It wasn’t the first time that The Sun had used pictures of the cover of IPC’s ‘What’s On TV’ in ads promoting the daily’s competing free TV guide. And it also wasn’t the first time they had been sued for doing so. Did they get the same result? We report at
Topic: Comparative advertising
Who: IPC Media Limited v News Group Newspapers Limited
Where: Chancery Division of the High Court of Justice in London
When: February 2005
What happened:
IPC, publishers of "What's on TV", took News Group Newspapers ("NGN"), publishers of The Sun, to court over press advertising for the Sun's free television listings magazine "TV Mag".
The ad featured a reproduction of the front cover of the 10th – 16th July 2004 edition of What's on TV. The headline of the ad read "New in Saturday's Sun – why pay? The biggest and best is free".
IPC claimed infringement of the copyright in the cover of What's on TV and the case ended up in court in February 2005 on an application by IPC for summary judgement, on the basis that The Sun had no arguable defence.
NGN defended on the basis that their reproduction of what they admitted to be IPC's copyright work was a "fair dealing".
"Fair dealing" defence
Fair dealing is a legitimate defence to a copyright infringement claim. There are various sub-heads of fair dealing and particular sub-categories argued by the Sun to give them a good defence here were fair dealing for the purposes of either criticism, review or the reporting of current events.
Ingeniously, NGN also argued that this was a fair dealing because the EU Comparative Advertising Directive legitimised this form of advertising "in the interests of keeping consumers sufficiently informed of their opportunities." It said that its use of IPC's copyright was in no sense competing commercially with IPC's ability to exploit it. The only use made by NGN of the copyright material was for the purpose of identifying a product with which it wished its own to be compared.
Judicial dilemma
Mr Justice Hart confessed to "not finding this an altogether easy point" but at the end of the day he found firmly in favour of IPC and What's on TV. He pointed out that the Comparative Advertising Directive and the UK's implementing regulations made it quite plain that they did not "derogate from any right of action or other remedy". He also found against the suggestion that this was fair dealing for the purposes of criticism or review as there was no attempt to "criticise or review" the cover of What's on TV. In the Judge's view the dealing was even less likely to be characterisable as reporting current events and he granted IPC its summary judgement.
NGN sought leave to appeal to the Court of Appeal but the Judge refused and they must now go to the Court of Appeal to get leave to appeal.
Why this matters:
This was not the first time that NGN and IPC had been at daggers drawn over this practice. Back in 1998 NGN had done pretty much exactly the same thing and in that case as well, IPC issued proceedings, with the matter being settled on the basis of an undertaking by NGN not to infringe the copyrights of IPC "by making a copy of or by issuing to the public copies of the whole or any substantial part of… the layouts of any cover of What's on TV".
Fast forwarding to 2005, Hart J. found not only that NGN were in breach of copyright but also that they were in breach of the contract that was concluded as a result of that settlement.
Trade mark infringement?
"What's on TV" is a registered trademark in respect of newspapers and periodicals but IPC would have had difficulty sustaining a case in trademark infringement unless the advertising was shown to be significantly misleading.
There was no such suggestion here, but IPC still had an excellent case on the basis of copyright infringement, as this judgement shows.
The moral of the story is that advertisers looking to compare their products will those of their competitors must take care in showing their rivals' products. If there is any copyright material involved, then this case underlines that there is unlikely to be any viable defence to an infringement claim.
