John Cleese is back in the limelight and not too pleased with live theatre show Faulty Towers, the Dining Experience which bears several similarities to the hit series Fawlty Towers co-wrote by Cleese.
This case reveals some salient points about IP protection, including:
- registered trade mark protection in all markets of interest is important to consider - registrations provide a strong right where proof of one’s reputation will not be required in most cases;
- swift action against potential infringement is essential. A delay in taking action after discovering an infringement situation may be deemed acquiescence and open the door to equitable defences like laches or estoppel.
Basil Fawlty, John Cleese’s eccentric hotelier, and the hit BBC television show, Fawlty Towers, are fond favourites of many New Zealanders. The iconic television show has also struck a chord in Australia where it first aired in 1977. In fact, its humorous characters inspired Interactive Theatre International (ITI) to create a live show calledFaulty Towers, the Dining Experience which has been entertaining guests in Australia since 1997.
John Cleese reportedly found the live show no laughing matter, however, when he recently learned of the success of this alleged “loving tribute” to the television series. Cleese has expressed his dismay at the unauthorised use of the television series’ characters, settings and catch-phrases.
Fawlty Towers and its characters certainly have a substantial reputation, having received many accolades over the years, including being named finest British television show ever by the British Film Institute in 2000. But would Cleese have grounds to bring an action for passing off, or trade mark or copyright infringement, against the producers of Faulty Towers, The Dining Experience?
The live show
The Dining Experience’s audience are treated to a three-course meal at the ‘Faulty Towers’ restaurant while watching a two hour interactive live show. The show has been performed in Brisbane since 1997 and in Europe (mainly London) from 2008 after launching at the Edinburgh Festival. It features the three key protagonists fromFawlty Towers – Basil, Sybil and Manuel - keeping their original names and personalities.
The Dining Experience creators’ report that no original Fawlty Towers’ television scripts are reproduced for the show and the majority of the performance is improvised. Further, they claim they do not need authorisation to use the concept of Fawlty Towers and their own intellectual property rights in the live show.
What’s in the name?
Registered trade marks are a valuable intellectual property right for protecting names, including the names of TV shows. Here, there is an obvious similarity between the words ‘Faulty Towers’ and ‘Fawlty Towers’. They would qualify as similar marks when applying the relevant trade mark law tests.
Yet this storyline may end abruptly. John Cleese is not in fact an owner of any relevant trade mark registrations. The registered trade mark for the words FAWLTY TOWERS in the United Kingdom is owned by the BBC. Furthermore, neither Cleese nor the BBC own any equivalent Australian registrations. A trade mark infringement action is, therefore, not possible in Australia, nor in the United Kingdom (unless Cleese can persuade the BBC to take action there).
Watch this space because ITI have since registered FAULTY TOWERS DINING EXPERIENCE as a word trade mark covering the classes of artists’ agent services and theatre productions. It would be an ironic twist indeed if ITI were subsequently able to bring a counter-claim against Cleese for trade mark infringement when his new live show (presumably with Fawlty Towers in the title) launches in Australia next month (August 2016).
Interestingly, in Australia, Cleese could have a defence to infringement under section 124 of the Trade Marks Act 1995 if he could show continuous prior use in Australia of a substantially identical or deceptively similar unregistered trade mark. The success of this defence depends on several factors:
- Firstly, any licensing arrangements with the BBC of the FAWLTY TOWERS trade mark would be relevant as Cleese may need to show any use in Australia was authorised by the BBC who owns the trade mark registrations elsewhere.
- Secondly, he would need to show use for services similar to theatre productions – television programmes fall into the same trade mark class and are similar in many respects.
- Thirdly, the use would need to be continuous from a date before ITI commenced use of The Dining Experience’s trade mark (i.e. 1997). Cleese would likely have a reasonable argument for continuous use from first broadcast in 1977 in Australia on ABC Television, followed by re-runs on the Seven Network, and video and DVD releases in the 1990s and 2000s.
Talking about that reputation…Passing Off
A second action Cleese could consider in both United Kingdom and Australian contexts is passing off. This action, which is designed to protect reputation and goodwill, seems to capture the essence of Cleese’s grievance – that ITI have traded off the reputation off the Fawlty Towers’ name and show. In Australia and New Zealand, a three stage test for passing off still applies as set down by the House of Lords in the UK case of Reckitt & Coleman. Accordingly, the key elements Cleese would have to prove to succeed in a passing off claim are:
- That he (or an associated business entity he controls) must own sufficient goodwill in the Fawlty Towersshow, name or get-up (could extend to character’s names),
- That Faulty Towers The Dining Experience had, by adopting a similar mark or get-up, misrepresented its goods or services as being connected to Cleese and Fawlty Towers (i.e. consumers would think the Dining Experience had been permitted, endorsed, licensed, sponsored by or is otherwise connected to Cleese and Fawlty Towers, and
- That Cleese had suffered damage or is likely to suffer damage arising from the misrepresentation.
For a passing off action in Australia, Cleese would also need to show that Fawlty Towers had local reputation. Meaning, he would need to prove that a substantial number of people in Australia were or are aware of Fawlty Towers (and associated get-up such as characters), including by way of “spill—over” reputation from the United Kingdom and elsewhere. Evidence of conducting business in Australia is not required, although advertising in advance of his August 2016 live show may be relevant to the questions of misrepresentation and damages. The remedies he could seek include an injunction preventing the Dining Experience show from continuing, and damages (compensation) for any loss Cleese has suffered as a result of their misrepresentation.
Cheeky humour or misleading the audience?
A less onerous action for Cleese may lie under consumer law (specifically, the Australian Competition and Consumer Act 2010) which is solely concerned with protecting consumers from misleading or deceptive conduct in trade. There is no requirement to prove damage to goodwill or reputation, or to show actual intent to deceive by the defendant. Conduct will be found to mislead if there is, or is a likelihood, that consumers will be misled into thinking that the defendant is associated with the complainant. Generally, the courts will adopt the ‘average reasonable consumer’ test. Hence, it will be relevant whether customers receiving publicity of and purchasing tickets to the live show are astute enough to believe the Dining Experience is not connected to or endorsed by the creators and/or owners of the rights in Fawlty Towers.
Applying the tests for a passing off and a consumer law action together, it is likely Cleese could establish a reputation in both of the Dining Experience’s locations, Australia and London, given the popularity of the television show, screening to audiences worldwide. To most, Fawlty Towers would be a familiar and well-known brand, even if they are not familiar with the intricacies of the show. The live show’s similarities with the TV show would help Cleese to demonstrate misrepresentation. In particular, the use of original characters, their names, settings and catchphrases and a very similar name may well lead the Dining Experience’s customers to think there has been some authorisation from the original show’s producers. A key point will be whether ITI have lead customers to believe the Dining Experience is endorsed by Cleese. We expect ITI would argue their website’s disclaimers indicate they are not misleading customers (further comment below). Damages would be dependent on whether a mistaken belief among consumers has arisen or is likely to arise, although the loss of a commercial opportunity (for example, for royalties from legitimately licensing scripts, trade marks and other aspects related to the show) could be argued. Evidence of consumers being confused with his imminent live show may also be relevant.
A defence to potential actions?
As discussed above, the theatre company may have the following defences available to a passing off or consumer law claim.
Firstly, they have built a substantial reputation in the Dining Experience itself, which has been seen by hundreds of thousands of people in over twenty countries, independent of Fawlty Towers. This would be relevant to defending both the reputation and misrepresentation elements of a passing off action.
Secondly, ITI could refute that there is any misrepresentation to consumers who, they would argue, are not likely to be misled or deceived into thinking there is a commercial relationship between The Dining Experience andFawlty Towers and/or John Cleese. ITI do attempt to disclaim any association with Fawlty Towers, stating on their website that no original scripts are used and the show is a “tribute.” Arguably, the astute consumer in 2016 is commonly exposed to parodies, tribute bands and shows of a similar nature and, in this case, would not necessarily assume that the show is authorised by the creators of Fawlty Towers. Interestingly, the Australian courts more often than not have taken the view that disclaimers will not be noticed or understood by consumers as to effectively neutralise the misleading or deceptive conduct. They may be relevant to remedies however.
Thirdly, if Cleese has delayed in bringing action, ITI may be able to rely on the defence of laches to a passing off claim seeking an injunction. ITI would need to show that Cleese discovered their show some time ago and has inexcusably delayed taking action which would prejudice them now, given the show’s 18 years in business.
In addition, if Cleese wanted to bring proceedings for passing off, he would need to understand any implications of the Limitation of Actions Act in the relevant Australian state for the time limits for bringing tortious claims (6 years in most states after the cause of action first accrued). The effects of these limitation provisions may be mitigated, at least for the purposes of calculating damages, if each occurrence of the show is treated as a separate infringement, as is the case in trade mark infringement matters.
Improvised Original or Copied Work?
For a breach of copyright claim, Cleese would need to show that the Dining Experience’s producers copied a substantial part of the scripts, performances or other copyrightable works from Fawlty Towers. However, this looks difficult if the artists’ performances really are impromptu and there is no script copying. As for the format, courts have been reluctant to extend copyright protection to television formats in the United Kingdom, Australia and New Zealand. In any case, the Dining Experience appears to have created their own format, being a live performance incorporating dinner, which is substantially different from the television format of Fawlty Towers.
Tribute or Imitation– who would win?
While Cleese is outspoken in his disdain for Faulty Towers, the Dining Experience, there are a number of hurdles to get through to successfully prove a legal case against ITI. ITI’s original made-up scripts and improvisation and longstanding reputation in Australia and London may assist them to successfully defend any passing off or consumer law claim. The key issue will be whether there is a misrepresentation to, or misleading of, consumers. With a trade mark registration(s) and some express website disclaimers in hand, ITI certainly appear ready to defend their stage should Cleese throw down the gauntlet for an intellectual property dispute.