Australia – Not All’s “Fair Dealing” In War And Greenpeace: Federal Court Confirms Limits Of The “Parody Or Satire” Exception To Copyright Infringement.

The Federal Court’s decision in AGL v Greenpeace¹ confirms that using a corporate logo in activist or protest materials may be permissible under both copyright and trade mark law, but only where that use constitutes a “fair dealing” for the genuine purpose of “parody or satire”. Not all such uses will fall within that exception, so a fine line must be trodden to avoid infringement.
 

KEY TAKEAWAYS
 

• Use of a trade mark, such as a logo, to identify the associated brand or company as the subject of critical comment, parody or satire will not in general amount to trade mark infringement.
   

• Use of a corporate logo in such materials may constitute copyright infringement. However, such use may be permissible if it constitutes a fair dealing with the copyright work for the genuine purpose of “parody or satire”. This description is not met simply because the materials are critical of the target, and requires consideration of the intended use on a case-by-case basis.
   

• The separate fair dealing exception for the purpose of criticism or review applies to criticism or review of a copyright work, and not to criticism of a person (or organisation) generally.
   

BACKGROUND
 

In May 2021, Greenpeace launched an advertising campaign across various platforms targeting AGL, following the release of a report commissioned by Greenpeace that raised concerns about AGL’s commitment to renewable energy targets and their continued operation of coal-burning power stations. The advertising campaign, some examples of which can be seen here, mimicked the visual style of AGL’s advertisements, but included taglines such as “Still Australia’s Biggest Climate Polluter” and “Generating Pollution For Generations”. Each of the advertisements contained a reproduction of the AGL logo, which had been modified to refer to AGL as “Australia’s Greatest Liability” (referred to as the “modified AGL logo”).
 

AGL responded swiftly, bringing an urgent application to the court within 2 days of launch of the campaign. Rather than hearing AGL’s application for an interlocutory injunction, the Court proceeded to a final hearing of AGL’s claim less than one month after the proceedings had been commenced.
 

AGL stated that it did not seek to prevent Greenpeace from disseminating information or to stifle public debate surrounding it. However, AGL’s complaint related to the use by Greenpeace of the modified AGL logo in the campaign materials. AGL argued that the use of the modified logo constituted both trade mark infringement and copyright infringement, the original AGL logo being both a registered trade mark and an artistic work in which copyright subsisted.
 

Greenpeace accepted that AGL owned trade mark rights and copyright in relation to the AGL logo. However, Greenpeace contended that its use of the modified AGL logo was lawful because, among other reasons:
 

• it had not used the modified AGL logo “as a trade mark”, either at all or at least in relation to any relevant goods or services for which the AGL logo trade mark was registered; and
   

• its use of the modified AGL logo fell within the express exceptions to copyright infringement that apply to a fair dealing with a copyright work for the purpose of “parody or satire"² or, alternatively, the purpose of “criticism or review”.³
   

THE DECISION
 

Burley J held that some of Greenpeace’s uses of the AGL logo amounted to copyright infringement, but others – in particular those that mimicked the style of AGL’s own advertising – did not amount to either copyright or trade mark infringement. As a result, Greenpeace will be able to continue those aspects of its campaign.
 

WAS THERE TRADE MARK INFRINGEMENT?
 

For a trade mark to be infringed, it is necessary not only that another person uses a sign that is substantially identical or deceptively similar to the registered mark, but that the person uses that sign “as a trade mark” and does so, in general, in relation to goods or services that are the same as or similar to those for which the trade mark is registered.
 

In the present context, Burley J held that Greenpeace would have used the modified AGL logo as a trade mark if “it would appear to consumers that the modified AGL logo possessed the character of a brand that Greenpeace was using in relation to the registered services so as to indicate a connection in the course of trade between those services and Greenpeace.” However, his Honour found that this was not the case, since the modified AGL logo was used to identify the AGL brand as the subject of criticism, and it would not appear to consumers that Greenpeace was offering any goods or services by reference to the logo.
 

Burley J also considered that the modified AGL logo had not been used in relation to any relevant goods or services. AGL had relied on its trade mark registration for (among other things) educational services relating to the environment. However, his Honour held that “not every communication of information will amount to ‘education’”, since education required particular qualities such as the “systemic imparting of instruction”. The Greenpeace campaign did not possess such qualities, and so the modified AGL logo could not be said to have been used in relation to educational services.
 

The claim for trade mark infringement was therefore dismissed.
 

WAS THE GREENPEACE CAMPAIGN “PARODY OR SATIRE”?
 

The fair dealing exception for the purpose of parody or satire was introduced into the Copyright Act in 2006, but has so far received little judicial consideration. The most comprehensive analysis of the scope of the exception is found in the recent decision of Universal Music v Palmer,⁴ in which Katzmann J reviewed the scope of similar exceptions to infringement overseas and found that none of Clive Palmer’s advertisements for the United Australia Party fell within the scope of the exception. You can read our analysis of that decision here.
 

In this case, Burley J held that, consistently with Palmer, as well as the earlier decisions of Pokémon v Redbubble⁵ and Nine v Ten (The Panel Case)⁶, the use of a copyright work will be for the purpose of parody or satire where “the impugned work is used ‘to expose, denounce or deride vice’, often in the context of a humorous or ridiculous juxtaposition.” His Honour also noted that:
 

• the purpose of the impugned works must be considered objectively, that is, from the perspective of an ordinary member of the public who will be exposed to the impugned works. This means that whether the alleged infringer subjectively believes they are engaging in parody or satire is not determinative;
   

• the exception is not limited to situations in which the parody or satire is of the original copyright work itself, although some authorities do suggest that there must be some link between the parodic or satirical work and the original work or its creator or owner; and
   

• the fact that the impugned works may have multiple purposes (for example both to engage in parody and to bring about change, or both to report the news and to entertain as was discussed in the appeal from The Panel Case⁷) does not prevent the exception from applying.
   

In light of those principles, his Honour found that some, but not all, of Greenpeace’s uses of the modified AGL logo had the requisite purpose to fall within the parody or satire exception. In particular, the Greenpeace materials that mimicked the visual style of AGL advertisements were held to be parody or satire (it being unnecessary to distinguish between them). This was so since the design of these materials “juxtaposes the AGL corporate branding style with an obviously non-corporate message, creating an incongruity that is striking to the viewer. The ridicule potent in the message is likely to be immediately perceived. … Many would see these uses of the modified AGL logo as darkly humorous, because the combined effect is ridiculous.” 
 

On the other hand, Greenpeace’s use of the AGL logo in materials such as advertisements saying “Tell AGL’s CEO to do the right thing and ditch coal for renewables” or presenting apparently factual information about AGL’s activities and emissions, and (with one exception) photos of protesters holding billboards, did not constitute parody or satire.
 

WAS THE GREENPEACE CAMPAIGN “CRITICISM OR REVIEW”?
 

Given the urgency of the application, Burley J only considered the alternative exception of fair dealing for “criticism or review” in relation to the Greenpeace materials that were held not to constitute parody or satire. His Honour held, however, that none of those materials constituted “criticism or review” of any copyright work. As such, this exception did not apply either.
 

WAS GREENPEACE’S USE “FAIR”?
 

Even if a copyright work is used for one of the statutory “fair dealing” purposes, for the exception to apply it is also necessary that the use is “fair”. That requirement, which is also present in the UK, has consistently been held to be “impossible to define”.⁸ However, the Copyright Act enumerates certain factors that are relevant, namely the purpose and character of the dealing; the nature of the original work; the possibility of obtaining the original work within a reasonable time at an ordinary commercial price; the effect of the dealing on the potential market for the original work; and if only a part of the work is reproduced, the amount and substantiality of the part taken.⁹
 

Burley J found that, in relation to the uses of the modified AGL logo that constituted parody or satire, those uses were also fair. His Honour noted in particular that:
 

• it is inherent in the nature of parody or satire that the use may involve irony, sarcasm or ridicule, and so the fact that the copyright owner suffers damage alone cannot result in the use being “unfair”. This was so notwithstanding internal Greenpeace documents evidencing an intention to make the AGL brand “toxic”, which his Honour considered was “colourful language, perhaps rhetorical hype of a type typically used in advertising and also environmental campaigning” and simply indicated that Greenpeace’s intention was to criticise AGL and provoke debate;
   

• the nature of the work was a corporate logo, which was not readily divisible into parts. As such, Greenpeace using the whole work, and not effecting a “transformation” of it, did not render its use of the modified AGL logo unfair;
   

• although AGL has significant reputation in its logo, his Honour held that the interest protected by copyright is the artistic expression of the logo itself, not the brand reputation AGL has built up in it (which is protected by the trade mark registration). Moreover, to the extent that Greenpeace’s campaign caused damage to AGL, his Honour held this damage arose because of the content of the campaign targeting AGL, and not because it used the AGL logo;
   

• there was a clear indication on each advertisement that it originated from Greenpeace, so no sensible reader would conclude that they came from anywhere or anyone else;
   

• there was no realistic prospect that Greenpeace could have obtained permission to use the work within a reasonable time at an ordinary commercial price; and
   

• Greenpeace is not a commercial organisation and does not compete with AGL.
   

As a result, those uses of the modified AGL logo did not constitute copyright infringement.
 

IMPLICATIONS
 

The use of corporate logos as a visual cue to identify corporations in advertising, campaigning or informational material is reasonably commonplace. Such use does, however, prima facie amount to copyright infringement. As a result, using another’s logo in such material carries a risk that the logo’s owner will be able to take action to prevent that use, and potentially seek pecuniary remedies in respect of its use to date. That will be so unless the use falls within the scope of one of the exceptions to infringement.
 

Despite the occasional call for Australia to adopt a US-style “fair use” exception, Australia, like other jurisdictions such as the UK, has maintained the more confined fair dealing exceptions. These require that the use of a copyright work, in addition to being “fair”, must be for one of the prescribed purposes. As AGL v Greenpeace demonstrates, this will not simply be the case in relation to any critical use of such a logo. Moreover, as evidenced by the fact that some, but not all, of Greenpeace’s materials were found to fall within the scope of one of the fair dealing exceptions, assessing this requires each intended use to be considered on a case-by-case basis.
 

If your corporate brand is subject to this kind of “brand jamming” effort, it is critical to closely and urgently consider the nature of the use. If there is a reasonable basis to argue the use is not within one of the fair dealing exceptions, an effective option can be to commence proceedings in the Federal Court of Australia to seek urgent orders to restrain further misuse. Other avenues may also be available. For example, if the advertising is arguably factually incorrect or misleading, brand owners can bring a claim under the Australian Consumer Law alleging contravention of the provisions prohibiting misleading or deceptive conduct, though this was not an issue argued by AGL in this case.
 

 

For further information, please contact:

 

Aaron Hayward​, Partner, Herbert Smith Freehills

aaron.hayward@hsf.com