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Wragge Lawrence Graham & Co has won a David and Goliath legal battle for comedy club operators Comic Enterprises against Twentieth Century Fox.
The company could be forced to rebrand its television series Glee after the High Court found that the brand infringed the IP rights of Comic Enterprises’ brand The Glee Club.
Deputy High Court judge Roger Wyand rejected arguments from Twentieth Century Fox that it would be “catastrophic” to uphold an injunction against the company, but stayed the ruling pending the outcome of a Court of Appeal hearing.
The television and film company instructed Simmons & Simmons partner David Stone to challenge the sanctions made by the court in February (7 February 2013).
In that ruling the High Court found that Twentieth Century Fox had infringed Comic Enterprises’ trademark but had not been guilty of passing off.
Stone instructed IP heavyweight 11 South Square’s Henry Carr QC to lead the battle for the firm company. He faced Three New Square’s Douglas Campbell who was instructed by Jones.
According to the judgment, Carr contended that to force the defendant to change the brand, “would not be fair or equitable. It would be costly and complex. It would not be effective at dealing with the harm […] and would be disproportionate thereto.”
To grant an injunction against Twentieth Century Fox would be, “both disproportionate and futile”, he continued.
Wyand rejected the argument, stating: “I find it 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.”
He added: “Although an injunction would be a substantial blow to the defendant, I do not find that it would be disproportionate or futile. I think that an injunction is necessary to protect the claimant’s intellectual property.
“Whilst it may well be true that the fan base for the programme will still think of the programme as “Glee”, they will be made aware of the fact that it cannot be called “Glee” anymore because of the trade mark rights of the claimant.”
Welcoming the ruling Jones said: “The Glee Club never wanted to take on Fox but they had little option because the TV show was harming their brand and business. Fox refused to recognise this and Comic Enterprises was forced to take action.”
The legal line-up
For the claimant Comic Enterprises
Three New Square’s Douglas Campbell instructed by Wragge Lawrence Graham & Co partner Cerryg Jones. Solicitors Nick Smee and Tom Foster and associate Bonita Trimmer assisted.
For the defendant Twentieth Century Fox Film
11 South Square’s Henry Carr QC leading Three New Square’s Simon Malynicz instructed by Simmons & Simmons partner David Stone