Federal Court opens door to more parallel importing

The Federal Court has dealt a blow to businesses seeking use copyright law to prevent the parallel importation of their goods.

In The Polo/Lauren Company L.P. v Ziliani Holdings Pty Ltd [2008] FCA 49, Ralph Lauren was attempting to prevent Ziliani from importing legitimate Ralph Lauren products which it had bought cheaply overseas. It pointed to the small embroidered logo of a polo player on those products. The logo is protected by copyright; Ralph Lauren argued that every time Ziliani imported a product with that logo on it, without Ralph Lauren's permission, it infringed the copyright in that logo.

The Copyright Act does however allow the importation of something protected by copyright without the copyright owner's permission in certain cases, including if the copyright work is:

• a non-infringing accessory, such as a label embroidered onto an article of clothing;
• a corresponding design applied to the clothing.

Justice Rares said that the logo was a label because "a natural and ordinary English meaning of the word ‘label’ includes a brand name, trade mark and the name by which a design or fashion house, and its product, such as ‘Polo’ and ‘Ralph Lauren’ and ‘Polo Ralph Lauren’, is generally known". The polo player (which is a trade mark too) helps people recognise the piece of a clothing as a Ralph Lauren shirt.

He also said that the embroidered polo player logo is not a mere matter of pattern or ornamentation of the garments on or into which it has been woven. It has visual features of shape or configuration - that is, the fabric has been altered by the embroidery of the logo.

It's unclear so far whether Ralph Lauren will appeal the decision.