The Federal Court of Australia has given summary judgment in Tolkien Estate Limited v Saltalamacchia [2016] FCA 944 for Tolkien Estate Limited (representing the estate of the late JRR Tolkien) against a jewellery trader selling rings bearing the infamous inscription of the ‘One Ring’ from Tolkien’s The Hobbit and the Lord of the Rings series.
His Honour Justice Beach set out the premise of Tolkien’s fantasy epic quite succinctly:
The Book is set in a fantasy world called Middle-earth, and centres on the “One Ring” which has the power to rule all of Middle-earth. Some of the characters in the Book seek to retain, obtain or destroy this apparently precious ring.
The IP Whiteboard team are divided as to whether his Honour intended the pun.
Tolkien’s estate alleged in the proceeding that the fictional language known as ‘Black Speech’ was an original artistic work or, in the alternative, an original literary work. While his Honour did not consider the question of whether Black Speech was either a literary or artistic work (in the meaning of the Copyright Act), he did consider the iconic inscription on the ‘One Ring’ to be an artistic work:
Tolkien’s estate had applied for summary judgment as they believed the Respondent had no reasonable prospect of defending the proceedings. As the name suggests, such orders are given summarily and without a full trial. The Federal Court of Australia, like most Courts, has the power to dismiss proceedings at an early stage where either the Applicant or the Respondent has no prospect of success. While rarely granted, such applications can be very useful procedurally as (when successful) they spare the other party the expense and delay of preparing for and running a full trial of the proceedings. In this case, Tolkien’s estate was successful.
The Respondent submitted little if any evidence, so much of the case fell on a series of presumptions under the Copyright Act. While the Applicant had substantial evidence of authorship and ownership of the Copyright, in light of the Respondent’s failure to give evidence on those issues, the legislative scheme came to the aide of Tolkien’s estate.
Unless a Respondent to a copyright infringement suit places these contentions in issue, the Copyright Act will presume them to be true:
- that copyright subsists in a work; and
- that the Applicant is presumed to be the owner of the work.
There are other specific presumptions in the Copyright Act that relate to publication, statements of ownership, and certificates of ownership for some overseas jurisdictions.
Ultimately, his Honour found that Respondent was found to infringe both by reproducing the inscription and by offering the Rings for sale. As the Court set out, the infringing conduct was:
- “first, depicting (using pictures of the impugned rings which show the One Ring Inscription), promoting and offering for sale rings bearing the One Ring Inscription without the licence or authority of the applicant on the Australian Jewellery Sales website”;
- “second, depicting (using pictures of the impugned rings which show the One Ring Inscription), promoting and offering for sale rings bearing the One Ring Inscription without the licence or authority of the applicant through the eBay stores”; and
- “third, offering or exposing for sale, exhibiting by way of trade and selling rings bearing the One Ring Inscription without the licence or authority of the applicant; on or around 18 March 2016, a representative of the applicant made a sample purchase from the respondent through the respondent’s Australian eBay store.”
The Respondent attempted to argue that his rings did not exactly replicate the One Ring Inscription. However, as avid readers of the IP Whiteboard may know, copyright infringement is concerned with the infringement of a ‘substantial part’ of an original work – in this case, a ‘gap’ in the inscription was not enough to save the jewellery trader.
The Court granted an injunction restraining the Respondent from infringing the copyright and selling the Rings. As is common in intellectual property litigation, the question of whether the Respondent was liable appears to have been tried separately from the amount of damages (or account of profit) that Tolkien’s estate is entitled to, and that will be decided later.
The Respondent is also required to ‘deliver up’ to Tolkien’s estate any goods infringing the One Ring Inscription, and all catalogues, price lists, brochures and other documents and materials – for destruction!
After a careful reading of the Orders, the IP Whiteboard team share the Respondent’s likely relief that the order for destruction of the rings does not require him to travel to Mordor and throw them into the fires of Mount Doom.
