Publishing Future Publishing secures a significant High Court victory over ownership and use of the EDGE trade mark which the publisher uses in relation to its successful monthly video games magazine of the same name. Jonathan Mayner edges gingerly through a long-running dispute involving a broken contract, copyright and trade mark infringement and some fabricated evidence.
Topic: Brands
Who: Future Publishing Limited; The Edge Interactive Entertainment Media Inc; Edge games Inc, Dr Timothy Langdell
When: June / July 2011
Where: UK
Law stated as at: 28 July 2011
What happened:
Future Publishing Limited ("Future") won a claim in the High Court relating to the EDGE trade mark which Future uses in relation to its popular Edge video games magazine. The defendants were two companies, The Edge Interactive Media Inc and Edge Games Inc, along with an individual, Dr Timothy Langdell (referred to collectively as "Landgell" since Dr Langdell exclusively controlled both companies and represented himself and the companies in the High Court proceedings). The court ruled in Future's favour on points of copyright and trade mark law, passing off and breach of contract in relation to a trade mark co-existence agreement between the parties involved. Langdell also admitted to have essentially forged evidence but seems to have been dealt with extremely leniently on that point.
Initial dispute and settlement agreement
The dispute dates back to 1993 and the earliest publication of Future's Edge magazine. At that point Langdell began legal proceedings in passing off against Future claiming unregistered rights in the EDGE trade mark. In the 1980's and 1990's Langdell had a business writing video games software using the names Softek, and subsequently Edge. While negotiations regarding that claim were ongoing, both parties applied to register their respective rights in the EDGE mark at the Intellectual Property Office in the UK. A settlement agreement was signed in December 1996 under which Langdell retained his registered trade mark and Future surrendered its trade mark application in return for a royalty-free licence to use the EDGE mark in relation to its magazine. Langdell also received £20,000 under the deal.
Second co-existence agreement
As the success of Edge magazine grew Future wished to buy all of the relevant trade mark rights and cut its ties to Langdell whose behaviour, according to the judgment, Future deemed to have become "burdensome". The net result of the negotiations this time was a co-existence agreement signed in 2006 which saw The Edge Interactive Media Inc receive $250,000, and Langdell himself receive $25,000 (although the whole sum was paid into Langdell's bank account).
Under the terms of that agreement, the registered EDGE trade marks were formally divided between the parties so that each party owned registered trade mark rights in the word EDGE which covered the goods and services for which they actually used (or intended to use) the mark. The parties also agreed not to use their respective EDGE marks in any way that would likely confuse the public into believing there was a connection between them, as is common in such agreements.
The High Court claim
In the years following the 2006 agreement, Langdell made use of Future's EDGE logo on various websites and on headed notepaper and made several representations to the effect that Edge magazine was published under licence from Edge Games Inc (which it no longer was under the 2006 agreement). The Edge Games website contained the claim that the magazine was "published by our trading partner Future Publishing" and his personal website contained the claim that "the EDGE brand is now known for many game related products and services, notably in the UK the top selling games Magazine EDGE". Future brought a claim in the High Court for breach contract (in relation to the 2006 agreement), breach of copyright and passing off.
The High Court judgement
Langdell failed to convince the court on every point, leading to a ruling which held that Langdell had:
- so fundamentally breached the co-existence agreement through its use of the EDGE logo and the related misleading statements so as to allow Future to legitimately terminate the contract rather than merely sue for damages under it;
- made up certain claims in support of his contention that he owns and uses the EDGE trademark;
- breached Future's copyright by using copies of their EDGE logo on various websites and letterheads;
- committed the tort of passing off having made statements and other representations which might confuse the public into assuming a connection between Langdell and Future; and
- had rendered his remaining registered UK trademark rights in the word EDGE as invalid by failing to use them in the UK during the preceding five-year period.
With a victory this comprehensive, Future can now be reasonably confident that their long-running saga with Langdell has turned a significant corner. The court's ruling on Langdell's non-use of the EDGE trade marks means that those marks will now be formally de-registered, making it more difficult for them to assert rights in the EDGE mark in the UK going forward. Damages and legal costs will also be payable by Langdell to Future, although these have not yet been assessed.
Fabrication of evidence
Arguably the most startling aspect of this case was not that the defence failed on every front, but that Langdell himself admitted that he had essentially forged an old-fashioned floppy disk which was central to his claim to have invented the EDGE logo himself in the early 1990s. The disk was initially described as being an original dating from 1991 but was revealed to have been an elaborate copy (though not a perfect forgery) as expert evidence and cross-examination showed that it contained files from more recent times which had been backdated. A chain of suspect email correspondence regarding the disk was also thrown into the mix, all of which necessitated an elaborate explanation from Langdell. In the words of the judge: "Dr Langdell's story is incredible".
Langdell further tested the court's patience by producing yet more suspect emails in the course of closing submissions (i.e. after all evidence was supposed to have been submitted), and while the clearly exasperated judge did not rule that these were outright forgeries she attached no weight to them as evidence.
The Trade Mark Troll
This case (and the use suspect evidence) is not an isolated incident involving Langdell who has allegedly become known in the games industry for numerous legal actions relating to the EDGE mark, including his recent attempt to prevent Electronic Arts ("EA") from releasing their Mirror's Edge game. In May of this year Langdell failed to secure an injunction against EA and was found in that case to have presented fabricated evidence (including a doctored cover of a copy of Edge magazine from 2004). The Californian judge presiding in that case held that Langdell had so wilfully sought to commit fraud against the US Patents and Trade Mark Office in registering and maintaining his EDGE marks that criminal sanctions may be considered against Dr Langdell in the US.
In a post-script to Future's High Court victory, Langdell recently hit back at much of the internet reporting on his numerous cases which has seen Langdell characterised as a "Trade Mark Troll" by some. In a recent statement Langdell claims to have been compelled to bring numerous legal actions to protect the EDGE mark under the terms of his agreement with Future and that he was now seeking to settle some of those outstanding disputes having been released from the agreement with Future. Interestingly, clauses of the 2006 co-existence agreement which were cited in the recent High Court judgement indicate that while the agreement did acknowledge that the parties would both actively enforce their rights to the brand it expressly did not commit the parties to any particular course of action. Moreover, the fact that Langdell's UK trade marks will now be invalidated will also be a motivating factor in any settlements or abandoned claims going forward.
Contempt of Court and Appeal
Langdell reportedly claimed in his statement that he has filed an Appeal against the High Court's decision and that he is "confident of prevailing". In another development Future have been given permission by the High Court to bring Contempt of Court proceedings against Langdell in relation to the suspect evidence brought before the court in the course of the trial. In the months ahead either Langdell will succeed in taking this dispute to the next stage or Future will deliver the final blow.
Why this matters:
This was an important victory for Future because it potentially draws a line under a prolonged IP battle and formally cuts their ties to the business of an individual who has become known for embroiling others in IP disputes. But there are some points of wider relevance to other brands-owners (other than as a cautionary tale of the perils of representing yourself in the High Court and fabricating evidence):
- Intellectual property rights in one's brand are of crucial importance and should be properly protected and robustly defended where appropriate. Publishers and other brand owners may be able to bring infringers to account under laws governing copyright and/or trade marks and the law of passing off.
- Where a brand-owner is forced to recognise that another party has some claim to trade mark rights in a brand, a robust and clear co-existence agreement is crucial to ensuring that the parties carry out their business and use of the trade marks as intended.
- Brand owners need to be careful who they are entering into co-existence agreements with. Is the other party likely to abide by the terms of the agreement and let the brand owner get on with their business without interference?
- Finally, sometimes litigation is inevitable, particularly where all other methods of neutralising a threat to a brand's reputation or distinctiveness have been explored. Where one party to a co-existence agreement breaches its terms, the innocent party may be able to claim for damages or, in exceptional circumstances (such as in this case), they may be entitled to rescind the contract entirely alongside any other claims which are relevant in the circumstances.
