A recent ASX announcement on 5 September 2024 from Australian and New Zealand dual listed Santana Minerals Limited (ASX/NZX: SMI) has raised some interesting trade mark and copyright issues in the context of their gold mining exploration operations. Scoping studies estimate that Santana's revenue from gold sales could be up to NZ$4.4 billion, with over NZ$1 billion in taxes and royalties for New Zealand.
Santana's announcement “…noted that due to copyright constraints over the use of the name Shreks in Santana’s prospect naming, the previously named Shreks and Shrek’s East prospects have been renamed as Srex and Srex-East respectively, noting their location as Southern Region Exploration prospects.”
The location of the Santana exploration site is in the Bendigo-Ophir region in New Zealand’s South Island. This is in the same region where “Shrek the Sheep” was famously located in 2004. Shrek the Sheep had evaded the muster on John and Heather Perriam’s Bendigo Station for several years and when finally rounded up, had a 27-kilogram fleece, nearly five times the weight of an average merino fleece.
Radio New Zealand reported Shrek the Sheep was named by a group of teenagers who were staying at Bendigo Station. Mr Perriman "..said to one of the girls, 'You think we should name this thing something?' And one girl said, 'It looks like an ogre.' And of course, I wasn't really aware of the films, thank god… [Another] girl said… 'What about calling him Shrek?' That was all right."
Shrek the Sheep gained national and international media attention, featuring on CNN and the BBC and became a national icon and raised funds for many worthy charities. His magnificent fleece was shorn on live television, Shrek the Sheep even met New Zealand’s prime minister of the time and was featured in his own children’s book Shrek: The Famous Hermit Sheep of Tarras. Sadly, Shrek the Sheep passed away in 2011.
Shrek the ogre, who may not need an introduction to many, is a fictional character from the original book and later a series of films by DreamWorks Animation. The original film SHREK was released in 2001 winning an Oscar and starred voice actors Mike Myers in the lead role and Eddie Murphy as Donkey and Cameron Diaz as Princess Fiona.
In New Zealand DreamWorks Animation L.L.C is the owner of the SHREK registered trade mark since 2004. According to the Intellectual Property office of New Zealand (IPONZ) database Mr Perriam did file for the trade mark SHREK in Classes 36 (charitable fund raising) and 41 (charitable events) back in July 2004 although, this was withdrawn in October 2004. Mr and Mrs Perriam had another attempt before IPONZ with a figurative trade mark in January 2008, this was accepted for publication in Classes 32 (beers and drinks) and 33 (alcoholic beverages including wine) in February 2008 although, this was also withdrawn in May 2008.
Radio New Zealand reported that the DreamWorks' solicitors and the Bendigo Station owner came to an agreement "…they agreed that as long as we called him 'Shrek the Sheep' and didn't go with commercial products, they were happy to put it to bed.".
Interestingly, Mr and Mrs Perriam’s daughter Christina founded PERRIAM in 2013, a lifestyle knitwear brand specialising in woollen products.
It is long been held since the 1930’s that in the case of book titles, newspapers or other publications that no copyright exists in such titles see Mathieson v Pitman (1930) 47 R.P.C 541 at 549. Similar considerations for films would apply although, case law in the UK and Australia has provided relief to the owners of copyright in plays and television series, whose titles had been passed off, principally by films and television series with similar names. To say that due to copyright constraints the SHREK name was changed perhaps overlooks aspect of trade mark and copyright. Clearly Santana is not in the film and television industry. It is entirely possible that Santana was advised or became aware of DreamWorks registered trade mark rights and the skirmish with Mr and Mrs Perriam. It is not clear from the Santana announcement how the potential dispute came about, and it is possible that Santana rather than face further scrutiny, simple elected to change the name from SHREKS and SHREKS EAST to SREX and SREX EAST. Santana in their announcement even, bolded the first and second letter in the words “Southern Region Exploration” to indicate that these words are the origin of their newly coined acronym for the SREX and SREX EAST prospects.
The deterrent effect of DreamWorks’ registered trade mark and the former dispute with the Perriam family, may have been sufficient to get Santana to back down.
It is advisable for Santana to file trade marks for at least SREX for “mining extraction services” in Class 37 and “mining exploration services” in class 42 in New Zealand and Australia. Copyright is not likely to offer any IP protection for the name of their prospects and registered trade mark protection is usually the most effective way to secure their newly established name. It is unlikely to encounter a relative grounds objection from IPONZ and IP Australia, as there are differences between the mark SREX and DreamWorks registration (at least in New Zealand) covers Classes 9 (computer hardware and software), Class 16 (paper and printed matter) Class 25 (clothing, headgear, footwear) and Class 28 (toys, games, playthings). DreamWorks might still oppose but may have a limited chance of success because of the specific services covered in any Santana application for SREX. If Santana obtains registrations, this is at least a prima facie defence to an allegation of trade mark infringement but not passing off.
It will be interesting to see if there is any follow up to the Santana announcement but for the moment Santana, seems to have taken a pragmatic approach to a potential dispute.
At least for now, Shrek and Shrek the Sheep’s names can no longer be taken in vain. Shrek the Sheep can hopefully rest in peace - although his legacy will not be forgotten in New Zealand - he even has two of his own memorial statues!