Hello - I was recently organising an event which had the appearance of 2 mascots. We thought the mascots we were going to use and the way we marketed the event was sufficiently different from the offical characters that we would be able to get around the copyright law. However somebody reported us to Viacom and their solicitors sent us a rather threatening letter, informing us that we had to cancel the whole event.
As a consequence and to save time, energy and money, we have replaced the mascots with entirely different entertainment.
The problem is the solicitors are pressurising us to sign an undertaking, stating some standard clauses such as wont use the mascots at our event, or future events. It does state that we have to deliver up the costumes we were going to use (we hadn't bought these as yet so are not in posession) but it also states we have to supply them with the name of the company or individual who we were going to use to supply the mascots. My question is, is this a legal requirement? And what is the course of action going to be if we dont sign the undetaking - baring in mind that we have changed our entire event and are no longer using the mascots.
Delivering Up -Mascots
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Bobbins123
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Hi Bobbins,
Copyright
As you don't possess the costumes and weren't responsible for any copying of their intellectual property (with the possible exception of trade mark infringement - more on this in a moment) there is no question of you agreeing to their undertaking, which is wholly unreasonable with respect to copyright. At most, had you gone ahead you might have been liable for secondary copyright infringement - possessing an infringing copy in the course of business - and that might have led to a court ordering the infringing costumes to be destroyed or delivered up, but there is certainly no justification for this demand in the case of a prospective event which will now not occur. Furthermore you are not required to make any undertaking about future events. You most certainly are not required to name the intended source of the costumes. That would require a court order.
Trade mark
The only issue where Viacom may have possible grounds for a claim is if you used a trade mark, or something substantially similar to one, which they own - such as the name or likeness of one of their characters - in the advertising for the event. Because you should not compromise your position on a public forum, I would ask you not to name the character they allege you may have infringed, or make any statement here that might amount to an admission of liability. However if they have specifically alleged infringement of their trade marks then this could have serious consequences and you should speak to a solicitor or Citizens Advice to see whether they have a viable claim. However even if they do have a viable claim, delivery up and the other undertakings they have asked you to make are for the court alone to order - presuming that liability for infringement is found to have occurred - and not demands you are required to comply with at this stage. After you taken legal advice, it may be expedient to provide a limited undertaking (such as not to hold the event as originally planned, which of course just reflects the situation anyway) if this is likely to satisfy Viacom and in return they agree not to pursue a claim against you in the courts.
Viacom have a deserved reputation for vigorously defending their intellectual property, and so if their letter speaks of trade mark infringement (whether or not copyright is also mentioned) it would be foolish to just ignore the letter.
Copyright
As you don't possess the costumes and weren't responsible for any copying of their intellectual property (with the possible exception of trade mark infringement - more on this in a moment) there is no question of you agreeing to their undertaking, which is wholly unreasonable with respect to copyright. At most, had you gone ahead you might have been liable for secondary copyright infringement - possessing an infringing copy in the course of business - and that might have led to a court ordering the infringing costumes to be destroyed or delivered up, but there is certainly no justification for this demand in the case of a prospective event which will now not occur. Furthermore you are not required to make any undertaking about future events. You most certainly are not required to name the intended source of the costumes. That would require a court order.
Trade mark
The only issue where Viacom may have possible grounds for a claim is if you used a trade mark, or something substantially similar to one, which they own - such as the name or likeness of one of their characters - in the advertising for the event. Because you should not compromise your position on a public forum, I would ask you not to name the character they allege you may have infringed, or make any statement here that might amount to an admission of liability. However if they have specifically alleged infringement of their trade marks then this could have serious consequences and you should speak to a solicitor or Citizens Advice to see whether they have a viable claim. However even if they do have a viable claim, delivery up and the other undertakings they have asked you to make are for the court alone to order - presuming that liability for infringement is found to have occurred - and not demands you are required to comply with at this stage. After you taken legal advice, it may be expedient to provide a limited undertaking (such as not to hold the event as originally planned, which of course just reflects the situation anyway) if this is likely to satisfy Viacom and in return they agree not to pursue a claim against you in the courts.
Viacom have a deserved reputation for vigorously defending their intellectual property, and so if their letter speaks of trade mark infringement (whether or not copyright is also mentioned) it would be foolish to just ignore the letter.
Advice or comment provided here is not and does not purport to be legal advice as defined by s.12 of Legal Services Act 2007
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Bobbins123
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Thankyou for your advce. At no time did we mention by name the official characters - and the images we used in our advertising were taken off Google and were of people dressed up in costumes - similar to the ones we thinking of purchasing. They are claiming however that this is an infringement of Trademark, and copyright and passing off.
Hi Bobbins,
Using the images from Google without permission could amount to copyright infringement, but not, it would seem of anything belonging to Viacom, but of whoever took these images, presumably for a costume company. If Viacom argue that the images somehow infringe their copyright, then at best you may be liable for secondary infringement for using unauthorised images, but the primary infringement lies with the photographer and/or the maker of the costumes. If this is the best that Viacom can come up with, they really are on dodgy ground. They would still need to prove that the images and costumes infringed their copyright.
Trade mark infringement would only have occurred if the likeness of the actual character (as opposed to just its name) was registered as a trade mark. You can check this on the IPO website by entering the name into the database search and see if an image of the character is shown. As an example, taking one of Viacom's better known cartoon characters, Sponge Bob Squarepants, although the name is registered in a number of classes, no graphic has been registered in the UK or EU. Similarly there are no registered graphical marks for the RugRats characters. If no graphical representation of your particular character has been registered, then no trade mark infringement can be said to have occurred by using images of a costume which might resemble the actual character.
That just leaves passing off. Passing off can and often does apply to unregistered trade marks where the words or symbols concerned represent established goodwill in a brand and your use of something similar could be said to misrepresent that symbol etc in a manner which damages the goodwill of the owner. That's a very vague definition of a fairly vague concept. The reason it's vague is that passing off is not defined by statute but by common law, that is to say a body of judicial decisions over many years. Assuming the characters in dispute are reasonably well-known, the first factor - that goodwill exists - is fairly easily satisfied, as is the third factor - that damage has occurred or would occur - so the strength of a passing off claim would rest on whether there was misrepresentation which would lead the average member of the public to believe that your event was authorised by Viacom. Misrepresentation in this context does not necessarily mean wilful or deliberate deception, merely that it would have been the inevitable outcome from your actions. Once again, if this can be said to apply in your case, you should get legal advice.
Using the images from Google without permission could amount to copyright infringement, but not, it would seem of anything belonging to Viacom, but of whoever took these images, presumably for a costume company. If Viacom argue that the images somehow infringe their copyright, then at best you may be liable for secondary infringement for using unauthorised images, but the primary infringement lies with the photographer and/or the maker of the costumes. If this is the best that Viacom can come up with, they really are on dodgy ground. They would still need to prove that the images and costumes infringed their copyright.
Trade mark infringement would only have occurred if the likeness of the actual character (as opposed to just its name) was registered as a trade mark. You can check this on the IPO website by entering the name into the database search and see if an image of the character is shown. As an example, taking one of Viacom's better known cartoon characters, Sponge Bob Squarepants, although the name is registered in a number of classes, no graphic has been registered in the UK or EU. Similarly there are no registered graphical marks for the RugRats characters. If no graphical representation of your particular character has been registered, then no trade mark infringement can be said to have occurred by using images of a costume which might resemble the actual character.
That just leaves passing off. Passing off can and often does apply to unregistered trade marks where the words or symbols concerned represent established goodwill in a brand and your use of something similar could be said to misrepresent that symbol etc in a manner which damages the goodwill of the owner. That's a very vague definition of a fairly vague concept. The reason it's vague is that passing off is not defined by statute but by common law, that is to say a body of judicial decisions over many years. Assuming the characters in dispute are reasonably well-known, the first factor - that goodwill exists - is fairly easily satisfied, as is the third factor - that damage has occurred or would occur - so the strength of a passing off claim would rest on whether there was misrepresentation which would lead the average member of the public to believe that your event was authorised by Viacom. Misrepresentation in this context does not necessarily mean wilful or deliberate deception, merely that it would have been the inevitable outcome from your actions. Once again, if this can be said to apply in your case, you should get legal advice.
Advice or comment provided here is not and does not purport to be legal advice as defined by s.12 of Legal Services Act 2007
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Bobbins123
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Thankyou so much for your help. They sent with the letter a copy of the 'current case details of the EU trademarked designs'. I have cross referenced it with the IPO website you said to check - and while there are some graphics - the section they particulary sent us showing 3D images is not on listed on this IPO website. The document they sent us comes from the European Union Intellectual Propery Office and is headed RCD file information - what does that mean?
They are still pressurising us to sign the undertaking and are now saying that if we give them the name of the website that the photos were taken from - this will satisfy the requirement to give them the name of the individual and/or company that was supplying us. The problem with this is we have tried to go back onto google and find them and we can't -but also from my interpretation of your advice - they cant insist on this without a court order?
With regards to the passing off issue - the way we worded and presented this event could not have led anyone to believe this was an authorised or official Viacom event.
They are still pressurising us to sign the undertaking and are now saying that if we give them the name of the website that the photos were taken from - this will satisfy the requirement to give them the name of the individual and/or company that was supplying us. The problem with this is we have tried to go back onto google and find them and we can't -but also from my interpretation of your advice - they cant insist on this without a court order?
With regards to the passing off issue - the way we worded and presented this event could not have led anyone to believe this was an authorised or official Viacom event.
Hi Bobbins,
I didn't mention Registered Community Designs (RCDs) because I couldn't (and still can't} see it applying in your case. A registered design protects the non-functional aspects of the design of an article - so the appearance and styling. I assume that Viacom claim to have registered the design for costumes representing the characters which are in dispute. However the EU IPO search system is horrendously awkward to navigate for general searches, and all I could find were some references to the Shimmer and Shine characters. If you want to see what they are talking about you can enter the details in the e-search tool here. However all that is likely to do is confirm whether or not they own a Registered Community Design,
Registering a design only prevents someone from making an item to the same design, and in such cases, it is not necessary to prove that copying has occurred, merely that the second item looks substantially the same as the registered design. There are some details about how the comparison is to be made but I won't clutter up this posting with them. The reason I don't need to is that since you have neither copied their registered design nor intended to do so, you have not infringed any aspect of RCD. Even if you had used the costumes as intended that would not amount to infringement because RCD only protects against the manufacture of an infringing item, not its use. Admittedly, if a court had found that the costumes did infringe the Viacom RCD, they could order the seizure and destruction of any infringing items, but normally this would only be enforcible against the manufacturer, importers and suppliers, not end-users. However since you aren't even an end-user that is irrelevant.
From everything you have told us, this sounds as if it's one massive bluff. That is not particularly unusual in cases like this. Had this been about UK Registered Design Right, you might have had grounds for a counter-claim against Viacom if they had made unjustified threats. However that section does not apply to RCDs and in any case I would expect that the lawyers concerned have made sure their wording would not amount to a 'threat' even though that is exactly how they wanted it to be perceived.
Perhaps it's time for you to make a few threats of your own, such as suggesting that if they don't stop harrassing you, you will take the story to the tabloids, thus getting your event extra publicity, and ensuring that Viacom get some bad publicity. And there's no law against that!
I didn't mention Registered Community Designs (RCDs) because I couldn't (and still can't} see it applying in your case. A registered design protects the non-functional aspects of the design of an article - so the appearance and styling. I assume that Viacom claim to have registered the design for costumes representing the characters which are in dispute. However the EU IPO search system is horrendously awkward to navigate for general searches, and all I could find were some references to the Shimmer and Shine characters. If you want to see what they are talking about you can enter the details in the e-search tool here. However all that is likely to do is confirm whether or not they own a Registered Community Design,
Registering a design only prevents someone from making an item to the same design, and in such cases, it is not necessary to prove that copying has occurred, merely that the second item looks substantially the same as the registered design. There are some details about how the comparison is to be made but I won't clutter up this posting with them. The reason I don't need to is that since you have neither copied their registered design nor intended to do so, you have not infringed any aspect of RCD. Even if you had used the costumes as intended that would not amount to infringement because RCD only protects against the manufacture of an infringing item, not its use. Admittedly, if a court had found that the costumes did infringe the Viacom RCD, they could order the seizure and destruction of any infringing items, but normally this would only be enforcible against the manufacturer, importers and suppliers, not end-users. However since you aren't even an end-user that is irrelevant.
From everything you have told us, this sounds as if it's one massive bluff. That is not particularly unusual in cases like this. Had this been about UK Registered Design Right, you might have had grounds for a counter-claim against Viacom if they had made unjustified threats. However that section does not apply to RCDs and in any case I would expect that the lawyers concerned have made sure their wording would not amount to a 'threat' even though that is exactly how they wanted it to be perceived.
Perhaps it's time for you to make a few threats of your own, such as suggesting that if they don't stop harrassing you, you will take the story to the tabloids, thus getting your event extra publicity, and ensuring that Viacom get some bad publicity. And there's no law against that!
Advice or comment provided here is not and does not purport to be legal advice as defined by s.12 of Legal Services Act 2007
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Bobbins123
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