High Court judge rules that TV show Glee tarnished the reputation of the comedy club chain
The Glee Club comedy venue chain has won a high profile trademark legal battle against Twentieth Century Fox and its hit TV show Glee.
A high court judge ruled the television show 'diluted and tarnished' the reputation of the comedy club brand, which has a venue in Birmingham.
Comic Enterprises Ltd, which runs four stand-up comedy clubs emblazoned with its 1999-registered trademark, accused Hollywood giants Twentieth Century Fox of "swamping" its rights and "putting off" its confused customers.
And the jewel in the crown of Rupert Murdoch's empire received a costly bloody nose at the High Court when a top judge ruled that the enormous success of the high school singing club series infringed the British company's trade marks.
The ruling opens the way for Comic Enterprises to claim massive damages from Twentieth Century Fox Film Corporation or an 'account of profits' that it has made from televising Glee. It could also seek an injunction, effectively expelling Glee from UK screens.
Judge Roger Wyand QC said Comic Enterprises' clubs, in Birmingham, Oxford, Nottingham and Cardiff, had a 'distinctive' character and the studio had shown no 'objective justification' for trade mark infringements that were likely to sow confusion.
He ruled: "I have found that there is a likelihood of confusion and Twentieth Century Fox's use causes dilution and tarnishing...the damage suffered by Comic Enterprises is caused by its venues being confused with the TV show and its potential customers being put off".
He added that the studio's "continued use" of the Glee title "cannot be in accordance with honest practices in industrial and commercial matters".
The club chain's boss, Mark Tughan, had faced legal costs approaching £1 million if he had lost the enormously costly legal action.
The judge found him to be 'an honest witness' and rejected all Twentieth Century Fox's criticisms of his conduct.
A 20th Century Fox Television spokesperson said: “We intend to appeal and are confident that, as the case plays out, we will ultimately prevail.
"We remain committed to delivering Glee to all of its fans in the U.K.”
Comic Enterprises registered "The Glee Club" trademark, including an image with the words in a spotlight, on June 19, 1999.
That was long before Glee - the story, now in its fourth series, of a singing club at the fictional William McKinley High School - hit TV screens worldwide.
The British company's venues opened between 1994 and 2010 and have hosted top comedians such as Jack Dee, Michael McIntyre and Rob Brydon, and, although a corporate minnow compared with Twentieth Century Fox, have sold millions of tickets.
Mr Tughan, Comic Enterprises' owner, said he was stunned when, flicking through TV channels in 2010, he saw Glee for the first time.
He told the court: "I thought 'Jesus Christ - there's a TV show with our name on it'. I warranted it to be serious enough to look into it and get to the bottom of what the hell was going on."
Mr Tughan, who thought the show had a "saccharine, bland narrative", started to become worried when he realised the second season was a runaway success when it aired on Sky, later that year.
That season, by Fox's own account, Glee was the top-rated television series on satellite TV, attracting millions of viewers, who were branded "Gleeks".
Mr Tughan said his confused customers often assumed there was some connection between his comedy clubs and the TV show, causing major problems for his business.
His barrister, Douglas Campbell, said: "The acts of Twentieth Century Fox have swamped the reputation of Comic Enterprises' mark and thereby diluted its ability to denote its services."
Comic Enterprises did not allege that the studio had taken 'unfair advantage' of its trade marks and its claims of 'passing off' were dismissed.
However, Judge Wyand said the evidence of confusion was clear and upheld the company's infringement claim.
The Birmingham Glee Club venue is on Theatre Walk, at the Arcadian Centre.