Cotton On settles Biggie Smalls copyright case

A recent legal battle between clothing retailer Cotton On and kebab business ‘Biggie Smalls Kbabs’ has highlighted the need for small businesses and designers to protect their logos and designs from unauthorised copying by retail giants.

Delia Nominees Pty Ltd, the owner of popular hip-hop diner and food truck Biggie Smalls Kbabs, filed a copyright infringement suit with the Federal Court alleging the retailer had infringed the copyright in its well-known logo (represented below).

The infringing items in question were caps and socks with logos featuring the words ‘Biggie Smalls’ also in a crown device. Delia alleged the items had been on sale since at least December 2018.

They were subsequently removed from sale by Cotton On in late January 2019. Delia also claimed that Cotton On made a profit from this infringement and that Delia suffered loss and damage, including to its reputation in the Biggie Smalls brand.

In its Statement of Claim, Delia sought an award of damages including the profit made by Cotton On through sales of the infringing products. In its defence, Cotton On denied any copyright infringement of the Biggie Smalls logo. It claimed it was not aware and had no reasonable grounds to suspect it had infringed the copyright in the Biggie Smalls logo.

The parties recently reached a private settlement in this matter.

Cotton On has previously faced legal action over copyright breaches. In 2008 the Full Court of the Federal Court found that Cotton On infringed the copyright of fashion brand Elwood by copying two  popular T-shirt designs. It also settled copyright infringement cases with two US companies after allegedly copying trade marked phrases without authorisation.

Copyright exists immediately after a work is created, with no need for registration. Works which are protected by copyright include artistic works (such as business logos), musical works and literary works. To be protected, the work must be original, attributing to the creator’s skill and labour.

This case stresses the importance for copyright owners to enforce their rights if a party attempts to copy their logos, designs or other copyright works. Copyright infringement can result in damage to a business’ reputation and a loss of profits.

If you are concerned about your copyright being used without permission, Macpherson Kelley can assist in enforcing your rights. If you have any questions, please contact Belinda Sigismundi.

This article was written by Belinda Sigismundi, Principal Lawyer – Commercial and Emma Berry, Lawyer – Commercial.