Future Publishing Ltd v The Edge Interactive Media Inc. and Others
| Jurisdiction | England & Wales |
| Judge | Mrs Justice Proudman |
| Judgment Date | 13 June 2011 |
| Neutral Citation | [2011] EWHC 1489 (Ch) |
| Docket Number | Case No: HC09CO2265 |
| Court | Chancery Division |
| Date | 13 June 2011 |
[2011] EWHC 1489 (Ch)
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
Royal Courts of Justice
Strand, London, WC2A 2LL
Mrs Justice Proudman
Case No: HC09CO2265
Iain Purvis QC and David Wilkinson (solicitor advocate) (instructed by Stevens & Bolton LLP) for the Claimant
Dr Tim Langdell (the 3 rd Defendant) in person for the Defendants
Hearing dates: 7, 8, 9, 10, 13, 14, 15, December 2010, 12 January, 16 February, 2 March 2011 (and further written submissions 9 and 11 March 2011)
These proceedings are brought by Future Publishing Limited for breach of contract, breach of copyright and passing off against two companies registered in the United States, Edge Interactive Media Inc ("EIM") and Edge Games Inc ("Games Inc") and Dr Timothy Langdell, an individual of British origin who now lives in Pasadena USA. I am satisfied that EIM and Games Inc are controlled exclusively by Dr Langdell. A "Jack Phillips" has occasionally put his name to witness statements on behalf of EIM in the past but he is not mentioned at all by Dr Langdell in his evidence and I suspect (without making any findings in this respect) that the claimant is right in saying that he does not exist and is an invention of Dr Langdell. At all events, I find that anything EIM and Games Inc have done has been procured solely through Dr Langdell's intervention. In so far as there is tortious liability on the part of EIM Dr Langdell is liable as joint tortfeasor on the principles set out in MCA v. Charly Records (No 5) [2002] FSR 26.
EIM and Games Inc have previously been, but are not now, legally represented in the action. Dr Langdell has appeared in person on behalf of all the defendants and I will sometimes refer to him rather than the particular defendant in question.
The claimant is a well-known publisher of magazines and it sells approximately 3.6m magazines per month. For present purposes its speciality is computer gaming magazines, in particular the magazine EDGE, which has been distributed in the United Kingdom since 1993. EDGE magazine has a large circulation. Its website is visited by over 400,000 visitors per month. Many jobs in the computer gaming industry are advertised in its pages, it has many corporate subscribers and it has won a number of awards over the years, including Games Magazine of the Year 2008. It is plainly a substantial enterprise engendering a substantial following and substantial respect in the gaming industry.
Since its initial launch in 1993 the magazine has been published under the name EDGE and has used a particular and distinctive form of logo. The letters "E" in the logo extend the cross bar on the left hand side (with a corresponding shortening on the right) and there is a sharp scalpel like point at the edge of the extension.
In the 1980s and early 1990s Dr Langdell had a business writing games software, under the name Softek and then Edge. He is now well-known, indeed the claimant says notorious, for pursuing third parties using the name Edge for licence fees, failing which he pursues them for damages for trade mark infringement.
It is common ground that Dr Langdell and the defendant companies have used three versions of an EDGE logo, all based on a stretched version of the Franklin Gothic or Helvetica fonts. One of these versions is indistinguishable from the logo used by the claimant and was used on the defendants' letter heading in 2008 and 2009 and on EIM's website at various times. A second has a shorter bevelled trapezoid and was used on EIM's website from about 2003–4 until June 2009. A third has a much shorter trapezoid to the left of the vertical stanchion of the "E", amounting to no more than a triangle shape. I only have photocopies which Dr Langdell assures me accentuate the shadow produced by the bevelling. In all three cases, however, the slashed middle bar of the E was retained, as well as the stretching effect of the letters.
A number of preliminary issues arise of fact and law with which I intend to deal first.
Action unnecessary
Dr Langdell alleges that this present action was unnecessary as the defendants met all the claimant's requests for undertakings before the claim was served. However it seems to me wholly reasonable that the claimant should bring the action. The defendants' solicitors letter of 29 th June 2009 says as follows;
"The EDGE logo has been used by our clients for many years and they will not cease using it because they are entitled to use it."
I am unable to find unequivocal undertakings in the correspondence, despite Dr Langdell's assertions that they were given. Further, Dr Langdell continued to contend before me that he was entitled to continue to use the EDGE logo and that he intended to do so.
Originality
Dr Langdell submitted that the claimant can have no copyright in its EDGE logo because it is not original over the Franklin Gothic typeface. I do not accept this submission. The stretching of the font was combined with the distinctive slash and projection on the middle bar of the "E". What is required for artistic originality is the expenditure of more than negligible or trivial effort or relevant skill in the creation of the work: see Copinger and Skone James on Copyright 16 th Ed at 3–130 and Ladbroke v. William Hill [1964] 1 WLR 273 at 287. The claimant's logo is original within this test.
Consensual use
Dr Langdell claims that in 2005 he asked for and obtained the consent of Mr Pierce of the claimant to use of the EDGE logo. I accept Mr Pierce's evidence, which was not seriously challenged, that there were no discussions on the subject at any time. I therefore reject the defendants' contention under this head.
Dr Langdell accepted in cross-examination that he copied the EDGE logo when he used it in his letter head to write to the claimant. He said this was what he called "an estoppel representation", by which I understood him to mean that he was using it as a deliberate challenge to the claimant to complain about the use. He asserted rather vaguely that this entitled him to a licence by conduct. I do not accept his contention.
invention by Dr Langdell
A third preliminary matter is that Dr Langdell asserts that he invented the EDGE logo in 1991. He contends that he did not copy the EDGE logo from any work of the claimant. Indeed he said that, consciously or unconsciously, the claimant copied his invention when the claimant started to use the EDGE logo in 1993.
I observe that Mr Williams, the claimant's creative director, gave evidence that he specifically designed the logo for the magazine in the course of his employment. His evidence that he was unaware of the existence of any logo used by Dr Langdell at that time was not seriously challenged in cross-examination.
″ floppy disks
The most important part of Dr Langdell's case under this head is the question of the floppy disks which he adduced as evidence in support of his case that he had invented the EDGE logo in January 1991.
The defendants allege in their pleading that Dr Langdell's invented logo was published and distributed in a single page catalogue and then on a printed flysheet to promote the defendants' products at trade shows and elsewhere. Dr Langdell said in opening that this was known "really clearly" to the claimant at all times and that he had been using the logo continuously for 19 years. When the court asked him what evidence there was of use of the logo in the 1990s Dr Langdell then claimed that there had in fact been what he termed "scarcity of use" at that time.
The evidence, and the only evidence, of his creation of the logo, supporting Dr Langdell's own testimony as to the two pages of documents, is that of certain floppy disks. They were first mentioned by Dr Langdell in open correspondence in a letter dated 20 th May 2010 and his account of what happened in relation to the disks did not emerge until his seventh witness statement of 29 th November 2010.
He claims that he saved the catalogue and flysheet on to a 5.25″ banana brand floppy disk in 1991, for what reason he cannot now remember. This disk ("disk 1") was sent to the defendants' expert, Mr Steggles of Disklabs, who said not only that it was a genuine 1991 disk but also gave his opinion that the information on it was genuinely created at that time. However when the claimant's expert, Mr Dearsley of Kroll Computers, examined it he pointed out that although disk 1 was an old disk the alleged 1991 content had been created using Windows 95, that is to say, later software. He also said that the content had been deliberately backdated as though it had been created at an earlier date. When the matter was referred back to him, Mr Steggles agreed with Mr Dearsley that the content of disk 1 could not date back to 1991.
Dr Langdell then claimed that disk 1 had been sent in error and was a copy he had created in the mid-1990s for some reason he said he was unable to remember. He then produced an involved and absurd story about how he had found two disks in a box in 2009, one of which was a mid-90s back up disk ("disk 2") and the other of which, (disk 1) was used to clone the original. He said he took the two disks to a "repair man" and mixed them up by marking the wrong one. His oral evidence did not tally with his witness statement and his evidence about the boxes in which he allegedly found disk 1 and disk 2 was confused and unpersuasive.
He sought to explain the backdating of the images on disk 1 by saying that he wanted to create a clone as close as possible to the original. However he was wholly unable to explain to the Court's satisfaction why he should wish to create a clone at all...
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