Further to the UK High Court Decision in Comic Enterprises Ltd v Twentieth Century Fox Film Corporation  EWHC 2286 (Ch) in February this year, Twentieth Century Fox (Fox) are now faced with the possibility of having to re-title their hit television series, glee, in the UK pending the outcome of the confirmed Appeal.
As reported here, earlier this year, Roger Wyand QC, sitting as Deputy High Court Judge, held that Twentieth Century Fox infringed Comic Enterprises’ trade mark registration for “THE GLEE CLUB”, which was registered in the UK back in June 1999. Since this judgment, the two parties had been in dispute as to the relief Comic Enterprises (CEL) was entitled to following this Decision.
On Friday 18 July 2014, Mr Wyand QC ruled in favour of an injunction as opposed to a disclaimer of association, disagreeing with Fox that the former would be disproportionate and unfair. The Deputy Judge instead felt it was “hard to believe that the cost of the re-titling and publicising of the new name would be so prohibitive compared to the value of the series” and that it should be “comparatively easy for Fox to bring the name change to the attention of the relevant public”, given the publicity the case has received to-date.
Certainly in monetary terms, the cost of re-titling the show in the UK may do little to dent the pockets of the multinational giant; however, the recognition the show has built up through the name ‘glee’ would surely be adversely affected. This being said, Judge Wyand maintained that the newly titled programme could reference the fact that it was previously called ‘glee’ and that it would be unreasonable to preclude such a reference.
In addition to the injunction, Judge Wyand ruled in favour of a publicity order to help bring attention to the judgment, allowed CEL to seek an account of profits based on disclosure of a vague assessment of the total profit of the series, and ordered Fox to make an interim payment to CEL of £100,000. Deputy Judge Wyand considered it to be proportional to only request delivery up or relabeling of physical and digital copies of the programmes that are in Fox’s possession or control, rather than those than had already been supplied to third parties.
There is perhaps some respite for Fox, as, in reaching his Decision, Deputy Judge Wyand took into consideration the possibility of Fox’s success on Appeal, recognising the “unusual” and “difficult points of law” in the case at hand. While Judge Wyand stayed the injunction pending the Appeal decision, he did allow both the publicity and disclosure orders, as well as the interim payment of £100,000, making it still comedy gold for The Glee Club owners.