As success sometimes brings trouble, so goes the story of the Fox hit comedy GLEE, a big money show that is loved by so many on both sides of the Atlantic. This time the trouble is all in the show’s name itself: Glee. As it happens, not everyone thinks the hit musical show, which is a Golden Globe winner with about 11 sound track albums, plays by fair rules or should even be allowed to continue to run on TV. Across the pond, the British comedy company, Comic Enterprises, which runs a chain of music and comedy venues in Britain called the Glee Club, is suing Twentieth Century Fox for trademark infringement, claiming that the use of the name “Glee” by the American TV show is causing its customers to think there is a link between the British club and the American sitcom and that the confusion is damaging its business. Fox has responded to the British lawsuit with a counterclaim of its own, which is challenging the right of the British comedy company to own the “Glee” name.
In a typical trademark infringement case, the goal is pretty much to collect money from the person causing the offense and to shut down the business operation or practice altogether. And that is what makes this case such a big deal: Although Glee is now listed among the top ten digital US albums of all time, the British market is also a gold mine for the American hit show and its fortunes in Britain run into “tens of millions of pounds.” Last year’s concert tour by the cast of Glee sold more than 165,000 tickets in Britain. A win for the British comedy company will mean they could get paid millions of dollars plus an injunction or court order that would either yank the entire TV show or force its creators to change the show as we know it in the British market. Not a pretty thing!
With the stakes so high, what are the odds of Comic Enterprises winning the case? Not that bad, really! Well, let’s look at the law of trademark infringement. First of all, the whole point of having a “trademark”, whether it’s in the form of a word, a design or something else, is to identify the “source” of goods or services in the marketplace through differentiating one person’s goods or services from those of other suppliers. This is really about branding and avoiding “confusion” of one supplier’s product for those of other suppliers. And, as one might expect, suppliers who have built up a lot of “goodwill” in their product or service over the years would be especially keen to protect their trademark.
So, to win a trademark infringement case, the person bringing the claim has to actually show that they in fact own the “mark” in question, and that the other person or supplier who is getting sued is using that same mark or a mark so similar to it that it would likely cause confusion in the minds of consumers out there in the marketplace, and that the offending supplier is using the mark in carrying on a business and has no permission or valid defense for doing so.
So, for starters, if the people filing the suit cannot, in fact, show that they own the mark, then their claim would go nowhere and all the talk about customers getting confused or the other guy having no permission to use the mark won’t even matter at all. And this is the one factor that could make or break this case because Twentieth-Century Fox seems to have pushed that question to center court by claiming that Comic Enterprises does not own the “Glee” trademark. If Fox can make this claim stick, that would be the end of the road for their opponents. But can it?
To prove that someone owns a trademark, registration of the mark with the appropriate authorities is perhaps the best way to show ownership of the mark against everyone else. Here, Comic Enterprises reportedly registered the Glee name for its clubs since 1999 in the sectors of entertainment services and even merchandise in Britain. And for good measure, the British market is the “marketplace” that really counts in this lawsuit, not the American or any other market for that matter. Yet, registration alone simply doesn’t cut it because an opponent can still challenge the validity of the mark, just as Fox has done. To knock out their opponent’s claim, Fox is bringing the Oxford English Dictionary into court and checking out what it says about the word “Glee,” which is that a glee club is a society for singing part-songs. In layman’s language, Fox is pretty much saying that when the word “glee” is used, it is really more about people singing in a group, rather than something about a comedy club.
Well, the thing is, if somebody is in Fox’s position, registration of a trademark offers a huge advantage to an opponent in any trademark lawsuit and Fox here is merely trying to do its best in a pretty difficult situation. Now, here’s the backdrop to Fox’s argument: Since we are talking about trademarks as things that distinguish goods and services from one another, it then looks like words that merely describe or say what a business does may not be so great, after all, when it comes to distinguishing goods from one another, since technically, any other supplier in that line of business could claim a right to use that same word. With Fox, this means that folks who are “singing” could use the word “Glee” when referring to themselves.
Unless, of course, the other person looking to hang on to such a name can show that such a commonplace word like, say, “glee” or whatever else has, in the course of time, acquired what is called a “secondary meaning,” in that the average consumer in that particular market links or associates that particular word with that particular supplier.
Yet, the bigger odds in this lawsuit are that Fox will probably end up fighting its case on other grounds than just trying to say that the registration is not valid. But the good news for Fox is that they are not the people who have to win that particular argument in this lawsuit. Even if they lose it, the game is still not over just yet. For instance, Comic Enterprises still has to show that its customers are likely to be confused by associating the Fox TV show with the events of its business, the Glee Club. In other words, will the ordinary guy out there on the streets of Britain really think that the events of the Fox TV show and those of the Glee Club are coming to them from the same source? Proving that kind of stuff in the dust and smoke of a courtroom trial can get pretty dicey in the real world.
In the end, this case likely won’t be a walk in the park for either party. Given the high stakes in this case for Fox, such as the big money that its hit TV show is making in the British market, plus the risk of a negative court order, this is no laughing matter for Fox and it will likely do all it can to make this matter go away. Predictions are hard to make in these kinds of cases, but Fox clearly seems to get the memo already, that it may be in some real peril here and that this may not be the kind of case where it would want a foreign judge deciding on matters like the kinds of circumstances which could possibly confuse British consumers in the marketplace and even maybe what possible creative changes should be made to the show.
And there is already a danger signal from the courtroom: A judge in the case has warned that the TV show “at least in its current form would have to be taken off the air” if Fox loses. The way things are looking these days, the odds of an out-of-court settlement of this lawsuit have never been better.