|This is an original button|
In 2007, Mr Allen, the owner of the IP rights in the Button Moon series, refused to offer Mr Redshaw a licence to use the characters on various merchandise. Undeterred, shortly after this meeting Redshaw started to sell various items based on Button Moon. Redshaw mistakenly assumed that he could produce goods featuring the characters if he did not copy the original artwork or photographs. He sold a variety of mugs, T-shirts and sweatshirts bearing the Button Moon characters and distinguishing features such as the moon and rocket.
These sales eventually came to Allen’s attention and after several rounds of correspondence and an investigation from Trading Standards, legal proceedings were initiated in Norwich. The case was subsequently transferred to the Patents County Court (PCC). Allen claimed for infringement of his artistic copyright and passing off.
Somewhat unusually, but appropriately given the value of the claim, liability, quantum and costs were all dealt with in the same judgment.
In relation to copyright infringement, Redshaw argued that:
• the mugs etc were intended to create a parody;
• they were his own drawings, not reproductions of original images;
• the fact that his drawing were 2D and the originals were 3D meant that there was only a passing resemblance;
• some features of Button Moon, such as the moon, were not original; and
• He didn’t copy Mr Spoon’s wooden spoons used as arms.
The recorder, Amanda Michaels, was having none of it.
Whether or not he intended to create a parody is irrelevant as this is not (currently) a defence under UK law. Further, the fact that they were Redshaw’s own drawings and in 2D rather than 3D did not avoid the fact that they were clearly copies of the Button Moon artwork. There was a low test for originality, which the moon passed, and the fact that the wooden spoons had not been copied did not avoid a finding that Redshaw had copied a substantial part of the Button Moon artwork.
Redshaw claimed that he hadn’t used the name Button Moon so as not to mislead and that he had used a disclaimer.
Although the packaging did not refer to Button Moon, some of the online advertising, particularly on eBay, did refer to Button Moon and many third party resellers sold them as Button Moon merchandise so clearly there was a degree of confusion surrounding the issue.
In terms of the disclaimer, Michaels accepted that a disclaimer may prevent misrepresentation if it is sufficiently clear. In this case, the disclaimers were in small print and in many cases hard to read as it was written in black lettering and printed on a black background. She also held that whilst the words “100% unofficial” might prevent misrepresentation, this was offset by the reference to "produced from original artwork and photographs" which suggested some sort of link to the owner of the original artwork. The claim of passing off was therefore established.
Unfortunately, neither party filed evidence on damages. In view of the costs and level of damages, the hearing was not postponed and Michaels was forced to assess the damages based on the limited information available. For the copyright infringement, based on the limited available evidence, Michaels awarded damages of £2,818 plus a further £3,250 to reflect the flagrancy of Redshaw’s use. She also awarded interest at an average of 1.5% for the 4 ½ years of use.
For the claim of passing off, Michaels could only make a nominal additional reward of £250 plus £16.87 interest as Allen could not substantiate his claim to have lost a licensing deal because of Redshaw’s sales of the infringing mugs. She noted that the items were not of such poor quality to have ‘significantly damaged [Allen’s] goodwill’.
Somewhat unusually, Mr Allen was also awarded his full costs of £3,421.88 (because they were low and well within the PCC costs cap).