IP Infringement Claims Against ‘Family Guy’ Creator Over ‘Ted’ Merchandise

'Family Guy' creator Seth MacFarlane's character Ted, the profane, womanising teddy bear, has been the subject of two separate lawsuits in relation to alleged intellectual property infringement of trade dress and copyright. These claims provide some interesting insights into IP disputes over valuable creative content, and it's worth considering how they would be handled if similar claims were filed in an Irish Court.

Claim 1 - Ted Talking Bottle Opener

Michael Cram has filed proceedings in Federal Court in California claiming that MacFarlane, along with others such as Universal Studios and Target Stores, released a DVD of the movie 'Ted', which was packaged with a 'Ted'-themed talking bottle opener. Cram alleges the Ted talking bottle opener was "practically an identical knock-off" of his own talking bottle opener and infringed his trade dress.

Cram claims that he is the sole inventor, designer and distributor of a 'uniquely designed' talking bottle opener containing sound activation elements. The lawsuit claims Cram has sold over 10 million branded talking bottle openers under licenses from the National Football League, Major League Baseball and movie and television studios. MacFarlane's animated sitcom 'Family Guy' allegedly has a licensing deal with Cram's company, and therefore Cram asserts that MacFarlane and the other defendants had prior knowledge of Cram's intellectual property ownership rights in the bottle opener. Cram is seeking damages equal to nine times the amount of damages actually suffered him, an order that defendants pay for corrective advertising, and further relief.

Trade dress infringement / passing off under Irish law

If Cram had brought his claim in Ireland he would seek to protect his trade dress under the law of passing off. Passing off is the general principle that 'no man may sell his goods under the pretence that they are the goods of another'.

The definitive test for passing off is a three stage test set out by the English House of Lords in Reckitt & Coleman Products Ltd v Borden Ink (known as the 'Jif Lemon case'). The Irish High Court held in in Jacob Fruitfield v United Biscuits that the three stage test in Jif Lemon case was applicable in Ireland as well as England.

Accordingly, if Cram decided to bring his claim in Ireland, he would have to prove:

the existence of a reputation or goodwill in his talking bottle opener product including, where appropriate, in the get-up; the risk of confusion between the...