No Glee for Thee, says PCC

This Kat confesses that she has never watched the American Fox TV series that goes by the name of glee [with a small initial 'g', Merpel notes]. Not only that, but -- though she has been known to make a most respectable effort at karaoke -- she frankly admits that she has never placed a paw within the portals of a British venue named The Glee Club. Being a serious scholar of these matters, however, she is fascinated to discover that the respective worlds of glee and Glee collided recently in a claim before Judge Birss QC in the Patents County Court (PCC) for England and Wales. The outcome of this encounter can be found in Comic Enterprises Ltd v Twentieth Century Fox Film Corp [2012] EWPCC 13 (22 March 2012).

Comic Enterprises runs venues in England under the names 'The Glee Club', 'Glee' and/or 'The Glee Comedy Club'. Its first venue was opened in Birmingham in 1994, with subsequent venues opening in Cardiff in 2001, Oxford in 2010 and Nottingham in 2010. Comic Enterprises claims that its business is not limited to comedy clubs but extends more broadly to include live music and cabaret shows. It also has a website at www.glee.co.uk and allows its customers to subscribe to 'gleemail' updates which they receive, predictably, by email. Comic Enterprises is the proprietor of a UK registered trade mark (2200698) for words 'the glee CLUB and device' in classes 25 and 41. This has been registered since 19 June 1999.

Twentieth Century Fox Film Corp, the world famous film and television company, produces the popular 'glee' musical comedy-drama series to which this blogpost has already alluded. The pilot episode was broadcast in the US in May 2009 and in the UK in December 2009. The programme is now in its third season and is one of the top-ranked shows in both countries. Songs performed in the show are released through the online iTunes music download store. Sales in the UK of songs from the show are now in excess of 1.72 million compilation albums and 3.46 million singles.

Twentieth Century has one registered trade mark in the UK (2134389) for the word 'GLEE' in classes 3, 4, and 30. This was registered as of 30 May 1997 by Vie Cosmetics Group of Chichester and acquired by Twentieth Century on 29 September 2010. Twentieth Century also has a group of relevant Community trade marks (CTMs). The earliest, with a priority date of 6 March 2009, is registered for the word 'GLEE' (008480601) in classes 16, 28 and 41. The second CTM, with a priority date of June 2010, is registered for the word 'GLEE' (009169038) in classes 3, 14, 18, 21 and 25. Finally, Twentieth Century made a CTM application on 14 June 2011 for the trade mark 'GLEE' (010043644) in classes 9, 20, 24 , 29 and 32.

As Judge Birss QC uncontroversially stated (at [6]):

'The problem is obvious. Both sides use the word "Glee" and even their core fields of activity are not far apart. Whether they precisely overlap, how that position has developed over time and the precise details of the parties' use of the word along with other indicia and so on are all in issue but it is not difficult to see why this case might have arisen'.

Comic Enterprises commenced proceedings for trade mark infringement and passing off against Twentieth Century, based on the confusion between its business and the TV series. The claim, filed in the PCC on September 2011, sought both an injunction and damages. Comic Enterprises explained the action was not brought when it first became aware of the TV series because it thought that the TV series would fade out like Disney's series High School Musical and not be an ongoing concern to the business. There was no letter before action. To Judge Birss QC (at [10]), this seemed to be explained by the reality that, if Comic Enterprises engaged in correspondence with Twentieth Century, it would have filed its claim after 1 October 2011 and would thus be subject to the new cap of £500,000 for damages in trade marks, copyright and passing off actions. As we all know, under the PCC rules, there is a costs cap of £50,000.

On receipt of the claim, Twentieth Century stated its view that the case should be transferred to the High Court. It suggested that the value of the claim was very high, that the claim was complex and would require substantial evidence and disclosure and that the outcome was important not least because the owner of Comic Enterprises had already sought to publicise the claim in the newspapers such as the Mail on Sunday.

In response, Comic Enterprises maintained that the case was suitable to be tried in the PCC and that there was an issue concerning access to justice. It emphasised the point that, although Twentieth Century could call on vast financial resources, it could not as it was a small-to-medium sized enterprise ('SME' which, despite its appearance, rhymes with 'glee').

The application of Twentieth Century to transfer the case to the High Court was heard by Judge Birss QC on 17 February 2012. As His Honour stated (at 54]), 'there is no easy answer to this application'. In his Honour's view, the important factors in favour of the High Court were the value of the claim and the fact that the case could not be tried in two days under the PCC system. A strong factor in favour of the PCC was the size and financial strength of Comic Enterprises but this was not a case in which it would be simply unable to cope with High Court costs. It may be an appropriate case for a High Court costs capping order but that remains to be seen. Were it not for the fact that it seemed to His Honour that Twentieth Century had a tendency in this case to use its commercial strength as a weapon he would have had fewer qualms about transferring the case to the High Court.

For Judge Birss QC (at [55]),'the decisive factor' in this case was Comic Enterprises' approach to the litigation, despite its being an SME. His Honour was critical of the fact that Comic Enterprises ran the proceedings as a full scale High Court-style action with a claim for an injunction with catastrophic consequences for Twentieth Century rather than if it were a more modest claim in the PCC. The specific instances of this behaviour referred to by Judge Birss QC (at [49]) include:

1. Comic Enterprises maintained its passing off and trade mark claim on a broad and unspecific basis despite a proper request for further information.

2. On instances of confusion, Comic Enterprises did not plead all the instances on which it relied and refused to give much further information, stating that detailed information would be addressed in disclosure and/or witness statements.

3. Comic Enterprises advanced an allegation that Twentieth Century knowingly and calculatingly committed the acts complained of, an issue which would inevitably require lengthy disclosure and cross-examination.

4. Comic Enterprises maintained its attack on Twentieth Century's peripheral UK cosmetics-related trade mark (2134389).

For Judge Birss (at [50]), by such conduct, Comic Enterprises was 'seeking to have its cake and eat it'. As this was the claim which Comic Enterprises wished to advance, in Judge Birss' decision (at [55]), the correct forum in which to do it was the High Court.

The IPKat thinks that this case serves as a useful reminder that an SME wishing to take on a large defendant in a case of high value in the PCC has to approach the matter in a realistic manner. He would also not like to be tasked with the responsibility of demonstrating to a court, even a friendly, cheerful forum like the PC , that Los Angeles-based Fox had knowingly and calculatingly decided to muscle in on the goodwill generated by the brand name of a relatively little-known provincial English SME.

Merpel is still waiting for her call for a guest spot from the producers of the TV show ....

Generic glee and glee clubs here