Peddlageddon: Attempts to take down videos backfire with unjustified threats

Unjustified threats can cause many difficulties for the unwary. In a recent interim injunction application (Sledziewski & Anor v Persons Unknown & Anor [2024] EWHC 1955 (KB)) brought to restrain the sharing of videos on YouTube, a trade mark proprietor has got itself into a muddle over threats, feeding an online ‘pile-on’.

Readers may be aware of the genre of YouTube videos where cyclists record what they see as poor or illegal driving behaviour and post it online. Often the driver will be looking at a mobile phone while driving, they will be confronted and recorded by the cyclist, may well respond with aggression. Online pile-ons often ensue. Some of these cyclist superheroes or vigilantes (depending on your perspective) have become quite famous. Indeed some already famous people have posted such videos or been caught out in them. While criminal prosecutions do often follow, the evidence having been served up nicely for the police, it is unusual for the civil courts to get involved.

In this case, a vehicle belonging to Cornices Centre Ltd (CCL) was recorded overtaking a cyclist, apparently coming very close to them. The video was recorded by a YouTuber known as ‘Chapona Bicyclette’ (Mr Chapona). Mr Chapona uploaded the video to YouTube with some disparaging commentary, referencing CCL.

The managing director of CCL, Mr Sledziewski, wrote to Mr Chapona asking him to remove CCL’s name from the video and description, apparently on the basis that CCL’s name is a registered trade mark (primarily registered for goods relating to construction and renovations). Mr Chapona declined, publishing a second video referring to the threat of proceedings for trade mark infringement. Another YouTuber, known as ‘Black Belt Barrister’, joined the fray, providing further commentary on CCL’s ‘unjustified threat’.

CCL admitted that it had “made an actionable threat or threats within the scope of the Unjustified Threats Act [sic]” and went on to withdraw the threat. However, CCL changed tack by threatening proceedings for harassment based on the resulting social media pile-on. Mr Chapona discouraged his followers from harassing CCL and Mr Sledziewski, but the pile-on continued in what is a fairly typical example of the ‘Streisand Effect’.

CCL and Mr Sledziewski brought an application for an injunction to restraining the YouTubers’ alleged harassment. The judge, Aidan Eardley KC (who is not an IP judge, but is a well-known and highly-regarded media barrister-cum-judge) heard the application and refused it. The judge referred to the important provision of s.12(3) of the Human Rights Act 1998, which requires an applicant for an injunction to show that it is “likely to establish [at trial] that the publication should not be allowed”. He found that the claimants were unlikely to establish that Mr Chapona was responsible for the posts by ‘Black Belt Barrister’ and the other YouTube users, and unlikely to establish that Mr Chapona’s own posts constituted harassment.

Unjustified threats – trap for the unwary

The use (or misuse) of trade marks to protect reputation was something Eleonora recently covered [here]. Further, the interplay between unjustified threats and s.12(3) was considered by the English High Court in Bargain Busting Ltd v Shenzhen SKE Technology Co Ltd & Ors [2025] EWHC 1239 (Ch) [IPKat post here], albeit in the context of an injunction to prevent the threats of infringement (and the decision granting the injunction is being appealed).

While unmeritorious threats of trade mark infringement proceedings are common, and one can hardly be surprised if trade mark owners use all available tools at their disposal, this case shows how dangerous and misunderstood the threats provisions can be.

First, it is unclear to this Kat whether the original email was an actionable threat. In particular, it is not clear from the judgment that there was any threat of infringement proceedings (the email was described as “polite”, although of course an email can be both polite and threatening).

Second, the claimants admitted that they had sent an actionable threat and ‘withdrew’ it, albeit denying that any claim for damages subsisted. Having admitted in correspondence that the trade mark infringement threat was “actionable”, the claimants then completed a second 180-degree turn to again assert trade mark infringement. Hardly the best start for a trade mark infringement claim.

Third, the defendants seem to have relied on the unjustified threats provisions as a stick with which to beat the claimants, arbitrarily claiming £10,000 in damages when in fact the whole brouhaha had led to the videos being viewed a great many more times than had initially been the case.

The lesson from this mess is that trade marks should not normally be deployed in order to prevent free speech. This is for both legal reasons (the use is likely to be defensible, and the threat potentially actionable), and strategic reasons (the said-Streisand Effect). Where they are being deployed, care is needed.