Too Many Stitches in Time? The Polo Lauren Case, Non-Infringing Accessories and the Copyright/Design Overlap Defence

Abstract

This article discusses the recent Federal Court case, Polo/Lauren Co LP v Ziliani Holdings Pty Ltd [2008] FCA 49 and the Full Federal Court appeal decision, Polo/Lauren Co LP v Ziliani Holdings Pty Ltd [2008] FCAFC 195 (18 December 2008). Rares J held at first instance that the famous polo player logos embroidered on genuine imported Ralph Lauren t-shirts were “accessories” within the meaning of the defence to parallel importation in s 44C of the Copyright Act 1968 (Cth). Those findings were upheld on appeal by the Full Court. Rares J also held (obiter) that the “design-copyright overlap” defence under s 77 of the Copyright Act was available because the heavily stitched applications of the labels were “embodied” in the t-shirts and were thus corresponding designs. The Full Court held (obiter) that Rares J had erred on this point and that s 77 only applies to three-dimensional embodiments of an artistic work. This article summarises the courts’ findings in relation to s 44C and identifies some issues arising from the court’s interpretation of “label”. It then concentrates on the obiter findings in relation to the design/copyright overlap provisions. The article closely explores the reasoning of the Full Court, identifies and discusses unresolved questions, and argues that the application of the overlap defence to articles such as embroidered labels is contrary to the policy underpinning the defence.