Dearlove (Richard) v Combs (Sean)
| Jurisdiction | England & Wales |
| Judge | THE HONOURABLE MR JUSTICE KITCHIN |
| Judgment Date | 28 February 2007 |
| Neutral Citation | [2007] EWHC 375 (Ch) |
| Docket Number | Case No: HC05C03216 |
| Court | Chancery Division |
| Date | 28 February 2007 |
[2007] EWHC 375 (Ch)
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
INTELLECTUAL PROPERTY
Royal Courts of Justice
Strand, London, WC2A 2LL
The Honourable Mr Justice Kitchin
Case No: HC05C03216
Iain Purvis QC and Tim Ludbrook (instructed by Jens Hills & Co Solicitors) for the Claimant
Paul Epstein QC (instructed by Calvert Solicitors) for the Defendant
Hearing dates: 1 – 2 February 2007
Approved Judgment
I direct that pursuant to CPR PD 39A para 6.1 no official shorthand note shall be taken of this Judgment and that copies of this version as handed down may be treated as authentic.
MrJustice Kitchin:
Introduction
This is an application by the claimant (“Mr Dearlove”) for summary judgment in respect of the alleged breaches by the defendant (“Mr Combs”) of the terms of a settlement agreement (“the Settlement Agreement”) set out in the schedule to a Tomlin Order made by Master Price on 5 September 2006.
Essentially this is a dispute about the use of the name “Diddy”. Mr Dearlove is a record producer, re-mixer and recording artist. He claims he has been known as “Diddy” professionally since the early 1990s and that he has enjoyed considerable commercial success in the UK and elsewhere.
Mr Combs is the internationally famous record producer, re-mixer and recording artist known variously as “Puffy”, “Puff Daddy” and “P.Diddy”. In August 2005, Mr Combs announced to the world in an MTV broadcast that he was henceforth going to be known professionally as “Diddy”. Very shortly afterwards, Mr Dearlove's former solicitors, Messrs. Lee & Thompson, wrote to Mr Combs explaining that Mr Dearlove claimed rights in the name “Diddy” and requesting that Mr Combs cease using the name in the UK. Mr Combs refused and so Mr Dearlove instructed the firm of Messrs. Jens Hills & Co, who continue to act for him, to commence proceedings for passing off. The claim was issued on 16 November 2005.
On 16 November 2005, Mr Dearlove served particulars of claim asserting that Mr Combs had in the course of trade in the UK advertised, promoted and provided his goods and services under or by reference to the word “Diddy”. Mr Dearlove provided details in his pleading of the particular acts of Mr Combs of which he was then aware. They included allegations that Mr Combs had licensed Atari Inc to sell a computer game including his recordings under the name “Diddy”, that Mr Combs had produced or re-mixed certain tracks recorded by an artist known as “The Notorious B.I.G.” which were to be released in the UK under the name “Diddy” and that in August 2005 Mr Combs had acted as the host of the MTV Music Awards, a show which was televised globally and throughout which Mr Combs was referred to as “Diddy”. They also included the following specific complaint about a website www.diddyonline. com:
“To the best of the Claimant's knowledge and belief, the Defendant registered, or caused to be registered, the domain name diddyonline. com on 2 nd August 2005. Thereafter, the Defendant has advertised, or caused to be advertised, or otherwise promoted, within the content of a website located at www.diddyonline. com and within the content of a website maintained by the Defendant's record label Bad Boy Records ( www.badboyonline. com) his products and services by or under the sign “Diddy”. By way of example, the Defendant's website has featured such phrases as “Diddy On Line”, “Diddy Guest Book”, “Diddy 2-Way Blog”, “Diddy TV”, and “Diddy Style”, together with a further new form of trading style, namely “Sean “Diddy” Combs”….”
In his defence, Mr Combs disputed that Mr Dearlove had any goodwill or reputation in the UK, admitted that in relation to musical activities he had announced in August 2005 that he was going to be known as “Diddy” and asserted that he had used and been recognised as “Diddy” since 1997. In support of that allegation he provided various particulars, including an assertion that he had called himself “Diddy” in the lyrics of songs released in 2002. As to the website www.diddyonline. com, Mr Combs admitted the allegation save that he disputed the website was directed towards persons within the UK. He therefore admitted that he had advertised his products and services on that website under the name “Diddy”.
The action was set down with a trial window opening on 23 October 2006. On 18 August 2006, shortly after disclosure, Mr Combs proposed terms of settlement. They were accepted by Mr Dearlove on 20 August 2006 and the parties thereby entered into the Settlement Agreement which formed the schedule to the Tomlin order made by Master Price on 1 September 2006. Mr Combs was ordered to pay to Mr Dearlove the sum of £10,001 in lieu of damages and his costs of the proceedings, to be assessed if not agreed.
The terms of the Settlement Agreement tracked the relief sought in the Particulars of Claim and, so far as material, read as follows:
“1. Mr Combs undertakes, whether acting by himself, his employees, his agents, or otherwise however, from doing the following acts or any of them within the United Kingdom, that is to say:
1.1 advertising, offering or providing, or causing/procuring others to advertise, offer or provide any goods and services not being the Claimant's goods and services as a remixer, producer, songwriter, recording artist and DJ under or with reference to the word “Diddy”; or
1.2 otherwise passing off or attempting to pass off and/or enabling and/or assisting and/or causing and/or procuring others to pass off or to attempt to pass off any goods and services not of the Claimants, as identified in 1.1, as the same as or for goods and services connected or associated with the Claimant.
2. For the avoidance of doubt, the Defendant's professional name “P Diddy” is not affected by this undertaking.
3. The Defendant undertakes to remove from the United Kingdom all materials or articles that are in the possession, custody, power or control of the Defendant, the use of which would contravene the foregoing undertaking.”
There was no dispute before me that the words “to refrain” have been inadvertently omitted from the second line of clause 1 and that the words “under or with reference to” in clause 1.1 go no wider than the more usual “under or by reference to”.
The application
Since September 2006 Mr Dearlove, with the assistance of his solicitors, has attempted to secure the compliance by Mr Combs with the terms of the Settlement Agreement. Very shortly after it was agreed he raised complaints about what he perceived to be the piecemeal and ineffective way that Mr Combs had set about complying with its terms. Mr Dearlove was not satisfied with the response he received and so launched this application for summary judgment.
The application is supported by two witness statements of Mr Christopher Woods, a solicitor employed by Jens Hills & Co, and by a witness statement of Mr Dearlove himself. The evidence in response is contained primarily in a witness statement of Mr Nigel Calvert dated 24 January 2007. He is the senior partner of the firm Calvert Solicitors who have been instructed by Mr Combs in these proceedings. Mr Calvert made a second witness statement on 31 January 2007, shortly before the hearing began and a third witness statement on 1 February 2007, during the course of the hearing. The evidence in reply is contained in a third witness statement of Mr Woods made on 29 January 2007. The result of this late flurry of evidence has been that Mr Dearlove does not now pursue on this application a number of his original strands of complaint.
The first concerns recordings released in the UK prior to the date of the Settlement Agreement but which have remained on sale here thereafter and which credit Mr Combs as being artist or producer and refer to him as “Diddy”. Mr Calvert has explained that Mr Combs does not have control over these recordings. In the light of that evidence Mr Dearlove accepts that this complaint cannot be determined summarily.
The second arises from the lyrics of certain records released by Mr Combs's record company in the UK prior to the date of the Settlement Agreement but which have remained on sale in the UK thereafter. The lyrics contain references to Mr Combs as “Diddy”. The response of Mr Calvert is that the mere use of the word “Diddy” in a song lyric is not a breach of the Settlement Agreement because it does not amount to the advertisement or offer in the UK of any goods or services. Mr Calvert also says that Mr Combs has used the word “Diddy” in lyrics since 1997 and this was never the subject of any complaint in the original action. Finally Mr Calvert explains that Mr Combs no longer has any control over this material. Once again Mr Dearlove accepts that this complaint is not susceptible of summary determination and must be left over to trial.
The third concerns references to “Diddy” in the lyrics of records released by third parties. Mr Calvert confirms that the repertoire of third party artists is not and has never been within the control of Mr Combs. Again, Mr Dearlove accepts that in the light of this evidence the complaint cannot be pursued, at least summarily.
The fourth concerns two web addresses www.diddy. com and www.diddyonline. com. As I have mentioned, www.diddyonline. com formed part of the original complaint and was specifically identified in paragraph 6 of the Particulars of Claim. Following the Settlement Agreement both sites continued to operate with multiple references to Mr Combs as “Diddy”. Further, until about 18 January 2007 both sites were readily accessible from the UK. Since that date any UK user attempting to access...
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