Ukulele Wars: The Ukulele Orchestra of Great Britain v Clausen

Although Judge Hacon's decision in The Ukulele Orchestra of Great Britain v Clausen and Another [2015] EWHC 1772 (IPEC)  was reported as a "victory" in the Independent (The Ukulele Orchestra of Great Britain wins duel with German 'copycat' 3 July 2015) it was somewhat of the pyrrhic kind.  The Ukulele Orchestra of Great Britain sued The United Kingdom Ukulele Orchestra for trade mark infringement, copyright infringement and passing off and applied to strike out the defence on the grounds of abuse of process less than two weeks before the trial. The claim succeeded on passing off but failed on all other counts. The claimants lost their Community trade mark and the judge saw no merit in the strike out application whatever.

The case is an interesting one because it considers what can be protected by intellectual property. The parties were very similar acts.  The claimants' was described as follows by Judge Hacon at paragraph [1] pf his judgmenrt:
"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."
Here they are playing Wagner at the Proms:

And here are the defendants playing Bach:

They are a limited partnership under German law based in Germany but consisting of British players.

The claimants had registered THE UKULELE ORCHESTRA OF GREAT BRITAIN as a Community trade mark for
"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"
in class 41 as well as for various goods in classes 9, 15, 16, 18, 25 and 28.

The judge held that had that CTM registration been valid the defendants would have infringed it under art 9 (1) (b) and (c) of the Community trade mark regulation (Council Regulation (EC) No 207/2009of 26 February 2009on the Community trade mark OJ 24.3.2009 L78/1).  After considering paragraphs [33] to [39] of Lord Justice Floyd's judgment in JW Spear & Sons Ltd & Ors v Zynga Inc [2015] FSR 19, [2015] EWCA Civ 290 Judge Hacon concluded at paragraph [57]:
"The CTM and the accused sign are visually and aurally similar to the extent that they both contain the words 'ukulele orchestra'. I think this is an instance in which conceptual similarity is likely to register strongly with the average consumer. In that regard mark and sign are extremely close. As was pointed out at trial, it is certainly true that 'Great Britain' and 'the United Kingdom' do not mean the same thing. But even in this country some pedants might hesitate before getting the difference right. I doubt that the distinction either means anything or matters at all to the vast majority of people elsewhere in the EU. The average consumer, in short, would regard mark and sign as having the same meaning."
Basing himself just on that and the other matters to be taken into account as directed by the above passage from Spear v Zynga he reached the view that there was a likelihood of confusion.

There was also some actual evidence of confusion. The judge observed at paragraph [68]:
"It is possible that if all these instances had been fully explored and tested in cross-examination, some would have fallen away as not being proof of relevant confusion. I was left with the impression that many would support UOGB's case on confusion. In my view, if the CTM had been valid, it would have been infringed by UKUO pursuant to art.9(1)(b)."
That same evidence was relied on in the action for passing off. Judge Hacon said at [92]:
"I am satisfied that the evidence adduced in support of the likelihood of confusion pursuant to art.9(1)(b) establishes that Yellow Promotion's use of the trade name 'The United Kingdom Ukulele Orchestra' misrepresents to a substantial proportion of the public in this country who recognise 'The Ukulele Orchestra of Great Britain' as the trade name of a particular musical group, that UOGB and UKUO are the same group or are otherwise commercially connected. I am also satisfied that this has caused damage to UOGB's goodwill, particularly by way of loss of control over UOGB's reputation as performers."
That was the one bit of the case upon which the claimants succeeded.

As for the remainder of the case the judge threw out the trade mark infringement claim and invalidated the CTM registration on the ground that it was descriptive within the meaning of art 7 (1) (c). The copyright claim failed on the basis that no copyright could subsists in the claimants' act though it might subsist in recordings of one or more of their performances. The strike out application was based on an inference that the defendants had doctored evidence and that a fair trial was not possible. The judge disagreed.

The judge was right to decide this case as did. This was an attempt to suppress a lookalike or to put it another way to monopolize an entertainment style. That would have had very profound and deleterious effects on the performing arts had it succeeded. It would have outlawed not just tribute bands but many legitimate artists who may be influenced by an earlier work and create something new in the same style without copying it.

Should anyone wish to discuss this case with me he or she should call me on 020 7404 5252 during office houses or send a message through my contact form.


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