AGL Energy Limited v Greenpeace Australia Pacific Limited  FCA 625 (8 June 2021)
AGL was unsuccessful in its claim against Greenpeace for trade mark infringement, but prevailed, to a relatively minor extent, in its claim for copyright infringement.
AGL owns a trade mark registration dating from 8 May 2017 for the composite AGL Logo mark shown below covering a broad range of goods and services in classes 1, 4, 6, 7, 9, 11, 16, 17, 35, 36, 37, 38, 39, 40, 41 and 42:
On 5 May 2021, Greenpeace launched a campaign against AGL primarily directed to its energy generating infrastructure utilising coal and the resultant pollution. An example of an online banner used in this campaign is shown below:
AGL sought to restrain Greenpeace from using its AGL Logo in combination with the tagline “Australia’s Greatest Liability” (the “modified AGL Logo”) and alleged trademark and copyright infringement.
The modified AGL Logo was applied by Greenpeace to various media, particularly online banner advertisements, street posters, electronic mock-up street posters, a website, social media posts, a protest poster image and placards. Examples of these impugned uses are set out in Annexure A to the judgement and will not be discussed in specific detail.
Greenpeace did not dispute that AGL owns copyright in the AGL Logo, or challenge the validity of AGL’s trade mark registration. Rather, it denied infringement and contended that its use of the modified AGL logo amounts to fair dealing for the purpose of criticism or review or alternatively parody or satire within the terms of ss 41 or 41A of the Copyright Act, and that it has not used the modified AGL logo as a trade mark in the sense required by s120 of the Trade Marks Act.
Trade mark infringement
The trade mark infringement claim failed because Burley J found that the uses by Greenpeace of the modified AGL Logo in connection with its online banners and printed posters were not uses in a trade mark sense.
The relevant issue was whether, in the setting in which the modified AGL logo is presented, it would appear to consumers that the modified AGL logo possessed the character of a brand that Greenpeace was using in relation to the registered services so as to indicate a connection in the course of trade between those services and Greenpeace. His Honour considered that “consumers perceiving the online banner advertisements or the street posters would answer this question in the negative. The use of the modified AGL logo is to identify that brand, and the company that it represents, as the subject of criticism. They would not perceive Greenpeace to be promoting or associating any goods or services by reference to that mark. Rather, it is the use of the modified AGL logo to refer in terms to AGL and the goods and services that AGL provides”.
On this aspect, there are parallels here with the finding in the NRMA v CFMMEU case reported at https://www.selfmark.com.au/trademark-lawyer-sydney-federal-court-nrma/ .
Burley J also considered infringement did not arise because AGL failed to establish that the use of the modified AGL Logo is in relation to any of the services covered by its trade mark registration.
With the exception of the social media posts and some photographs of placards, Burley J found that Greenpeace had not infringed copyright in the AGL Logo.
His Honour considered many of the impugned uses by Greenpeace fell within the meaning of parody or satire. It was significant that the modified AGL logo is immediately juxtaposed by a play on the company’s initials “AGL” with the parodic or satirical words “Australia’s Greatest Liability”, accompanied by words decrying AGL’s environmental practices. However, the protest poster image and some of the photographs of placards and social media posts did not have any element of parody or satire. His Honour then considered whether the relevant parodic or satirical uses amounted to a “fair dealing” and found in the affirmative. Greenpeace had not crossed the line.
Burley J then went on to consider whether any of the uses by Greenpeace which were not parodic or satirical could fall within the fair dealing exception based on criticism or review, but found in the negative.
Although there were some instances of copyright infringement, his Honour considered it was not appropriate to make an award of additional damages under s115(4) of the Copyright Act.