Makers of TV show cannot take trademark appeal to Europe

The Glee chain of comedy clubs has won another round in their long-running legal battle against the makers of the Glee TV show.

Twentieth Century Fox Television had already lost both a High Court and an appeal court hearing over the trademark of the word ‘Glee’.

And today their bid to have the case referred to the EU Court of Justice has been dismissed by the appeal court.

The ruling paves the way for a new legal battle over how much compensation Fox must pay to Glee Clubs’ parent company, Comic Enterprises.

However the media giant, headed by Rupert Murdoch, is expected to lodge an application to the Supreme Court to have the original decision, made in January 2014, overturned.

Mark Tughan, managing director of the Glee clubs, said: ‘This really is the David and Goliath of legal battles and at times I thought this would never end. 

‘The way Fox has conducted this litigation was, I believe, calculated to be as long and costly as possible. I am convinced the main aim was not to actually win the case on its merits, but to bankrupt me first.’

The two sides have now faced off four times, totalling 11 days in court. 

However, the latest judgement means Fox are liable for Comic Enterprises's legal fees so far. Fox is now pursuing the case in the Supreme Court to head off the next stage, a so-called ‘account of profits’ hearing. That would determine how much profit Fox has generated from the show in the UK – which included merchandising, downloads and sales of TV rights, as well as a live show – and then determine how much of that Fox should pay in royalties.

Tughan added: ‘I am now looking forward to presenting our case for compensation. The fact that this has lasted almost five years – in my view unnecessarily – has stiffened my resolve to obtain fair recompense for the suffering and sacrifice my staff and my business have suffered. 

‘I did everything I could to keep this dispute small and containable but Fox have pursued the opposite strategy.

‘The fact that Fox wrote to me days before the main court hearing to warn me that they would attempt to pursue me personally for huge costs should I lose, was chilling.’

A spokesman for Fox said: 'We note the Court of Appeal’s decision and will seek the Supreme Court's consideration of the issues. We remain committed to proving the merits of our case and to delivering Glee to all of its fans in the UK.'

Comic Enterprise, which runs Glee clubs in Birmingham, Cardiff, Nottingham and Oxford, has owned a trademark on the name ‘The Glee Club’ since 1999 for use in entertainment services, which covers not only live shows but TV programmes and films, as well as clothing. 

Fox’s attempt to appeal to the highest court in the European Union, over the heads of the British justice system, is ironic given that Murdoch’s newspapers have been staunch anti-EU campaigners… largely on the grounds of handing over British sovereignty to external bodies.

Published: 25 May 2016