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Sunday, 2 December 2012

Screentime, Divas saved by Paris Convention

These five divas are a little miffed: it seems
that they've been paid not to sing ...
There is so much talk these days of modernising our system of IP protection and enforcement that we occasionally fail to appreciate the utility of what we already have -- if we only stop to think what we can do with it. A perfect illustration of this comes from the IPKat's friend Joris van Manen (Hoyng Monegier, Amsterdam), who seems to have found an example to emphasise this point in a little gem of Dutch litigation, Screentime and Five Divas v SBS, an interim injunction decision of the District Court, The Hague, on 5 November.

Screentime and Five Divas, being TV and production companies, were part of the same commercial group. Screentime owned two Benelux trade mark registrations, POPSTARS – THE RIVALS and POPSTARS, both for the transmission of radio and television shows (Class 38) and for the production of television shows (Class 41).

A television show, unsurprisingly named ‘Popstars’, was conceived, developed and produced by Screentime and Five Divas back in 1998. This programme consisted of a search for undiscovered singing talent, the discovery taking place by means of multiple auditions, followed by live shows with performances by the lucky candidates. A jury then rated the participants. The winner, once chosen, was offered a record deal. ‘Popstars’ was broadcast in more than 50 countries, including The Netherlands.

 SBS was the Dutch division of the SBS Broadcasting Group, an international broadcasting company, along with the television channels SBS6, NET 5 and Veronica. Talpa was a television and production company. Collectively these companies were the defendants in this action. SBS aired the ‘Popstars’ programme on Dutch television in the years 2008, 2009/2010 and 2010/2011 and in Flanders in 2001. In 2004 RTL4 aired
‘Popstars – The Rivals'  in The Netherlands by RTL4 in 2004.  In  all these instances the defendants had permission to air the show, by virtue of a licence agreement with Screentime and Five Divas.

The programme clearly enjoyed a following: the Dutch ‘Popstars’ audience ratings averaged 1,371,400 in 2008, 1,566,900 in 2009/2010 and 827,000 in 2010/2011.

This happy arrangement was shattered when SBS announced that it would soon be broadcasting its own singing talent competition with the title ‘The Next Popstar’. This forthcoming attraction was advertised on SBS6's website of SBS6, where potential candidates could sign up for it, as appears from the screen-shot which is reproduced above.

SBS Broadcasting had registered the domain name popstars.nl as long ago as November 2001 and that domain name appeared at the top of the Google search results for the search term ‘popstars’. This domain name was active and redirected site visitors to SBS's website, where ‘The Next Popstar’ was advertised. Screentime and Five Divas, considering that an infringement of their trade marks was about to take place, applied to the summary trial judge and asked that he immediately impose, as far as possible, injunctive relief against SBS and Talpa with respect to the use of the sign THE NEXT POPSTAR; they also asked the judge to order SBS and Talpa to cease and desist from performing the allegedly unlawful acts. Further requests related to cessation of the use of the domain name popstars.nl and to costs.

Screentime and Five Divas based their claims on SBS and Talpa’s use of the domain name popstars.nl and the sign ‘The Next Popstar’ for, among other things, television shows. Further argument were grounded on the assertion that the POPSTARS sign as used by the claimants was a well-known trade mark in the sense of Article 6bis of the Paris Convention for the Protection of Industrial Property and article 16(2) of TRIPS. Five Divas maintained that its rights in the television programme format had been infringed. Finally, Screentime and Five Divas submitted that SBS and Talpa acted unlawfully by riding on the coat-tails of the reputation of the POPSTARS sign, resulting in damage to Screentime and Five Divas. SBS and Talpa denied infringement and opposed the application.

It must have come as a shock to Screentime when the District Court dismissed its trade mark claims, taking the provisional view that both of its registered trade marks were invalid as consisting entirely of terms that were descriptive of the the characteristics of the specific services for which Screentime used those marks.  In terms of the mark's distinctiveness, Screentime had adduced insufficient proof of the marks' use in French-speaking Belgium.  There was disappointment for Five Divas too, when the court ruled that there was no mileage in its action based on infringement of its programme format right.

But all was not lost! Screentime had established a sufficiently plausible case that it has used the sign POPSTARS so intensively in The Netherlands that the sign, notwithstanding its descriptive nature, was a well-known trade mark for the production and transmission of a song contest programme under Article 6bis of Paris Convention and Article 16(2) TRIPs: it was entitled to protection against use of the words "The Next Popstar" since that word was visually, aurally and conceptually similar to the defendants' choice of programme name that use of the latter could confuse the relevant public. After all, it was to be used for the very service for which the earlier mark had acquired a reputation.

Says the IPKat, the Paris Convention is of 1883 vintage and thus positively antediluvian in intellectual property terms -- but it's great to see how nifty it can be in plugging temporary gaps in a company's trade mark portfolio.  Merpel's just fascinated at the thought of a judge on an interim injunction application taking a provisional view of the validity of the claimant's trade mark: she thinks that the proper thing to do is to take a quick look at the trade mark certificate: if it (i) exists, (ii) has not expired, (iii) refers to the right trade mark, (iv) covers the relevant goods or services and (v) names the claimant as its owner, it should be presumed to be valid in any pre-trial proceedings.  Validity is far too complex a matter to be raised in interim relief proceedings, she feels.

You can read the decision in full, in English, here, thanks to Joris.

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