NELLIEGATE: PART 1

Friend of the IPKat Michael Edenborough placed a trunk call to IPKat HQ to inform the IPKat about this mammoth decision of the UK Trade Mark Registry concerning the fall-out when the licensee of the copyright in the song “Nellie the Elephant” applied to register NELLIE THE ELEPHANT as a trade mark.

Dash acquired the copyright in the children’s song “Nellie the Elephant” in 1956. In 1987 it granted a licence in respect of the composition to Animated, which intended to use the song in a series of cartoons featuring a female pink elephant named Nellie. Animated applied for and was granted a trade mark for NELLIE THE ELEPHANT in Class 41 in 1989. Tsk, tsk, said Dash, and off it went with a trumpety-trump to apply for the mark to be declared invalid, claiming: (i) it had an earlier right under s.5(5)(b) of the Trade Marks Act 1994 because it had copyright in the title of the song; (ii) it had an earlier right because the taking of the phrase “Nellie the Elephant” constituted a taking of a substantial part of the song as a whole and (iii) Animated had registered the mark in bad faith because Animated had only a non-exclusive licence and so knew that Dash may have wanted to license the song to other undertakings that would need to use the phrase “Nellie the Elephant”.

“Not on your Nellie!” said the hearing officer. Thus, the application for a declaration of invalidity failed because Dash could not show that Animated’s NELLIE THE ELEPHANT trade mark conflicted with Dash’s copyright in the “Nellie the Elephant” song for the purposes of s.5(4)(b), nor could it show bad faith on Animated’s part:
♦ Although neither s.5(5)(b) nor Article 4(4)(c) of Directive 89/104 on which it is based are specific about the date from which the prior right must exist, by analogy to Article 4(4)(b) of Directive 89/104 and s.5(4)(a), the earlier right under s.5(5)(b) must predate the application date of the challenged trade mark. Dash had satisfied this requirement because it acquired copyright to “Nellie the Elephant” in 1956 but Animated did not apply for its trade mark until 1989.
♦ Dash could not base its challenge on the title to “Nellie the Elephant” While it is not impossible for a title to attract copyright, the title of “Nellie the Elephant” did not. A literary work must “afford either information and instruction, or pleasure in the form of literary enjoyment”. It was common ground that “Nellie the Elephant” did not inform or instruct. It also did not give pleasure in the form of literary enjoyment. It only gave pleasure when used as part of the lyrics of the musical composition, and not when the words were taken on their own. Any other view of the matter would potentially expand the scope of copyright in relation to song titles.
♦ Dash also could not base its challenge on its copyright in the lyrics of “Nellie the Elephant”. The taking of “Nellie the Elephant” did not constitute the taking of a substantial part of the lyrics of the entire song. Substantiality must be assessed qualitatively rather than quantitatively. Previous case law suggested that the taking of a title of a song did not constitute the taking of a substantial part of the copyright work. It was also questionable whether, if the title itself did not attract copyright, it was possible for it to qualify for protection on the basis that it was a substantial part of the musical composition.
♦ Animated’s mark had not been registered in bad faith. The licence to use “Nellie the Elephant” granted to Animated was non-exclusive and therefore Dash could have granted licences for similar uses to other undertakings. However, it had made no attempt to do so or to exploit the IP rights in the composition or name between acquiring the copyright in 1956 and Animated’s application to register the mark in 1989. Furthermore, Animated had no obligation to consult Dash about their plans and so it could not be said to have acted covertly.

The IPKat notes that once again it has been recognised that copyright can theoretically subsist in single words or phrases, without actually finding that the particular phrase in question is protected. He thinks it’s strange though (but perhaps unavoidable) that the Trade Mark Registry has decided what is essentially a copyright case. The story’s not over yet though…visit the IPKat tomorrow to find out what happen next to Nellie.

Lyrics here
More pink elephants here, here, here, and here