The High Court has today handed down judgment rejecting a passing off claim against Channel 4 by US programme producer A&E Television Networks. The claim related to a TV programme Channel 4 plans to broadcast with a name similar to a series entitled Intervention broadcast by A&E in the USA. Channel 4 can lawfully broadcast in the UK its own programme on a similar subject, Intervention: We’re coming to get you.
In order to succeed in a passing off claim a claimant has to show (1) goodwill or reputation in the UK in connection with the name or branding of his own goods or services, (2) a misrepresentation by the defendant to the claimant’s customers to the effect that they are acquiring the goods or services of the claimant and (3) damage to the claimant.
The main point in this case was the fact that the titles of both programmes were descriptive of the programme itself – as programme titles often are. Both programmes were about a specific psychotherapeutic technique known as “intervention”, in which people suffering from addictions or compulsive behaviour disorders are treated by a professional “interventionist” who arranges a surprise confrontation between the patient and his or her family and/or friends.
As His Honour Judge Fysh QC put it, “the law of passing off will not countenance the unfair monopolisation of descriptive words or terms”. If a trader chooses a descriptive term to identify his business or products, he has to accept a lower degree of legal protection for the name than he would get with a more distinctive name. He has to accept that there may be a degree of confusion in the market, and he has to accept that other traders can use very similar names.
This principle is a long established canon of passing off law. In two of the leading cases on descriptive names:
- Office Cleaning Services Ltd failed to stop another company from using the name Office Cleaning Association.
- McCain’s Oven Chips couldn’t stop its competitors Country Fair Oven Chips and Birds Eye Oven Chips.
To allow such claims would, as one judge put it, be to turn parts of the English language into “commercial no-go areas” or, as Channel 4’s counsel in this case Daniel Alexander QC put it, to “privatise” the way people speak.
As the judge made clear, this was a case about titles, not programme formats. A&E didn’t object to the structure of Channel 4’s proposed programme, which was different from theirs, what they objected to was its title.
There was some evidence of confusion in the relevant market, a very small group of highly sophisticated people, namely the TV executives responsible for licensing programmes and formats for the UK. An A&E executive gave evidence of a sales meeting with someone from IWC, a major British TV production company, who spontaneously congratulated her on the sale of A&E’s Intervention format to Betty TV Ltd (the second defendant, an independent production company working with Channel 4 on its programme). However, A&E’s choice of such a descriptive title for its programme meant that it had to live with a certain degree of confusion. The judge accepted Channel 4’s evidence that even where confusion arose, in the small world of TV licensing “a few telephone calls would be likely soon to establish the facts.”
The judge concluded that this was a case about competition not passing off, and dismissed the passing off claim. The message is clear: if you give your TV programme (or any other product) a descriptive name, you can’t expect the same legal protection as you would with a more distinctive name.
Channel 4 and Betty TV were represented in these proceedings by Swan Turton’s litigation team.