Art Case Update: trade mark decisions from Australia to the UK, and moral rights consent
Photo by Kirby Taylor on Unsplash
Aurelian Lawyers & Advisers is your go-to source for art-related legal cases and law reform in Australia, as well as select cases internationally.
In this story, Principal & Founder Alana Kushnir and Lawyer Sarah Wei report on recent developments in orphan works legislation, and moral rights and trade mark cases in Australia. Then, from France and England to the U.S., we examine leading trade mark judgements, restitution cases, and explain the effect of tariffs on the art market.
Australia
McCallum v Projector Films Pty Ltd
A landmark Federal Court decision — McCallum v Projector Films Pty Ltd (Liability Hearing) [2026] FCA 173, handed down on 27 February 2026 — is the first Australian ruling to directly address whether a blanket contractual waiver of moral rights is legally effective. The answer is an unequivocal no.
Stephen McCallum, a film director with over 20 years of experience, was engaged under a Director's Agreement with Projector Films Pty Ltd to direct the documentary Never Get Busted! - a film following the life of Barry Cooper, a former Texas narcotics officer turned drug reform campaigner. The film screened at the Sundance Film Festival in Utah and had its Australian premiere at the Melbourne International Film Festival (MIFF) in August 2025. Despite the Director's Agreement recording McCallum as the "Principal Director", Projector Films and co-respondent David Ngo promoted and exhibited the film crediting Ngo as the sole director in promotional materials, on IMDb, and at international screenings. McCallum received no attribution at Sundance, and only limited attribution at the Dances with Films Festival in Los Angeles.
McCallum brought proceedings alleging infringement of his moral rights, misleading and deceptive conduct under the Australian Consumer Law, and breach of the Director's Agreement. The respondents defended the claims on the basis that Ngo had conceived the central idea of the documentary and carried out substantive directorial work. They also relied on clause 6.2 of the Director's Agreement, which provided that McCallum "waives all moral or other similar rights in respect of the Documentary or the Development Materials that the Director may be entitled to under the laws of any jurisdiction throughout the world in perpetuity."
Under the Copyright Act 1968 (Cth), authors of copyright-protected works - including literary, dramatic, musical and artistic works, and films - hold moral rights. In the context of a film, those rights are conferred on the principal director, the principal producer, and the principal screenwriter. The three key moral rights are:
the right of attribution,
the right against false attribution, and
the right of integrity.
Where a film has more than one director, the rights vest only in the "principal director" — the person with chief or main management, control, supervision, and responsibility over the creative process. The Court looked at the actual work done rather than job titles or contractual labels. While Ngo was found to be a director of the documentary — particularly for his contributions during post-production and editing — he did not exercise overall creative control, and McCallum was found to be the sole principal director.
The respondents' reliance on the waiver clause failed on two grounds. First, Justice Shariff held that a general waiver of moral rights is inconsistent with the text, context and purpose of Part IX of the Copyright Act, and is also contrary to public policy: moral rights are personal and inalienable, and cannot be assigned, licensed or waived. Second, the clause could not be recharacterised as a consent to specific acts, because its second sentence granted consent only to "material alterations" - underscoring that the first sentence was intended as a broad waiver, not a specific written consent. Under the Copyright Act, any valid consent must be
specific,
informed, and
directed to identifiable acts or classes of acts.
The Court found the respondents had infringed McCallum's moral rights by failing to attribute him properly and by falsely attributing Ngo as the sole principal director. Projector Films also breached its contractual obligations and engaged in misleading and deceptive conduct, including through representations on IMDb and at the Sundance and Melbourne film festivals. Projector Films lost most of its cross-claims, with the Court rejecting most of the allegations made against McCallum. The matter has proceeded to a separate hearing on relief, remedies, and costs.
For anyone working in the film, publishing, design or visual arts industries, the decision is a clear warning: a clause that purports to waive all moral rights - no matter how broadly drafted - will not hold up under Australian law. Consent to specific acts that might otherwise infringe an author's moral rights remains possible, but must be carefully and precisely drafted to meet the statutory requirements.
Changes to Orphan Works Rights Under the Copyright Amendment Bill 2026
The Copyright Amendment Bill 2026 (Bill) was passed on 1 March 2026, introducing two major reforms dealing with orphan works and classroom use of copyright material.
For orphan works, the scheme inserts a new section under Division 2AAA into Part V of the Copyright Act 1968 (Cth), operative as sections 116AAB–116AAF.
Orphan works are copyright-protected materials whose owners cannot be identified or located despite diligent effort. The stated purpose of the new section, set out in section 116AAB(1), is to "limit the remedies that may be available for infringement of copyright where the copyright owner or owners could not be identified and located at the time of the infringing use." The scheme operates by limiting what a rights holder can recover, not by rendering all uses of orphan works lawful.
The limitation on remedies is available only where all six conditions in section 116AAE are met:
A reasonably diligent search for the owner or owners of copyright in the copyright material was conducted.
The search was conducted within a reasonable period before the infringing use.
A record of the search was maintained for a reasonable period.
At the time of the infringing use, the defendant could not identify and locate the owner or owners of the copyright.
Notice was given in relation to the infringing use.
The notice was given in a clear and reasonably prominent manner.
Where a rights holder comes forward after the work has been used under the scheme, the Act provides that a court may order reasonable payment for past infringing use, equivalent to the licensing fee that would have been paid. However, damages and an account of profits are unavailable where the section 116AAE conditions have been met.
Interestingly, the Explanatory Memorandum states that the scheme is not intended to support large-scale use of copyright materials for training generative AI. The search and notice requirements would be prohibitively burdensome at the scale at which AI training operates, and this use case falls outside the legislation’s intended scope.
We previously covered these amendments at the bill stage and their effects here.
Schedule 2 - Clarification of s 28 for educational settings
Separately, Schedule 2 of the Bill amends s 28 to confirm that the existing exception permitting teachers and students to perform or communicate copyright material in the course of giving educational instruction applies consistently whether the class is delivered in person, online, or in a hybrid setting.
What does this mean for the art market?
For museums, galleries, libraries, archives, and researchers, section 2AAA provides a structured pathway to lawful use of works with uncertain provenance. Institutions should update their internal search protocols now to ensure compliance is audit-ready before the first use relying on the scheme is made.
Taylor v Killer Queen LLC
On 11 March 2026, the High Court of Australia handed down its long-awaited decision in Taylor v Killer Queen LLC [2026] HCA 5, ruling 3:2 in favour of Australian fashion designer Katie Taylor (born Katie Jane Perry) and reinstating her registered trade mark "KATIE PERRY" in class 25 for clothing. Ms Hudson's associated companies were held liable for trade mark infringement. Ms Hudson herself was not found liable, as she was able to rely on the "own name" defence. The matter has been remitted to the Full Federal Court to determine outstanding questions of relief — including whether the designer's 10-year delay in commencing proceedings affects the remedies available to her - and costs.
Ms Taylor (the Designer) is an Australian fashion designer whose legal name is Katie Perry. She launched a clothing label under the "KATIE PERRY" name in 2007 and registered the trade mark in class 25 for clothing on 29 September 2008. At the same time, global pop artist Katy Perry (born Katheryn Elizabeth Hudson, the Singer) was rapidly building a reputation in Australia — in music and entertainment, but not in clothing. The Singer became the registered owner of the trade mark "KATY PERRY" in Australia in class 9 (recording disks) and class 41 (entertainment) on 7 November 2011.
In 2019, Ms Taylor commenced Federal Court proceedings alleging that the respondents had imported, distributed, advertised, and sold clothing in Australia bearing the Singer's mark "KATY PERRY", infringing her registered trade mark under section 120 of the Trade Marks Act 1995. At first instance, Justice Markovic J found that Ms Hudson's associated corporate entities had infringed Ms Taylor's registered trade mark and dismissed the cross-claim to cancel it. Ms Hudson herself was not found liable by reason of the own-name defence. The corporate respondents appealed and the Full Federal Court overturned the trial decision, ordering that Ms Taylor's trade mark be cancelled on the basis that ongoing use of it would likely result in consumer deception or confusion. Ms Taylor was then granted special leave to appeal to the High Court.
On the scope of reputation, the majority of the High Court confirmed that a trade mark can only acquire a reputation in Australia in respect of the particular goods or services it is actually used for. Because a trade mark is by definition a sign used to distinguish goods or services, and because a registered owner's exclusive rights apply only to specific goods or services, a reputation in a mark is necessarily tied to those goods or services. The Singer was undeniably famous in Australia by September 2008 — but her reputation was in music and entertainment, not clothing. The Court also made clear that a common industry practice — such as pop stars selling merchandise — cannot by itself extend the scope of a trade mark's reputation beyond its actual use.
On notional use, both section 60(b) and section 88(2)(c) require consideration of notional normal and fair use - not merely actual use of the mark - when assessing likelihood of confusion. Upon registration, the owner obtains an exclusive statutory monopoly across the full breadth of the specification. The majority found that an ordinary person who was aware of Ms Hudson would quickly realise that clothing bearing the KATIE PERRY trade mark was unconnected to the pop star, particularly given that the clothing did not display Ms Hudson's image or the name or details of a song, album or tour. The danger of confusion was therefore possible, but not real or tangible. Notional use cannot extend to illegitimate or improper use, including use that would trade off another mark's reputation.
On the weight to be given to the absence of confusion evidence, the majority found that the complete absence of any evidence of actual confusion across a decade of coexistence was a meaningful factor, given that Ms Hudson's associated companies bore the onus of proof. The dissent (Associate Chief Justice Gordon and Justice Beech-Jones) agreed with the majority on questions of statutory construction but differed on the application to the facts, finding that the Singer's reputation did extend to clothing as at the priority date and that the Taylor Mark should therefore be cancelled. The case confirms that the question of likely confusion is highly context-dependent, and that a long period of market coexistence with no demonstrated confusion can carry significant evidentiary weight.
The case also significantly develops the assiduous infringer doctrine. Justice Steward found that the Singer's persistent marketing of "Katy Perry" branded clothing in Australia - which had already been found to infringe the Designer's Mark - materially contributed to any likelihood of confusion in the market. A party should not be allowed to infringe someone else's trade mark repeatedly, build up their own commercial presence through that infringement, and then rely on the resulting confusion as evidence that the original registered mark should be cancelled. The principle — derived from the case Murray Goulburn - was applied directly in the context of section 88(2)(c). It would be, in Justice Steward’s words, "an extraordinary result" if infringing conduct could form the basis for an application to rectify the very mark being infringed.
For brands and creatives, the key lesson from this case is that a trade mark can only acquire a reputation in Australia in respect of the specific goods or services it is actually used for — fame in one field does not automatically translate into protection in another. Registering early matters: it establishes priority and gives the owner an exclusive statutory monopoly across the full scope of the registration. But registration is only the starting point. The outstanding question on remittal — whether Ms Taylor's 10-year delay in commencing proceedings will reduce the remedies available to her — is a reminder that a registered trade mark must be actively monitored and enforced. Delay carries real risk.
Finally, the assiduous infringer principle confirmed in this case has broader significance: a party that builds a commercial presence through infringing conduct cannot then use the resulting confusion as a basis for seeking cancellation of the very mark it has been infringing.
International
A Painting Cannot serve as Security for Costs in High Court Litigation
On 30 January 2026, the UK High Court handed down judgement on the case of Brewer Management Corporation v Christie Manson and Woods Ltd [2026] EWHC 126 (Ch), where a dispute arose between BVI-incorporated Brewer Management Corporation (BMC), whose ultimate beneficial owner is the Ghandehari family, who allege that Christie's induced it to enter into a £16 million irrevocable bid agreement for a Picasso painting, Femme dans un rocking-chair (1956), through misrepresentations about the level of interest in the work and its provenance. BMC seeks rescission of the agreement, repayment of £4.8 million already paid, and damages for breach of fiduciary duty and negligence. Christie's denies the allegations and counterclaims for the full outstanding purchase price of over £16 million, plus 16% contractual interest.
The decision reported here concerns an interlocutory application: Christie's application for an order that BMC provide security for Christie's costs of defending the claim.
The most interesting question before the Court was whether a painting by Flora Yukhnovich - I'll Have What She's Having (2020), acquired by BMC at Sotheby's - could be offered as valid security for Christie's costs. The painting was described as the only asset BMC had disclosed as being within the jurisdiction, BMC being a company incorporated in the British Virgin Islands.
The Court declined to order security on two principal grounds. First, artworks are illiquid assets. A defendant is entitled to payment of costs within 14 to 28 days of a costs order, and that timeframe is incompatible with realising a painting at full value. The Court also noted that BMC had produced insufficient evidence to confirm that it, in fact, owned the Yukhnovich painting.
Second, BMC sought to rely on the personal wealth of Mr Ghandehari - and on undertakings given by Mrs Ghandehari, his wife - as an alternative answer to the application. The Court rejected this approach. The evidential burden rested on BMC to demonstrate that Mr Ghandehari held net assets sufficient to meet any costs order, and BMC failed to discharge it. The materials produced amounted to press articles and a heavily redacted accountant's letter, which BMC ultimately chose not to rely upon, apparently to avoid its financial position entering the public domain. As the Court observed, no proper evidence had been provided as to Mr Ghandehari's financial position.
The most compelling reason for refusing security was, however, Christie's own substantial counterclaim. Christie's is itself seeking the full outstanding purchase price from BMC - raising precisely the same factual issues as BMC's primary claim. The Court applied the Crabtree principle: where a claim and counterclaim cover the same ground, it will ordinarily be unjust to order security for costs, because the defendant is in any event required to litigate those very issues in pursuit of its own counterclaim. Christie's would need to defeat BMC's claim to rescind the agreement in order to succeed on its counterclaim, and the two sets of issues could not be disentangled.
The Court acknowledged the general principle that a defendant facing a claim by an impecunious claimant company should ordinarily receive a measure of costs protection. However, taken together, Christie's own powerful counterclaim raising the same issues, the existence of the Yukhnovich painting within the jurisdiction, and Mrs Ghandehari's undertakings in respect of it, led the Court to conclude that it would not be just to order security in all the circumstances.
The security for costs application has now been resolved. The substantive dispute — whether Christie's induced BMC to enter into a £16 million irrevocable bid agreement through misrepresentations about a Picasso — remains ongoing.
Zaha Hadid Case puts an “Indefinite” Trade Mark Licence under the Spotlight
On 27 February 2026, in Zaha Hadid Ltd v The Zaha Hadid Foundation [2026] EWCA Civ 192, the UK Court of Appeal considered precisely this question in the context of one of the most recognisable names in contemporary architecture- and, in doing so, reversed the decision of the High Court below.
Dame Zaha Hadid, the Iraqi-British architect and first woman to win the Pritzker Architecture Prize, registered “ZAHA HADID” as a trade mark and in 2013 granted her architectural practice, Zaha Hadid Limited, a licence to use the name in connection with its architectural services. The licence provided that it would "continue indefinitely, unless terminated earlier" - but the termination clause granted only Dame Zaha (and, after her death, the Foundation) express rights to bring the agreement to an end. The Company had no such right. In return for the licence, the Company paid a 6% royalty on net income.
Following Hadid’s death in 2016, the trade marks passed to the Zaha Hadid Foundation. In March 2024, the Company gave 12 months' notice to terminate the licence and sought a declaration that it was entitled to do so. The Foundation maintained that the termination clause was exhaustive - that is, that termination could only occur through the express rights granted to the licensor, leaving the Company bound indefinitely.
The High Court agreed with the Foundation, finding no implied right for the Company to terminate on reasonable notice. The Court of Appeal reversed that decision. Drawing an important distinction between “indefinite” and "perpetual", the Court held that a licence expressed to continue indefinitely is not the same as one intended to last forever. Absent clear drafting to the contrary, a licence of indefinite duration is terminable by either party on reasonable notice - and the express termination rights granted only to the licensor did not displace that conclusion.
For artists, architects, designers, and their estates, this case is a timely reminder that a name is not just an identity - it is a commercial asset.
Licensing that asset requires precision. Without careful drafting, an agreement intended to be long-term can unintentionally bind one party in perpetuity, or leave the other with no clear path to exit. The distinction between "indefinite" and "perpetual" may seem subtle, but in this case it determined whether a decade-long licence could ever be brought to an end.
Read the full case here.
Modigliani Restitution Case
The New York Supreme Court in Greason v Nahmad (2026) NY Slip Op 50461(U) has ordered the restitution of Amedeo Modigliani’s ‘Seated Man with a Cane’ to the heir of French art dealer Oscar Stettiner, bringing to a close a dispute that began during World War II.
Oscar Stettiner was a Jewish art dealer of British nationality who fled Paris in 1939 as the German forces advanced, leaving behind his collection. A Modigliani painting - Seated Man with a Cane (1918) — was subsequently sold at auction in Paris on 3 July 1944 under Nazi administration, without his knowledge or consent. A French court recognised Stettiner's right to restitution in 1946, but the work was never returned. It disappeared for decades before resurfacing at a Christie’s auction in London in 1996, where it was acquired by International Art Center, S.A. - a Panamanian holding company — for approximately $3.2 million. In 2015, Stettiner's grandson, Philippe Maestracci, commenced proceedings in the New York Supreme Court seeking the painting's return.
The defendants argued, uncertainty as to whether the painting in their possession was the same work, gaps in the provenance record; and remoteness of time. They also maintained that they did not personally own the painting, asserting that it belonged to International Art Center, S.A., a separate Panamanian holding company.
That defence became difficult to sustain after the 2016 Panama Papers leak revealed that David Nahmad controlled International Art Center. Swiss authorities subsequently raided the Geneva storage facility where the painting had been held since 1996 and confiscated the work. Nahmad eventually conceded ownership but maintained he had acquired the painting in good faith. The dispute then shifted from jurisdictional questions to the substantive issue of title.
Judge Joel M. Cohen of the New York Supreme Court granted summary judgment in favour of the estate. He found that Stettiner owned the painting - or at minimum had a superior right of possession - prior to its wartime dispossession, and that he had never voluntarily relinquished it. The 1944 auction sale was treated as a forced transfer incapable of passing good title. The Court rejected the defendants' argument that gaps in the provenance record created genuine doubt, finding a clear chain of evidence connecting the work to Stettiner through pre-war exhibition records - including a loan to the 1930 Venice exhibition - archival material, and the earlier French judgment. Judge Cohen also criticised the provenance information listed for the painting in Christie's 1996 sale catalogue, finding it had been erroneous and misleading, whether by design or inadvertence — and noting this as a recurring issue in restitution cases where inaccurate provenance can obscure a work's looted origins. The painting is estimated to be worth up to $30 million.
Subject to any appeal, this decision reinforces that title to artworks cannot be reconstructed through market transactions, corporate structures, or the passage of time. New York courts will look through layers of ownership where the underlying transfer was unlawful. For buyers and auction houses, it is also a reminder of the due diligence risks that arise when acquiring works with incomplete or contested provenance records.
US Temporary Import Surcharges Now Apply to Most Art and Collectibles entering the United States
In February 2026, the United States introduced temporary import surcharges that now apply to most goods entering the country, including many art and collectible objects. While original works of art and many antiques classified under HTS Chapter 97 often retain a zero ordinary customs duty rate, the new surcharges apply as a separate layer on top of that rate, unless a specific exemption applies.
For collectors, dealers, and advisers working across borders, two points are worth noting. First, the assumption that art enters the US duty-free is no longer straightforwardly correct. Second, not all art, design and collectible objects fall within Chapter 97. Mass-produced reproductions and works of conventional craftsmanship are excluded from that classification, meaning that decorative arts, furniture, watches, jewellery and collectible design objects may face import duties of 30-50%.
Cross-border acquisitions are now shaped not only by taste, but by classification, country of origin, timing, and the manner in which an object enters the country. Taking early advice on tariff classification is increasingly important for any significant international acquisition.
Read more here.
France has halted the Export of a Rediscovered 1517 Silverpoint Drawing by Hans Baldung Grien, offering a Notable Example of Cultural Heritage Law Intervening Directly in the Art Market.
Portrait of Susanna Pfeffinger resurfaced recently after reportedly remaining in the Strasbourg family collection for over five centuries. It was expected to sell in Paris for US$3.5 million through Beaussant Lefèvre & Associés auction house and Cabinet de Bayser gallery. However, following an opinion issued by the Advisory Commission for National Treasures on 18 March, the French Minister of Culture refused the export certificate, stopping the work from leaving France.
Under Articles L111-1 and L111-4 of the French Code du patrimoine, refusal of an export certificate, can classify an artwork as a trésor national (national treasure), triggering a temporary export ban of up to 30 months. That period gives the State and public institutions time to raise funds and acquire the piece at market value.
Australia’s nearest equivalent is under the Protection of Movable Cultural Heritage Act 1986 (Cth), which restricts the export of protected objects on the National Cultural Heritage Control List without an export permit. But the outcome is quite different. While both regimes regulate export, France’s framework creates a formal window for public acquisition. Australia’s system is primarily concerned with controlling overseas exports, not intervening in domestic market transactions.
The contrast reflects deeper legal and cultural differences. France treats certain privately owned artworks as part of the national patrimony and is prepared to intervene accordingly. Australia’s framework is comparatively more market-oriented, with a stronger emphasis on export control than preservation through acquisition.
Read more here.
UK Supreme Court Opens New Pathway for AI Patents
In Emotional Perception AI Ltd v Comptroller General of Patents, Designs and Trade Marks [2026] UKSC 3, the UK Supreme Court abandoned the longstanding Aerotel "contribution" approach to patentability, instead adopting the European Patent Office's "any hardware" and “intermediate step" analysis. The new test questions if the claim involves ‘any piece of hardware’ at all— any computer, processor, storage medium, signal, or other physical technical means? If yes, the invention has technical character and is not excluded as a computer program.
For anyone working at the intersection of AI and IP the case opens a meaningful pathway for AI-related inventions to be patented in the UK and signals a fundamental reset of how computer-implemented inventions will be assessed going forward.
Read more here.
Secret Profits from Banksy Prints
UK television personalities Ant McPartlin and Declan Donnelly won a court order to trace transaction details of artworks they own, after an intermediary allegedly took "secret and unauthorised profits" from the sales.
High Court judge Master Pester agreed that there was a "good arguable case that a form of legally recognised wrong has been committed" and issued a disclosure order requiring art dealer Andrew Lilley and his firm Lilley Fine Art Ltd to hand over details of their trades with the unnamed intermediary.
Read more here.
EUIPO Grand Board to Consider Whether a Face Can Function as a Trade Mark
The case of Johannes Hendricus Maria Smit v EUIPO is currently pending before the EUIPO's Grand Board of Appeal raises questions sitting at the intersection of personality rights, branding strategy, and EU trade mark law— can a face be registered as a trade mark?
Read more here.
Discussions by UK Lawyers on AI in the Courtroom
The Civil Justice Council in the UK launched a consultation in February 2026 on whether formal procedural rules are needed to govern the use of AI by legal representatives in preparing court documents.
Read more here.
Developments in Spain over customer service obligations for luxury brands
Spanish Law 10/2025 on Customer Service and Client Care Services introduces mandatory customer service obligations for retailers operating in Spain, meaning client care will be a regulated legal requirement by 28 December 2026.
For luxury brands, the law’s requirements include call response standards, the right to request a human agent, restrictions on unexpected price extras, and limits on unsolicited sales calls.
Read more here.
The contents of this article are of a general nature only. They are not and should not be used as legal or financial advice.
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