A Gleeful End - TV Show 'Glee' Infringes Comedy Venue's Trademark

Whether you are old or young you cannot have escaped the phenomenon that was the TV show Glee, which reached its peak popularity some time just before the turn of the first decade in 2000. The show was a teen drama, encompassing musical elements on top of the usual teen drama fare (very much in the spirit of glee clubs in the days of yore). Even with its upbeat style, the show, or rather its name, has not existed in pure glee, but has faced a prolonged challenge in the UK over its name. With that said, would the show have its last song as "Glee", or were they able to defend their moniker?

The recent decision of Comic Enterprises Ltd v Twentieth Century Fox Film Corporation dealt with a series of comedy clubs in the UK called The Glee Club, existing in Cardiff and Birmingham, among other cities. The owners of the clubs, Comic Enterprises, registered the logos of the clubs as UK trademarks in 2001. The marks incorporated the club's name in a stylized fashion, including a spotlight in the background of the name with each constituent part of it being roughly of equal size. The TV show "Glee" (focussing on the antics of a alee club at a fictional US high school) ran between the years of 2009 and 2015, garnering huge success both in and off the TV format, prompting Comic Enterprises to take them to court for trademark infringement and passing off after the clubs' owner noticed the similarities between the two names.

What the Court of Appeal had to address was whether Fox infringed the registered trade mark under sections 10(2) and 10(3) of the Trade Marks Act 1994, and whether they were guilty of passing off.

Under both sections 10(2) and 10(3), infringement is assessed on the basis of six factors: "(i) there must be use of a sign by a third party within the relevant territory; (ii) the use must be in the course of trade; (iii) it must be without the consent of the proprietor; (iv) it must be of a sign which is identical with or similar to the trade mark; (v) it must be in relation to goods or services which are identical with or similar to those for which the trade mark is registered; and (vi) it must give rise to a likelihood of confusion". The first four factors were not disputed, as the show was indeed shown in the relevant territory (the UK); the mark was used in the course of trade (a commercial TV show); there was no consent over its use by Comic Enterprises; and the mark was identical with or similar to the registered mark (the Glee Club/Glee).

No room for song and dance after Lord Justice Kitchin's judgment

The final two factors look at whether the use of the mark was for similar or identical goods or services (i.e. is a club the same as a TV show in terms of use), and whether, as a result, there would be a likelihood of confusion between the goods and services. This is a matter of assessing, among other factors, "...their nature, their intended purpose and their method of use and whether they are in competition with each other or are complementary". Equally, the two marks have to be compared through the perspective of the average consumer. Without similarity there cannot be infringement, so this is very important.

A big point of contention in the assessment of similarity was the trial judge's 'wrong way round' determination through evidence, or in other words, that the registered mark evoked a connection with the TV show, rather than the other way around (the more typical test for similarity). After discussing all submitted evidence anew, Lord Justice Kitchin determined that the evidence did indeed create a likelihood of confusion, however acknowledging some of it having little probative value. This is an interesting point, as the case clearly accepts 'wrong way round' evidence, and as such this could be used in other cases to prove a likelihood of confusion.

Finally, Lord Justice Kitchin turned to the matter of infringement, due to substantial errors made by the trial judge in their initial judgment. He ultimately found that there was indeed infringement under section 10. The two marks were deemed to be similar, even with the fact that the word "glee" was a common word.  Additionally, the goods and services offered by the two parties were sufficiently similar, although the similarity of a TV show and a club were challenged by the defendant. Lord Justice Kitchin specifically mentioned the context of the marks' use, and even though he accepted that the connection between the two was loose on the face of it, there still was a possible connection, especially with a world tour planned for the TV show incorporating a live element to the mark's use. He ultimately found a likelihood of confusion between the two marks. A potential changing of economic behavior by consumers based on this confusion would also cause detriment to the claimant, especially in the light of a need to change their marketing to further distinguish themselves from the TV show.

He also agreed with the trial judge and dismissed the passing off claim made by the claimant, as a likelihood of confusion is to be distinguished from misrepresentation, which is crucial for a passing off claim. As the defendant's use of the name was not to pretend the TV show was associated with the comedy clubs (although the mark was confusingly similar) and thus was not a misrepresentation.

The case is an interesting one, and shows that 'wrong way round' confusion is a legitimate argument, even though one could consider it unorthodox under the letter of the law. Nevertheless, this writer agreed with Lord Justice Kitchin, and wonders whether the case will see a further appeal, especially because of an outstanding issue on the compatibility of section 41 under EU law (specifically Directive 2008/95/EC). This remains to be seen, but it seems that the show will have to be rebranded in the UK, even after its end some time ago.

Source: IPKat

Pirates Uncovered - Dallas Buyers Club's Landmark Case in Australia

Piracy is considered by many in the entertainment industry to be the plight of the 21st century creative minds and pockets (and the pockets' of many shareholders, one would think). What ever your thoughts on copyright piracy, the topic remains a hot-button issue, and the courts have been, and will undoubtedly continue to, battle with for years to come. With this in mind, the enforcement of rights online has proven difficult, especially when a user, either downloading or sharing said infringing content, is effectively hidden behind a single Internet Protocol (IP) number, which does not accurately identify the given user (as discussed here in some manner relating to the US). The battle between Internet Service Providers (ISPs) and copyright holders has been an active one regarding this, and a recent decision in Australia seems to have opened the door to potentially combating this issue on the copyright holders' end, at least for now.

The case in question was Dallas Buyers Club LLC v iiNet Limited, which dealt with the very successful movie Dallas Buyers Club that was, among other things, nominated for 6 Oscars in its year of release. Due to the movie's immense success, it was promptly shared online, and in an action for preliminary discovery, the movies' rights holder Dallas Buyers Club LLC sought to identify the individuals behind all 4726 unique IP addresses associated with sharing the movie online through the 6 respondent ISPs in the action. The ISPs contested this application on several grounds, but the first instance decision lay with the Federal Court of Australia.

Although the respondents actively contested the ownership of the copyright in the work (decided as being held by Dallas Buyers Club LLC, with very little resistance from the Court), and other matters underpinning the case at hand, the meat of the discussion lay in the possible allowance of discovery in relation to the aforementioned IP addresses.

The secret life of a copyright infriger (Source: Bizarro Comics)

Under the Australian Federal Court Rules 2011 a party can seek for the identification of an unknown party should they have a cause of action against that person under certain requirements: "(a) there may be a right for the prospective applicant to obtain relief against a prospective respondent; and (b) the prospective applicant is unable to ascertain the description of the prospective respondent; and (c) another person (the other person): (i) knows or is likely to know the prospective respondent’s description; or (ii) has, or is likely to have, or has had, or is likely to have had, control of a document that would help ascertain the prospective respondent’s description." Clearly, as the individuals sharing the movie are behind an IP address, and therefore hard to identify without information from the ISP as to who is behind said IP address, Dallas Buyers Club, at least prima facie, had a case to find out who these people are under the Act.

Regardless of the ISPs' rejection of Dallas Buyers Club's assertions under the three requirements of the Act, the Court saw that they had fulfilled the requirements and were therefore entitled to disclosure as to the users' identities. They had a right to seek relief as to a potential breach of their copyright; they could not identify the individuals committing that infringement; and the ISPs knew or were likely to know who they were, or at least would be in possession of their subscriber details based on fixed IP addresses.

Even though Justice Perram allowed the disclosure of the users' information to Dallas Buyers Club, he did however set certain restrictions on it, which will be set by the parties later in the process. Dallas Buyers Club have indicated that they want the details disclosed by May 6th, but the letter that will be sent out will be determined on a later note as well.

Although the case is an important landmark in the fight against piracy, the disclosure of individuals' details in relation to copyright infringement is nothing wholly new. In Canada, under the Federal Court Rules, the disclosure of such information is very similar to the Australian provision; and Voltage LLC, the parent company of Dallas Buyers Club, has successfully used the provision to gain such information in Canada in the case of Voltage Pictures LLC v John Doe. Similarly, in the UK, a Norwich order (the equivalent of the Australian provision's application) was issued for copyright infringement through which subscribers' details were disclosed to the copyright holder in Golden Eye (International) Ltd & Anor v Telefonica UK Ltd. Both cases also discuss the restrictions needed in the event of such disclosure, such as: "[p]utting safeguards in place so that alleged infringers receiving any “demand” letter from a party obtaining an order under Rule 238 or a Norwich Order not be intimidated into making a payment without the benefit of understanding their legal rights and obligations... [s]pecific warnings regarding the obtaining of legal advice or the like should be included in any correspondence to individuals who are identified by the Norwich Order... [l]imiting the information provided by the third party by releasing only the name and residential address but not telephone numbers and e-mail addresses... [and] [r]equiring the party obtaining the order to provide a copy of any proposed “demand” letter to all parties on the motion and to the Court prior to such letter being sent to the alleged infringers". These, among others, will undoubtedly be considered by the Australian courts in their application of such orders in the future, and in this case specifically.

As one could imagine, the case has spawned a huge amount of discussion, especially relating to Voltage Pictures' previous strong-arm tactics in their letters to infringers. Nevertheless, the cold application of the law, at least to this writer, seems to be quite accurate, and individuals who engage in such activities need to understand the risks associated with illegal copying of media online. The Dallas Buyers Club case clearly sets the stage for more direct, stronger enforcement of copyright within Australia, and it remains to be seen how the provision will be utilized in the future, and what restrictions the courts ultimately put on the disclosure of subscribers' details and the usage thereof.

Source: Sydney Morning Herald