The embroidered polo logo 

Ziliani imported genuine Polo Ralph Lauren (PRL) garments which he had bought at clearance and other off price sales in the USA.

While some garments apparently only have the polo logo printed on them, others have the logo embroidered using at least 784 stitches.

PRL unsuccessfully sued Ziliani for infringing its copyright ...

First, Rares J found that the embroidered logo was a "label" within the meaning of s 44C and so Ziliani had a defence under that provision.

S 44C was introduced following the Bailey's Irish Cream case -R & A Bailey & Co Ltd v Boccaccio Pty Ltd & Pacific Wine Co Pty Ltd (1986) 4 NSWLR 701; 6 IPR 279 - in which the artistic work on the bottle's label was used to block parallel imports.  The CLRC, and subsequently Parliament, considering that it was inappropriate to use copyright in such accessories to prevent the importation of articles which were not otherwise protected by copyrith.

Rares J found that:

a natural and ordinary English meaning of the word ‘label’ includes a brand name, trade mark and the name by which a design or fashion house, and its product, such as ‘Polo’ and ‘Ralph Lauren’ and ‘Polo Ralph Lauren’, is generally known.

One might quibble that that doesn't seem to be quite the same thing as the label in the Bailey's Irish Cream case.  However, his Honour went on to conclude:

64 The embroidered polo player logo on an article of clothing acts as a symbol to convey that the clothing was made by the Ralph Lauren design or fashion house. It is a ‘signature’ or label conveying that information of the garment’s provenance. The purpose of s 44C was to prevent such a symbol being used to deny the article its ordinary use as clothing simply because the polo player logo is copyright. The owner of the trade mark and the person entitled to the goodwill of, or associated with, the polo player logo is adequately protected by the rights given under both under the Trade Marks Act and by the tort of passing off from wrongful exploitation by another person of that trade mark or symbol associating the goods with the provenance of the fashion or design house of Ralph Lauren.

Secondly, Rares J considered (obiter) that Ziliani could also rely on the s 77 defence as the embroidered design was a "corresponding design", being visual features of shape or configuration rather than just pattern or ornamentation.

His Honour had to consider two points here.  First, he found that the s 77 defence was available against ss 37 and 38 infringements.  RPL argued that both these sections start with the words "Subject to Division 3" so the s 77 defence was not included as it was not in Division 3 - for those of you who don't want to get out your copies of the Act, s 77 is in Division 8!

While with respect there seems to have been some confusion about whether ss 37 and 38 were infringements because they operated on the reproduction right, Rares J managed to avoid this issue.  Section 77 requires a knowledge element: the importer/seller must have known - or ought to have known - that making the imported article infringed copyright or would, if it had been made in Australia, have been an infringement.  Rares J found this could not be satisfied: the garments were not infringements in the USA - they were genuine and they could not be infringements if made in Australia if s 77 applied. 

The embroidered logo was a corresponding design - exhibiting features of shape or configuration because:

84 I am of opinion that the embroidered polo player logo falls within the definition of ‘corresponding design’ in s 74 of the Act because it has visual features of shape or configuration being the distinctive alteration of the fabric created by the embroidery of the logo using at least 784 stitches. The embroidered polo player logo is not properly to be regarded as a mere matter of pattern or ornamentation of the garments on or into which it has been woven. ....

Earlier, his Honour had explained:

81 Embroidery, of its nature, affects the shape of the fabric on to which the stitching is applied. On each of the 15 exhibits (A to P) it is immediately apparent that the polo player logo is embroidered, not printed, and that the fabric surrounding the embroidery is subtly, but noticeably, differently woven to the distinct area embroidered.

The Polo/Lauren Company LP v Ziliani Holdings Pty Ltd [2008] FCA 49

Lid dips to Charles Alexander and Chris Jordan.

Posted: Thursday - 07 February, 2008 at 06:24 PM         |

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