Beyond the Myth; Judges star in Hendrix performance

Well done, LexisNexis Butterworths, for unearthing Knight v Beyond Properties Pty Ltd and others [2007] EWHC 1251 (Ch), an obscure ruling by Mr Justice David Richards in the Chancery Division yesterday on a neat little passing-off point.

Knight, a British citizen who lived in Australia, published three books in the UK between 1991 and 1996; each had the word 'Mythbusters' in its title. After the first book was published he promoted his books and related activities under the name Mythbusters in different parts of the world, principally the UK, Australia and South East Asia. However, he had not engaged in any significant promotion in the UK since 1996.

Beyond was a group of three companies, the first two being Australian companies and the third English, all being engaged in the production and distribution of TV programmes and related IP rights. The fourth defendant was the Discovery Channel, which broadcast programmes in the UK and elsewhere. In 2002 Beyond piloted a series of three programmes under the name Mythbusters (illustrated above, right), the first being transmitted in the UK in November 2003.

Knight sued for passing off and argued that, by reason of his use made of the word Mythbusters, members of the relevant UK public had come to understand the name - when used for books and TV programmes concerning the investigation of myths - to mean his products exclusively. Beyond and Discovery disagreed: they said Mythbusters was descriptive and could not, in the absence of special facts, generate goodwill for passing off purposes. In these proceedings the court had to decide whether, in November 2003, Knight had a reputation in the name Mythbusters which could reasonably be regarded as more than trivial in relation to books and TV programmes concerning the investigation of myths.

David Richards J dismissed Knight's claim. He explained:
* To succeed in an action for passing off, any claimant must establish the three basic elements of passing off, goodwill, misrepresentation and damage. In this context a word or other mark that was basically descriptive would only be protected if it could be shown to have become distinctive of the claimant's goods or services: this secondary meaning had to be real, not trivial.

* Despite its descriptive quality, 'Mythbusters' could be distinctive. True, it described the books in question, but it was not a word which would be used in ordinary speech to describe a book, person or activity. Rather, it was adopted as a distinctive title for the series, used in a way which would readily lead to the series being associated in the public mind as the work of a particular author.

* The good news for Knight was that, on the evidence, he had indeed established a reputation in Mythbusters by 1993. Though this was on a very minor scale, it was still sufficient to attract protection. The bad news was that, by November 2003, no more than a trivial reputation, if any, remained in the Mythbusters name and he had insufficient goodwill upon which to launch a passing-off action.
The IPKat is enchanted by this. There are plenty of cases that show that goodwill persists after a business stops trading, since it is sustained in the mind of the relevant consumer and may be turned into real business again at a later stage - but it's unusual to find real goodwill evaporating totally into the ether. Merpel adds, will the increasing use of the internet, with the facility to link to products and their suppliers years after they've ceased actively marketing themselves, make any difference when cases like this are brought in the future?

Mythbusters here (Discovery Channel)
Ghostbusters here
Dustbusters here and here

Jimi Hendrix may be long dead, but his copyright affairs continue to exercise the minds of our greatest lawyers and, the IPKat imagines, will continue to do so for a long time to come. This week saw the ruling of the Court of Appeal for England and Wales in Experience Hendrix LLC v Purple Haze Records Ltd and others [2007] EWCA Civ 501, a decision of Lords Justices Keene, Jacob and Toulson on Thursday 24 May 2007.

Musical megastar Jimi Hendrix (left), a US citizen, gave performances between 1967 and his death in 1970 in (among other places) the UK, Sweden and the USA. Part II of the UK's Copyright, Designs and Patents Act 1988, which came into effect in August 1989, created rights in the performances of performers: s.180 actually said: "this Part confers rights on a performer".

The parties in dispute in these proceedings agreed that (i) if performer's rights did subsist in the performances in question Experience Hendrix owned them amd that (ii) the Act created performer's rights in the case of performers who were still alive when the Act came into force. What was however in dispute was (i) the position where the performer had died by the time of the commencement of the Act (the "dead performer" issue), and (ii) the status of a performance where the place of performance was in a country that only became a qualifying country for reciprocal protection after the date of the performance, even though it was a qualifying country at the time of an alleged infringement (the "qualifying country" point). According to Purple Haze the 1988 Act did not confer performer's rights upon a performer who had died before its commencement and the performances given in Sweden and the USA were not protected under the Act. At trial Mr Justice Park rejected those submissions. One of the three defendants appealed.

The Court of Appeal dismissed the appeals. In their Lordships' view
* Even before the enactment of the Act, a performer had a civilly enforceable right to protect his economic interests: if he were dead, that right would have devolved on his personal representatives and it was unlikely that Parliament had intended to take away the rights of performers who had died, given that Parliament had expressly considered the period during which such rights should subsist, namely 50 years from the year of the performance.

* If the rights were to subsist only in respect of performers who were still alive when the Act came into force, the Act would have said so.

* The Act was expressly retrospective and, while the whole of Part II of the Act was expressed in the present tense, the Act applied to what "was" a performance. It was thus sensible to recognise that the past was also being referred to where the context so required.

* If the rights were conferred retrospectively on a "person" and that person died, the rights simply transferred to the person's personal representatives by operation of law. Where the estate had been wound up and no one could be found for the purpose of obtaining clearances for use of performances, permission could be obtained from the Copyright Tribunal.

* The unamended Act protected the economic interests of performers and their estates, whether the performers were alive or dead and the amended Act, construed in accordance with Council Directive 92/100, Directive 93/98 and the TRIPs Agreement, did not take away the rights conferred in respect of performers who had died before the Act came into force: it was after all unlikely that Parliament had intended to cater only for performances of those who had died between coming into force and amendment of the Act.

* Before the Act no country was a "qualifying country" as defined in the Act save for the UK and the then existing members of the European Economic Community.

* Both the US and Sweden had become qualifying countries by the time the infringement took place.
The IPKat admires their Lordships' careful reading of Part II of the Act, which is persuasive, in the face of what Toulson LJ calls the "seductively simple" submissions on behalf of the appellants. However he regrets that UK legislation should be drafted in terms so convoluted and opaque as to require even major points of policy to be teased out of the statutory thicket rather than stating them openly and concisely upfront. Merpel adds, it's good to see the court taking such a close look at international conventions as an aid to the construction of domestic law: it almost makes one feel part of an international community.
Beyond the Myth; Judges star in Hendrix performance Beyond the Myth; Judges star in Hendrix performance Reviewed by Jeremy on Friday, May 25, 2007 Rating: 5

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