No winner in Glee court ruling

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Glee Club court case ruling

A High Court fight centred on the American television show Glee between a Hollywood giant and a UK company which runs a chain of comedy clubs has ended in a draw.

Comic Enterprises claimed that Twentieth Century Fox's production of Glee had breached its trade mark rights to the phrase The Glee Club - and the firm said it had been harmed as a result. Twentieth Century Fox disagreed.

A judge today ruled that Twentieth Century Fox had "infringed" a trade mark. But he said Comic Enterprises had not been damaged.

Deputy High Court Judge Roger Wyand QC made no mention of any compensation in a written ruling published following a High Court hearing in London. He said any subsequent issues would be analysed at another hearing.

In a preliminary ruling on the case nearly two years ago, a judge in the Patents County Court had made a reference to potentially "catastrophic consequences" for Twentieth Century Fox.

Judge Colin Birss QC said, when he transferred the case from the county court to the High Court in 2012: "Comic Enterprises' approach has been to run this case as a full scale High Court-style action with a claim for an injunction with catastrophic consequences for Twentieth Century Fox."

And a spokesman for Comic Enterprises' director, Mark Tughan, said in a statement after today's ruling:
"The TV show could now be taken off air in the UK, Glee merchandise and DVDs removed from UK shops and music downloads halted."

Judge Wyand said, in a written ruling, that Glee was in its fourth season and had been running for more than four years. He said it had been very successful and had achieved high ratings in the UK.

The show was about a high school singing club in the fictional William McKinley High School in Lima, Ohio, said the judge.

He said the series followed characters who were involved in the school singing club New Directions. The series touched on social issues relating to sexuality, race and disability, he said.

Judge Wyand said album compilations of songs performed on the show had been sold in the UK, two world concert tours had included performances in Manchester and London and Glee merchandise had been sold.

"Comic Enterprises says that all these activities, when carried out the United Kingdom, infringe the (trademark) and pass of Twentieth Century Fox's show and associated products as being associated in the course of trade with Comic Enterprises," said Judge Wyand. "Twentieth Century Fox denies infringement and passing off."

The judge concluded that Comic Enterprises' claim on infringement succeeded. But he said the company's claim on "passing off" failed.

"I believe that (the) evidence taken as a whole shows that there is a likelihood of confusion," he said.

"Twentieth Century Fox's use causes dilution and tarnishing. Continued use of the sign in such circumstances cannot be in accordance with honest practices in industrial or commercial matters. Twentieth Century Fox has infringed the (trademark)."

But he added: "I am not convinced that such confusion is sufficiently likely to be said to cause damage to Comic Enterprises. The passing off case fails."

Judge Wyand gave no hint of what the consequences of his ruling might be. He said - when handing down the ruling at a hearing in London today - that subsequent issues would be considered at another hearing.

Mr Tughan's spokesman said in a statement that the case was a " most unlikely" legal battle.

He said the Glee Club had sites in Birmingham, Nottingham, Cardiff and Oxford and had "successfully sued".

The spokesman said the judge "ruled in favour of the British business and found that the hit TV show Glee infringed the club's 1999 Glee Club trade mark, registered for live comedy and music".

He said the case had been a "bitter three-year legal battle" and Mr Tughan had described the decision as "a huge relief".

"The TV show could now be taken off air in the UK, Glee merchandise and DVDs removed from UK shops and music downloads halted," said the spokesman.

"The Glee Club, which was established in Birmingham in 1994 as the first dedicated comedy venue outside of London, has held a registered trade mark for comedy and music entertainment services in the UK since 1999 - 10 years before Glee first aired in the UK."

Mr Tughan added: "When Glee was first broadcast on national TV in the UK in early 2010, we knew that we had a problem. As a small independent company we had no way of competing against the advertising and marketing might of the Fox Corporation and knew that our brand and reputation for original and credible comedy and live music would be damaged.

"The confusion caused by the similarity of the names and branding in the same field of entertainment services has led to us losing custom and hampered our ability to establish our brand of cutting edge live comedy and music performances, particularly in relation to some of our newer venues in Oxford and Nottingham.

"Smaller independent businesses should take heart from today's decision, as it clearly shows that trade mark infringements by large multi-national companies can be effectively challenged in British courts.

"Trade mark law does not exclusively exist for the world's largest companies, able to spend millions of pounds to protect their Intellectual Property, whilst simultaneously infringing the trade marks of others."

Top ten worldwide comedy rich list

Top ten worldwide comedy rich list