COPYRIGHT
Internet
-US Copyright Office Sets Rates for Webcasting-
The U.S. Copyright Office has published the royalty rates for web music broadcasts, which essentially rubber-stamp a resolution reached last April between online music broadcasters and the Recording Industry Association of America (RIAA). In addition to setting rates for the 2003-2004 license period, the Copyright Office also named SoundExchange, a former RIAA arm spun off as a separate non-profit group in September 2003, as the sole designated agent to collect and distribute royalties from Webcasters and new online subscription services. The recording industry and Webcasters finally agreed on a proposed 0.0762 cents per performance or 1.17 cents per aggregate hour tuned in for free, advertising-supported services. Webcasters had opposed other rates suggested by the RIAA, saying they would put them out of business. The new regulations govern rates and terms for online music subscription services with non-interactive streaming components, Internet radio stations and traditional broadcasters that simulcast signals online. Under the new regulations, all covered services are required to submit a lump sum payment to SoundExchange covering the period from January 1 2003 through to February 29 2004 on or before April 14 2004. Starting from March, services are required to make royalty payments within 45 days after the end of each month.

See : http://www.usatoday.com/tech/news/techpolicy/2004-02-10-webcast-rates-set_x.htm

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COPYRIGHT
Record Labels, Music Publishers
-First Chinese Action for Unauthorised Public Performance of Sound Recordings-
Proceedings in China's first-ever lawsuit over copyright infringement for background music allegedly being played for profit-making purposes began in a Beijing court. Chang'an Department Store, a major retail outlet in the capital, has been charged for the infringement by the Music Copyright Society of China. The lawsuit court session started yesterday at the Beijing No 1 Intermediate People's Court. This case is the first of its kind since the country's Copyright Law was amended in 2001. In its indictment, the plaintiff is seeking a compensation of 228,100 yuan (US$27,600) for the accused store's use of background music, whose copyright is managed by the society, without being authorized and paying fees to the society. No judgement was made in the case, and an announcement for the next session is yet to be made public. The Music Copyright Society of China is the country's only officially recognised organisation for music copyright administration.

See : http://www1.chinadaily.com.cn/en/doc/2004-02/05/content_303185.htm

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COPYRIGHT
Record Labels
-EMI Admits CD Copy Protection Compatibility Problems-
EMI's Australia has admitted that its CD copy protection system has resulted in "compatibility issues" since it began using the technology in November 2002. The confession came in an email sent to an Australian music buyer, Michael Ellerman, The Melbourne Age reported. Ellerman complained when his copy of Massive Attack's 100th Window album wouldn't play on his CD player at home or - crucially - his Linux box. It would only play on a Windows PC, he said. EMI's system is believed to introduce errors in the music encoded as a data on the disc. A regular CD player should have a good enough error correction mechanism - and there are a lot of errors, even on a non-copy protected disc - to generate the sound quality we've come to expect from the medium. PC-based CD drives are supposed to balk at these artificially induced errors and refuse to play or RIP the discs. Many portable players also use the error correction mechanism as the basis for their anti-skip systems. So do in-car CD players, which is why copy protected discs are causing such a problems with UK motorists. 'Borked' CDs that won't play on many CD drives, including car players, entered the UK market last month. The CDs can play nothing but silence on some car CD players. Car manufacturers and consumers are concerned with the record industry's actions. Despite the BPI's explanations to the vehicle trade, manufacturers such as Volkswagon have now said that the record industry has unilaterally 'changed the rules' by failing to adhere to agreed standards to the detriment of car and equipment manufacturers and the public.

See : http://www.theregister.co.uk/content/54/35545.html

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COPYRIGHT
Record Labels, Artist
-EMI Takes Action Over Sampled "Grey Album"-
Somewhat unsurprisingly EMI Records has said that it will take legal action against DJ Danger Mouse over his limited edition CD 'The Grey Album'. The producer/DJ found himself behind one of the hottest records of the year by splicing vocals from last year's 'The Black Album' by Jay-Z with beats created from the Beatles seminal 'The White Album'. But the DJ has been served with a cease and desist order - along with the small number of independent retailers who had stocked the 3,000 copies of the record. The Beatles' recordings and the Lennon/McCartney compositions are guarded by the copyright owners and clearly the Grey Album consisted of unauthorised sampling of both the recordings and the compositions. EMI Records control the Beatles sound recordings on behalf of Capitol. The Lennon/McCartney publishing catalogue is owned by Sony Music and ATV Publishing. Danger Mouse himself insists that the 3,000 copies were only intended as promotional items.

See : http://www.ilmc.com (News)

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PATENT LAW
Internet
-E-Data Announces Successful Settlement with Microsoft, Tiscali, HMV, and OD2 in Europe -
The E-Data Corporation has announced a world-wide agreement for past and future royalties has been reached with On Demand Distribution GmbH (OD2), settling the infringement actions against OD2, HMV Group , Tiscali and Microsoft. For infringing upon E-Data's European patent EP0195098B-1, also known as "the Freeny patent." This settlement resolves all outstanding litigation with the companies. As part of the agreement, financial terms of the settlement were not disclosed.
The Freeny patent covers the downloading and recording of information, such as music, from a computer onto a tangible object, such as CDs, DVDs and MP3 players. The OD2 platform enables Tiscali Music Club customers and HMV customers to download individual music tracks for a fee using Microsoft's Windows Media Player and Digital Rights Management technology.
Bert Brodsky, chairman of E-Data Corporation stated, "We are quite pleased with this settlement as it further reinforces the scope and validity of the Freeny patent in Europe. While the OD2 service is still in the nascent stage, which is reflected in the settlement, the agreement sends an important message to other companies infringing upon our intellectual property. Importantly, OD2's service in Europe parallels iTunes Music Store, a successful music downloading service developed by Apple in the United States, and which Apple plans to launch in Europe later this year. Moreover, we are currently in talks with a number of prominent companies in Europe infringing upon our intellectual property, and may seek injunctions against these companies if necessary." In the United States, E-Data has secured more than 30 domestic licenses and had received a favourable decision by the Court of Appeals for the Federal Circuit on November 6, 2000, supporting the scope of the company's patents.

See: http://biz.yahoo.com/prnews/040120/nytu063_1.html

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PATENT LAW
Technology
-Inventor Wins Japan's Highest Patent Compensation Award after Suing ex-employer Hitachi-
The Tokyo High Court has ruled that Seiji Yonezawa had not been paid enough for his work on technology that was a forerunner to DVD. The court awarded Mr. Yonezawa 162m yen (,000) for his work on three optical disc technology patents. Hitachi had originally paid Mr Yonezawa 2.3m yen in compensation. Hitachi said it was considering an appeal and believed its rulebook on compensation was in line with other firms. During the mid-1970s Mr. Yonezawa developed optical disc technologies that resulted in three patents. Hitachi paid him 2.3m yen to take over the patents. Mr Yonezawa first took Hitachi to court two years ago and won 34.9m yen in compensation in the Tokyo District Court. Mr. Yonezawa appealed to the High Court and asked for 250m yen. The High Court's decision did not go that far, but it has awarded him more than 70 times Hitachi's original payment.

See : http://news.bbc.co.uk/2/hi/business/3440855.stm

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COPYRIGHT
Record Labels, Internet
-BPI Wins First Internet-based Parallel Importing Case-
The online retailer CD Wow!, based in Hong Kong, has agreed to stop sourcing CDs from outside the European Economic Area (EEA), in particular from Asia, in a move that will add o its retail price of CDs sold. The BPI (British Phonographic Industry) which had filed a law suit against CD Wow! has now settled its legal action. CD Wow! has been one of the internet's biggest success stories in the UK with a turnover last year estimated at m ($181.7m). The settlement represents the music industry's first success in its battle against parallel imports, where genuine CDs are purchased in one country before being sold in another without the copyright owner's consent via the Internet. Parallel importing used to be a major problem for record labels in Europe, but the European Community's common market means that goods can flow freely within Europe from one member state to another member state. However, this does not apply to goods purchased outside of the European Community. The BPI is also investigating amazon.com, the world's largest online retailer, and has issued legal proceedings against play.com, a Jersey-based company, over parallel imports.
This decision only affects CD Wow's business in the UK and Ireland but it faces lawsuits in other countries, including Germany, from the record industry.

COMMENT : The BPI admitted that the CDs imported by CD Wow! were genuine products bought from subsidiaries of major record companies all who have a legal presence in the UK. However the BPI but argued that they had been sold to CDWow! for re-sale without the consent of the companies. It is still a slightly grey area in law as it is not one hundred percent clear where the 'sale' of the goods to the public is taking place. If CD Wow! take and order and take payment in Hong Kong and ship product from Hong Kong then it is arguable that the sale itself takes place in Hong Kong as that is where CD Wow! accepts a (UK) customer's offer to purchase and payment for that payment. In a statement in the Times (22/01/04) Philip Robinson argues that "we are a Hong Kong company that is selling and distributing products from Hong Kong, so each sale is a personal import by the customer. That is not parallel importing". However copyright law provides that to import and sell even legitimate copy of a work from a non-EC state counts as issuing copies to the UK public and therefore a licence would be needed. Without a licence, the act of issuing copies is a primary infringement of copyright law and therefore illegal (see section 18[ss1-3]) Copyright Designs & Patents Act 1988).

See : http://www.ilmc.com (News 09/01/04 and 21/01/04

http://news.bbc.co.uk/1/hi/entertainment/music/3416437.stm

After the settlement, CDWow! emailed their UK and Eire customers announcing that the BPI action and the settlement had caused CDWow! to increase the price of CDs, adding two pounds) to each. The BPI took exception to the implication that it was responsible for the price rises, and has now won a temporary injunction at the High Court preventing the internet retailer from claiming that the BPI had forced the price rise or repeating this claim.

See : http://www.out-law.com/php/page.php?page_id=bpigetscourtorder1075988753&area=news

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COPYRIGHT AND TRADEMARK
Artists
-Yoga Guru Claims Rights in Yoga Position and Teaching Style-
Bikram Choudhury, a former weightlifter who devised his own method of teaching and practising yoga is being sued in the San Franscisco Federal Court by a number of his yoga schools over his assertion that he owns copyright and trademark rights in his teachings and a number of postures. They caim there can be no rights to traditional postures and teachings. Mr Choudhury has written to a number of his franchised yoga schools alleging them of violating his intellectual property right by deviating from his strict teachings and employing instructors who were not trained by him.

Source: The Guardian, 9 February 2004

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COPYRIGHT
Record Labels, Internet
-RIAA Bring Additional Legal Actions in the US Against Alleged File Swappers as French and German Sales of CDs Decline-
The RIAA (Recording Industry Association of America) has filed a further 532 lawsuits against alleged music pirates. Since losing the appeal in their action against Verizon (see Law Updates February 2004) the RIAA now have to file 'John Doe' suits in the US identifying their alleged downloader by their Internet Protocol address. Once a "John Doe" suit has been filed, the plaintiffs (RIAA member labels) can subpoena the information necessary to identify the defendant by name. The RIAA - Verizon (2003) case resulted in a decision by the federal appeals court that the information subpoena process allowed by the Digital Millennium Copyright Act (DMCA) cannot be used in infringement cases involving peer-to-peer networks. In the UK, the BPI (British Phonographic Industry) have said that they would also now consider taking legal action against the 'worst offending' internet file swappers.

Meanwhile, facing their first annual sales decline in recent memory, officials from France, the world's fourth largest music market, said that they would also fight back with lawsuits.
French music industry trade body SNEP reported that recorded music sales fell 14.6% in revenues in 2003 to just under 2.1 billion euros - blaming the growth in file-sharing services such as Kazaa and possibly CD-copying by home users. The French music industry had defied the odds for much of the past decade - growing annually while CD sales in the rest of Western Europe and the US dipped as file-sharing and physical piracy proliferated.

Also, in Germany, music sales collapsed last year in step with a surge in unauthorized music file swapping and piracy, putting a big question mark behind the future of Europe's biggest market. Sales of CDs collapsed by an estimated 20 percent in 2003 according to the German Phonographic Industry Association, Phonoverband. German music sales have now fallen by one-third over the past five years - the highest decline in Europe. Although the turnover of Germany's music industry dropped by more than 11 percent to less than 2 billion Euros in 2002, the 20 percent contraction estimated for 2003 has shocked many industry analysts. The growing spread of piracy and swapping music files is only part of the problem, with consumers increasingly opening their wallets to other forms of entertainment (stiff competition, especially from cell-phones and computer games).

See : http://www.faz.com/IN/INtemplates/eFAZ/docmain.asp?rub=%7BB1311FCE-FBFB-11D2-B228-00105A9CAF88%7D&doc=%7B52B3316E-8A91-4D6B-8064-B87A79E2F153%7D

http://www.itweb.co.za/sections/internet/2004/0401260930.asp?A=HOME&O=FPW

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COPYRIGHT
Record Labels, Internet
-France Applies Criminal Sanctions to Music Downloader-
A French national who sold CDs made from songs he downloaded from the Net has been sentenced to six months in jail and fined EUR 1,000 (). Bruno Dugas, 38, was found guilty of infringing copyright law by setting up a web-based business through which he offered to sell CDs containing mp3s from p2p sites. Proceeds from the fine will go to the SPPF, a French body representing music producers and studios. Dugas was also ordered to publicise the judgement in two newspapers.

See : http://p2pnet.net/story/693

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COPYRIGHT
Record Labels
-Welsh Shop Owner Finally Pays for PPL Licence-
A music store owner in Wales was issued with legal proceedings by Phonographic Performance Ltd (PPL) who threatened to close down his shop unless he paid for music he had played to customers. Andrew Davies claimed the tunes were in fact a free advert, encouraging people to buy records they heard in his store. PPL said he was playing records by rockers Aerosmith when its undercover team swooped on the shop. But Mr Davies denied his shop, Andy's Records in Aberystwyth, even stocked records by the American band. However, rather than be shut down and face hefty legal bills, Mr Davies paid to PPL, which allows him to continue to play music by all sorts of rock and pop stars to customers. He said: "Music is played in the shop to sell records and create an atmosphere. It is not fair to give money if the record is not sold". PPL is a collective administration society with over 3,000 members who are record companies. PPL licences the public performance of recorded music throughout the United Kingdom from clubs, bars and hotels through to dance teachers. PRS licences the public performance of music compositions.

See : http://icnorthwales.icnetwork.co.uk/news/regionalnews/content_objectid=13909390_method=full_siteid=50142_headline=-Music-store-boss-pays-up-after-court-threat-name_page.html

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COPYRIGHT
Film, Television, Record Labels, Internet
-FACT Figures Horrify UK Film and Record Industry. In the USA, Studios Take Legal Action on Piracy and the FBI Provide a Seal of Authenticity-
The Federation Against Copyright Theft (FACT) have published figures which show the anti-piracy organisation seized almost 1.8 million pirated DVDs in 2003 in the UK - a rise of 405% on the previous year. ELSPA, the trade organisation which represents games manufacturers says it seized more than 250,000 games, a slight increase on 2003; whilst the BPI announced that more than 8 million fake (counterfeit) CDs were sold illegally in the UK in 2003. In all, the anti-piracy groups estimate that fake goods cost the UK industry more than ten billion pounds in 2003 with an alarming increase in the speed by which fake product reaches the public through downloading and digital copying allowing good quality copies to be produced in very short periods. See the Observer, 18 January 2004.

In the USA, Warner Bros and Columbia film studios have reportedly sued an actor and a man arrested for allegedly distributing movie preview tapes over the internet. They have filed complaints in Los Angeles against actor Carmine Caridi - an Oscar voter - and Russell Sprague. The studios claim the men infringed copyrights by copying and distributing copies of the films on VHS and DVD. Films involved allegedly include Mystic River, The Last Samurai and Big Fish. Mr Sprague, 51, of Chicago, has already appeared in court charged with conspiring to violate copyrights on films after being arrested by the FBI. The case involves the alleged pirating of so-called "screener" preview tapes supplied to Oscar voters. According to the Warner lawsuit, Caridi made the films available to Mr Sprague - and possibly others - for unauthorised and illegal use, distribution, exhibition and duplication. After receiving the films from Caridi, Mr Sprague allegedly illegally duplicated, exhibited and distributed the films in violation of Warner Bros' exclusive interests, the suit added. In an FBI affidavit, Caridi has denied knowing that Mr Sprague was duplicating the tapes. Warner Bros and Columbia are asking for compensation or minimum payments of $150,000 damages from the defendants for each unlawful use of copyrighted material. Studios 20th Century Fox and Disney said they were also considering whether to take action after their films were allegedly found in Mr Sprague's possession.

In the US, CDs, DVDs, and video games are to get a FBI seal in an attempt to deter people from copying them. The new labels warn consumers that criminal copyright infringement could land them with a $250,000 (,000) fine and five years in prison. They each carry the seal of the FBI, which says piracy is now its third biggest priority behind terrorism and counter-intelligence. US entertainment firms says they are losing billions of dollars to piracy and the FBI have said that "the theft of copyrighted material has grown substantially and has had a detrimental impact on the US economy". The FBI said it was up to individual companies whether the label appeared on the packaging, or on screen.

See : http://www.fact-uk.org.uk

http://news.bbc.co.uk/2/hi/entertainment/3440481.stm

http://news.bbc.co.uk/1/hi/entertainment/music/3506301.stm

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DEFAMATION
Internet
-Canadian Court Asserts Jurisdiction over the Washington Post in an Internet Libel Action as Defamation Laws in the UK, USA and Australia are Applied to the World Wide Web-
The Ontario Superior Court of Justice will allow a plaintiff to pursue his claim arising from alleged defamatory statements published on the Internet by the defendant continuously since January 1997. The primary issue in this case was whether the Court had jurisdiction over a foreign publisher of allegedly libellous statements concerning an international civil servant with residency status in Canada, where the medium of distribution of the statements was the Internet. The Court found that the broad reach of the Internet and the renown of the newspaper itself were factors in demonstrating the multi-state nature of the action. Justice Pitt held that the defendant "should reasonably have foreseen that the story would follow the plaintiff wherever he resided." The Court was also attracted by the reasoning of a recent Australian case, Dow Jones & Company Inc v Gutnick, [2002] HCA 56, in which the High Court of Australia approved the assertion of jurisdiction where an American corporation published material online that was allegedly defamatory of Mr Gutnick, who was living in Australia (see Law Updates July 2003 and Harrods v Dow Jones).

In another Canadian case, Vaquero Energy v Weir, the Alberta Court of Queen's Bench awarded the Plaintiffs general and punitive damages of $75,000 for defamatory statements posted by the Defendant on the Internet. The Plaintiffs, Vaquero Energy Ltd and its CEO, Robert Waldner, commenced an action against the Defendant, Nick Weir, alleging that Weir had anonymously posted disparaging remarks concerning the Plaintiffs on a stock market chat site over a period of four months. The Court was satisfied that the postings were defamatory and found the statements to be particularly malicious in the characterisation of Waldner. On the issue of damages, the Court emphasised that the anonymous nature of e-mails poses a greater risk that defamatory remarks are believed by readers because readers do not know the identity of the author or the author's motive for sending the e-mail. As a result, the defamation becomes aggravated. The Court also considered the fact that Internet publication is global in reach and allows for instantaneous, unlimited re-publication and this could cause irreparable harm to a business reputation before its targets are even aware of the comments.

In the USA the Californian Court of Appeal has ruled that a public forum includes an internet bulletin board. In National Technical Systems v Schoneman, the Court made the finding in the context of an appeal from a trial decision concerning the posting of allegedly defamatory statements about a corporation and its President on an Internet bulletin board (as reported by Nicholas Wong and Colin Adams of Deeth Williams Wall LLP).

See : http://www.canlii.org/on/cas/onsc/2004/2004onsc10181.html

http://www.dww.com/newsletter/archive.html

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TRADEMARK
Record Labels, Artists
-New York Mets Gain UK Mark Registration-
The New York Mets baseball team have been allowed to register their "Mets" mark in the United Kingdom in classes which include use for clothing, hats, toys, stationery and magazines. The decision by the UK Registrar for Trademarks was a blow to the Ministry of Defence who opposed the application saying that there was a likelihood of confusion with its own mark for the "Met Office" which is a registered mark for the Meteorological Office. The Trade Mark Act 1994 defines a trade mark as any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of another undertaking. The Registrar held that there would be no confusion in the British public between the baseball team's mark and the national weather forecasting service's mark.

This is the second case the Ministry of Defence have lost in as many months. The MOD applied to register the Royal Air Force's red, white and blue 'target' or roundel as a trade mark. A number of fashion companies successfully opposed the registration saying that the roundel entered the public domain in the 1960s when the 'mods' started using the same red, white and blue roundel as a symbol. The owner of the Lambretta clothing company pointed out that the target device had been used since and is closely associated with the style of dress worn by mods, with the band The Who and with the film Quadrophenia. The RAF still use the roundel on their military aircraft.

See Law Updates, December 2003

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TRADEMARK
Internet
-Microsoft Regrets Action Against mikerowsoft.com-
Microsoft has admitted it may have made a mistake in threatening Mike Rowe for using his web site, mikerowesoft.com. Rowe, a student from Vancouver, registered mikerowesoft.com to front his part-time Web site design business in August 2003. Three months later he was emailed by Microsoft's lawyers asking him to transfer the domain name to Microsoft. They offered to pay him a "settlement" of $10 (5), which is the cost of his original registration fee. However, after the case received widespread publicity on the Internet, Microsoft has admitted it may have taken things too far and has promised to treat Rowe fairly and admitted that his website name was a "creative domain name". However, and on a serious note, Microsoft lawyers were undoubtedly right in taking the matter seriously against a name which could have possible confusion with its own trade marks.

See : http://news.zdnet.co.uk/business/legal/0,39020651,39119214,00.htm

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IMAGE RIGHTS
Artists
-The Concept of Image Rights in the UK Develops as David Bedford Benefits from Ofcom Ruling -
David Bedford, the former 10,000 metre world record holder has benefited from a ruling by the UK media regulator, Ofcom, that his image (long hair, drooping moustache, red socks and striped singlet) were used without his permission by the owners of the 118118 phone director, The Number. The number have invested million in advertising their service which is now the UK's most popular director of enquiries. Ofcom is not in anyway a court, and this is not a judicial decision, but the regulator found that the high profile adverts featured a caricature of Mr. Bedford. Advertising rules state that no living person may be portrayed, caricatured or referred to in advertisements without their permission. Mr. Bedford now plans to take legal action against The Number for damages of ,000. Aberdeen Amateur Athletics Club whose club kit features a two red striped singlet identical to that used in the advertisement have already reached an out of court settlement with the Number.

COMMENT : Ofcom's decision has re-opened the debate on image rights in the United Kingdom. Even as early as Tolley v Fry (1931)[AC 333 HL] a amateur golfer, Tolley, was held to have a cause of action against chocolate manufacturers Fry after they produced a picture of him with a bar of their chocolate in his pocket. The action was based on the fact that Tolley, an amateur, could sue because of the inference that he was paid by a sponsor therefore compromising his amateur status. Racing Driver Eddie Irvine's successful claim in passing off against TalkSport Radio for using his photograph in a promotional brochure resulted in 000 damages and the court held that Irvine had 'a property right in his goodwill which he can protect from unlicensed appropriation consisting of a false claim or suggestion of endorsement of a third party's goods or business'. In 2002, former cricketer Ian Botham won an out of court settlement from Business after it used photographs of him without permission to endorse their business. Other jurisdictions including the US (see the two cases cited below), France and Italy already have image and personality rights: in the Australian case of Henderson v Radio Corporation (1969) the Supreme Court of New South Wales held that a professional dancing couple could stop the unauthorised use of their photograph on a record sleeve without having to show financial loss. The Ontario Court of Appeal recognised that a professional sports player could sue for the appropriation of personality (see Krouse v Chrysler (1973) and Athans v Canadian Adventure Camps (1978)). It will be interesting to see how UK law develops.

See The Guardian February 9th 2004 Media p10
Law Updates November 2004
US: Midler v Ford Motor (1988) 849 F 2d 460
US: Onassis v Christian Dior (1984) 472 NYS 2d 254

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TRADEMARK
Artists, Record Labels, Internet
ARTICLE: United Kingdom: Trade Mark Registration - v - Trade Mark Use: A Costs/Risk Analysis
By Emma Lambert, Solicitor

The best method of protecting your brand against copying and of increasing its value is to register it as a trade mark. Unfortunately registration can be expensive. If you choose not to register your brand it may be protected under UK law by the law of "passing off". Recent Court cases are a reminder that passing off still has teeth but you cannot afford to be complacent even if you do register your brand as a trade mark.

One case in particular, Associated Newspapers Ltd and another v Express Newspapers, carries messages for brand owners.

The Problem
The Claimant, Associated Newspapers, owns the 'Daily Mail', 'The Mail on Sunday' and 'Evening Standard'. The Defendant owns the 'Daily Express' and intended to launch a free evening newspaper in London, in competition with the Evening Standard. Various names were considered for the Defendant's newspaper but each could be shortened to 'The Mail'.

The Claimant argued that use of the proposed names: 'The Mail', 'Evening Mail' and/or 'London Evening Mail' would constitute "passing off" and trade mark infringement of the Claimant's registered trade marks: The Mail; Daily Mail; and Mail on Sunday. The Defendant argued that the Claimant did not have an exclusive right to use of the word 'Mail' claiming that it was a generic term used by other newspapers throughout the country. Further, any newspaper with the word Mail in the title was likely to be abbreviated to 'The Mail'.

The Result
The Claimant succeeded in its claim of passing off. To do so it had to bring extensive and costly evidence to prove the three requirements of passing off: reputation and goodwill; misrepresentation; and damage.

The Judge held that reputation and goodwill had both been established in the London area, where the Defendant's free newspaper was intended to be circulated. The fact that the Defendant's newspaper was free did not impact on the question of misrepresentation: the consumer would still believe it to be connected to the Claimant. The Court held that damage was likely as the public could associate the free paper with the Claimant, which could damage the Claimant's 'personality' and the public's perception of its products.

On the other hand, the Claimant failed to prove trade mark infringement. The Court held that the mark, 'The Mail', had not been infringed as the goods it covered ("the Specification") did not include 'free newspapers'. Although it is possible to sue for infringement beyond the Specification of goods the Claimant had described the goods in the Specification as 'sold' and so excluded the possibility of the Specification covering 'free' publications.

The Lessons

Passing Off Claims