Australia Supports the Matildas

(But just not on Instagram or Facebook)

In case you have been living under a rock, you would know that the Matildas and their world cup success are big news right now. You have probably seen it on TV and on news websites and live streaming services. However, you probably haven’t seen it on Instagram or Facebook though. Why is that?

The likely reason is that it has been removed by the platform at the request of FIFA:

FIFA owns the copyright and the broadcasting rights to every match played in the world cup series. It sells the rights in the copyright to live streaming services and television broadcasters, which is a key revenue stream for FIFA.

If FIFA allowed people to attend the matches and film them with their camera phones and post them to Instagram and Facebook then it would not have the ability to sell the exclusive rights in their copyright to Seven Network and Optus Sport, so they enforce it stringently.

The legal mechanism is a portfolio of trade marks, and conditions on match tickets purchased that prohibit personal broadcasting. FIFA employs a team of people to monitor social media for breaches of their copyright, which they report to the social media platform as soon as they are detected.

The words “World Cup” are trademarked, so if a business in Australia used it, say, as part of a promotion, then it may be pursued for trade mark infringement. Trademarks are covered by Federal law in Australia and depending on the type of offence, may be caught by the Trademarks Act 1995 (Cth) and the Copyright Act 1968 (Cth). The legislation imposes criminal penalties including fines and imprisonment, however, the civil claims for compensation and costs could outweigh the fines imposed.

Trademarks, Copyright, Halal Meat and Stripper Poles

A clear example of this is the Federal Court case Vertical Leisure Limited & Anor v Skyrunner Pty Ltd & Anor [2014] FCCA 2033 in which it was not possible to assess the financial gain of the respondent, which was selling a X-Pole dancing pole and DVD set online into the Australian market that passed off as the applicant’s product.

The Court acknowledged that the conduct of the respondent cannot give rise to separate and additional damages under the Trademarks Act 1995 (Cth) and the Copyright Act 1968 (Cth) and the Australian Consumer Laws, rather the offending must be considered in its totality, and considered in context. The award of damages to compensate for lost profit and reputational harm amounted to $94,800, but additional damages of $300,000 were also awarded to punish the respondent for its flagrant and continued breach, but also to deter others.

An example where the fine was higher than the damages award is the case of Halal Certification Authority Pty Limited v Scadilone Pty Limited [2014] FCA 614 which concerned a meat product wholesaler that sold the meat with the “Halal Certified” emblem despite not having the right to use it or paying the licence fee. The remedies considered by the court were damages under the Trademarks Act 1995 (Cth) for lost licence fees and account of profits (to be paid by the infringing party to the trademark owner). The Court determined that the meat wholesaler would have been unlikely to have entered into a licensing agreement in the first place, so the damages awarded were nominal. The fine on the other hand was $91,0005 representing 150% of the annual wholesale certification fee for the two years of the infringement.

Back to the Matildas… not the Lorikeets

The Matildas were of course named after the song Waltzing Matilda. It could have been worse though, the other names in the 1995 shortlist were “Soccertoos”, “Blue Flyers”, “Waratahs”, or “Lorikeets”. Before that, they were just the “Female” Socceroos. Imagine cheering on the Lorikeets!

Even the chant “Aussie, Aussie, Aussie. Oi oi, oi.”, is trademarked, although one can only wonder how the owners of the trademark could ever hope to control Aussies’ use of that catchcry at sporting matches.

If you are thinking about registering a trade mark, or if you believe another trademark is too similar to your trade mark or branding, please contact us to talk to one of our expert solicitors.

Author Corinne Gallacher