacific Limited [2021] FCA 625, [31] quoting Commonwealth, Parliamentary Debates, House of Representatives, 19 October 2006, 2.
9. AGL Energy Limited v Greenpeace Australia Pacific Limited [2021] FCA 625, [39].
10. See Pokemon Company International, Inc v Redbubble Ltd (2017) 129 IPR 1; AGL Energy Ltd v Greenpeace Australia Pacific Ltd (2021) 159 IPR 336; Universal Music Publishing Pty Ltd v Palmer (No 2) (2021) 158 IPR 421.
11. AGL Energy Limited v Greenpeace Australia Pacific Limited [2021] FCA 625, [63].
12. AGL Energy Limited v Greenpeace Australia Pacific Limited [2021] FCA 625, [63].
13. AGL Energy Limited v Greenpeace Australia Pacific Limited [2021] FCA 625, [65].
14. Fair dealing for the purpose of criticism or review appeared in Copyright Act 1912 (Cth) s.2(1)(i).
15. AGL Energy Limited v Greenpeace Australia Pacific Limited [2021] FCA 625, [89].
16. AGL Energy Limited v Greenpeace Australia Pacific Limited [2021] FCA 625, [92].
17. AGL Energy Limited v Greenpeace Australia Pacific Limited [2021] FCA 625, [95].
18. AGL Energy Limited v Greenpeace Australia Pacific Limited [2021] FCA 625, [117].
19. AGL Energy Limited v Greenpeace Australia Pacific Limited [2021] FCA 625, [116].
20. AGL Energy Limited v Greenpeace Australia Pacific Limited [2021] FCA 625, [68].
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