07 Jul 2010

Budget Eyewear v Specsavers: Don't be blind to the risk of copyright infringement

by Chris McLeod, Sharon Segal

It is possible to legally copy an idea behind another advertisement, but you can't substantially reproduce the other advertisement.

A recent Federal Court decision is a good reminder to marketers that they need to be careful when seeking to express the same concepts or ideas found in someone else's advertising. Although it is possible to copy an idea behind another advertisement, simply changing a few words will not be enough - you need to come up with your own expression of the relevant idea.

Two optical retailers, two ads offering free replacement glasses

Budget Eyewear Australia Pty Ltd and Specsavers Pty Ltd are competitors. Budget Eyewear, which is part of the same corporate group as the company which operates the OPSM chain, operates the chain of Budget Eyewear optical retail stores, while Specsavers operates the chain of Specsavers optical retail stores.

On 1 May 2010 Budget Eyewear launched its "See it like it is" advertising campaign which offered to replace broken Specsavers glasses with Budget Eyewear prescription glasses. The campaign included print advertisements and a radio script, and included phrases such as:

"If your Specsavers glasses break (and we're not saying they will) we'll replace them with a pair of ours for free".

“If your Specsavers glasses break – and we’re not saying they will – simply bring them into Budget Eyewear. We’ll replace them with a pair from our own range – free of charge”.

“If your glasses aren’t all they’re cracked up to be, don’t worry, we’ll come to the rescue. For the next two weeks... you can take any Specsavers glasses to your nearest participating Budget Eyewear store and we’ll replace them with a pair from our range – free of charge”.

Specsavers launched its own "fight back" campaign on 13 May 2010. Its print advertisement included the following phrases (the bold words are the same as the equivalent sentences in the Budget advertisements):

If your OPSM glasses happen to break, and we’re not saying they’re going to, we’ll exchange them with a pair from Specsavers with a 2 year guarantee, for free

If your prescription glasses aren’t what you hoped for, don’t stress – we’re here to help. From Thursday 13th May to Thursday 27th May, take any broken OPSM glasses to your nearest Specsavers store and we’ll give you a pair from our range – for free”.

Budget Eyewear sued Specsavers

Budget Eyewear commenced Federal Court proceedings on 14 May 2010, seeking an urgent injunction to stop the use and publication of Specsavers' advertising campaign. It alleged that the Specsavers print advertisement infringed the copyright in two Budget Eyewear print advertisements and a radio script.

Specsavers admitted that it copied Budget Eyewear's advertising for its own advertisement. Specsavers had directed its advertising agency to utilise Budget Eyewear's campaign to create Specsavers' advertisement. However, it copied the idea of the campaign, not the exact wording. As a general rule, copyright protects the expression of an idea, not the idea itself.

Budget Eyewear submitted that Specsavers had attempted to avoid copyright infringement by simply replacing words from Budget Eyewear's advertisements with synonyms so that the exact words were not used. It argued that these substitutions were only minor departures from the original wording used by Budget Eyewear and were insufficient to avoid a finding of copyright infringement, particularly since it was clear and accepted that Specsavers had used the text of Budget Eyewear's advertisements to develop its own advertisement.

Court finds prima facie copyright infringement in glasses advertisements

The Federal Court granted an injunction which stopped Specsavers from further publishing its advertisement (pending the final trial in this matter).

Although the Specsavers advertisement was not an exact copy of the Budget Eyewear advertisements, it still adopted the same expression of the ideas in Budget Eyewear's advertisement where various other means could have been used to express the concept.

The Court accepted Budget Eyewear's contention that "Specsavers could have copied the idea but exercised its own imagination to express that novel concept in new and different language rather than… 'using a thesaurus' to substitute a synonym."

Having decided that the Specsavers advertisement took a substantial part of the Budget Eyewear advertisements, the Court was satisfied that there was a strong prima facie case of copyright infringement. The Court also noted that its injunction does not preclude Specsavers from creating its own expression of the concept, which, broadly speaking, could be described as the replacement of glasses on a certain basis.

This matter will now proceed to a final hearing unless it is settled out of court by Budget Eyewear and Specsavers.

Lessons to be learnt

This case makes it clear that it is possible to legally copy an idea behind another advertisement - including in any "fight back" strategy against a comparative advertisement or other form of direct attack from a competitor. However, it is crucial that, in doing so, the new advertisement does not substantially reproduce the other advertisement.

To avoid a "substantial reproduction", businesses should come up with their own expression of the relevant idea rather than, for example, simply replacing words with synonyms.

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Clayton Utz communications are intended to provide commentary and general information. They should not be relied upon as legal advice. Formal legal advice should be sought in particular transactions or on matters of interest arising from this communication. Persons listed may not be admitted in all States and Territories.