Advertisers beware: subsistence of copyright in advertisements

Budget Eyewear Australia Pty Ltd v Specsavers Pty Ltd [2010] FCA 507

On 19 May 2010, the Federal Court granted an interlocutory injunction preventing Specsavers Pty Ltd (Specsavers) from publishing certain advertising content which substantially reproduced the advertising content of a competitor, Budget Eyewear Australia Pty Ltd (Budget Eyewear).

The facts

The applicant in the proceedings, Budget Eyewear, and the respondent, Specsavers, are competitors engaged in the business of selling optical frames and lenses in Australia.

Budget Eyewear alleged that Specsavers infringed its copyright in each of four advertising materials, and sought interlocutory relief for infringement of that copyright. The materials were two versions of a print advertisement, a radio script and a set of terms and conditions under which the offer in the advertisements were made (together, the Works). Each of the Works provided that if a consumer purchased glasses from Budget Eyewear which were faulty, Budget Eyewear would replace them with a new pair from the Budget Eyewear range free of charge.

Two weeks after Budget Eyewear launched its advertising campaign, Specsavers launched a campaign using the same idea, but substituting some of the words.

The question to be determined by the Court was whether Budget Eyewear had made out a prima facie case that there was a probability that at a trial of the action Budget Eyewear would be entitled to relief and whether the balance of convenience weighed in favour of interlocutory relief being granted.

Subsistence of copyright

Budget Eyewear contended that each Work constituted an original work in which copyright subsists, that the substitutions in the text made by Specsavers represented only minor departures from the precise words used in the Works and that Specsavers had taken a substantial part of each of the Works.

Specsavers claimed that the Works were not works of a kind in which copyright can subsist, that the evidence of authorship and assignment of copyright was confusing and inadequate, that there was no clear evidence before the court of originality in the Works and that there was no evidence of damage arising by reason of the alleged breach of copyright.

According to her Honour, Justice Bennett, there was sufficient evidence of authorship in the Work for the purposes of the court application. The advertising agency for Budget Eyewear, BMF Advertising Pty Limited, had assigned to Budget Eyewear all advertising materials in whatever form created for the campaign, including but not limited to any literary works and specific phrases used in the advertisements and radio script.

Justice Bennett held that Budget Eyewear had an arguable case that the way in which a concept is expressed in an advertisement may involve originality that attracts copyright protection. According to Justice Bennett, it is necessary for the creator of the advertisement to choose words and expressions carefully and to put those words and expressions together in a particular considered way. The fact that words used in advertisements may be ordinary or commonplace does not mean that the way in which they are put together cannot have a degree of originality.

Her Honour held that rather than merely copying the concept owned by Budget Eyewear, Specsavers chose to adopt the same expression of the concept. Accordingly, Her Honour was satisfied that Specsavers reproduced a substantial part of the Budget Eyewear’s advertisements.

Her Honour was satisfied that there was sufficient strength in the probability of ultimate success on the part of Budget Eyewear in establishing copyright in the advertising. Her Honour held that the balance of convenience favoured Budget Eyewear’s right to use the Works without the use by Specsavers.

Advertisers take note

According to the Court, Specsavers was not precluded from copying the concept behind Budget Eyewear’s advertisements, but it should have exercised its imagination to express the concept in a different language. Advertisers should take care when using competitors’ concepts and ideas for their own advertising campaigns. Using the same expressions when copying an advertising concept may be an infringement of copyright, even if certain words are substituted.