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Not everything is coming up roses for Twentieth Century Fox these days. In fact, the television studio may be singing the blues now that a UK high court judge has ruled that the studio’s Golden Globe, Emmy and Grammy award-winning television show Glee has been infringing the trademark rights of a UK businessman.
Mark Tughan registered the trademark “The Glee Club” with the UK’s Intellectual Property Office for his chain of music and comedy clubs in 1999. He claims that after the television series began airing on British television, he began to lose customers, who assumed his clubs were related to the show. Although the high court judge agreed that there was a likelihood of confusion between the television show and the UK entertainment club, the judge did not find that the television studio had “passed off” the show as being associated with the clubs. In other words, the judge did not believe the studio had misrepresented the show as being associated with the comedy and musical clubs. Neither was the judge convinced that any confusion between the two would result in damage to the club. Though Twentieth Century Fox claims to be confident in its appeal, claiming it had no prior knowledge of the clubs or the UK trademark, the fact of the matter is that the mark had been registered for ten years prior to the television series airing in the UK.
The case has been referred to as a “David and Goliath” legal battle, with a small business owner taking on a media giant — and winning. And, depending on the ultimate outcome, it could mean the loss of big money for Twentieth Century Fox. Though no injunction has yet issued, this ruling could result in the television show being taken off the air in the UK entirely, and the studio could lose huge revenue streams if sales from merchandising and musical downloads are halted. (This is no small change, considering that the show has sold more than 43 million songs and 12 million albums worldwide.) Alternatively, the litigation could result in the studio having to re-brand the show entirely — but only for UK audiences. This is because trademark registration is typically only good for the country in which the registration is obtained. (In the case of the European Union, a Community Trade Mark (CTM) can be obtained to protect the mark in all EU countries. While the UK is an EU member, apparently Tughan had not sought a CTM.) As Tughan only has a UK registration, he only has protection in the UK.
I’m certainly sympathetic to Tughan, and I’m as much a champion of the underdog as the next person. But I also see an element of absurdity to this case, especially because while Tughan is crying foul, he is also seemingly trying to benefit from an association with the television show. The Glee Club’s homepage has a banner reading: “Like the comedy on TV, but better.”
What do you think? Should Twentieth Century Fox be forced to take Glee off the air in the UK, or entirely re-brand it for just one country, because of a small business with in toto four comedy club locations? Are you convinced, like the judge was, that there is a likelihood of confusion between a US television show and a small British comedy club business? And more fundmentally, do you think “The Glee Club” is distinctive enough a trade name to warrant protection to begin with?
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