'Albrecht Durer's Enforcement Actions: A Trademark Origin Story' by Peter Karol in 25 Vanderbilt Journal of Entertainment and Technology Law (forthcoming) comments
This article offers a reappraisal of a pair of remarkably contemporary enforcement actions brought by the Northern Renaissance artist Albrecht Dürer (1471-1528) against copyists of his work. These cases have long been debated by art, cultural and copyright historians insofar as they appear to reject Dürer’s demand for proto-copyright protection for his prints. But surprisingly little attention has been paid by trademark scholars to the companion holdings—in the same cases—that affirm Dürer’s right to prevent use of his monogram on unauthorized reproductions.
This article seeks to fill that gap by analyzing Dürer’s cases through the lens of contemporary trademark theory. It argues that, properly contextualized and understood, these cases provide the first complete record we have of tribunals enjoining the unsanctioned use of a famous mark in commerce both to protect consumers from purchasing mislabeled goods and preserve the source-associative power of that sign. In so doing, they show us a path towards recentralizing the role of artists and authors as a core aspect of trademark law’s otherwise industrial legal history.
In Choi v Secretary, Department of Communities and Justice [2022] NSWCA 170 - one of many judgments and tribunal decisions involving Ms Choi - the Court considered claims regarding denial of natural justice, defective procedure, conspiracy and invalidity such as a supposed requirement for the wearing of wigs.
The judgment states -
Appeal Ground 2 – Natural justice was not offered
129. Ms Choi has raised various complaints as to the events on 21 July 2021: in summary, that the primary judge did not robe and did not wear a wig (which she contends was a breach of the Court Attire Policy); that there was a private hearing held in her absence (or that the primary judge had already started the hearing with the respondent in her absence); that the primary judge allowed his associate to email the respondent, without copying Ms Choi into the correspondence during the hearing; that the primary judge was making orders “while being instructed” by a third party (Ms Choi says the third party can only be Ms Kaban, who is alleged to have instructed the primary judge through Bluetooth); that there was a refusal to give audio recording files and written reasons for the orders; and that one ground on which she had consented to determine the matter on the papers conditionally was that his Honour said he had to go on leave and needed to hand the decision down by the end of 2021 but did not hand the judgment down until far later on 9 March 2022; and that the judgment “is not accountable”. As noted, Ms Choi has contended that there was a difference between the official transcript of the oral hearing and her transcript (taken from the unauthorised sound recording).
130. Ms Choi says that: ... at 10:15 AM, I entered the Virtual courtroom. Two men wearing a jacket with no tie had bee [sic] talking about a tortured history of the proceedings since 2018 and the CourtBook [sic]. The courtroom was filmed in a zoom-in and I could see only an [sic] portrait of Justice Bellew who did not robe with no wig. No opening remark. In short, there was a private hearing in my absence. Also, the Associate emailed the Respondent during the hearing. I requested the Associate to send me that email. However, the Chamber ignored my request . A huge difference between the official Transcript and my Transcript. (the big font and cross-out in the Transcript are different). His Honour was being instructed when giving the oral Judgment. I am curious if one man wearing a brown jacket with no tie was his Honour.
131. Ms Choi argues that wigs and robes are symbols of tradition and justice; and complains that the conduct of this matter “did not reach the Court’s expectations and cheap enough to reject my request to provide a sound recording and a full-version transcript including reasons for orders”.
Respondent’s submissions as to the above complaints
132. The respondent accepts that there was a brief conversation (recorded on the transcript) prior to Ms Choi becoming connected to the virtual courtroom but disputes that this amounts to a denial of natural justice. Insofar as Ms Choi raises issues as to the primary judge not being robed or wearing a wig, the respondent says that the customs relating to the wearing of judicial dress in New South Wales probably originated from the Judges’ Rules of 1635 promulgated by the Judges of King’s Bench; and that the Judges’ Rules did not have force of law and so were not received from England as part of the law of New South Wales. The respondent says that there has been no subsequent legislative intervention and the Supreme Court’s Court Attire Policy, insofar as it relates to robes and wigs, is directed at barristers. …
134. As to the suggestion that there was a denial of procedural fairness by reference to the fact that the primary judge was not robed or wearing a wig (or the contention that the primary judge was wearing a brown jacket), even apart from the fact that the Court Attire Policy governs the manner in which barristers are to appear before the Court, it cannot seriously be suggested that the wearing of robes or wigs is an requirement of natural justice or that a failure to do so is contrary to the rule of law. There are indeed many Courts in this country in which wigs are not worn in court hearings (including in recent years the High Court). …
Respondent’s submissions as to the above complaints
149. As to the principal reasons articulated by Bellew J for declining to grant an extension of time in which to file the summons seeking leave, the respondent contends that Ms Choi is an experienced litigant (pointing to the fact that she has, since 2017, commenced approximately 30 sets of proceedings against (among others) the NSW Ombudsman, the Legal Aid Commission of NSW, the Commissioner of NSW Police and the University of Technology, Sydney before the Tribunal, in the Supreme Court and in the High Court) (annexing a list of those proceedings to the respondent’s submissions) and reiterates its position that this was simply a proposed re-litigation of matters previously disputed. ...
213. What is clear, however, is that one looks to the nature and character of the function that is exercised in order to characterise it as either judicial or administrative: it is undoubtedly a matter of substance rather than form (or, as here suggested by Ms Choi, attire). Thus, whether or not the primary judge was wearing a wig says nothing about whether he was exercising judicial power. (Indeed, as may become apparent if Ms Choi pursues her foreshadowed application for special leave to the High Court, the judges of our ultimate appellate court do not wear wigs; but it would surely not be suggested that in hearing appeals and determining litigious controversies in the High Court without wearing wigs their Honours were exercising administrative rather than judicial functions.) Similarly, what colour suit the primary judge may have worn (Ms Choi expressing the opinion that judges wear black) or whether his Honour was wearing a tie, says nothing about the functions there being exercised. ...
223. The features which make this a clear case for making [a Teoh] order are the quantity of proceedings commenced by Ms Choi, the disproportionality between the number of those proceedings and the matters in issue, the thousands of pages of material which regularly accompanies them (to none of which was this Court taken on the present applications) and the seriousness of the allegations made in circumstances where, if they were made by a legal practitioner, there would be a clear breach of the applicable professional rules. Among other things, Ms Choi has made allegations that: the Supreme Court issued a “fraudulent official transcript” of the hearing before Bellew J on 21 July 2021; there has been manipulation and/or removal by the Registry of part of the White Folder; the primary judge is in contempt; there has been a breach of the Privacy and Personal Information Protection Act 1998 (NSW) by the Registrar who provided assistance to Ms Choi by drafting a notice of change of address for service; and the primary judge has made orders under instructions from a third party. It is clear that Ms Choi has no compunction in making very serious allegations of fraud and corruption against any number of persons involved in the proceedings (without the necessary detail required to make such serious allegations).
224. Moreover, following the hearing, Ms Choi has continued to inundate chambers with email correspondence making serious allegations against parties to the proceedings and inappropriate requests of the Court and the other parties. This has the inevitable result that Court time has been occupied in dealing with the matters and the respondents’ time and costs have been expended in responding to them.
225. In addition, there is the absence of any place of address in New South Wales at which Ms Choi may be served, and against which, if necessary, execution can be levied. We do not express a view as to whether there has been conduct which amounts to either or both of a serious contempt of court and a serious breach of the Court Security Act by what has been published on YouTube, but the potential criminality as well as the practical difficulties in enforcing the costs orders that regularly accompany Ms Choi’s unsuccessful applications make the absence of the local address required by UCPR r 4.5 more than a merely technical breach.
226. In short, all persons enjoy an important right to invoke the jurisdiction of this Court. However, that right comes with concomitant responsibilities, and it must not be thought that this Court is powerless to prevent its processes from being abused. It is appropriate in those circumstances and having regard to case management principles and the overriding purpose mandated by s 56 of the Civil Procedure Act to make such a direction in the present case.
