Defence – Passing off – Claimant owning copyright to children's programme 'Button Moon'

Allen v Redshaw: Patents County Court: 15 May 2013

The claimant was an artist, writer and puppeteer. In 1978, he and his then business partner devised Button Moon, a puppet show which was later made into a television programme for children. The programme had continued to be repeated on various channels, and the claimant had exploited the rights in the work by granting merchandising rights to others for, among other things, clothing.

The defendant owned a business producing, among other things, T-shirts, hooded tops and mugs. In July 2007, the defendant contacted the claimant, expressing an interest in taking a licence from him to produce merchandise. However, after discussions between the parties, the proposal went no further. The defendant subsequently produced mugs, T-shirts and hooded sweatshirts (the products), which were sold on various third-party internet sites. The goods used images similar to those used in the Button Moon programme. The T-shirts carried a disclaimer that stated '100% unofficial', as well as the words 'produced from original artwork & photographs'.

In August 2009, the claimant complained of the sale of products decorated with a design using images similar to Mr Spoon, who was the lead character of the programme, Mr Spoon's space rocket and the button moon itself. The defendant, while admitting no infringement of copyright, ceased to sell the products until a point after Autumn 2009, when he began to sell the products again. In March 2012, the claimant issued proceedings.

The claimant contended that the defendant had violated his copyright in regard to a number of works. He submitted that the works of which he was the author were: (i) the original Button Moon stage show; (ii) the dramatic works underlying the television programme; and (iii) original drawings for the puppets, sets and props of the show. Those included Mr Spoon; the space rocket; and the button-shaped moon itself. Further, he contended that he owned goodwill associated with the words 'Button Moon' and 'Mr Spoon' and goodwill associated with the puppets, sets and props used in the stage show and programme, whether individually or together.

He submitted that the defendant's goods misrepresented that the items were authorised for sale by him, leading to passing off and causing damage to the claimant in particular by the loss of potential licensing deals. The defendant submitted that, although his products were loosely based on the Button Moon designs, they did not reproduce a substantial part of them and were intended as a parody or joke. The claim would be allowed.

(1) On the evidence, the rocket and cartoon man depicted on the defendant's products undoubtedly reproduced a substantial part or parts of the claimant's designs. There was no doubt that there was a causal connection between the parties' respective works, there being direct or indirect copying of the claimant's works. Further, there was no defence of parody to an infringement of copyright claim, if what had been taken was a substantial part of the claimant's work. In any case, the defendant's actions had not put the artistic works into the category of a parody (see [28]-[30] of the judgment). There was no doubt that the defendant had infringed the claimant's copyright (see [30] of the judgment). Schweppes Ltd v Wellingtons Ltd [1984] FSR 210 applied.

(2) With regard to passing off, on the evidence, there was continuing goodwill in the Button Moon characters. The disclaimer used by the defendant was of low visibility and was not clearly worded. Further, the references to licensed goods, and the use of the words 'Button Moon' to describe the mugs on the defendant's website, constituted a misrepresentation so as to result in passing off (see [36]-[41] of the judgment). The case of passing off was made out. The defendant would be liable in damages to the claimant for infringement and passing off (see [42], [58] of the judgment).

The claimant appeared in person; The defendant appeared in person.