• UK COURT DIARY

    RESIDUAL GOODWILL Explodes Mythbusters Claim

    Passing off actions typically protect goodwill generated by trade. Where a trader is no longer in business, however, how far can he stretch his residual goodwill in an attempt to stop another from using his mark? The High Court examined this issue recently in Knight v Beyond Properties Pty Ltd. and Others [2007] EWHC 1251 (Ch).

     

    THE MYTHBUSTERS

    Among the dramatis personae were “the Mythbusters,” described by the claimant as “a wacky team who travel the world looking for monsters, ghosts, UFOs, buried treasures and things that go bump in the night.” They were conceived by Mr Knight, who made them the subject of a series of three books and a handful of short television appearances on existing programmes in the United Kingdom between 1991 and 1996. The books were published under the pen name, “Bowvayne.”

    The Mythbuster books and television appearances were directed at school-age children, and the books were almost entirely promoted and distributed through schools. The books had not enjoyed much commercial success, however, and after 1996 the Mythbusters vanished from the literary and broadcasting scene in the U.K.

    The defendants (“Beyond”), who included the well-known Discovery Channel, made and broadcast a series of four television programmes with over 50 episodes under the name “Mythbusters” in the U.K. between 2003 and 2006. The Beyond series consisted of full-length television programmes investigating scientific phenomenon in a light-hearted fashion.

    The Beyond programmes did not include investigation of the paranormal, but when Mr Knight learned of it he nonetheless sued the defendants for passing off. He alleged, in particular, that the defendants’ use of “Mythbusters” as a television series title made it impossible for him to attempt to interest broadcasters in the U.K. in his own Mythbusters series in the future.

     

    MISSING, PRESUMED DEAD

    Mr Knight claimed that he had acquired protectable goodwill in the U.K. in the Mythbusters name by 1996, when his use here ceased, and that enough of that goodwill had survived that the launch of the Beyond series seven years later amounted to passing off those programmes as those of, or somehow connected to, Mr Knight.

    The Court accepted that by 1996 Mr Knight had acquired a modest level of goodwill in the Mythbusters name in the U.K. by dint of his children’s books and occasional short television appearances.

    The claim that the goodwill had survived the vicissitudes of time, however, met with judicial scepticism. Most of Mr Knight’s pleaded sales figures turned out to be over-inflated, in some cases grossly so. The Court determined that the first Mythbusters book had sold only in the region of 5,000 copies in the U.K., while the second and third had sold only in the region of 10,000 and 2,100 copies each, respectively. The low sales of the third book were especially notable given that it had been published by a leading children’s imprint. A further claim by Mr Knight to have received over 15,000 fan letters, many from the U.K., was advanced surprisingly late given its importance, and was not substantiated in evidence. Mr Knight produced only 22 fan letters in evidence.

    Two witnesses from the group of 22 authors of the fan letters produced by Mr Knight recalled the Mythbusters books, and at least one had been reminded of them by the Beyond programmes’ title. However, neither had assumed there was any link. As one witness put it, “the Mythbusters on TV is going through like actual possible real events while Mythbusters books are on supernatural ghosts and werewolves.”

    There was no evidence that Beyond knew of Mr Knight’s books or had them in mind when choosing the title of its programme.

    The Court found that if Mr Knight enjoyed any continuing goodwill at all in the U.K. as of 2003, it was no more than trivial. Seen in the context of the evidence as a whole, the two witnesses relied on by Mr Knight were not sufficient to establish a continuing reputation in the Mythbusters name in the U.K.

    In the absence of surviving goodwill, the claim failed.

     

    THE LINK BETWEEN BOOKS AND TELEVISION

    Although the finding on goodwill meant that it was not strictly necessary, the Court nonetheless considered separately the questions of misrepresentation and damage.

    On the latter, in particular, it accepted Mr Knight’s claim that books and television were sufficiently linked that the inability to sell a book concept to television producers as a result of the defendants’ use of the same name for a nationally broadcast television series could give rise to loss or a real prospect of loss for the claimant.

    In this case, however, the Court was satisfied that no such loss had occurred because Mr Knight had never been able to sustain any significant interest in his Mythbusters concept in the U.K., despite repeated efforts. Moreover, the evidence suggested that the content of television programmes was more important than their titles, such that the Mythbusters books could easily be marketed by reference to a different name in future, particularly given their lack of success under the old name.

     

    COMMENT

    Although not quite a “zombie brand,” the original Mythbusters book title bore some resemblance to the walking dead. Shambling and ineffectual, it could not function as a live brand and did not merit protection as such.

    Passing off claims based on residual goodwill can succeed, but only where the court is satisfied that it is dealing with a live brand. A claimant in such cases must work harder than ever to establish strong goodwill as of the date of the last use, since the greater the goodwill then, the better the chances that it will have survived. The longer the hiatus between last use and an action, the higher the barrier that a claimant must surmount.

    Where a hiatus in use is unavoidable, a would-be trade mark owner can protect his interest in a brand to some extent by keeping records of sales figures, promotion, customers and other information that can be called upon if necessary to prove a reputation as of the date of the last sales.

    The simplest and most effective action, however, will often be to seek registered trade mark protection. Passing off actions almost always involve higher costs and more complex evidential issues than registered trade mark infringement cases, and a small investment in registration early on can avoid the need for costly passing off litigation later.

    Even registered trade mark law is chary of protecting rights in which proprietors no longer have an interest, and registered trade mark owners should consider the impact of non-use grace periods with their advisors. Where a temporary hiatus in use is concerned, however, registered rights may prove a stronger basis for maintaining a business’ position than common law rights on their own.