The claimant (Andrew Knight) in this passing off action created a series of books, television pilots and television programme proposals relating to the investigation of myths by reference to the term “mythbusters”. He claimed that by virtue of these activities he had established goodwill in the term “mythbusters” when used in relation to books and television programmes concerning the investigation of myths.
The first three defendants were production companies who had produced a series called “Mythbusters”, which the claimant asserted covered the same or similar ground to his own work. The fourth defendant was Discovery Channel, the broadcaster and distributor of those programmes. The defendants contended that “mythbusters” was merely a descriptive name that was therefore incapable of generating the necessary goodwill for a passing off claim.
As Mr Justice Richards observed in his judgment handed down on 24 May, the claimant’s books and television appearances and the defendants’ programmes were “not strikingly similar”. The claimant’s books were aimed at an age range of 8-12, whereas the defendants’ programmes were primarily aimed at the “dads and lads” market. As the judge observed: “to the extent that the claimant’s books and the defendants’ programmes have a common theme, it is that suggested by the title: each investigates improbable events or stories in an entertaining way.”
In rejecting the claim, the judge found that a mark such as “mythbusters” that was descriptive would only be protected if it could be shown to have acquired a secondary meaning, and thereby to have become distinctive of the claimant’s activities. The judge found that the term was descriptive to the extent that it informed the reader/viewer that the book/programme was about people who investigated and debunked “myths”. However, that did not mean that goodwill could not attach to it. It was not a word that would be used in ordinary speech to describe a book, person or activity but had been adopted as a descriptive title for a series and was therefore capable of generating goodwill for the purposes of a passing off claim.
The judge also found that even a modest reputation could be sufficient for a passing off claim, but at some point a reputation might exist amongst such a small group of individuals that it would cease to count. The minimum degree of goodwill acquired for a passing off claim was a matter of fact and degree and a passing off claim could not be sustained to protect goodwill which was trivial.
In this case, although the claimant had shown that he had initially established goodwill in the term “mythbusters” to describe the investigation of myths for children of primary school age on a minor scale, that reputation had significantly diminished by the time that the defendants’ activities began, and by that stage it was insufficient for the purposes of a passing off claim. The judge also found that the claimant had failed to establish any actual loss or real likelihood of loss.
The judge was critical of some of the claimant’s evidence. In particular the judge found that some of the figures provided by the claimant for sales of its books were “inflated”. The judge also observed that it was clear from the evidence that the term “mythbusters” had “been used in a wide variety of contexts, including some which pre-dated its use by the [claimant], for example an article published … in 1985. Other examples include an NHS website, a mental health users group, a survey on the BBC Radio 1 website, the Sustainable Office Forum and a golf magazine.”
This weak and speculative claim, advanced on a Conditional Fee Arrangement with considerable legal resources on both sides, culminated in a High Court trial lasting nearly two weeks in February this year. The investment of such resources indicates the value of the goodwill in catchy terms that identify a popular TV series or brand.