Sebel, Jane; Gyngell, Dominic --- "Protecting Olympic Gold: Ambush Marketing and Other Threats to Olympic Symbols and Indicia" [1999] UNSWLawJl 23; (1999) 22(3) UNSW Law Journal 691
[∗] BA (UNSW) LLB (Hons) (University of Sydney); Solicitor, Minter Ellison.
[∗∗] BA LLB (Hons) (ANU); Solicitor, Minter Ellison.
[1] T Meenaghan provides an excellent background to the development of corporate sponsorship for marketing purposes: T Meenaghan, “Ambush Marketing - A threat to corporate sponsorship” (1996) Sloan Management Review 103. See also D Sandler and D Shani, “Olympic Sponsorship vs ‘ambush’ marketing: who gets the gold” (1989) Journal of Advertising Research 9, and L Bean, “Ambush marketing: sports sponsorship and the Lanham Act” (1995) 75 Boston University Law Review 1099 at 1102.
[2] D Sandler and D Shani, note 1 supra at 12.
[3] N Honery, “Sponsorship fight for a sporting chance”, Sydney Morning Herald, 18 September 1997, p 32. See also S Di Bella and T Pigani, “SOCOG Vigilantly Protects the Olympic Brand” (1999) 11 Intellectual Property Law Bulletin 71 at 72.
[4] T Meenaghan, note 1 supra at 109.
[5] Ibid at 108-9.
[6] Ibid.
[7] Ibid at 106.
[8] Ibid at 109.
[9] Ibid.
[10] Senate Legal and Constitutional Committee, The Parliament of the Commonwealth of Australia, Cashing in on the Olympics: protecting the Sydney Olympic Games from Ambush Marketing, March 1995 at 24.
[11] M Stutchbury, “Nike swooshes past the $US40m club”, Australian Financial Review, 23 July 1996, p 50.
[12] S Lewis, “Going for Gold”, Australian Financial Review, 24 July 1992, p 29. For further examples of ambush marketing see L Bean, note 1 supra.
[13] Section 110 of the Amateur Sports Act 1978. For an overview of case law in the United States see Alexander, Brewer et al, “Fortius Fortius Fortus: protection of traditional and Olympic trademarks against ‘knock off’ identification goods”, presented at INTA conference, Boston, 9-13 May 1998. For an analysis of the way the Lanham Act has been used to protect against ambush marketing: see L Bean, note 1 supra.
[14] Section 15(8) of the Act.
[15] For discussion of case law on the operation of this legislation in Canada, see note 12 supra at 181.
[16] The Provisional Act relating to the Protection of the Olympic Symbols and the Olympic Emblem 1993.
[17] See the revised Article 10 of the Unfair Competition Prevention Act.
[18] Seoul Olympic Organising Assistance Act 1981.
[19] Now amended as the Trade Marks Act 1995 (Cth).
[20] The Copyright Act 1968 (Cth), s 32(2).
[21] See for example University of London Press v University Tutorial Press Ltd [1916] 2 Ch 601 (United Kingdom Chancery Division), Victoria Park Racing & Recreation Ground Co Ltd v Taylor [1937] HCA 45; (1937) 58 CLR 479, Ladbroke (Football) Ltd v William Hull (Football) Ltd [1964] 1 WLR 273, Kalamazoo (Australia) Pty Ltd v Compact Business Systems Pty Ltd (1985) 5 IPR 213 and Exxon Corporation v Exxon Insurance Ltd [1982] 1 Ch 119. For general principles about copyright law see S Ricketson, Intellectual Property: Cases, Materials and Commentary, Butterworths Ltd (2nd ed 1998); J McKeogh, Intellectual Property, Butterworths (3rd ed, 1999); and P Loughlan, Intellectual property: creative and marketing rights, LBC Information Services (1998).
[22] Section 32(4) of the Copyright Act 1968 (Cth).
[23] Note 12 supra at 41.
[24] This was because the AOC could not fulfil the requirements of s 17(1) of the Designs Act 1906 (Cth).
[25] See Malleys v JW Tomlin [1961] HCA 77; (1961) 35 ALJR 352 and Sebel & Co Ltd v National Art Metal Pty Ltd (1965) 10 FLR 224. Although this deficiency has since been remedied by the Olympic Insignia Protection Act 1987 (Cth) discussed below.
[26] See Copyright Act 1968 (Cth), ss 74-77.
[27] The Designs Act 1906 (Cth), s 20.
[28] The Trade Marks Act 1995 (Cth), s 17.
[29] Johnson & Johnson Australia Pty Ltd v Sterling Pharmaceuticals Pty Ltd (1991) 30 FCR 326 at 348, per Justice Gummow.
[30] The South African case of McDonald’s Corporation v Jo’Burgers Drive-Inn Restaurants Pty Ltd and Ors [1996] (4) All SA(A) illustrates a situation where the use of the trademark in relation to a burger restaurant was not legitimate. See C Webster, “The McDonalds case: South Africa joins the global village” (1997) 86 Trademark Reporter 576.
[31] This is illustrated in Aristoc Ltd v Rysta [1945] AC 68 at 97 and Smith Kline & French Laboratories (Australia) Ltd v Registrar of Trade Marks [1967] HCA 42; (1967) 116 CLR 628 at 636-7.
[32] Section 41 of the 1995 Act.
[33] Section 24(1)(d) of the 1955 Act.
[34] Note 12 supra at 43.
[35] Corporations Law regulation 4.2.01 (1B) (m) and Schedule 6A.
[36] Corporations Law regulation 4.2.01 (1B) (c).
[37] C McGill, “And the Winner is ...” (1995) 14 Communications Law Bulletin 18 at 19.
[38] See S Ricketson, note 21 supra, p 772, and the following chapter for a discussion of the case law.
[39] See ConAgra Inc v McCain Foods (Australia) Pty Ltd [1992] FCA 159; (1992) 23 IPR 193 at 246-8 per Justice Gummow.
[40] The damage requirement is often a factor in the failure of a passing off action.
[41] These remedies include injunctions or actions for damages s 80, and other orders such as corrective advertising under s 87.
[42] The Fair Trading Act 1987 (NSW), s 42; the Fair Trading Act 1989 (Qld), s 38; the Fair Trading Act 1987 (SA), s 56; the Fair Trading Act 1985 (TAS), s 14; the Fair Trading Act 1985 (Vic), s 11; and the Fair Trading Act 1987 (WA), s 10.
[43] See for example, McDonalds Systems Australia Pty Ltd v McWilliams Wines Pty Ltd (No 2)[1979] FCA 109; (1979) 41 FLR 436 and on appeal, McWilliams Wines Pty Ltd v McDonalds Systems Australia Pty Ltd [1980] FCA 159; (1980) 33 ALR 394. Note 12 supra at 45.
[44] INXS & Ors v South Sea Bubble Co Pty Ltd (1986) ATPR 40-667 and Sony Music Australia Ltd & Anor v Tansing (1993) ATPR 41-279.
[45] C McGill, note 37 supra at 18-19.
[46] The Olympic Insignia Protection Act 1987 (Cth), s 6.
[51] Ibid.
[52] Note 12 supra at 18-20.
[53] The Olympic Insignia Protection Amendment Act 1994 (Cth), s 14.
[54] Ibid.
[55] Note 12 supra.
[56] Ibid.
[57] L Ritson, “Special legislation protecting Olympic symbols, images and indicia: Sydney 2000 Games”, presented at the International Trademark Association Conference, Boston, 9-13 May 1998 at 6-7.
[58] Note 10 supra at 63.
[59] Ibid at 62-3.
[60] (1988) ALJR 35. In Davis, the Court struck down certain provisions of the Australian Bicentennial Act 1980, as disproportionate to the requirements of the Bicentennial Authority. The Australian Bicentennial Act had attempted to restrain the use of expressions including “1788”, “1988” and “88”.
[61] [1992] HCA 45; (1992) 108 ALR 577
[62] [1994] HCA 46; (1994) 124 ALR 1.
[63] [1997] HCA 25; (1997) 145 ALR 96.
[64] For a detailed discussion of this area, see A Stone, “Lange, Levy and the Direction of Freedom of Political Communication” [1998] UNSWLawJl 38; (1998) 21 UNSWLJ 117.
[65] Note 63 supra at 112.
[66] The purposes of the Sydney 2000 Games (Indicia & Images) Protection Act 1996 (the Act) are set out in s 3 of the Act.
[67] Ibid, s 10(1).
[68] Ibid, s 10(2).
[69] Ibid, s 11.
[70] Ibid, s 12.
[71] Ibid, s 14.
[72] Ibid, s 15.
[73] Ibid, ss 16-23.
[74] Ibid, s 24 of the Act. The effect of this provision is considered in the decision of Australian Olympic Committee Incorporated v Baxter & Co Pty Ltd (1997) 36 IPR 621.
[75] For further analysis of the freedom of speech implications see G Orr, “Marketing Games: the regulation of Olympic indicia and images in Australia” (1997) 9 EIPR 504 at 507-8.
[76] Note 53 supra, s 25.
[77] Ibid, ss 43 and 44.
[78] Ibid, s 43(7).
[79] Ibid.
[80] Ibid, s 46.
[81] Ibid, s 47(1).
[82] Sydney 2000 Games (Indicia and Images) Protection Amendment Act 1997 (Cth). Second Reading Speech, Australia, House of Representatives 1997, Debates, vol HR 9, 16-19 September 1997, at 4582.
[83] Ibid, Sch 1 - Amendments, s 5; Sydney 2000 Games (Indicia and Images) Protection Amendment Act 1996 (Cth), s 13A.
[84] Sydney Organising Committee for the Olympic Games v Pam Clark (unreported, FCA, Branson J, 25 June 1998).
[85] Ibid at 3.
[87] Ibid.
[88] Ibid at 622.
[89] Ibid at 633.
[90] Staff Reporter, “Games Body sue over Name”, The Australian, 23 May 1997, p 13. This would have presented an interesting case for two reasons. The first, is that Sydney 2000 is actually the zipcode of the central business district in Sydney. The second, it would have provided an opportunity for Australian courts to examine the domain name issue.
[91] RJ Coombe “Tactics of Appropriation and the Politics of Recognition in Late Modern Democracies” (1993) 21 Political Theory at 411-33.
[92] Note 75 supra at 507-8.
[93] Note 91 supra at 417-18
[94] Ibid.
[95] Note 92 supra at 507.
[97] Ibid at 57.
[98] See M Moore and G Korporaal, “Sponsor’s Angry Message” The Sydney Morning Herald, 5 December 1997, p 14.