Knight v Beyond Properties Pty Ltd

 

Overview of Decision and Ruling: 

In Knight v Beyond Properties Pty Ltd[1] the claimant had published three books in the United Kingdom between 1991 and 1996 with the word "Mythbusters" in their title.  The "Mythbusters" in these books were a team who travelled the world looking for monsters, ghosts, UFOs and the like.  Whilst there was some dispute as to the extent of those sales the court determined that no more than 17,100 copies of these books were sold.   The claimant brought passing off proceedings against the Defendants who had made a number of series of programs under the "Mythbusters" name between 2003 and 2006.  These programs investigated improbable events or stories such as whether mobile phones could be the cause of petrol station files.  

The court held that MYTHBUSTERS was not so descriptive that goodwill could not attach to it.    The position was similar to that in Phones 4U Ltd v Phone 4u.co.uk Internet Ltd[2].  Whilst the term conveyed information about the books it was not a word that would be used in ordinary speech to describe those books[3].   Nevertheless, the court concluded on the facts of the case that by 2003 the claimant had no more than a trivial, if, any reputation in the Mythbusters name.  This was so notwithstanding the evidence that to a limited degree the books remained in circulation after 1996.  Accordingly, the claim failed.

The court went on to consider on an obiter basis whether there had been any misrepresentation in this case.  In the judges view there was scope for initial confusion but any confusion would be quickly dispelled once watching the programmes.    The Defendant contended[4] that it was necessary for the claimant to show that confusion could exist after watching the whole programme.   However, in the view of the judge the question was when the complainant suffered damage.  In the case of goods in a shop it was when the goods were sold.  In the case of a film the point of sale was before the film was seen. 

The case of a television programme was not directly analogous to either of these scenarios as ordinarily there would be no "point of sale".  Mr Knight contended that because Beyond had produced programmes with the title Mythbusters that are broadcast on national channels such as Discovery and the BBC, it had become impossible for him to sell his concept to television producers under the same name.  He had, therefore, lost what goodwill he might otherwise have had as regards television.    The judge accepted that this was a possible head of damage that, with evidence, could support a passing off action.    However, he did not accept that there was any such evidence in this case.   The material before the court suggested that Mr Knight had no real prospect of the Mythbusters concept being accepted by any broadcasting organisation and even if this was wrong, the evidence suggested that the programmes could and would be made with a variation in title.  

Importance of Case:

The case is interesting first because of its detailed analysis of how with the passage of time goodwill associated with a particular name can diminish to such a degree that it becomes trivial and incapable of founding an action in passing off.   However, more significant is the court's analysis of the assessment of misrepresentation and damage in the context of a service where the ultimate user or view does not make any payment to receive that service. 

Matthew Harris

Waterfront Solicitors


[1] (May 24, 2007), [2007] EWHC 1251 (Ch), [2007] F.S.R. 34.  Available at http://www.bailii.org/ew/cases/EWHC/Ch/2007/1251.html

[2] [2006] EWCA Civ 244, [2007] R.P.C. 5

[3] The case was also distinguished from that of Hormel Foods Corp v Antiles Landscape Investments NV  [2005] EWHC 13,  [2005] R.P.C. 28,  96 TMR 555 (2007 ) in which the tern "spam buster" was held to be prima facie descriptive of a computer program for combating unsolicited commercial messages, and County Sound Plc v Ocean Sound Ltd [1991] F.S.R. 367 where the term "The Gold AM" was held to be descriptive. 

[4] Relying upon the decision in Schweppes Ltd v Gibbens (1905) 22 R.P.C. 601 and Julius Sämann Ltd v Tetrosyl Ltd [2006] EWHC 529 (Ch), [2006] F.S.R. 52.

Intellectual Property