Intellectual Property: Passing Off – The Law Does Concern Itself With Trivialities

Introduction

The case of Knight v Beyond Properties Pty Ltd and others at the end of May 2007 contains some useful reminders for those interested in the law of passing off and, in particular, its limitations. Passing off is used to protect signs and names (or more correctly the goodwill and reputation connected with the business carried on under a sign or name), which are not registered trade marks. In particular, the judgement of Mr Justice David Richards points out the importance of consistent pleadings, not exaggerating the evidence and establishing reputation and goodwill, which may be on a relatively small scale but must be more than trivial.

The facts of the case

The case related to the name "Mythbusters". The Claimant, Mr Knight, had published three books for children in the UK under the title "Mythbusters". There had been no significant activity in the UK since 1996. The Defendants were all engaged in the production and distribution of television programmes. The fourth Defendant was the Discovery Channel. By contrast, their programmes were aimed at was described as "the dads and lads" market.

The Claimant brought an action alleging passing off. He said that the UK public had come to understand that the name Mythbusters in relation to books and television programmes had come to mean his business. The main issue was the extent of reputation and goodwill enjoyed by the Claimant at the relevant date, November 2003.

What happened?

The Claimant lost, despite establishing that the name "Mythbusters" was not descriptive, and his claim was dismissed. The principal reason was that, by November 2003, his reputation and goodwill in the business conducted under the name Mythbusters was "trivial". His reputation in 1996 was small but would have been sufficient at that date to found a passing off action. By November 2003, however, this reputation had diminished such that he no longer had the requisite "reputation and goodwill".

This was despite the Claimant maintaining that the Defendants knew of his concept and title before making their first programme. This allegation was not pleaded; had it been, it might have been the subject of closer focus. However, the Claimant's evidence on his main point, his book sales, was found to be unreliable and this may have influenced the Judge on this point as well.

Commercial lessons

Rather like the Da Vinci Code case in copyright, which was decided by the Court of Appeal in March 2007...