The plaintiff, Sunlec, was an importer and distributor in Australasia of wire marking products manufactured by an Italian company, Grafoplast S.p.A. These products provided a simple method of labelling electrical wire. 

In 1989, the plaintiff entered into a sub-distribution agreement with the first defendant under which the first defendant was granted the exclusive right to sub-distribute Grafoplast wire-marking products in New Zealand. This agreement came to an end in 1998 and the defendant then began purchasing Grafoplast products direct and importing them into New Zealand. 

The plaintiff claimed that it had developed marketing material in English to promote the Grafoplast product in certain English speaking countries including Australia and New Zealand. It further alleged that the defendant had infringed copyright in two literary works and one photographic work comprising:

(a)   Four photographs “How it works - Four Easy Steps”;

(b)   A photograph of a Grafoplast item;

(c)   A slogan “‘Field Friendly’ - The best choice for fieldwork”.

The defendant admitted that the plaintiff was proprietor of the first two copyright works and that it had infringed them. 

In 2006, the first defendant began redesigning its website. As part of this, the defendant’s marketing co-ordinator created a link to “www.grafoplast.com” thinking that this was the Italian supplier’s website, whereas in fact this was the URL of the plaintiff. The first defendant uploaded jpeg images and included the Four Easy Steps work. The marketing co-ordinator was unaware that this was not from the Italian supplier. The infringement lasted only a short time.

The marketing co-ordinator also found on his computer hard-drive a colour image of Grafoplast item 175 and used this on the first defendant’s website and also in a quick reference pocket guide. Some 2,100 copies of the guide were printed and distributed.

The slogan was included in a flyer in November 2006. 3,000 of these were printed and all but 70 were distributed. It was also available for download from the first defendant’s website. 

The plaintiff sought damages and additional damages for flagrant infringement.

Wylie J held that it cannot be asserted that copyright cannot exist in a slogan simply because it is a slogan. Inquiry must be made into the circumstances in which the slogan was evolved and had been created. If independent skill, labour and judgment had been involved in its creation (such that it satisfied the requirement of originality) and if it conveyed information, instruction or pleasure then a slogan could attract copyright protection. Copyright did subsist in the slogan in this case. Although the language taken was from the common stock of the English language, this slogan used language in a succinct and relatively memorable way and could not, on balance, be said to be hackneyed. [62] and [69]

Here the first defendant’s director had access to the copyright work and infringement was found particularly as the defendant’s use had included the speech marks around the words “Field Friendly” which were part of the slogan. 

When it came to damages, only nominal damages of $1,250 were awarded. Wylie held that here infringement occurred due to a series of simple errors by the first defendant’s employee. In each case the infringement was unintentional albeit perhaps naïve. The infringement was “for a short period” (first work) “relatively insignificant” (second work) “relatively minor” (slogan). 

As to additional damages, these were refused. None of the infringements were flagrant in the sense of being glaring, outrageous or scandalous. Nor was there any evidence that benefit of significance had accrued to the first defendant.