A fictional phrase in a fictional language from Lord of the Rings was protected by copyright, and its unauthorised reproduction infringed that copyright.
The importance of obtaining all relevant consents and licences from copyright owners ‒ and the considerable financial consequences of not doing so, and ignoring owners' complaints ‒ have been recently illustrated by the Federal Court's decision in Tolkien Estate Limited v Saltalamacchia  FCA 944.
Saltalamacchia makes a not so precious ring
The Tolkien Estate Limited is the owner of copyright in the late JRR Tolkien's The Lord of the Rings books. Central to its plot is the One Ring which was created to gain domination over Middle-earth. The One Ring also displays an inscription in a fictional language called Black Speech. Saltalamacchia was a Melbourne jeweller, who made and sold online rings bearing the well-known "One Ring" inscription from "Lord of the Rings".
The Tolkien Estate alleged that the inscription was an artistic work in which copyright subsisted, and that copyright had been infringed by Saltalamacchia manufacturing and selling his rings.
It argued that Saltalamacchia infringed section 36 (infringement by doing acts comprised in the copyright) and section 38 (infringement by sale and other dealings) of the Copyright Act 1968 (Cth), by depicting, promoting and selling rings which bore the "One Ring" inscription without the approval of the Tolkien Estate. These rings were sold on eBay and on Saltalamacchia's personal website, and he continued to sell the rings even after he had received three letters of demand from the Tolkien Estate's lawyers and proceedings had been commenced.
The Estate then brought an application for summary judgment, alleging that Saltalamacchia had no reasonable prospect of successfully defending the allegation that he had infringed the Tolkien Estate's copyright.
Because of this conduct, the Tolkien Estate argued that Saltalamacchia knew, or ought reasonably to have known, that the making of the rings in Australia constituted an infringement of the Tolkien Estate's copyright.
Decision: Copyright in the inscription, and summary judgment is appropriate
Justice Beach concluded that Australian copyright protection extended to the One Ring inscription as an original artistic work.
Saltalamacchia filed no evidence. The only argument he did put forward was that the rings he was selling were not an exact replica of the One Ring inscription, because of a gap in the inscription on his rings. Justice Beach rejected this argument on the basis that the inscription on Saltalamacchia's rings still reproduced a substantial part of the One Ring inscription.
Justice Beach gave summary judgment in favour of the Tolkien Estate on the basis that Saltalamacchia had no reasonable prospect of defending the proceeding.
Justice Beach declared that Saltalamacchia:
- infringed the Tolkien Estate's copyright in the One Ring Inscription by reproducing the One Ring Inscription or a substantial part of it to the public, without licence or consent from the Tolkien Estate; and
- infringed the Tolkien Estate's copyright by offering and advertising rings with the One Ring Inscription for sale on eBay and Saltalamacchia's personal website, without the licence or authority of the Tolkien Estate.
Justice Beach ordered that Saltalamacchia:
- be permanently restrained from reproducing in a material form the One Ring Inscription or a substantial part of it,
- deliver up to the Tolkien Estate all goods in Saltalamacchia's possession that reproduced the One Ring Inscription, as well as all catalogues, price lists, brochures and other advertising documents and materials;
- pay the Tolkien Estate damages or an account of profits to be assessed.
- disclose details relating to the number of the infringing rings purchased or acquired, identity of the vendor of the infringing rings, details of all rings purchased and sold, the purchase and sale price of the infringing rings and the website or medium through which the infringing rings were sold.
- pay the Tolkien Estate's costs of the proceedings.