QMJIP

Queen Mary Journal of Intellectual Property

Month: April, 2016

The Glee Club Case

by chiaraborace

 

On February 8, 2016, the Twentieth Century Fox Film Corporation lost its appeal against the Comic Enterprise Ltd (CEL) after the Court of Appeal ruled that it had infringed the CEL’s registered trademark “the glee club”, using the world glee as the name of its TV drama series1.

The Claimant, Comic Enterprise Ltd (CEL), is an entertainment company with venues in different cities in UK, such as Birmingham, Cardiff, Oxford and Nottingham. It offers stand-up comedy acts, live, recorded music and nightclub and cabaret entertainment. It is also an owner of a logo registered as a trade mark which includes the words ‘the Glee Club‘ lighted by a spotlight. The defendant, indeed, is a famous entertainment American company which has produced a high school series called Glee, focused on the glee club, its member and their relationships. In addition, since 2009 the sign “Glee” has been used for a live show based on the television series, DVDs and different goods, such as clothing.

The dispute started in September 2011 when CEL brought a claim in the High Court accusing Fox of trade mark infringement and passing off. In the judgment of 18 July 2014, the mark was declared infringed by the defendant under s.10 (2) and s.10 (3) of the Trade Mark Act 1994 and CEL could obtain a final injunction to prevent Fox from using the word glee as the name of its series. By contrast, the passing off allegation was rejected.

As a result, on the one hand, Fox appealed the ruling and rejected all arguments of the deputy judge which brought him to find the trade mark infringement under s.10(2)(b) and s.10(3) of the 1994 Act, while CEL brought a cross appeal against the dismissal of the claim for passing off.

The legal issues considered by the Court of Appeal were as follows.

First, the Court of Appeal considered if the defendant had infringed the trade mark under s.10(2)(b) of the 1994 Act. In the High Court, the deputy judge stated that the mark and the sign are similar but the similarity “is not of the highest order” from an average consumer prospective. In particular, the word “the” and “club” are not present in the defendant’s sign and “conceptually the Mark suggests a club whereas the sign does not”. This argument, then, brought the judge to evaluate if that similarity creates a likelihood of confusion to an average consumer. In the light of evidence, specified as “wrong way round confusion evidence”, the judge declared that confusion between consumers is possible in so far as they rely on the existence of a link between the earlier mark and the later sign.

By contrast, the defendant claimed that the sign was not similar to the trade mark because it did not contain all parts of the claimant’s logo mark and the common element ‘Glee’ is descriptive. In addition, the defendant criticised the decision as too succinct, inadequate and without enough evidence, but also for the application of wrong way round confusion evidence, which they argued was irrelevant.

However, the Court of Appeal dismissed Fox’s criticisms, restating that the defendant had infringed the mark under section 10(2) of the 1994 Act because there is a similarity between the mark and the sign, pointing out that the most important word in the claimant’s mark was the word “Glee”. To be more precise, Fox’s sign, sometimes composed of two words as “Glee club”, when it is used in the TV show or in relation to services, especially live music tour, which are really similar to the mark, can create a likelihood of confusion to the average consumer, infringing section 10(2)(b) Trade Mark Act 1994.

Secondly, the Court of Appeal considered if the defendant has infringed the trade mark under section 10(3) of the 1994 Act. This required an as assessment of whether Fox has caused detriment to the distinctive character of the claimant’s registered trademarks.

The Court of Appeal held there was a possibility that the use of the defendant’s sign would bring the claimant’s mark to the mind of the average consumer. So customers will be disappointed when they discover that the TV series and the Glee Club are not linked. Therefore, this contributes to a change to consumers’ economic behaviour causing a detrimental to the claimant’s business. The Court of Appeal added that even if Fox has adopted the sign in a good faith, its use cannot be without due cause because of the damage caused to the claimant’s mark.

In relation to the passing off claim, the Court distinguished between confusion in trade mark infringement and  misrepresentation in passing off. The judge, after considering all circumstances, held that consumer confusion, based on wrong way round evidence, is not enough to be a misrepresentation for the purposes of passing off. 

Chiara Borace

Assistant Editor, QMJIP

Halle Berry wins domain name dispute case at WIPO

by Sahana Pal

Nowadays it’s rare to find a celebrity who does not have their own website. With the rise of the internet and associated social media, marketing oneself has become extremely easy as well as extremely important at the same time. However, Hollywood superstar Halle Berry was in for a rude shock last month when she found out that the website <halleberry.com> was already registered by a certain Alberta Hot Rods of Alberta, Canada.

Berry, along with her wholly-owned corporation Bellah Brands Incorporated which operates as an intellectual property holding company in respect of the HALLE BERRY trademark, then approached the WIPO Arbitration and Mediation Center[1] on February 10, 2016 for recovering the cybersquatted domain name under the Uniform Domain Name Dispute Resolution Policy (UDRP).

Claiming common law trademark rights in the name HALLE BERRY by virtue of her worldwide fame as an actress and celebrity, Berry pointed out that Bellah Brands Incorporated is the owner of word mark HALLE BERRY both as a European Community registered trademark (number 6656011, registered on November 20, 2008 in respect of international class 3) and as a USA registered trademark (number 3677810, registered on September 1, 1999 in respect of multiple international classes).

WIPO found out that the disputed domain name <halleberry.com> was registered in 1997 and although claiming to be a Halle Berry fan site, in reality it redirected to the Respondent’s “Celebrity 1000” website, featuring advertising and a wide variety of information about celebrities. In fact it turned out that the Respondent was a prolific registrant of domain names consisting of names of celebrities and had previously been involved in numerous cases for cybersquatting celebrity websites – including the likes of Pamela Anderson, Cameron Diaz, Tom Cruise, Larry King and even J.R.R. Tolkein!

WIPO then appointed Andrew D. S. Lothian as the sole panelist in this matter on March 10, who spelled out that in order to succeed, Berry must prove the following three-step test [2] –

(i) the Disputed Domain Names are identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(ii) Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and

(iii) the Disputed Domain Names have been registered and are being used in bad faith.

Accepting Berry’s rights in the word mark HALLE BERRY by virtue of the registered trademarks, and the longstanding use of her name in the entertainment industry, the Panel held that disputed domain name is alphanumerically identical in the second level to the Complainants’ HALLE BERRY common law and registered trademark – thereby satisfying the first requirement.

The Panel then went on to note that Berry had established a prima facie case, based upon the assertions that the Respondent is not known by the name “Halle Berry”; is not the owner of any HALLE BERRY trademarks; does not have Berry’s permission to use her name and/or mark; and has only ever made use of the disputed domain name to benefit from associating her celebrity status with various forms of online advertising. The Respondent did not come forward to rebut any of these claims and thus it was clear that the second test was also fulfilled.

The Panel further concluded that original use of the disputed domain name was to generate traffic resulting from interest in Berry’s well-known trademark, so that the Respondent would benefit from a corresponding increase in advertising revenue or increased clicks on sponsored links. This clearly showed Respondent’s intent to target the Complainants’ rights for commercial gain and pointed firmly in the direction of registration and use in bad faith. The fact that Respondent was previously involved in a pattern of similar behaviour did not help either.

Considering all of the above, it was decided that the disputed domain name, <halleberry.com> should be transferred to Halle Berry. Once again, this case highlighted the growing trend of riding on the coat-tails of celebrities for some quick bucks and short-lived fame – but at the same time, it also emphasized upon the no-nonsense attitude that WIPO believes in such matters.

[1] See http://www.wipo.int/amc/en/domains/search/text.jsp?case=D2016-0256

[2] As outlined in paragraph 4(a) of UDRP

Sahana Pal

Assistant Editor, QMJIP

Copied wrong: when celebrities infringe copyright

by Sahana Pal

Many internet users are under the misconception that if Google throws up an image without any express copyright restriction notice, the image is free for us to use.

A few weeks back, singer Harry Styles of One Direction fame apparently thought the same, and uploaded a photograph clicked by Brussels-based photographer Ezequiel Scagnetti in his Instagram channel, without any mention of the photographer’s name whatsoever. The photographer posted a message asking why his photograph was used without permission. However, what was surprising was that some of the 16 million “followers” of Harry Styles launched social media abuse at the photographer, and even went as far as to label Scagnetti a ‘jerk’ and a ‘prick’ while accusing him of being jealous and telling him to ‘shut your f****** mouth and be grateful’.[1]

Apart from being an example of our blind hero-worshipping tendencies that happily disregard all rhyme and reason, what this incident once again pointed to was the utter disregard that most people have about works of lesser known artists – especially when those are freely accessible on the internet without any explicit copyright sign. The sentiment was aptly put to words by a Stylesfan who said “How smart of you to not put a watermark on it and then get mad when people use your pictures” and was resonated by others.[2]

Scagnetti later posted a dignified response[3] in his Facebook page despite the “extremely aggressive, xenophobic, homophobic and racist insults” thrown his way and patiently explained how both himself as well as Styles “live of copyright”, as “every magazine you buy, every poster you see, every advertising photography you see, in internet or in the “real world”, a photographer is getting paid for copyright works, even if you are not taking the money from your pockets, somebody is doing it.” Shortly afterwards, Styles removed the image from his channel.

Some may argue that these celebrities are doing the lesser known artists a favour by bringing their work to limelight – which is certainly true in some cases, but perhaps the same objective can also be achieved with proper acknowledgement of the original sources instead of blatantly lifting them.

In fact the trend is most prominent in the music industry where every once in a while we find famous singers being accused of lifting a part or even whole of their songs from some relatively unknown singer or band. A few of these disputes invariably proceed to nasty lawsuits while many others choose to settle them outside court for undisclosed amounts.

It makes for an interesting discussion to think what might happen if the tables are turned. Can an ordinary person have the same set of rights against a celebrity if the celebrity uses his or her work without permission? Perhaps not. But it is time we start giving it a thought. After all copyright says not to copy, right?

[1] See http://www.dailymail.co.uk/news/article-3443822/Photographer-bombarded-abuse-One-Direction-fans-criticised-Harry-Styles-posting-one-images-Instagram-without-crediting-him.html

[2] See http://petapixel.com/2016/02/11/photographer-harassed-online-calling-pop-star-stealing-photo/

[3] See https://www.facebook.com/EzequielScagnettiPhotography/photos/a.137522066305964.23866.105018119556359/1038775546180607/?type=3&comment_id=1040810522643776&comment_tracking=%7B%22tn%22%3A%22R9%22%7D

Sahana Pal

Assistant Editor, QMJIP

The Rihanna Top Shop Crop Top Claim: A cautionary tale of false endorsement, but are there image rights in the UK?

by Lisa D. Rhooms

To begin with the end, a celebrity’s face sells. The more famous a celebrity, the more commercially valuable their image, and the more money to be made by placing said celebrity’s image on merchandise such as children’s lunch boxes, back packs and, of course clothing. This is the essence of the case[1] brought by Robyn Rihanna Fenty, better known as just Rihanna, against the Arcadia Group, trading as Top Shop, a chain of clothing and accessories stores. The gist of the claim, was that Arcadia used her image on t-shirts, which she did not authorise.

The general view in the UK is there is no “image right.” This does not mean to say that where a person’s image or likeness is used without their consent, there is no remedy. In fact there are a host of remedies which might assist, even though not being image rights per se. These remedies include defamation proceedings, a suit for breach of contract or confidence, and passing off.

In the case of Irving v Talksport Ltd[2], the court set out the test for a claim of passing off by false endorsement as being that the claimant had to show he had substantial goodwill in the market of endorsements, and that the defendant’s activities caused a significant portion of the relevant market to falsely believe that the claimant endorsed the defendant’s goods or services.[3] In the case concerning Rihanna and Top Shop, Rihanna instituted passing off proceedings for the use of a photograph taken of her for her “Talk That Talk” album, on t-shirts sold by Top Shop. Rihanna’s claim was, as in Talksport, that a substantial portion of the relevant market would believe that she endorsed Top Shop’s goods (not to be confused with her past dealings with the Arcadia Group, with products she in fact endorsed). Top Shop’s argument was of course that Rihanna was claiming an image right, which did not exist under English Law. The court however held in favour of Rihanna, finding there was passing off, as the relevant market had been falsely led to believe that “Rihanna had approved or authorised, and that this had caused her damage.”[4] Kitchin LJ, in his judgement was careful to reiterate nevertheless, that still “there is in English law no “image right” or “character right” which allows a celebrity to control the use of his or her name or image.”[5] Kitchin LJ, went further to quote Lord Walker in Douglas & ors v Hello! Ltd & ors (no 3)[6], which emphasised that no image right exists in the UK.

“Although the position is different in other jurisdictions, under English law it is not possible for a celebrity to claim a monopoly in his or her image, as if it were a trademark or brand. Nor can anyone (whether celebrity or nonentity) complain simply of being photographed.…”[7]

Therefore, while this case may look suspiciously like Rihanna was able to use other means to procure an image right, which does not exist in the UK, are there really still today no image rights in the UK? And is it truly safe to even say that at the time of the Rihanna case there were no image rights under English law?

Some academics and practitioners argue that there are image rights in the UK, and there have been since, at the very least 2011.[8] In October 2011, the Court of Justice of the European Union gave judgment in Martinez v MGN Ltd[9], Olivier Martinez brought an action, in France, against the UK Mirror Group, for the use of his image on their website attached to an article about his relationship with pop singer, Kylie Minogue.  In the judgement of the court, it seems the internet opens new concerns for image rights and their existence in the UK. The court states that where a person contends an infringement of their image rights “the victim may always bring an action before the courts of each Member State in the territory of which the online content is or has been accessible”[10] and further that “the person whose rights have been infringed may also bring an action, in respect of all of the damage caused, before the courts of the Member State in which the publisher of the online content is established.”[11] This decision makes it clear then that a person claiming that his or her image rights have been infringed, could bring an action before a UK court, where the UK is somehow connected to the action, and this is even more so possible where the infringer is established in the UK. Does this therefore import wholesale image rights into the UK or is this just for online content? It seems that at least with respect to online content, a court in the UK may be asked to adjudicate on image rights, whether they are believed to exist in the truest sense or not, and this may be ground for saying there are actually image rights in the UK for online publications. As to whether this clarification by the court on online publications can be extended to all image rights matters, this is a more difficult question to answer, and may very well be resolved in favour of the general argument that the UK is just not there, perhaps as yet, in allowing a person to have full autonomy over his or her image. However, before you next go plastering your favourite celebrity’s image on a shirt or article without their consent, because their face sells, remember that even if this mysterious concept of image rights in the UK does not catch you, something else will.

 

Lisa Diana Rhooms

Assistant Editor, QMJIP

 

[1] Fenty v Arcadia Group Ltd [2015] EWCA Civ 38

[2] [2001] 1 WLR 2355

[3] ibid [46] (Laddie J.)

[4] Fenty (n. 1) [5] (Kitchin LJ)

[5] ibid [29]

[6] [2007] UKHL 21, [2008] 1 AC 1

[7] ibid [293] (Lord Walker)

[8] See Robin Callendar Smith, ‘Celebrity privacy and the development of the judicial concept of proportionality: How English law has balanced the rights to protection and interference.’ (DPhil thesis, Queen Mary University of London 2014) 156-160 for discussion of Martinez decision, on importing image rights into the UK, available at <https://qmro.qmul.ac.uk/xmlui/bitstream/handle/123456789/7934/Callender%20Smith,%20Robin%20101114.pdf?sequence=1&gt; 1st accessed February 16, 2016 . See also, Robin Callender Smith  ‘Mirror, Mirror on the Wall….Are Those Image Rights I See Before Me?’ (2012) Vol. 2 Queen Mary Journal of Intellectual Property, 195..

[9] C-161/10.

[10] ibid (n. 8).

[11] ibid (n.8).