You (counterfeit rings) shall not pass

Tolkien Estate Limited v Saltalamacchia [2016] FCA 944 

26 August 2016

Nicole Flax

The Federal Court in Melbourne has shunned the opportunity to award delivery up of counterfeit Lord of the Rings “One Ring” rings to the fires of Mount Doom. Instead, the court found that the respondent, Mr Saltalamacchia, had infringed copyright and awarded summary judgment. 

Facts

Between 1937 and 1949, the English author JRR Tolkien wrote an original literary work entitled The Lord of the Rings. The book centers upon the fate of the “One Ring”, a precious ring which has the power to rule the fantasy world known as Middle-earth. In the book, Tolkien created a language described as “Black Speech”. The book contains an image of the inscription in Black Speech which appears on the One Ring (the One Ring Inscription).

The applicant, The Tolkien Estate Limited, is the owner of copyright in Tolkien’s books and the One Ring Inscription. The Tolkien Estate asserted that Saltalamacchia had infringed their copyright by manufacturing and selling counterfeit copies of the One Ring.

Saltalamacchia sold rings bearing the One Ring Inscription on a number of websites, including his own personal website and the Australian eBay website. Saltalamacchia had chosen to ignore two letters of demand from the Tolkien Estate’s lawyers in the United Kingdom (UK) and one from their Australian lawyers. Saltalamacchia also continued to sell the rings even after the commencement of proceedings. 

Australian law

Under the Copyright Act 1968, it is an infringement of copyright to do any of the acts comprised in a substantial part of a work without the authorisation of the copyright owner. [1] Copyright owners have several rights, including to authorise reproduction and communication to the public of their work. [2] Further, the sale of an article is an infringement of copyright if the person knew, or ought reasonably to have known, that the making of the article constituted an infringement of copyright. [3]

International Dimension

The One Ring Inscription was an original artistic or literary work created in the UK. Saltalamacchia’s infringing conduct occurred in Australia. As the UK is a member of the Berne Convention for the Protection of Literary and Artistic Works, this means that under the Copyright Act [4] and the Copyright (International Protection) Regulations 1969, [5] works created in the UK are afforded copyright protection under Australian law as if they were created in Australia.

Decision

Saltalamacchia had promoted the rings by reference to the name “Lord of the Rings” and the names of central characters in the book. Further, the Tolkien Estate had notified the Saltalamacchia of its claims of copyright infringement on 11 February 2016, yet he continued to sell the rings. Beach J found that the Saltalamacchia ought to have known that the making of the rings in Australia would be an infringement of copyright. [6] 

Appearing in court without counsel and on the telephone, Saltalamacchia claimed his rings were not an exact replica of the One Ring because there was a gap in the inscription. However, Justice Beach rejected this argument as a substantial part of the inscription had been used. [7] 

As Tolkien Estate established that it was the owner of copyright in the One Ring Inscription, and Saltalamacchia did not enter any defense, Justice Beach found that Saltalamacchia had no reasonable prospect of success defending his liability and granted summary judgment against Saltalamacchia. [8] 

Justice Beach found that Saltalamacchia had infringed the Tolkien Estate’s copyright in the One Ring Inscription by:

reproducing it or a substantial part of it, and/or 
communicating it to the public without the license or authority of the Tolkien Estate
selling rings which bear the One Ring Inscription or a substantial part thereof without the license or authority of the Tolkien Estate. [9] 

The court awarded Tolkien Estate an injunction preventing further infringement of its copyright and delivery-up of any further stock of rings retained by Saltalamacchia. The Tolkien Estate was also held to be entitled to damages and an account of profits and to the disclosure of details of Saltalamacchia’s conduct. [10] 

Comment


This case demonstrates the importance of obtaining appropriate licenses from copyright owners for people wishing to sell articles bearing the copyright owner's work, even if the work was created overseas. It also emphasises the need for respondents to acknowledge letters of demand in a timely manner and obtain legal advice where appropriate. Failure to take these steps can place ‘precious’ products at risk of destruction in the fires of Mount Doom. 

The case is also a reminder that ‘one does not simply walk into court’ expecting to circumvent copyright legislation with small modifications to original works. The case also provides an excellent rebuttal to commonplace myths about copyright infringement that minor changes to a work (e.g. 10 per cent) will avoid copyright infringement. While Saltalamacchia attempted to argue that a gap in the inscription would free him from liability for copyright infringement, Justice Beach made clear that the relevant question was whether a substantial part of the work had been used and that arguments such as those made by Saltalamacchia ‘shall not pass’.

[1] Copyright Act, sections 14 and 31
[2] Section 36
[3] Section 38
[4] Section 184
[5] Copyright (International Protection) Regulations, regulation 4
[6] Paras 16-18
[7] Para 19
[8] Para 22
[9] Paras 8-11
[10] Paras 27-30