The commercial success of books, films and bands is not always dependent on sales of copies or tickets, but also on the sale of merchandise – including (for example) T-shirts, toys, posters and other products. Sometimes, the merchandise is just products bearing a logo; in other cases, its replicas of costumes, cars or even characters. Think, for example, all the Superman and Batman costumes and toys, or all the little girls (and some boys) wandering around in the “Elsa” costume from “Frozen” …
It is little wonder, then, that rights owners keep a tight control on merchandising – a matter well demonstrated in a recent case from the Federal Court of Australia.
In this case, the company that was set up to manage the estate and copyrights of JRR Tolkien took exception to a Mr Saltalamacchia offering replicas of the “One Ring” – a ring that featured in one of Tolkien’s best known books, The Lord of the Rings. Mr Saltalamacchia was offering these replicas both from a website registered in his name and from an eBay account.
Keen readers of Tolkien will recall that the One Ring contains an inscription in “Black Speech”, a language invented by Tolkien and represented in a made-up calligraphic language and script. The estate company therefore based its claim on the fact that the replica rings included the inscription, arguing that that inscription is protected under Australian copyright law as either an artistic or a literary work.
The court agreed that the inscription is protected by copryight, and agreed further that Mr Saltalamacchia had infringed that copyright. Mr Saltalamacchia was consequently ordered to deliver up his remaining stock of replicas and to provide further information to the company as to how many he had sold and at what price. This would enable the court later to determine how much Mr Saltalamacchia should be ordered to pay by way of damages – and in this context, it should be noted that the court left open the possibility of awarding additional damages on top of the usual compensatory damages.
From the legal perspective, it is interesting that the court did not decide whether the inscription is protected as a literary or as an artistic work. This is one of a number of facets to the case that, to a copyright lawyer, may be somewhat frustrating and that suggest further avenues of speculation and enquiry.
For example, keen readers of Tolkien will recall that the inscription translates as “One Ring to rule them all, One Ring to find them, One Ring to bring them all and in the darkness bind them” and that these lines are taken from a longer incantation repeated by Sauron when the One Ring was being made.
Is such a short string of words (separated from the longer poem of which it otherwise forms a part) of enough substance to be protected by copyright in its own right?
Alternatively, could the company have argued that, if not in itself a literary work, the inscription is a “substantial part” of the entire incantation in The Lord of the Rings? But then, does the full incantation have a separate identity as a literary work, or is it only a part of the larger literary work, the entire The Lord of the Rings?
On the other hand, the position in relation to the inscription being an artistic work is in our view clearer.
We understand that Tolkien was a keen calligrapher and created the calligraphy for the books himself (and we presume that that calligraphy in question came from the book and not from the film, where another calligrapher was involved). Case law relating to what will be protected as an artistic work (including a case involving words on T-shirts and the way they are laid out on the fabric) gives strong grounds to protecting the inscription calligraphy as an artistic work – even though it is comprised entirely of “words”.
The case underlines how important it is to get a licence if you want to merchandise. Failure to do so may lead to an infringement of copyright claim (as here) or, in other circumstances, claims under the Australian Consumer Law relating to misrepresentations and misleading and deceptive conduct.
This case – The Tolkien Estate Ltd v Saltalamacchia  FCA 944 – is available online at: http://www.austlii.edu.au/au/cases/cth/FCA/2016/944.html