Entertainment One UK Ltd v Công Ty Tnhh ð?u TU Công Ngh? Defendants Và D?ch v? Sconnect Vi?tnam also known as Sconnect Company Ltd (a Ltd liability corporation incorporated under the laws of the Socialist Republic of Vietnam)
| Jurisdiction | England & Wales |
| Judge | Briggs |
| Judgment Date | 21 December 2022 |
| Neutral Citation | [2022] EWHC 3295 (Ch) |
| Docket Number | Case No: IL-2022-000010 |
| Court | Chancery Division |
[2022] EWHC 3295 (Ch)
CHIEF INSOLVENCY AND COMPANIES COURT JUDGE
(Sitting as a Deputy High Court Judge)
Case No: IL-2022-000010
IN THE HIGH COURT OF JUSTICE
BUSINESS AND PROPERTY COURTS OF ENGLAND AND WALES
INTELLECTUAL PROPERTY LIST (ChD)
Rolls Building
Fetter Lane, London, EC4A 1NL
Michael Edenborough KC, Gwilym Harbottle and John Eldridge (instructed by Brandsmiths) for the Claimants
Jacqueline Reid (instructed by EP Legal Limited) for the Defendants
Hearing dates: 22 July 2022 and 3 November 2022
(Final written submissions filed on 1 December 2022)
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.
If this Judgment has been emailed to you it is to be treated as ‘read-only’. You should send any suggested amendments as a separate Word document.
This judgment was handed down remotely with circulation to the parties' representatives by email. It will also be released to the National Archives for publication. The date and time for hand-down is deemed to be 10:00 hrs on 21 December 2022.
Chief ICC Judge
There are two applications before the Court. The first application is made by the Claimants (the “C Application”) and is dated 27 April 2022. By the C Application the Claimants seek a declaration that service on the Defendants of a Claim Form and Particulars of Claim made by e-mail on 24 January 2022 was effective. If it was not effective the Claimants seek an order for service of the Claim Form by an alternative method pursuant to CPR 6.15 and 6.27. The C Application is made as the Defendants assert that a failure to comply with Practice Direction 6A (“PD6A”) paragraph 4.2, is fatal to valid service. In the Defendants' supplemental skeleton argument, it is submitted, relying on a recent authority, that a second fatal failure of service occurred because the solicitors acting for the Defendants provided more than one e-mail address for service in contradiction to PD6A, paragraph 4.1.
The Defendants' application notice precedes the C Application and is dated 23 February 2022 (the “D Application”). The D Application seeks a declaration that: “the English court has no jurisdiction to try the claims brought against each of the Defendants, alternatively [it] should not exercise any jurisdiction which it may have.” The reason for the declaration is (i) “the service is defective”; and (ii) “the Defendants do not target the UK market”.
It is worth mentioning that the arguments developed and grew during the hearing (and after). The original time estimate was one day. Many of the arguments raised by the Defendants (who opened) were not foreshadowed until the exchange of skeleton arguments and the Defendants took most of the first day to set out their case. The combination led to an adjournment. A second day was required. New evidence, new authorities and new arguments were introduced, and the Claimants took most of the second day. The reply was necessarily short, and due to a lack of court time, I directed final written submissions.
The Claim
The parties
Peppa Pig was created by Mark Baker and Neville Astley in around 2000 and launched four years later in the United Kingdom.
Peppa Pig is described as an anthropomorphic pig who is four years old, lives with her parents and her younger brother George who is 18 months old and has many friends. Episodes of Peppa Pig are created using British English and broadcast over the internet on various channels including YouTube, Amazon, NickJr and Milkshake! (Channel 5).
The First Defendant is incorporated under the laws of the Socialist Republic of Vietnam. The Second Defendant is incorporated in the State of Delaware. The First and Second Defendants are concerned in the production of educational and entertainment videos and have admitted responsibility for the production and transmission of Wolfoo.
The Third Defendant has been struck off the register of companies and plays no substantive part in these proceedings. The Fourth Defendant, Mr Manh Hoang Ta (“Mr Ta”) is the founder and CEO of the First Defendant and concerned in the Second Defendant. He is the registrant and administrator of the Sconnect website.
In his first witness statement Mr Ta explains that the educational and entertainment videos and cartoons produced by the First Defendant are aimed at children between the ages of 3–8 in Vietnam and the United States. He presents “the basis for the creation of the Wolfoo characters” which followed research about the popularity of wolf characters in fairy tales and American culture:
“Wolf is essentially an animal that represents intelligence, self-control, courage and teamwork…the 1 st Defendant's working team and I chose the Wolfoo character, who is close to nature and is easily associated with Scout's qualities such as courage, strength and solidarity, intelligence, curiosity, inquisitiveness and nature exploration.”
The Wolfoo character is not intended to be villainous but mischievous, kind, brave and inquisitive. A character, says Mr Ta, that is intended to win over its audience.
The intellectual property of the Claimants
The Particulars of Claim state that the Claimants are owners of original artistic works (the “Artistic Works”) “in all countries that are parties to the Berne Convention and/or members of the World Trade Organisation”. The Artistic Works include:
10.1. the visual representations of the Peppa Pig character such as representations of the character jumping in muddy puddles (a frequent theme in Peppa Pig videos and merchandising); and
10.2. the scenery and backgrounds to each Peppa Pig episode.
The Claimants assert ownership of copyright in individual audio clips repeated in Peppa Pig episodes (the “Audio Clips”) in all countries that are parties to: (i) the Rome Convention; (ii) the WIPO Performances and Phonograms Treaty but not the Rome Convention; and (iii) further countries that are listed in a schedule to the Particulars of Claim (defined there as the “Pleaded Countries”).
It is pleaded that the Artistic Works are original, created in the UK by a UK resident or citizen and qualify for copyright protection in all the Pleaded Countries.
Between them the Claimants are the proprietors of three UK registered trade marks, and three EU registered trade marks.
The UK marks are: (i) UK trade mark no. 2340356 PEPPA PIG registered on 12 August 2003 in respect (amongst other things) of “cartoons” in Class 9 and “film production of radio and television programmes … television entertainment” in Class 41; (ii) UK trade mark no. 910186261 registered on 27 February 2012, also for entertainment in Class 41 and (iii) UK trade mark no. 2340700 registered on 13 August 2003 in Class 9 (cartoons) and Class 41 (film production of radio and television programmes … television entertainment).
The three registered EU trade marks are (i) no. 010186179 PEPPA PIG registered on 7 December 2011 for “entertainment” in Class 41; (ii) EU trade mark no. 016518151 PEPPA PIG registered on 14 July 2017 in Class 41 for “entertainment services”; and (iii) EU trade mark no. 010186261 registered on 27 February 2012 in Class 41 for “entertainment”.
Matters complained of
The date on which the matters complained of commenced, is 31 May 2018. As at this date, Peppa Pig claims to have had over 11 million subscribers to its YouTube channels worldwide. The figures increased and by the time the Claim Form was purportedly served in January 2022 Peppa Pig had 84 million subscribers worldwide of which 1.85 million were from the United Kingdom. At the date of the Particulars of Claim episodes of Peppa Pig had been viewed over 33 billion times (over 6 billion in Europe of which 3 billion have been in the United Kingdom). The Claimants had produced some 9 series (485 episodes).
It is pleaded that the Defendants are liable for the breaches of the Claimants' copyright in the Pleaded Countries by:
17.1. Communicating part of the Claimants' works through YouTube channels and other platforms that broadcast Wolfoo videos;
17.2. Reproducing the whole or substantially the whole of the Claimants' works in the Wolfoo videos; and
17.3. The importation, possession, sale, offering or exposing for sale and distributing articles that the Defendants knew were infringing copies of the Claimants' works.
The Particulars of Claim include two schedules of infringement by representation, two schedules of reproductions of the Artistic Works and a schedule in respect of the Audio Clips.
It is pleaded that the Defendants were “well aware” of the infringements of copyright, as the reproductions of the Audio Clips are identical to the Audio Clips. It is said that this demonstrates beyond doubt that the Defendants (a) have at all material times had access to the Peppa Pig videos and (b) deliberately extracted protected Audio Clips directly from the Peppa Pig videos with the intention of reproducing them exactly and completely. There was some debate at the hearing about whether the pleaded case had a prospect of success, but as pleaded, this is not a “sound-alike” case that infringes the principle enunciated in Norwozian v Arks Ltd [1998] FSR 394.
Notwithstanding that some videos were removed following...
To continue reading
Request your trial
-
Clarification On Valid Service Of Documents By Email
...for practical reasons and to reduce risk. In December 2022, in the case of Entertainment One UK Ltd & Anor v Sconnect Co Ltd & Ors [2022] EWHC 3295 (Ch), the judge declined to apply Tax Returned (and held that it only applies to judicial review claims). The Court held that service of the cl......
-
Peppa Pig V Wolfoo: Clash Of The Cartoons
...recent decision in Entertainment One UK Ltd & Anor v Sconnect Co Ltd & Ors [2022] EWHC 3295 (Ch), the High Court considered whether English courts could have jurisdiction in cases involving intellectual property infringements on internationally accessible internet The First Claimant, Entert......