No stranger to litigation over knocking copy, BT is at it again, this time over advertising for new directory enquiry services.
Topic: Comparative advertising
Who: BT and The Number
When: May 2003
Where: London
What happened:
BT went to court seeking a temporary injunction pending trial preventing further publication of a press advertisement promoting a rival directory inquiry service. The court action followed the appearance in rapid succession of two press advertisements, the first published by BT, the second, appearing a day later, published by competitor "The Number".
Looking at the advertisements side by side, both carried the heading PUBLIC NOTICE. Under that the BT wording was:
"BT Directory Enquiries is being updated. The old 192 number will be replaced by: 118500".
The equivalent section of the "The Number" advertisement read:
"BT Directory Enquiries is being updated. The old 192 number is being replaced by a radical new directory enquiries concept. Being helpful. The new number is 118118".
The next section of the BT ad read:
"Additional services include: putting your call through directly; classified searching; local plumbers; florists etc; numbers texted to your mobile for free; listings information e.g. cinema times and film listings nationwide."
The equivalent section of the "The Number" advertisement read:
"Additional Services we offer you that BT192 never bothered to offer include: putting your calls straight through; classified searching; local plumbers; florists; numbers texted to your mobile for free; listings information, e.g; cinema times and film listings nationwide".
A rectangular box at the bottom of the BT ad read:-
"To minimise any confusion or inconvenience BT advise making a note of this number or storing it in your mobile phone".
A same size box in the same position in the "The Number" ad read:
"To minimise any confusion caused by the disappearance of 192 and to make things more convenient for you we advise making a note of this number or storing it in your mobile phone.
Underneath that, the BT ad carried the BT logo in the bottom right hand corner, whilst in the "The Number" execution, the "The Number" logo appeared in the bottom right hand corner with "Not BT (thank goodness)" bottom left.
Not surprisingly, BT were not impressed with The Number's execution and they immediately applied to the court for an interim injunction preventing its further publication.
Why this matters:
Reports of the case to date indicate that the primary if not sole cause of action cited by BT in its proceedings against "The Number" was copyright infringement, although if "The Number" advertisement had contained serious material inaccuracies, then they might also have contemplated throwing in the trademark infringement claim given the use of the registered BT trademark in the 118 execution.
So far as the copyright claim is concerned, it appears that the court agreed with BT that there was a serious issue to be tried when it granted the interim injunction. At trial, BT will have to establish three things.
Firstly they must show that the literary copyright in the original BT advertisement is owned by BT.
Secondly they must show that the words in the BT ad classify as "a literary work" for the purposes of copyright protection.
Thirdly they will have to persuade the Court that the 118118 advertisement, in terms of its copy content, constitutes a copy of a substantial part of the copy in the BT ad.
On point one, one imagines that BT will have got its ducks in a row so far as copyright ownership is concerned. On point two, when a very short piece of advertising copy have been in play, the Courts have in the past shown a reluctance to confer on it the status of "original literary work". It needs to have this to qualify for copyright protection. However, in this case, marketinglaw's view is that the BT copy is expansive and extensive enough to classify as an original literary work.
On the third point, the exercise of reading sequentially the relevant parts of the two advertisements underlines the extent of the similarities between the two, and in marketinglaw's view, "The Number" are not going to have an easy time of it on the "copy of a substantial part" issue.
At the end of the day, pure copyright infringement damages are unlikely to be substantial bearing in mind that in most cases like this the court approaches it on the basis of estimating what licence fee BT might have charged if it had been approached by The Number in the first place for a licence to reproduce their advertisement in amended form. BT might have a go at an "additional damages" claim on the basis of an allegation that this was a cynical and flagrant piece of plagiarism. In the past however, the courts have been reluctant to see damages being ratcheted up in this way except in the most serious of cases.
Facing these legal challenges, the Number might feel that having made their point and got some headlines over the dispute, they have achieved something of their original purpose and marketinglaw's suspicion is that the case is unlikely to go to full trial.
