The Ukulele Orchestra of Great Britain v Erwin Clausen and Another

JurisdictionEngland & Wales
CourtIntellectual Property Enterprise Court
JudgeJudge Hacon
Judgment Date02 Jul 2015
Neutral Citation[2015] EWHC 1772 (IPEC)
Docket NumberCase No: IP14M03624

[2015] EWHC 1772 (IPEC)

IN THE HIGH COURT OF JUSTICE

CHANCERY DIVISION

INTELLECTUAL PROPERTY ENTERPRISE COURT

Royal Courts of Justice, Rolls Building

Fetter Lane, London, EC4A 1NL

Before:

His Honour Judge Hacon

Case No: IP14M03624

Between:
The Ukulele Orchestra of Great Britain
Claimant
and
(1) Erwin Clausen
(2) Yellow Promotion Gmbh & Co. KG t/a The United Kingdom Ukulele Orchestra
Defendants

Mark Engelman directly instructed by the Claimant

Thomas Elias (instructed by Fladgate LLP) for the Defendants

Hearing dates: 12–14 May and 24 June 2015

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.

HIS HONOUR JUDGE HACON Judge Hacon
1

The Claimant ("UOGB") is a partnership of two individuals, George Hinchliffe and Marian Lux. In 1985 they founded and have since operated a group of musicians who play ukuleles and who collectively perform under the name 'The Ukulele Orchestra of Great Britain'. Over the years their gigs have developed a certain style, with the members wearing evening dress – black tie or gowns as the case may be – telling jokes and delivering mostly well known rock songs and film themes on their ukuleles. UOGB has enjoyed considerable success, particularly in this country and in Germany.

2

The Second Defendant ("Yellow Promotion") is a limited partnership under German law which operates another group of ukulele players, known as 'The United Kingdom Ukulele Orchestra' ("UKUO"). The partners are the First Defendant ("Mr Clausen") and Dieter Tings. UKUO was set up in 2009 by Mr Clausen, Mr Tings and Peter Moss who is an experienced professional musician and part-time ukulele player. Having been approached by Mr Clausen and Mr Tings, Mr Moss brought together a group of players to form UKUO under his leadership. It is based in Germany but is comprised of British players. UKUO was first operated by another partnership, Yellow Promotion GbR, but this partnership came to an end on 31 December 2013. Yellow Promotion took over from 8 January 2014, the date on which it was registered under German law and thus came into existence.

3

UOGB owns Community Trade Mark No. 009477341 ("the CTM") which is a word mark: THE UKULELE ORCHESTRA OF GREAT BRITAIN. It is registered in respect of the following services in class 41:

"Organisation, management, staging and provision of live events, concerts, musical performances, and theatre and stage productions; concert services, orchestra services, production of radio and television programmes; publication of electronic publications relating to music and musical instruments; entertainments services."

The CTM is also registered in respect of various goods in classes 9, 15, 16, 18, 25 and 28, including these in class 9:

"CDs, DVDs, video and audio tapes."

4

UOGB alleges that the defendants have infringed the CTM pursuant to art.9(1)(b) and 9(1)(c) of Council Regulation (EC) 207/2009 ("the CTM Regulation"). UOGB also alleges passing off and infringement of copyright in two dramatic works.

5

Yellow Promotion (alone) counterclaims for a declaration that the CTM is invalid pursuant to art.7(1)(b), (c), (d) and (g) of the CTM Regulation. The defendants also claim a defence to infringement of the CTM under art.12(b).

Application to strike out

6

Just under two weeks before the trial UOGB issued an application to strike out the Defence and enter judgment on the ground of an abuse of process. UOGB's complaint concerned the defendants' disclosure which included a large number of press articles about UKUO, three of which had been redacted.

7

The first article relied on was by Gereon Hoffmann. It appeared in Der Rheinpfalz published in Ludwigshafen on 11 April 2013. The headline (in translation) was: 'Soul and Sabre Dance – The United Kingdom Ukulele Orchestra Delights with Witty Show at the Limburgerhof'. The final paragraph of the version in UKUO's disclosure list had been deleted and it read:

" There is a joke involved too when the United Kingdom Ukulele Orchestra indicates that George Harrison copied his hit 'My Sweet Lord' from an old motown soul number. There is, in point of fact, the Ukulele Orchestra of Great Britain – and they claim to have started the fun with the ukulele. The colleagues are 'not amused' that the danger of mistaken identity is very high. That does not alter the fact that the United Kingdom Ukulele Orchestra plays felicitous arrangements and shows much wit and skill in music and in presentation."

8

The next redacted review came from Ruhr Nachrichten, published in Münster on 25 March 2013, written by Heiko Ostendorf and headed 'Well Plucked and Well Yodelled'. The second paragraph contains an ellipsis within the second sentence, implying a passage had been removed. It was this, with unredacted wording included in standard typeface to give the deleted passage meaning:

"Eight [musicians] in number. Two more than the somewhat better known Ukulele Orchestra of Great Britain, with whom the octet is often confused. The more so as the orientation of the programme of entertainment is the same, with comic presentation and in addition metamorphosed pieces of music from the realms of jazz and pop. It went down well in the Aula am Aasee on Sunday."

9

The third review, headed 'It's not about size', was by Tobias Ossyra and published on 3 May 2012 in the Leipziger Volkszeitung. On this occasion too, the redacted article had an ellipsis to mark the deleted passage. In full, the final paragraph of the article read (with the deleted words in italics):

"The United Kingdom Ukulele Orchestra: that is two hours of musical cabaret during which it becomes clear that Peter Moss's band has been put together in order to have a share in the success of the longer established and rival Ukulele Orchestra of Great Britain. The gags are scripted, the fillers rehearsed. Every minute is worth it nevertheless because it is actually a damn good copy. At times it is clearly more relaxed and enjoyable than the original. And in this way the orchestra makes it clear in a charming way that it doesn't depend on the size of the instrument. Technique alone counts."

10

UOGB argued that these reviews of UKUO's performances must have been redacted to prevent the court from finding out that journalists in Germany were not only aware of a separate ukulele group operating under the 'Ukulele Orchestra of Great Britain' name but apparently also viewed UKUO as a lookalike outfit which was inviting confusion. This was thus an abuse of process.

11

Mr Clausen's explanation for the deletions, given in a witness statement served in response to the application to strike out, was that after these proceedings were started on 16 September 2014, which was shortly followed by an application brought before me by UOGB on 23 September 2014 for an interim injunction, he thought that matters between the parties would be made worse if references to UOGB were left on UKUO's website. So he asked a junior member of Yellow Promotion's staff to delete them. He said that the website does not always publish articles in full, but when there is a deletion Yellow Promotion uses an ellipsis to mark that words have been removed. The source of the article is given so that a reader can look at the whole thing if he or she wishes. Mr Clausen said that when he was later told by the defendants' English lawyers about the requirement to give disclosure of relevant documents in the defendants' possession, the redacted articles as they appeared on UKUO's website were disclosed but not the unredacted articles because the originals had not been kept and were consequently not in the defendants' possession.

12

Mr Engelman, who appeared for UOGB, alleged that the deletions in the defendants' disclosure had two consequences. First, it was not going to be possible for there to be a fair trial. When this was questioned he suggested that since the defendants were capable of making the deletions that had been discovered, they were capable of other acts to mislead that court which have not been discovered and this was why a fair trial was not possible. Secondly he submitted that the defendants had by their behaviour forfeited their right to defend themselves at trial, that the defendants lacked clean hands and that to continue the trial would constitute an unjustified waste of court resources. Mr Engelman took me to Summers v Fairclough Homes Ltd [2012] UKSC 26; [2012] 1 W.L.R. 2004, Arrow Nominees Inc v Blackledge [2001] B.C.C. 591 and Bilta (UK) Ltd v Nazir [2010] EWHC 3227 (Ch).

13

The application was heard at the start of the trial. It was dismissed and I indicated that I would give my reasons in the judgment after trial. They now follow.

14

To my mind there was no merit whatever in the application for two principal reasons. First, the suggestion that the redactions in the three articles would prevent a fair trial made no sense at all since the full versions were before the court. The response to this – that I should infer the defendants had made other and undiscovered redactions elsewhere in documents – was based on nothing more than speculation. Secondly, to the extent that the redactions were relevant to what I had to decide at trial, in my view it would have been wholly wrong to strike out the Defence without first hearing from Mr Clausen, who was due to be cross-examined the following day. Mr Engelman submitted that I could and should find that Mr Clausen was lying without hearing from him. I say no more than that I disagree.

15

Mr Clausen was duly cross-examined on this matter and although I am taking it out of sequence, it is convenient for me to comment on this part of Mr Clausen's evidence now. Mr Clausen speaks good English but he had the occasional assistance of an interpreter when he had...

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