Howzat?! Ponting appeals unauthorised website

By Daryl Cox.

Key Points:

Australian cricket team captain Ricky Ponting is suing the owner of an unauthorised website that allegedly claimed to be "The Official Ricky Ponting Site" (Website).

Background

On 24 December 2007, Ricky Ponting filed a claim in the Federal Court seeking a declaration that Kevin Leonard Consulting Pty Limited (KLC), the licensee of the domain name www.rickyponting.com.au (Domain Name), has engaged in misleading and deceptive conduct in contravention of the Trade Practices Act 1974 (Cth) (TPA). Mr Ponting has also sought a declaration that the director of KLC, Kevin Leonard, was "knowingly concerned" in KLC's alleged breaches.

Mr Ponting alleges that the Website:

• was designed so that Internet search engines displayed a link to it under the name "The Official Ricky Ponting Site; Your Hero, our hero"; and
• incorporated an image on the Website of a banner flag in green and gold with Mr Ponting's name and photograph and an image of a cricket ball.

Mr Ponting has sought injunctions to prevent the alleged misleading and deceptive conduct continuing, an order that KLC cancel its licence for the Domain Name, and an unspecified amount by way of damages.

The Website was removed from public access after the claim was filed.

Name & image protection under the TPA

Mr Ponting's claim relies on various provisions of the TPA, including:

• section 52, which prohibits corporations from engaging in misleading or deceptive conduct or conduct which is likely to mislead or deceive; and
• section 53, which prohibits corporations from making false representations that they, or certain goods or services, have a sponsorship, approval or affiliation which they do not have.

Various other sporting and other celebrities have enforced rights in their name and image under the TPA. For example, Kieren Perkins successfully sued Telstra in 1997 under similar provisions of the TPA in relation to Telstra's unauthorised use of his name and image in a Brisbane Courier Mail supplement sold with the newspaper.

Mr Ponting also relies on section 75B of the TPA, which allows a natural person such as Mr Leonard to be joined to TPA proceedings if that person, among other things, was "knowingly concerned in, or party to" the breach.

The actions available under the TPA are available not only to celebrities, but anyone who has a sufficient reputation in something (such as a product or brand) which another person is improperly using. There are also equivalent provisions to sections 52 and 53 of the TPA in the Fair Trading Acts of the States and Territories that allow action to be commenced against natural persons rather than corporations.

Another option: domain name dispute resolution policies

As an alternative to action under the TPA, celebrities whose names are used in an unauthorised manner in domain names can file a complaint through the ".au" Dispute Resolution Policy (auDRP) process, seeking to have the relevant domain name licence cancelled or transferred to the rightful owner.

The auDRP is tailored for domain name "cybersquatting" disputes for situations where a cybersquatter obtains a second level ".au" domain name licence (such as a .com.au, .net.au or .org.au licence) for a name or trade mark in which they have no rights. For top level domain names (such as .com, .net and .org), complaints can be brought under the similar Uniform Domain Name Dispute Resolution Policy (UDRP) process administered by the World Intellectual Property Organisation.

Which option is preferable?

Before deciding between filing an action in the courts or a complaint under the auDRP (or UDRP), a number of factors should be considered, including the strengths of each course of action (based on the facts of the particular case) and what type of relief is sought.

The benefits of commencing an action through the courts include:

• the broad scope of the TPA (and equivalent State-based legislation) and wide range of potential remedies available, including damages and legal costs, which are not available through the auDRP process;
• the ability to stop misleading conduct from occurring across all forms of media, not just by the registration of an infringing domain name; and
• the ability to apply for an injunction on short notice to prevent the ongoing conduct (which generally applies until final judgment) if the matter is urgent and damages would not be a sufficient remedy.

The benefits of filing a complaint under the auDRP (or UDRP) process include that:

• it is generally less costly and leads to a quicker decision in respect of the dispute;
• the process is customised for domain name disputes; and
• it is often easier to enforce a determination under the auDRP (or UDRP) where the infringer is located in another jurisdiction, due to the ability of the regulatory body to cancel or transfer the relevant domain name.

However, the auDRP (or UDRP) process would not provide Mr Ponting with any avenue to prevent KLC from continuing to use Mr Ponting's name and image by simply registering another domain name, posting the Website on that other domain name, and suggesting it is Mr Ponting's official website.

What does this mean for celebrities?

Celebrities, public figures and anyone with reputation in a word, phrase or name should be vigilant about protecting their name and image rights. As a pre-emptive measure, it may be possible to register domain names that incorporate the relevant name or word, or any similar names or words. This would prevent others from registering those domain names, avoiding the need for legal action later on.

What does this mean for marketers?

Under Australian law, marketers do not always need the approval of a celebrity to use their name, image or likeness if that use does not:

• mislead or deceive the public in relation to the source of the published or advertised material, or affiliation or authorisation of the use; or
• contravene any other Australian law.

However, it is highly recommended that marketers exercise caution and seek legal advice in each instance where they use a celebrity's name, image or likeness.

Where to now?

Mr Ponting's case is scheduled to return for directions in the New South Wales registry of the Federal Court on 8 February 2008.

Please contact us if you would like any further information about protecting your name or image, or information about ways you can avoid breaching name or image rights.