Irvine and another v Talksport Ltd

JurisdictionEngland & Wales
CourtChancery Division
JudgeMr Justice Laddie
Judgment Date13 Mar 2002
Neutral Citation[2002] EWHC 367 (Ch)
Docket NumberCase No: HC 0005773

[2002] EWHC 367 (Ch)

IN THE HIGH COURT OF JUSTICE

CHANCERY DIVISION

Royal Courts of Justice

Strand, London, WC2A 2LL

Before

The Honourable Mr Justice Laddie

———

Case No: HC 0005773

(1) Edmund Irvine
(2) Tidswell Limited
Claimants
and
Talksport Limited
Defendant

Ms Lindsay Lane (instructed by Fladgate Fielder for the Claimants)

Mr Michael Hicks (instructed by Olswang for the Defendant)

Hearing dates: 22–3, 28–9 January 2002

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.

(revised version 14/3/02)

Mr Justice Laddie

Mr Justice Laddie

Introduction

1

This is the judgment in an action for passing off. It raises an important point of principle. The first claimant is Mr Edmund Irvine. The remaining claimants are a number of companies through whom or to whom he has contracted to offer various services, including endorsement services. Save where the context otherwise requires, I will refer to the claimants as "Mr Irvine" or "the claimant". The defendant is Talksport Limited.

2

The evidence shows, as anyone interested in motor racing would know, that Mr Irvine, referred to generally as "Eddie Irvine", is a prominent driver on the Formula 1 ("F1') racing circuit. He is one of a small group of British drivers who have achieved some success in recent years in that sport. 1999 has proved his most successful year to date. During that racing season, Mr Irvine was driving F1 cars made by Ferrari. By a narrow margin he missed being the F1 champion of the year, coming second.

3

Talksport Ltd runs an eponymous radio station. It is now one of the largest commercial radio stations in the United Kingdom. Until the end of 1999, the station bore the name "Talk Radio". Under that name it concentrated on what is called commercial news and talk-back programmes. In 1998 or early 1999, it was decided to refocus the area of interest away from news and general talk programmes towards sport. At the times material to this dispute, the company's sales director was Mr Thomas Bleakley. He became managing director of TWG Impact, another company within the same group as the defendant. More recently he has moved on to other employment. He has explained that the decision to move the centre of interest towards sport was motivated by a desire to capture a larger audience consisting of men earning over £20,000 per year. Part of the implementation of that decision was the rebranding of the station by abandoning its existing name and adopting the name "Talksport". As Mr Bleakley explains, the defendant entered into a number of contracts which allowed it to broadcast live coverage of certain high-profile sporting events. In 1999 it obtained the rights to cover, inter alia, the F1 Grand Prix World Championship.

4

To support the change of direction and to generate interest among potential advertisers, the defendant embarked on a special promotional campaign. As part of that, it engaged the services of a marketing and communications agency called SMP Limited ("SMP") to produce a number of boxed packs to be sent to just under 1000 people who it was thought were likely to be responsible, directly or indirectly, for the placement of advertisements. Three such boxed sets were produced. The first, concentrated on cricket, since the defendant had secured broadcasting rights relating to the England Cricket Winter Tour of South Africa. The third was a more general promotion covering a number of sports. It is the second with which this action is concerned.

5

The second promotion consisted of a box bearing the image depicted at Annex 1 to this judgment. The car in the middle of the photograph is a F1 racing car. The two small photographs at opposite corners of the main image are of another famous F1 driver, Mr Michael Schumacher. On the bottom right of the image there is an instruction that, if undelivered, the box should be returned to an identified PO Box. There is no other marking on the box, save for the address of the addressee. Inside the box is a pair of white shorts and a brochure or 'flyer'. The shorts bear on the back an imitation of the skid mark left on the road when a car accelerates too forcefully. On the front there are the words "Talk radio 1053/1089 am". The brochure has four sides (i.e. it is one piece of card folded down the middle). The front is shown in Annex 2 to this judgment. Inside and on the back there is advertising copy extolling the virtues of Talk Radio including, in particular, as a vehicle for carrying sport-related advertisements. The reader is invited to contact a website: www.talksport.net. In the middle of pages 2 and 3 is a partial photograph of an F1 car. On the back page is a further photograph of another F1 car and a photograph of the winner's podium at the Monte Carlo F1 Grand Prix showing, amongst others, Michael Schumacher, Mikka Hakkinen and Eddie Irvine. All three are F1 drivers. This page is shown in Annex 3.

6

There was no dispute between the parties that the anonymous box and the shorts are likely to be discarded and the brochure retained, assuming that all three are not immediately thrown away by the recipient. It is the brochure which will stay on the recipient's desk or may be passed to others.

7

The photograph on the front of the brochure is of Eddie Irvine. There is no question of copyright infringement because the right to use this photograph was purchased from a sporting photograph agency. However the photograph as made available by the agency does not show Mr Irvine holding a radio. He is holding a mobile telephone. SMP took that image and manipulated it to cut out the mobile telephone and to replace it by an image of a portable radio to which the words "Talk Radio" had been added.

8

It is Mr Irvine's case that the distribution of the defendant's brochure bearing a manipulated picture of him is an actionable passing off. He seeks damages but not an injunction because, at a very early stage, the defendant wrote a letter which included the following:

"The flyer was part of a campaign promoting Talk Radio's live coverage of the FIA Grand Prix World Championship. The initial mailing itself was time critical to coincide with the British Grand Prix at Silverstone on 11 July 1999.

Without any admission of liability, we confirm that no more of these flyers will be despatched."

9

Before considering the principles of law and the facts in this case, it will be useful to clear up one issue of terminology. Throughout the trial reference was made to sponsorship, endorsement and merchandising. The evidence sometimes referred to one, sometimes another and at times to all of these. As Ms Lane, who appeared for the claimants, explained, this case is concerned with endorsement. When someone endorses a product or service he tells the relevant public that he approves of the product or service or is happy to be associated with it. In effect he adds his name as an encouragement to members of the relevant public to buy or use the service or product. Merchandising is rather different. It involves exploiting images, themes or articles which have become famous. To take a topical example, when the recent film, Star Wars Episode 1 was about to be exhibited, a large number of toys, posters, garments and the like were put on sale, each of which bore an image of or reproduced a character or object in the film. The purpose of this was to make available a large number of products which could be bought by members of the public who found the film enjoyable and wanted a reminder of it. The manufacture and distribution of this type of spin-off product is referred to as merchandising. It is not a necessary feature of merchandising that members of the public will think the products are in any sense endorsed by the film makers or actors in the film. Merchandised products will include some where there is a perception of endorsement and some where there may not be, but in all cases the products are tied into and are a reminder of the film itself. An example of merchandising is the sale of memorabilia relating to the late Diana, Princess of Wales. A porcelain plate bearing her image could hardly be thought of as being endorsed by her, but the enhanced sales which may be achieved by virtue of the presence of the image is a form of merchandising.

The relevant law

10

As I have said, Ms Lane has argued that this is an endorsement case (or more strictly a false endorsement case) and falls squarely within modern application of the law of passing off. Mr Michael Hicks, who appears for the defendant, argues that even as an endorsement case, this fails to fall within the scope of passing off. At the forefront of his submission and encapsulating the various strands of his argument he relied on the following passage from the judgment of Simon Brown LJ in Elvis Presley Trade Marks [1999] RPC 567, 597:

"On analysis, as it seems to me, all the English cases upon which Enterprises seeks to rely (Mirage Studios not least) can be seen to have turned essentially upon the need to protect copyright or to prevent passing off (or libel). None creates the broad right for which in effect Mr. Prescott contends here, a free standing general right to character exploitation enjoyable exclusively by the celebrity. As Robert Walker LJ has explained, just such a right, a new "character right" to fill a perceived gap between the law of copyright (there being no copyright in a name) and the law of passing off was considered and rejected by the Whitford Committee in 1977. Thirty years earlier, indeed, when it was contended for as a corollary of passing off law, it had been rejected in McCulloch v. Lewis A. May [1947] 2 A.E.R. 845. I would assume to reject it. In addressing the critical issue of distinctiveness there should be no...

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