The Polo/Lauren Company L.P. v Ziliani Holdings Pty Ltd [2008] FCA 49
The decision of The Polo/Lauren Company L.P. v Ziliani Holdings Pty Ltd [2008] FCA 49 has been delivered by Rares J. This case was about whether a symbol on clothing, when lawfully embroidered overseas into the external surface of an article of clothing, was protected by copyright within the provisions of the Copyright Act 1968 (Cth) (Copyright Act) so that it may not be imported for sale or sold in Australia without the consent of the person entitled to the copyright here.
Polo/Lauren claimed that Ziliani has infringed its copyright in the polo player logo here on two bases when it appeared embroidered on an article. Each of the articles imported by Ziliani was genuine, rather than counterfeit.
Rares J dismissed the proceedings with costs.
First, Rares J held that the polo player logo embroidered on an article of clothing ws a non-infringing accessory, being a “label” – ss 37(1) and 38(1) not infringed, by reason of existence of exception provided by s 44C of the Copyright Act.
Secondly, Rares J held that s 77(2) afforded a defence to claims for infringements based on ss 37(1) and 38(1). The infringement of copyright created by ss 37(1) and 38(1) constituted not simply by objective act of importation or sale or display for sale etc, without licence of owner of copyright in Australia. Rather, it was necessary that the importer has requisite knowledge that article, with embroidered logo, would infringe copyright if made in Australia. If made in Australia, an article on which there was embroidered a “corresponding design” within meaning of s 77(2), it was not an infringement of ss 37(1) or 38(1).
Thirdly, Rares J found that the embroidered polo player logo fell within definition of “corresponding design” in s 74 because it had visual features of shape or configuration being…