More legal wranglings after comedy club won trademark case

Media giants 20th Century Fox are to appeal the High Court ruling that its hit show Glee infringed the copyright of the comedy clubs of the same name.

They vowed to fight back as today’s legal decision could force the show off air in the UK as well as affect sales of mechanise such as CDs and DVDs and music downloads. It marked a victory for Comic Enterprises, the company that runs Glee Club venues in Birmingham, Nottingham, Cardiff and Oxford after a three-year legal battle.

However, a spokesman for the Murdoch-owed company said: ‘We intend to appeal and are confident that, as the case plays out, we will ultimately prevail. We remain committed to delivering Glee to all of its fans in the UK.’

The ruling by Deputy Judge Roger Wyand QC said the infringement had potentially ‘put off’ comedy club customers and said that: ‘Continued use [by Fox] cannot be in accordance with honest practices.’

However he rejected as simultaneous claim for ‘passing off’ – a more serious allegation.

‘I believe that [the] evidence taken as a whole shows that there is a likelihood of confusion,’ he said. ‘[But] I am not convinced that such confusion is sufficiently likely to be said to cause damage to Comic Enterprises. The passing-off case fails.’

The judge made no mention of any compensation in his written ruling, and said such issues would have to be resolved at another hearing.

Club owner Mark Tughan said he was threatened with losing his personal assets if he lost the case, and described today’s ruling as ‘a huge relief’.

The Glee Club was established in Birmingham in 1994, and has held a registered trade mark for comedy and music entertainment services in the UK since 1999 – ten years before Glee first aired in the UK.

Tughan, said: ‘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.’

He claimed that ‘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 said it ‘hampered’ the company's ability to establish its newer venues in Oxford and Nottingham.

‘Smaller independent businesses should take heart from today’s decision, as it clearly shows that trademark infringements by large multi-national companies can be effectively challenged in British courts,’ he said. ‘Trademark 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 trademarks of others.’

Published: 7 Feb 2014