AGL, Greenpeace and free speech

AGL, one of Australia’s largest suppliers of electricity, gas and telecommunications, owns copyright in and has registered as a trade mark its AGL “logo”:

TM No 1843098

Greenpeace started running a campaign about AGL’s business “Still Australia’s Biggest Climate Polluter” which included the online banner:

You can see why that might upset someone at AGL.

That caused AGL to sue Greenpeace for copyright infringement and trade mark infringement.

Burley J has largely dismissed the claims.

Burley J held that there was no copyright infringement for uses like the example above as they were fair dealing for purposes of parody or satire.

Some other uses, however, did not make such use of irony, sarcasm or ridicule, or humorous juxtaposition, as to qualify as parody or satire. This seems largely to have turned on the absence of the pointed tag line Australia’s Greatest Liability in an example such as:

A Greenpeace protest poster image

These uses also did not qualify for the defence of fair dealing for the purposes of review or criticism. They did not, for example at [92], “rise above the level of protest statements that are critical of AGL as a company, and would not be understood to represent criticism of review, whether of the AGL logo or any other work.”

Burley J also rejected AGL’s case on trade mark infringement: Greenpeace was not using the AGL logo as a trade mark. At [102], his Honour explained

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: see, for example, Irvings Yeast-Vite Ltd v Horsenail (1934) 51 RPC 110 at 115 (Lord Tomlin), cited in Shell Company at 426 (Kitto J).

This, with all due respect, has to be right. His Honour’s approach, however, demonstrates with stark clarity the problem with the reasoning in the “parallel import” cases like the Full Court’s (overruled) decision in E & J Gallo Winery v Lion Nathan Australia Pty Ltd, most recently confirmed in the Scandinavian Tobacco case at [21] – [56] (although one could argue, apart from the Gallo case, the goods weren’t in fact parallel imports).

AGL Energy Limited v Greenpeace Australia Pacific Limited [2021] FCA 625 (Burley J)

p.s. AGL might feel doubly aggrieved by this as, back in the 1980s, it had successfully sued for copyright on the basis that there was no parody defence. It only took another (almost) 20 years, but the Act did finally get amended to bring in that revolutionary development.

A few exercises in parody?

Gotye and Kimbra had that smash hit “Somebody I used to know“.

via Prof. Tushnet at the 43(B)log, there comes “The Star Wars I used to Know” (99USc or $1.69 in the Oz iTunes store).

Prof. Tushnet gives extra points for the artwork. I wonder about that, does it go too far? I guess there is that dig at the artwork too …

While we’re having fun:

Walk off the Earth did this theatrical cover of Gotye/Kimbra.

Then, in the Key of Awesome really took the sledgehammer to it.

Copyright Act 1968 (Cth) s 41A.

(see: it was IP related)