Mr Spoon on Button Moon wins copyright infringement/passing off case

For some of you Mr Spoon on Button Moon will no doubt bring back childhood memories, VIP however can’t remember such things and has a childhood filled with much more exciting television such as the mighty Thundercats and Bucky O’ Hare. Unfortunately VIP is unaware of any copyright infringement/passing off cases involving either of these two fantastic TV series and is stuck with talking about Mr Spoon on Button Moon.

If, like VIP, you have never heard of Mr Spoon on Button Moon then do not fear. Back in 1978 Mr Allen (‘the Claimant’) and his business partner Mr Thirtle devised a stage puppet show with the title Mr Spoon on Button Moon. The Claimant designed the puppets, sets and props which involved producing numerous drawings as well as merchandise. The Claimant also wrote the script and produced a live theatre puppet show which ran during the 1980s and early 1990s. In 1980 Thames Television commissioned a Button Moon TV series, this proved a success and was broadcast between 1980 and 1988 (and was subsequently repeated on UK Gold). The Claimant does not claim to own the copyright in the TV show but rather that he owns the rights in the underlying artistic works (Mr Thirtle died in 1995 and left all of his interests in Button Moon to the Claimant).

The Claimant exploits these rights by granting merchandising rights to others. In particular the Claimant has an exclusive licensing arrangement with Truffle Shuffle (and here is the real Truffle Shuffle!) for the manufacture of T-shirts. The licence agreement provided for a lump sum payment at the outset and a 12% royalty (with 2% payable to the Dyslexia Association) based on annual sales of circa £30k.

In the summer of 2007 Mr Redshaw (‘the Defendant’) contacted the Claimant to express an interest in obtaining a licence to produce Button Moon merchandise, in particular the Defendant wanted to produce t-shirts and mugs and offered to pay a 10% royalty with estimated sales of circa £35k per annum. The Claimant refused the offer in relation to t-shirts because he already had an exclusive arrangement with Truffle Shuffle, the Claimant did however say that he would be willing to do a deal in respect of the mugs. The Defendant however refused this saying that he was mainly interested in the t-shirts.

Following this refusal the Defendant took some IP advice at a ‘roadshow’ and decided that he could get away with producing such goods provided that he did not copy original artwork/pictures (hmmmmmm!). As such he decided to push ahead with his plans, without a licence, and designed and released a range of mugs, t-shirts and hoodies.

It seems however that the Defendant felt some moral guilt and so got back in touch with the Claimant to again enquire about obtaining a licence, this time however he suggested that potential sales would likely be in the region of £42k per annum. The Defendant made these follow up approaches in both August 2008 and August 2009. However in 2009 the Claimant had found out that the Defendant was selling merchandise which he believed infringed his copyright. The Defendant agreed to stop selling the goods but said that there was no infringement, in 2010 however the Claimant found out that the Defendant was indeed still selling these products and in 2012 issued proceedings against the Defendant for copyright infringement and passing off.

The case was heard at the Patents County Court by Miss Recorder Amanda Michaels. In her judgment Recorder Michaels found that the Defendant had infringed the Claimant’s copyright, irrespective of the fact that none of the Claimant’s drawings were used. Instead the Defendant had infringed the Claimant’s copyright by copying the various Button Moon characters and using those characters within his own drawings. The Defendant attempted to rely upon the parody defence however Recorder Michaels found that:

The fact that Mr Redshaw combined the rocket, etc with the wording of a recycling slogan does not, in my judgment, put the artistic works in the category of a parody. In addition, as Mr Redshaw accepted, there is no defence of parody to an infringement of copyright claim, if what has been taken is a substantial part of the claimant’s work (Schweppes Ltd v Wellingtons Ltd [1984] F.S.R. 210). The test of whether there is substantial reproduction of the copied work is unaffected by the Defendant’s motives. I find that there is a substantial reproduction of the copyright works, and there is no defence to such infringement. There is no doubt in my mind that the Defendant has infringed the Claimant’s copyright.

It is however the passing off claim that is perhaps the most interesting. No doubt was cast as to the Claimant’s goodwill and so Recorder Michaels proceeded to look at the questions of misrepresentation and damage. On the question of misrepresentation it was considered that the Defendant’s activities in producing the various merchandise, complete with drawings of the characters, was sufficient to amount to a misrepresentation that they were licensed or official merchandise.  The Defendant did however point to a disclaimer placed on the products and their packaging. The disclaimer read:

100% unofficial, produced from original artwork & photographs independently produced without endorsement or affiliation with artists & persons depicted within.

Recorder Michaels however struggled to spot the disclaimer which was written in such small font, often in the same colour as the product itself, so as to be unreadable. Whilst Michaels accepted that a disclaimer, if sufficiently prominent and not otherwise qualified, might be sufficient to prevent a misrepresentation she found that in this instance the words “produced from original artwork & photographs” counteracted the earlier words “100% unofficial” and thus failed to prevent a misrepresentation. Finally the court was referred to various examples of the products on sale online, none of the advertisements for such products featured the disclaimer (which in any event would have been ineffective) and accordingly Michaels ruled that passing off had been made out (albeit VIP notes that no comment was made as to the damages limb of the passing off test).

What Allen would have had if he'd been properly represented.

What Allen would have had if he’d been properly represented.

The final, and arguably most important, issue to deal with was that of quantum (i.e. how much dolla’ the Claimant would get). Unfortunately neither party came up smelling of roses in terms of their evidence on this point and Michaels struggled with the figures, eventually granting the sum (inclusive of interest) of £3,736.24 plus costs of £3,421.88. The Claimant would likely have been able to secure a considerably higher award of damages had he provided evidence as to the damage to reputation that he suffered as a result of the Defendant’s actions, the value/details of the licensing deal (for mugs) that he alleged to have lost as a result of the Defendant selling competing products and also some kind of evidence as to the volume of sales made by the Defendant. None of this evidence was forthcoming and therefore Michaels had little choice but to grant a, relatively, low award of damages.

The lessons to be learned from this case:

  1. Don’t attempt to rely on the defence of parody if you’ve copied a substantial part of a work.
  2. Don’t try and rely on passing advice from a roadshow – take proper legal advice before you take on any risk.
  3. Disclaimers can be effective, if done right.
  4. Evidence, evidence, evidence – the Claimant would likely have been awarded a significantly greater sum of damages if he’d actually been able to prove the various heads of damage that he claimed.
  5. This ties in with all of the above and is partly a copy of point 2, but don’t try and take these cases on on your own. If you are the Claimant then you are likely to sell yourself short and if you are the Defendant then you are likely to waste time and money defending a dead duck (see above!).

 

 

 

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2 responses to “Mr Spoon on Button Moon wins copyright infringement/passing off case

  1. Wishing you had more facts of the case i.e. why it had taken since 2008 to 2013 to resolve the case, why no sales or productions figures were disclosed to the Claimant prior to the case ending up in the Patents County Court

    • Hi Celia,

      Thank you for your comment.

      Unfortunately the only information VIP had is that contained in the judgment. It would indeed be interesting to hear some further facts of the case but unfortunately the only way of getting these would be by way of one of the parties disclosing them!

      I did think however it was an interesting case and certainly provided a useful insight into the calculation of damages in such infringement cases.

      Cheers,

      Ben (VIP)

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