Owning history: it’s all in the wording

Caroline Hart, trainee, Burges Salmon

On 1 February 2013 Mr Justice Peter Smith handed down his decision in a case that Lawyer 2B’s sister magazine The Lawyer called one of the top-20 lawsuits of 2012.

The battle between television giants the Discovery Channel and the History Channel had raged for more than two years.

The long-awaited decision found that Discovery had not infringed the History Channel’s use of the word ‘History’ by launching a channel called ‘Discovery History’.

If you were a lawyer advising a company on the commercial implications of this judgment, what would you tell your client?

I became involved in the case as a second-seat trainee in the litigation department. Burges Salmon partner Jeremy Dickerson and associate Jenny Gibson were preparing for trial. Under the careful supervision of the two, I found myself fully involved. Jenny immersed me in the (no puns) history of the case. Then she set me to work poring over survey evidence and finding evidence for trial. Jeremy wore both his litigator’s and his lecturer’s hat (he is a guest lecturer at Oxford in intellectual property law), explaining both the legal strategy and the finer nuances of trademark law.

For lawyers, AETN v Discovery and the Court of Appeal’s recent decision in Marks & Spencer v Interflora have significant implications for handling evidence. For me, this case taught me about law and litigation, but it also taught me about commercial awareness.

What if the case prevented Discovery from having a channel called Discovery History? What would this mean for a book that used the word ‘history’ or a television programme about history? What would it mean for clients?

A company’s IP is a core business asset that can be worth millions. It is worth fighting over. Big names such as Apple, Samsung, HTC, Nokia and Microsoft are regularly in the news for court battles involving patents and design rights. IP is well-recognised at this ‘product’ end of the business as a tangible component of the products that a business sells.

Less obvious is the importance of ‘non-tangible’ IP. Branding is big business - it is how a company distinguishes itself from its competitors and how its customers recognise it. A company invests heavily in the development, marketing and maintenance of its brand.

Key parts of the brand include the company’s name and logo and it protects them by registering them as trademarks. There may also be protection in the tort of passing off. This case tested how far these rights can be stretched.

Descriptive words, such as history, are hard to protect. For a client who is the owner of a trademark, the protection that a descriptive trademark affords them may not stretch quite as far as they would think, or like.

For the History Channel’s competitors this would seem like the right outcome. A world where words such as ‘science’, ‘drama’ or “news” could be owned and licensed would have huge commercial implications.

But hold that thought. There is still time to appeal.