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Glee for GLEE: remedies in the trade mark infringement case

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18/11/2014

Earlier in the year we reported on the trade mark infringement case involving the well-known US TV series, “glee”. In Comic Enterprises v Twentieth Century Fox Film, the High Court ruled that the TV show infringed the figurative mark of a UK comedy club which incorporated the words “the glee Club”. The High Court has now awarded remedies [1].

The claimant sought the following remedies:

  • final injunction against further infringement
  • delivery up of infringing physical and digital copies of the TV series
  • an account of profits attributable to the infringement
  • an order requiring the defendant to make a public statement on the outcome of the case
  • an interim payment on account of damages or profits.

The defendant argued that to grant the remedy of a final injunction would have a disproportionate effect on its business as many of the show’s fans would stop following the show if it was no longer called “Glee”. There would also be a significant re-branding, including re-mastering copies of past series. The Deputy High Court Judge considered that it would be fair to grant an injunction against future infringement, saying that the costs of re-branding would not be as substantial as the defendant alleged. He also said that he would frame the injunction in such a way that the defendant would be able to refer to the fact that the show had previously been called “Glee”.

The Judge also ordered delivery up of the copies of the programme. As the claimant did not seek delivery up of copies that were in the hands of third parties, the order extended only to those in the defendant’s possession or under its control. The Judge suggested that the difficulty and cost of delivery up had been overestimated by the defendant, and that such an order would be proportionate.

As regards an account of profits, the defendant argued that, because it had acted innocently and the claimant had delayed for two years before issuing proceedings, it would be inappropriate to make such an order. The claimant, in the alternative, argued that the defendant should have conducted trade mark searches in the UK before launching the TV show. Although the Judge was not willing to accept the claimant’s argument (given that the defendant was a large US company whose main audience was in America), he noted that it was appropriate to delay commencing proceedings until the claimant had had sufficient time to make an assessment of whether there was an impact on its business. The Judge considered that it should be possible to assess the contribution that the “Glee” name made to the overall success of the show and that, unless that contribution turned out to be negligible, an account of profits should be allowed.

The litigation had not attracted particularly high levels of press coverage and it was not unreasonable in the circumstances to grant a publicity order.

The Judge was reluctant to award much in the way of an account of profits or damages in view of the difficulty in assessing the amount that would ultimately be payable to the claimant. He therefore awarded the “extremely conservative” sum of £100,000.

Whilst the Judge was prepared to stay the injunction pending the defendant’s appeal, he would not stay the publicity order, as it was important that further damage to the claimant’s mark be minimised.

This David and Goliath battle rages on as both parties prepare for the defendant’s appeal, and we will be keeping a close eye on the developments.

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[1] [2014] EWHC 2286 (Ch)