On 11 August 2016, the Federal Court of Australia granted summary judgment in Tolkien Estate Limited v Saltalamacchia  FCA 944 in favour of Tolkien Estate Limited (representing the estate of the late JRR Tolkien). The matter related to an Australian jewellery trader who was selling rings bearing the Lord of the Rings’ “One Ring” inscription.
Of particular note were Justice Beach’s comments regarding the respondent jeweller’s lack of response to a number of letters of demand, specifically being as follows:
“Hobbits are central characters in the Book and Bilbo Baggins (a hobbit) is an important character in the Book (and a related work by JRR Tolkien called The Hobbit). Consequently the respondent ought to have known that the making of the impugned rings in Australia (or, if the rings were imported, the importing into Australia would have) constituted an infringement of that copyright…
…Moreover, and unsatisfactorily, the respondent chose to ignore two letters of demand from the applicant’s UK lawyers and one letter of demand from the applicant’s Australian lawyers. Such conduct was ill-advised”.
Ultimately, his Honour found that “the evidence clearly demonstrates that the respondent has infringed the applicant’s copyright and that he has no reasonable prospect of defending the proceeding” and granted summary judgement in favour of Tolkien Estate Limited.
As a consequence of the judgement, the respondent was declared to have infringed copyright and was:
- permanently restrained from, inter alia, reproducing, offering to sell, selling or exhibiting the “One Ring” replicas;
- required to “deliver up” the remaining unsold rings;
- required to destroy all “One Ring” related catalogues, price lists, brochures and other documents and materials (including materials which are or which are capable of being stored, generated or transmitted via any electronic media) in the possession, power, custody or control of the respondent;
- required to, at the applicant’s election, pay damages (and potentially additional damages) or an account for profit; and
- required to pay the applicant’s costs.
This decision is an important reminder of the necessity to ensure that letters of demand are addressed in a timely manner and advice is sought at the earliest possible stage.
Irish Bentley Lawyers have significant experience in intellectual property law. We have been successfully involved in a number of copyright disputes, within Australia and internationally. We are able to assist at the onset of a future business endeavour and at all stages of infringement action.
Please note that the above does not constitute legal advice and Irish Bentley Lawyers make no representations or warranties as to the accuracy of any of the information contained herein. If you have a copyright issue, then please do not hesitate to contact the team at Irish Bentley Lawyers – there is no substitute for proper legal advice based on your individual and unique circumstances.