Who: Ian Allen and Robert Redshaw
When: 15 May 2013
Law stated as at: 6 June 2013
One of the creators of “Button Moon”, a popular children’s TV show from the 1980’s, has successfully brought a claim of copyright infringement and passing off. In the case of Allen v Redshaw (2013), an attempt to argue parody as a defence was unsuccessful and highlighted that care will need to be taken by those who wish to rely on the forthcoming parody exemption from copyright infringement.
The defendant had failed to negotiate a licence with the claimant owner of the copyright works which would have allowed the defendant to produce Button Moon merchandise.
Nevertheless, the defendant proceeded to use images very similar to Button Moon characters on mugs, T-shirts and sweatshirts. The defendant asserted that he had originated the artwork which appeared on the merchandise, featuring a golden button moon and stylised rocket, which were described in the judgment as “identical or very similar” to those of the claimant. However, this assertion of originality did not prevent the judge finding that a substantial part of the original works had been copied with the result that the claimant’s copyright had been infringed.
The defendant was also found to be liable for passing off. Although Button Moon was aired in the 1980’s, the shows remain available on DVD and the claimant has continued to exploit the characters through a number of licences. Therefore, it was considered that there continues to be goodwill in relation to the Button Moon characters.
The defendant was found to have taken advantage of such goodwill, by producing and marketing merchandise containing “identical or very similar” images to the Button Moon characters. This amounted to a misrepresentation that such merchandise was licensed, official and produced in connection with the claimant.
The merchandise and packaging included disclaimers as follows:
“100% unofficial, produced from original artwork & photographs independently produced without endorsement or affiliation with artists & persons depicted within”.
However, the judge considered that the words “produced from original artwork & photographs” counteracted the effect of the words “100% unofficial” and that the disclaimers were not sufficiently prominent.
Additionally, descriptions of the merchandise on retail sites included the words “Button Moon” and the defendant’s trading company described itself as “the No 1 in Licensed Retro Funky Gifts”. Therefore, this amounted to a misrepresentation that the merchandise was validly licensed and resulted in passing off.
The defendant also attempted to argue that his intention to create a “parody/ joke product” provided him with a defence.
However, the judge stated that the question of whether substantial copying of the original work had taken place was “unaffected by the Defendant’s motives”. Furthermore, she could “not see that the Defendant’s designs can properly be described as a parody of the Claimant’s designs at all. The fact that Mr Redshaw combined the rocket, etc with the wording of a recycling slogan does not, in my judgment, put the artistic works in the category of parody”. Even if the defendant’s designs had constituted a parody, this would not have provided a defence to copying a substantial part of the original work.
Why this matters:
The Government announced at the end of last year that parody will be introduced as a new exception to copyright infringement. This will potentially widen the scope for advertisers to create parodies of existing works for use in their marketing.
However, under the current law and any future law, the mere labelling of a secondary work as a parody where it is not a parody will fail to provide an excuse for copyright infringement (as highlighted in the present case).
Additionally, where a secondary work is indeed a parody, if it reproduces a substantial part of the original work but does not qualify as “fair dealing” , then whether or not it is a pastiche or parody will not avail the defendant.