NZ Rugby Football Union v Saint Publishing Ltd

High Court of New Zealand

Williams J

2 October 2001

The recent Arsenal decision of Laddie J has raised a number of concerns for those involved with licensing and merchandising of sports teams and sports marks.  The Arsenal decision has not been followed in New Zealand in a recent case involving the merchandising of the All Blacks. 

The plaintiff (NZRFU) is the official body responsible for the administration and promotion of rugby in New Zealand.  Its national team has been known as the All Blacks for over 100 years.  The All Blacks play in black jerseys with the silver fern on the left breast and black shorts.  In the mid 1980s when rugby became professional, the NZRFU registered ALL BLACKS as a trade mark together with its own stylised version of the silver fern.  One such registration was in class 16.   The NZRFU entered into commercial licences with a number of persons and organisations and now derives substantial income from such licensing and merchandising. 

Alongside these steps, the NZRFU had entered into contracts with its players.  A wholly owned subsidiary of the NZRFU, All Black Promotions Limited, had a contract with, inter alia, Anton Oliver, the current All Black captain.  Under the contract, ABPL had the “exclusive right to reproduce and publish the player’s name, likeness, image and signature in any promotion or sponsorship arrangement including any advertising and merchandising material”. 

The NZRFU had granted a licence to a company to produce official All Black calendars.  The current 2002 official calendar included a composite photo of seven current All Blacks including the captain, Anton Oliver. 

The defendant had printed a number of 2002 calendars.  On the cover were the words “Born to Lead - All Black Test Captains 1958-2001” and photographs of five such captains including Anton Oliver.  The rear contained miniatures of each of the 22 photographs appearing on the monthly pages within and a sample page showing the photograph and some playing details of the captain depicted.  The calendar was based on a book published by Mr Paul Verdon entitled “Born to Lead”. The rear of the calendar also included six pages of legend about All Black test captains with a reference to the book. 

The NZRFU sought an interim injunction restraining the defendant from selling or distributing the Born to Lead calendar and from using its registered trade marks including ALL BLACKS, on any paper goods including calendars.  The causes of action relied on included trade mark infringement and a breach of the Fair Trading Act.  Williams J granted the injunction.

Trade Mark Infringement

As to trade mark infringement, the plaintiff contended that the defendant was using its registered trade mark by referring to ALL BLACK on the front and rear of the calendars and in the brochure and by using the mark as part of a photograph of Anton Oliver and other All Black captains.  The key issue is whether such use amounted to use as a trade mark.

For its part, the defendant contended that there was no trade mark use and that the calendar was derived from the book Born to Lead, publication of which had not been contested by the NZRFU.  The defendant particularly relied on Trebor Bassett Limited v The Football Association [1997] FSR 211 and the recent Arsenal case, Arsenal Football Club Plc v Reed [2001].  In the former case, photographs of soccer players wearing their English football strip were included as collectables in packs of candy. This was held not to amount to use of the FA’s trade marks as a sign.  In Arsenal the Court held that Mr Reed’s use of Arsenal trade marks on merchandise would be “perceived as a badge of support, loyalty or affiliation” not as “indicating trade origin”. 

Williams J held that in each case, use as a trade mark depends on all the facts and circumstances of the case. Here there was a serious question to be tried that this was use as a trade mark.  He held that on the facts “the implication is irresistible that the Born to Lead calendar as a whole is designed to tap into and utilise the reputation in the All Blacks to maximise sales ... Further the use of the registered phrase ‘All Black’ could not be said to be incidental or merely descriptive otherwise the subtitle of the Born to Lead calendar could easily have been ‘New Zealand National Rugby Team Test Captains’.  The phrase ‘All Black’ must also have been chosen partially to usurp the reputation enjoyed by the team”.

Nor was the trade mark on the front cover and use of the photographs simply incidental or descriptive as in Trebor Bassett. The use of photographs of captains in the “All Blacks” uniform must have been precisely to capitalise on their All Black status.  Also use of the phrase All Blacks and the NZRFU’s registered mark was not to demonstrate allegiance Williams J stated:

“The Born to Lead calendar is not just a calendar and it is not just a calendar depicting action photographs from All Black matches nor is it just a calendar depicting well-known rugby players, even All Black captains with potted biographies of them.  It is a calendar depicting those well-known rugby players in their capacity as All Blacks and, additionally, as captains of the All Blacks over the past 43 years.  The emphasis is on their status as an All Black captain.  In order to illustrate that, the calendar uses the NZRFU marks on its photographs of every All Black captain since the mid 1980s and uses those marks in the course of trade on goods covered by the trade marks’ registration.”

Fair Trading Act

As to the Fair Trading Act, Williams J held that the Born to Lead calendar amounted to false, misleading or deceptive representations in breach of sections 9, 10, and 13.  The plaintiff relied on the Australian Kieren Perkins decision, Talmax Pty Limited v Telstra Corporation Limited (1996) ATPR 42, 823.  Here there was a contractual provision in players’ contracts granting to the plaintiff exclusive rights to the use and publication of existing photographs in a player’s capacity as a member of the All Blacks, including photographs produced during the term of the player’s contract with the NZRFU.  The Court held that the photograph of Anton Oliver was not just an action photograph but a formal one posed in his All Black uniform.  Williams J concluded that “it is arguable that a member of the public, seeing the particular photograph of Mr Anton Oliver on the cover of the Born to Lead calendar in his All Black uniform, would conclude that Mr Anton Oliver or the NZRFU had consented or in some way authorised the use of that particular photograph for merchandising purposes”. 

The final matter to note was an interesting observation from the Court dismissing the defendant’s suggestion that damages would be an adequate remedy so that no injunction should issue:

“But in intellectual property cases ... there is a danger in accepting a defendant’s plea that damages will be an adequate remedy for plaintiff.  That danger is that owners of intellectual property have rights to exploit that property not just between the parties to the dispute but in the public arena.  In such an arena, if erosion of goodwill and reputation which those rights are designed to protect is allowed, the erosion will be on many fronts perhaps, in a case such as this, in relation to every purchasing decision of a calendar by or for those who are interested in rugby.  In this Court’s view, the adequacy of damages for a plaintiff owning intellectual property rights occupies less importance than in many another injunction case.  Those owning intellectual property rights should not have a de facto licensing regime forced upon them by those who infringe those rights and then assert, in justification of their conduct, that owners’ rights can be adequately compensated in damages.  It is for the owner of those rights to decide how best to utilise them and to reap the rewards.  It is not for infringers to dictate that result.”

This statement of principle will be helpful in many applications for an interim injunction seeking to enforce intellectual property rights.