mardi, juin 29, 2010

New Zealand: Copycats have nothing to worry about: YEAH RIGHT

Copycats have nothing to worry about: YEAH RIGHT

Contributed by A J Park

For over a decade DB Breweries has entertained New Zealanders with its distinctive Tui Beer billboards. The black and red billboards are immediately recognizable, and the catchphrase "Yeah Right" has entered the New Zealand vernacular.

Like any successful promotion, the Tui billboards have attracted copycats wanting to ride on their success. DB's most recent scuffle involves the Bethlehem Community Church in Tauranga. The church has a billboard which reads: "Atheists have nothing to worry about! Yeah Right". The church has used the same layout and colours as Tui. However, it has replaced the Tui bird image with a dove and the brand Tui with the word 'spirit'. The billboard is such a good copy that some people think it is a genuine Tui advertisement.

The church's billboard raises interesting questions about DB's trademark rights, as well as copyright law and the Fair Trading Act. While the church may have arguable defences under the Fair Trading Act and Trademarks Act, it is unlikely to have the law on its side in any copyright infringement action.

Fair Trading Act

The Fair Trading Act provides that no person shall, in trade, engage in conduct that is misleading or deceptive, or is likely to mislead or deceive. 'Trade' means any trade, business, industry, profession, occupation, activity of commerce or undertaking relating to the supply or acquisition of goods or services or to the disposition or acquisition of any interest in land. Even though the billboard was misleading and deceptive, arguably the church has not breached the Fair Trading Act because it could argue that its spiritual services do not amount to engaging in trade.

Trademark rights

Tui owns a trademark registration for the mark YEAH RIGHT in the classification that covers beers. To infringe this registration, the church would have had to use the YEAH RIGHT trademark in the course of trade in relation to the goods the mark is registered for. Arguably the church has a defence to trademark infringement because: (i) it is not using the YEAH RIGHT trademark in relation to beer or similar goods; and (ii) it may be able to argue that it is not using the trademark in the course of trade.

Tui also owns a registration for a rectangle device where the right two thirds are black and the left third is orange. This registration covers beer and advertisement boards. Again, however, the church arguably also has a defence to infringement. First, because it is not using this trademark in the course of trade, and secondly, because it is not using the mark in relation to advertisement boards. While it is using an advertisement board to promote its message, it is not in the advertising industry. Instead, it is using the billboard in relation to spiritual services.

Copyright

The layout of Tui's billboards would qualify as a copyrighted work under the Copyright Act. The church clearly copied Tui's billboard and adapted it for its own purposes. Copyright, unlike trademark and fair trading laws, does not consider how or why the artwork was copied, or the goods promoted by the copied work. The fact that the church copied a copyrighted work is enough to infringe DB's copyright in the billboard design.

Comment

This is an important reminder to potential copycats. Copying someone else's artwork will probably infringe copyright whether it is used on the same goods and services or not. And copyright can be infringed without infringing the trademark or breaching the Fair Trading Act.

For further information on this topic please contact
Emma McBride at A J Park by telephone (+64 9 353 6809), fax (+64 9 356 6990) or email (emma.mcbride@ajpark.com).