E-map cut up rough when they thought OK!’s free “Hot Stars” supplement was muscling in on “Heat’s territory”.
Topic: Passing off
Who: Emap/"Heat" and Northern & Shell/"Hot Stars"
When: February 2002
Where: UK
What happened:
After dismal sales following its initial launch, Emap's "Heat" was reconfigured as a celebrity-based magazine and since then sales have rocketed. Indeed, the success has been so striking that, inevitably, others have looked to follow suit. One of the first out of the traps was Northern & Shell, who in February 2002 launched a supplement free with their OK! magazine. The title of the supplement was "Hot Stars". In response, Emap publicly put "Hot Stars" down as a "cheap imitation " of Heat. It also said that although it was not taking legal action at the moment, this did not exclude it from suing in the future. In reply, Northern & Shell said there were no similarities between the two publications worth speaking of, whilst industry speculation was whether the free supplement approach was merely a market testing exercise to see whether it might be worth bringing Hot Stars out as a separate stand-alone periodical. So Hot Stars is safe from legal action by Emap for the moment, but if Emap had taken legal advice one wonders what it might have been.
There are three legal complaints that Emap might have contemplated. These are trade mark infringement, copyright infringement and passing off. So far as trade mark infringement is concerned, "Heat" is a registered trade mark owned by Emap in class 16, the printed goods class of products. Clearly, "Heat" and "Hot Stars" are not identical. This would leave Emap with the task of proving that the two brand names were so "similar" as to create a likelihood of confusion as to whether "Hot Stars" came from the same stable as "Heat". Marketinglaw's view on this is that Emap would have had no realistic hope of persuading any UK court that "Heat" and "Hot Stars" are sufficiently similar to come within this definition. There has to be a much closer phonetic similarity. Mere conceptual similarity as we have here is not going to be enough.
Turning to copyright infringement, this has certainly been successfully used in the past as a cause of action in spats between magazine owners. The relevant copyright may be the copyright in the mast-head as a separate artistic work, copyright in particular photographs that appear on a cover, or the copyright in the overall design as a graphic work, (although this is rather difficult to pin down given that the law of copyright in the UK does not recognise a "compilation" of different photographs or pieces of artwork as a separate copyright work). In the case in point, there is quite a lot of a similar shade of red on the covers of both "Heat" and "Hot Stars", but in most other respects, marketinglaw's assessment is that there simply isn't sufficient similarity for one to be regarded as a copy of a substantial part of the other. Verdict: no copyright infringement
So far as passing off is concerned, the similarities do not have to be so close as in copyright infringement, and here the overall look of the cover as a combination of images, shapes, panels and photographs will be relevant. But there still has to be a sufficient level of striking similarity between the two for readers of one to be confused into believing it comes from the same source as the other. Apart from the fact that one is given away free with a magazine which is clearly from a different stable altogether to "Heat". marketinglaw's assessment is again that there is not enough similarity between the overall look of the two covers for there to be any realistic prospects for Heat in a passing off action.
So all in all, Northern & Shell, if they did take advice on how to minimise the risks of aggravation from the direction of Emap, have been well advised and it is hardly surprising that Emap have decided not to take legal action.
Why this matters:
One can well understand why Emap are so concerned to protect the patch that they have so successfully claimed as their own since the re-launch of the new style Heat. If litigation, or at least the threat of legal action, is to be resorted to, however, there has to be a greater level of overall similarity between the two publications than there is here for there to be any prospect that such a threat will be taken seriously.
