WWF World Wide Fund for Nature (formerly World Wildlife Fund) v World Wrestling Federation Entertainment Inc. (Third Party Application)
| Jurisdiction | England & Wales |
| Judge | Lord Justice Carnwath,Mr Justice Blackburne |
| Judgment Date | 27 March 2003 |
| Neutral Citation | [2003] EWCA Civ 401 |
| Court | Court of Appeal (Civil Division) |
| Docket Number | Case No: A3/2002/2590 |
| Date | 27 March 2003 |
[2003] EWCA Civ 401
IN THE SUPREME COURT OF JUDICATURE
COURT OF APPEAL (CIVIL DIVISION)
ON APPEAL FROM CHANCERY DIVISION
(MR JUSTICE JACOB)
Royal Courts of Justice
Strand,
London, WC2A 2LL
Lord Justice Peter Gibson
Lord Justice Carnwath and
Mr Justice Blackburne
Case No: A3/2002/2590
Mr Simon Thorley QC and Mr Thomas Mitcheson (instructed by Richards Butler) for the Appellant
Mr Christopher Morcom QC and Mr Ashley Roughton (instructed by Edwin Coe) for the Respondent
Mr Christopher Carr QC and Mr Guy Hollingworth (instructed by S J Berwin) for the Intervener
Background
"In summer time village cricket is the delight of everyone" was how Lord Denning MR famously began his judgment in Miller v Jackson [1977] 1 QB 966, 976. An injunction had been granted to local householders who complained of cricket balls landing in their gardens. Lord Denning feared that, if it were upheld, cricket would cease in the village and "the young men will turn to other things…" He held that the public interest in the playing of cricket should prevail over the individual interests of the householders, and, instead of the injunction, awarded £400 for past and future inconvenience. 25 years on, young men have turned to other things, including video games, and the resulting worldwide market runs to many millions of pounds. Mr Carr QC, for the Federation, urges upon us that that the very size of the market shows that there is a similar public interest in protecting the availability of such games, which the court should take into account in exercising any discretion. How Lord Denning would have reacted to that submission, we do not know. I will have to consider it further at the end of this judgment.
This case follows one decided by this court early last year ( WWF & Anor v World Wrestling Federation Entertainment Inc [2002] EWCA Civ 196; [2000] FSR 530) ("the 2002 judgment"). We there upheld an injunction against the Federation, designed to enforce an agreement made in 1994 ("the 1994 Agreement") between the Fund and the Federation, settling a long-running dispute over the use of the "WWF" symbol. Following an unsuccessful petition to the House of Lords, the injunction came into effect on 10 th November 200The most important part of the injunction, for present purposes, was in the following terms:
"…the Defendant be restrained whether directly or indirectly and whether by its officers, servants, agents, subsidiaries, licensees or sublicensees, its television or other affiliates or otherwise howsoever from doing the following acts or any of them in any country of the world for the purposes of or in connection with its business save as otherwise permitted by the Agreement or the Letter Agreement referred to therein:
(a) using the initials WWF orally or in visual form, whether in upper case or lower case, other than in the form of the Titan logo identified in Article 1 of the Agreement;…"
There was no appeal to this court against the terms of the order. The Federation has taken extensive and costly steps to comply with the injunction, including rebranding under the symbol "WWE".
The history of the dispute up to February 2002 is sufficiently set out in the 2002 judgment. To set the scene for the present dispute, it is useful to repeat from that judgment (para 7) the summary by Mr Olins (one of the Federation's experts) of the nature of its business:
"… over the period from 1983 when the new management took over and the initials WWF were introduced, until today, the Federation has been transformed from a smallish promoter of a minority sporting entertainment into a significant global player in the leisure and entertainment world…
The core product around which the brand is based is live wrestling, the core idea is raw aggression. A cast of heroes and villains, who become the stars, feature in a series of simple predictable stories. The brand is then extended into every possible distribution channel, from the core activity, live events, to cable and broadcast TV, pay-for-view, on-line, home video through to character merchandising and licensing. In 1999 there were 100 licensees around the globe who created clothing, tapes, videos, games, cut-out figures all featuring the Federation's stars and the Federation's logo and initials, generating sales of $400 million."
That passage highlights the importance of licensees to the overall profitability of the Federation's business. The present applicant ("THQ") is one of those licensees, pursuant to a Consumer Products Licence Agreement ("the 1998 Agreement") made in June 1998. Under the licence, it develops, publishes and distributes on a worldwide basis video and computer games featuring the wrestling characters (referred to in the agreement as the "Talent") of the Federation. The THQ games also used the Federation's "Scratch Logo" in the gameplay of the games, in promotional materials and on the packaging of the games. This was a stylised form of the initials "WWF", which was adopted by the Federation in early 1998 (before the 1998 Agreement). In the 2002 judgment, we described the purpose of the change to the scratch logo (para 31–32):
"This was another stylised version of the letters WWF. This was developed, according to Mrs McMahon, to meet the perceived need for a logo "designed to appeal to a tougher, edgier audience and fanbase". Mr Olins describes the change as "an abrupt change", where "the commercial situation demands something new and different" and as marking " a break from the past". He contrasts it with "incremental change", an example of which was the earlier change to the tilted version of the block logo.
Again, this change was part of a deliberate marketing strategy, and again it seems to have been successful, to the extent that, according to Mrs McMahon, the Scratch Logo "has today become synonymous with the Federation"."
We rejected an argument for the Federation that the use of the Scratch Logo was permitted under the 1994 Agreement (paras 37–9).
THQ was not a party to the 1994 Agreement, and, according to the evidence before us, did not see a copy until very recently. It was not a party to the proceedings between the Fund and the Federation. It has never itself been accused by the Fund of infringing its rights. However, we have been shown letters from the Federation to its licensees, beginning in January 2002, informing them of the state of the injunction proceedings. A further letter to THQ, dated 1 st July 2002, referred to the refusal of permission to appeal to the House of Lords, and continued:
"As we have previously alerted you, this means that retailers must obtain title to any merchandise with the old 'WWF' scratch logo on or in the product, packaging and/or advertising material prior to November 10, 2002; otherwise such merchandise cannot be sold."
THQ was told that all future products and packaging must contain the new "WWE" logo.
We have not been shown THQ's replies to those letters. However, we have been shown a report filed by the Federation with the US Securities and Exchange Commission ("the SEC"), dated 9 th December 2002, which gave an account of the English litigation with the Fund. After a reference to the decision of Jacob J on the present application (given on 26 th November 2002), it stated:
"The Company previously directed THQ/Jakks not to distribute videogames containing such references to the WWF scratch logo after November 10, 2002. THQ/Jakks has advised the Company that it will comply with that direction."
There is an issue about The Federation's power to give a binding direction to this effect. However, for obvious reasons it is in THQ's commercial interests to bring its own products and marketing into line with the new WWE branding as soon as practicable. According to the evidence before us, that is what has happened. THQ has taken steps to eliminate all references to the WWF scratch logo from the packaging and promotional materials of existing games, and it has not been incorporated in any new games developed since the injunction.
The problem, which gave rise to the present proceedings, is one of practicality. Approximately 12 existing games had the WWF scratch logo embedded into the computer programming code of the gameplay of these games. The cost and the technical difficulty of reprogramming videogames, it is said, makes it impossible for practical purposes to reprogramme these games so as to eliminate all references to the WWF scratch logo from the gameplay. These games apparently have significant future commercial value to THQ, which it is anxious to exploit, provided it can do so without being held liable for contempt under the injunction against The Federation. Having failed to obtain an assurance from the Fund that it would not proceed against it when the injunction came into effect on 10 th November, THQ made the present application to the court on 8 th November, and ceased shipping any further copies containing the WWF scratch logo.
The application was made within the existing proceedings between the Fund and the Federation, and sought the following relief:
"(1) a declaration that the continued marketing of video games by the Applicant after 10 November 2002 which contain the initials WWF is neither in breach of the order of the Honourable Mr Justice Jacob dated 1st October 2001 ("the Order") nor would constitute a contempt of court; or alternatively
(2) an order that if and insofar as the Applicant is...
To continue reading
Request your trial
-
WWF World Wide Fund for Nature (formerly World Wildlife Fund) v World Wrestling Federation Entertainment Inc.
...hearing. 48 It is important to appreciate why the Federation was there at the hearing. That appears from the judgment of Peter Gibson LJ ( [2004] FSR10 at page 181), namely that it might be exposed to contempt of court proceedings by virtue of THQ's sales and second because Jacob J had seve......
-
WWF World Wide Fund for Nature (formerly World Wildlife Fund) v World Wrestling Federation Entertainment Inc.
...Justice Jacob held ( [2002] EWHC 2580 (Ch)) that THQ was bound by the order. His decision on that point was reversed by this Court ( [2003] EWCA Civ 401). 64 The Federation had not been party to THQ's application before Mr Justice Jacob. We were taken to passages in the transcript of the ......
-
Super Max Offshore Holdings v Rakesh Malhotra
...15 October 2019, where I referred to Hone v Page [1980] FSR 500, and in particular to World Wide Fund for Nature v THQ/Jakks Pacific LLC [2004] FSR 10, to emphasise that the restriction is not only limited to a defendant's employees, but extends to anyone whom a defendant can control. That ......
-
Pertamina Energy Trading Ltd v Karaha Bodas Co LLC and Others
...below (at [63]–[65]). 44 Carnwath LJ, in the English Court of Appeal decision of World Wide Fund for Nature v THQ/Jakks Pacific LLC [2004] FSR 10, after citing a passage from the judgment of Lord Nicholls of Birkenhead in the recent House of Lords decision of Attorney-General v Punch Ltd [2......
-
Management and Enforcement
...MICROSOFT works refused for uncertainty). 320 WWF-World Wide Fund for Nature v. World Wrestling Federation Entertainment Inc. , [2003] EWCA Civ 401 at [16]–[19] [ WWF 2003 ]. Management and Enforcement 619 case of breach. 321 Injunctions are not granted or denied to push some abstract legal......