It's OK to copy Tui. Yeah Right!

03 June 2010
For over a decade, DB Breweries has entertained New Zealanders with its distinctive Tui billboards.   The black and red billboards are immediately recognisable, and the catchphrase, ‘Yeah Right’, has entered the New Zealand vernacular.

Like any successful promotion, the Tui billboards have attracted copycats wanting to ride on Tui’s success.

DB’s most recent stoush involves the Bethlehem Community Church in Tauranga.  The Church has a billboard that reads, “Atheists have nothing to worry about! Yeah Right”.  The Church uses the same layout and colours as Tui.  However, they have replaced the Tui bird image with a dove and the brand Tui with the word Spirit.

The billboard is such a good copy that some people think it is a genuine Tui billboard. 

The Church’s billboard raises interesting questions about DB’s trade mark rights, as well as the laws of copyright and the Fair Trading Act. 

While the Church may have arguable defences under the Fair Trading Act and Trade Marks Act, it is unlikley to have the law on its side in any copyright infringement action.


Fair Trading Act

The Fair Trading Act provides that no person shall, in trade, engage in conduct that is misleading or deceptive, or is likely to mislead or deceive.   Trade means any trade, business, industry, profession, occupation, activity of commerce, or undertaking relating to the supply or acquisition of goods or services or to the disposition or acquisition of any interest in land.

Even though the Church’s billboard was misleading and deceptive, arguably the Church doesn’t breach the Fair Trading Act because it could argue its spiritual services don’t amount to engaging in trade.


DB’s trade mark rights

Tui owns a trade mark registration for the mark ‘Yeah Right’ in the classification that covers ‘beers’.  To infringe this registration, the Church would have to use the ‘Yeah Right’ trade mark in the course of trade in relation to the goods the mark is registered for.  Arguably the Church has a defence to trade mark infringement.  First, because the Church is not using the ‘Yeah Right’ trade mark in relation to beer or similar goods, and second, the Church may be able to argue that it is not using the trade mark in the course of trade.

Tui also owns a registration for a rectangle device where the right two thirds are black and the left third is orange.  This registration covers beer and advertisement boards.   Again, however, the Church arguably also has a defence to infringement first, because it arguably not using this trade mark in the course of trade, and secondly, because it is not using the mark in relation to advertisement boards.  While it is using an advertisement board to promote its message, it is not in the advertising industry.  Instead, it is using the billboard to promote spiritual services.


DB’s copyright

The layout of Tui’s billboards would qualify as a copyright work under the Copyright Act. 

The Church clearly copied Tui’s billboard and adapted it for its own purposes.  Copyright, unlike trade mark and Fair Trading Act laws, doesn’t consider how or why you copied the artwork, or the goods promoted by the copied work.

The fact that the Church copied a copyright work is enough to infringe DB’s copyright in the billboard design.

This is an important reminder to potential copycats.  If you copy someone else’s artwork, you will probably infringe copyright whether you’re using it on the same goods and services, or not.  And you can infringe copyright without infringing the trade mark or breaching the Fair Trading Act.

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