Glee comedy club wins ‘David and Goliath’ battle over trademark

A comedy club chain has won a “David and Goliath” legal battle against the makers of the US television show Glee.

Comic Enterprises had argued that 20th Century Fox’s production had breached its trademark rights to the phrase The Glee Club.

A High Court judge ruled in the UK company’s favor but said it had not been damaged.

The owner of the comedy and music venue chain, Mark Tughan, said he felt vindicated by the ruling.

‘Taken off air’

Speaking after the hearing, he said: “It’s a relief because you can’t get any more David and Goliath than this.

“I always knew it would be a career-defining situation but I did not take it on for the fun of it – I took it on to win.”

After the verdict was announced a spokesman for The Glee Club said in a statement: “The TV show could now be taken off air in the UK, Glee merchandise and DVDs removed from UK shops and music downloads halted.”

A 20th Century Fox Television spokesperson stated: “We intend to appeal and are confident that, as the case plays out, we will ultimately prevail. We remain committed to delivering Glee to all of its fans in the UK.”

The television show, about a singing club at a fictional US high school, first aired in 2009 on the Fox Channel – part of Rupert Murdoch’s media empire.

Mr. Tughan said the trademark was registered in 1999 and launched legal proceedings against 20th Century Fox in September 2011, which was contested.

He said: “Smaller independent businesses should take heart from today’s decision.

“It clearly shows that trademark infringements by large multi-national companies can be effectively challenged in British courts.

“Trademark law does not exclusively exist for the world’s largest companies, able to spend millions of pounds to protect their intellectual property, whilst simultaneously infringing the trademarks of others.”

Concert tour

Deputy High Court Judge Roger Wyand QC made no mention of compensation in his written ruling but did state subsequent issues would be studied at another hearing.

He said album compilations of songs performed on the show had been sold in the UK, two world concert tours had included performances in Manchester and London and Glee merchandise had been sold.

“Comic Enterprises says that all these activities, when carried out the United Kingdom, infringe the [trademark] and pass off 20th Century Fox’s show, and associated products, as being associated in the course of trade with Comic Enterprises.

“20th Century Fox denies infringement and passing off.”

The judge concluded Comic Enterprises’ claim on infringement succeeded and said: “I believe that evidence taken as a whole shows that there is a likelihood of confusion.

“20th Century Fox’s use causes dilution and tarnishing. Continued use in such circumstances cannot be in accordance with honest practices in industrial or commercial matters.”

But, he added: “I am not convinced that such confusion is sufficiently likely to be said to cause damage. The passing off case fails.”

The Glee Club opened in Birmingham in 1994 and now has branches in Cardiff, Nottingham and Oxford.

Source: bbc.co.uk