Patents County Court decides “Button Moon” Copyright and Passing Off case

30-05-2013 11:15

The Patents County Court (the PCC) recently handed down judgment in the case of alleged copyright infringement and passing off in drawings and characters in the 1980’s children’s TV show Button Moon.

The claimant (together with his late business partner) created a stage puppet show called “Mr Spoon on Button Moon” which was commissioned as a children’s TV show by Thames Television in the early 1980’s.  The Defendant approached the Claimant on several occasions for a licence to use the characters crated by the Claimant, on various items of merchandise, including t-shirts.  The Claimant couldn’t grant a licence to produce t-shirts as he had already exclusively licensed another company to do this.  The Defendant then started producing merchandise, including t-shirts and mugs.  The Claimant wrote to the Defendant asking for various undertakings and the Defendant stated that the goods had been taken off the market and that he had been advised he hadn’t infringed the IP rights and that the goods were a parody and that he had not copied the Claimant’s artwork but that the images were created by himself.  He also claimed that because he had put a disclaimer on the products stating, among other things, that they were not “100% official” and because he had taken care not to use the name Button Moon, he had not been passing off the products.

The Parties could not agree on a resolution so the matter proceeded to trial in April 2013.

At trial the Judge held that the Defendant had infringed the copyright in the Button Moon characters.  The Court also held that there had been passing off.  On the particular facts of this case the Judge held that whilst an appropriate disclaimer can sometimes amount to a defence for passing off, the wording in this particular case was not adequate and it was not sufficiently clear on the products and packaging.

The moral is that it is always preferable to enter into the appropriate licences when using Intellectual Property belonging to other people and if you think you need to use a disclaimer, you should always take legal advice on the wording and location.

If you would like any further information on copyright or passing off, please contact Emma Hayward.

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