The ongoing saga between Richard Dearlove, a UK record producer, remixer and recording artist, and Sean Combs, the internationally famous record producer known to many formerly as ‘Puff Daddy’ and more recently as ‘P.Diddy’, as to who has the right to use the name ‘Diddy’ in relation to the UK music sector continues unabated. Most recently, the High Court has been asked to consider the issue of whether use of the word ‘Diddy’ on Web pages (including YouTube and MySpace) and in the lyrics of songs on a CD sold in the UK amounted to a breach of the terms of a settlement agreement between the two parties (see Richard Dearlove (trading and professionally known as ‘Diddy’) -v- Sean Combs (trading and professionally known as ‘Sean ‘Puffy’ Combs’, ‘Puffy’ and ‘P Diddy’) [2007] EWHC 375 (Ch), 28 February 2007). The judgment of Mr Justice Kitchin provides useful insight into how the courts approach the issue of whether a Web site is directed at the
Mr Dearlove was a record producer, re-mixer and recording artist who claimed that he had been known as ‘Diddy’ professionally since the early 1990s and had enjoyed considerable commercial success in the
Keen to protect the goodwill in his professional name ‘Diddy’, Mr Dearlove commenced a passing off action on
For his part, Mr Combs, while admitting that he had announced in August 2005 that he was going to be known as ‘Diddy’ in relation to his musical activities, disputed that Mr Dearlove had any goodwill or reputation in the UK and asserted that he had used and been recognised as ‘Diddy’ since 1997. To substantiate this defence Mr Combs relied on evidence that he had called himself ‘Diddy’ in the lyrics of songs released in 2002. Regarding www.diddyonline.com, Mr Combs admitted the allegation that he had advertised his products and services on that Web site under the name ‘Diddy’ but disputed that the Web site was directed towards persons within the
In September 2006, before trial commenced, the parties settled the dispute under a Tomlin order (the ‘Settlement Agreement’), paragraph 1.1 of which provided that Mr Combs undertook not to advertise, offer or provide his goods or services under or with reference to the word ‘Diddy’ (nor to cause or procure any other party to do so). However, the Settlement Agreement specifically provided that the undertakings did not prevent Mr Combs from continuing to use his professional name ‘P.Diddy’.
Current Application
The settlement proved to be short-lived as, soon after the Settlement Agreement was entered into, Mr Dearlove raised complaints about the ‘piecemeal and ineffective’ way that Mr Combs had complied with its terms. Dissatisfied with Mr Combs’ response to his concerns, Mr Dearlove brought an application for summary judgment alleging breach of paragraph 1.1 of the Settlement Agreement in relation to the two following categories of complaints:
1. The use by Mr Combs of the name ‘Diddy’ in connection with web-presences at the web domains MySpace and YouTube and at the Web site, www.badboyonline.com (the ‘Web sites’); and
2. References to Mr Combs as ‘Diddy’ on six tracks contained on an album called ‘Press Play’ which was released in the UK and in the US in October 2006.
Decision
The application for summary judgment was heard by Mr Justice Kitchin, who concluded that, in relation to the first complaint, the contents of the Web sites did constitute the advertisement within the UK of Mr Combs’ recordings and services under the name ‘Diddy’, although he was unable to determine at this application whether they were under his control – this particular issue would have to be determined at trial. In relation to the second complaint, the judge found that the lyrics of only one out of the six songs on the Press Play album released in the UK (a song entitled ‘The Future’) constituted the advertisement within the UK of goods and services under the word ‘Diddy’.
The issues considered by Mr Justice Kitchin in coming to his decision are set out below.
Were the Web sites directed at
In answering this question, Mr Justice Kitchin considered the decisions of both the High Court and Court of Appeal in 800-FLOWERS Trade Mark (see [2000] FSR 697 and [2001] EWCA Civ 721 respectively) and the High Court in Euromarket Designs Inc v Peters and Crate & Barrel Ltd [200o] EWHC 453 (Ch) and found that it was clear from these authorities that placing a mark on the Internet from a location outside the UK can constitute use of that mark in the UK. The fundamental question was whether or not the average consumer of the goods or services in issue within the UK would regard the advertisement and site as being aimed and directed at him. To answer this question, the judge elaborated, it was necessary to consider all material circumstances such as the nature of the goods or services, the appearance of the Web site, whether it is possible to buy goods or services from the Web site, and whether or not the advertiser has in fact sold goods or services in the UK through the Web site or otherwise.
On the issue of whether Mr Combs’ use of the word ‘Diddy’ on the Web sites constituted a breach of paragraph 1.1 of the Settlement Agreement, Mr Justice Kitchin considered that there were two relevant issues:
1. Were these activities prohibited by paragraph 1.1 of the Settlement Agreement?
Mr Justice Kitchen held it was ‘plain’ that the MySpace and YouTube web-pages and www.badboyonline.com Web site did advertise and promote goods, namely recordings and, in particular, the ‘Press Play’ album, under and by reference to the name ‘Diddy’. They also promoted Mr Combs’ activities as a recording artist and performer under and by reference to the same name. In the case of MySpace, the Web pages also advertised his promotional tour, again under the name ‘Diddy’.
In reaching his conclusion that Mr Combs had no real prospect of proving at trial that the Web sites were not directed at
1) Mr Combs was an international celebrity and his new album ‘Press Play’ was sold in the UK.
2) It was quite clear that Mr Combs had a substantial continuing business in the UK: he was scheduled to tour the UK and perform at a series of shows at which he would ‘no doubt’ promote and support the sales of his new album.
3) It was clearly intended that the Web sites should be accessed by users outside the
4) All three sites referred to UK visitors and, in the case of MySpace, pages specifically promoted the forthcoming UK shows. While the MySpace and YouTube Web pages did invite the UK users to click on an icon, in the case of YouTube the icon was ineffective and in the case of MySpace it would only be seen by users on reviewing the whole page and there was much on the rest of the page that was apparently directed to them – most notably the UK shows. Similarly, the www.badboyonline.com Web site contained separate icons which US and UK residents were asked to press but the presentation of the site suggested that the general site was intended for both and that for further information the user should press the appropriate icon depending upon his country of residence.
2. Were these activities which Mr Combs had conducted or caused or procured others to conduct?
Mr Justice Kitchen stated clearly that he was ‘deeply sceptical’ of the witness evidence relied on by Mr Combs on this issue and expressed his view that he was very doubtful that Mr Combs did not have control over the use of the word ‘Diddy’ on the Web sites. Nevertheless, the judge did not, in all the circumstances, feel able to conclude that Mr Combs had no real prospect of success at trial on the issue of control and therefore declined to decide this issue summarily.
Did the Lyrics on the Press Play album breach the Settlement Agreement?
This aspect of Mr Dearlove’s complaint focused on six tracks on the Press Play album that he alleged contained references to Mr Combs as ‘Diddy’ and therefore constituted a breach of paragraph 1.1 of the Settlement Agreement. Mr Dearlove’s argument was advanced on the following three grounds:
· the undertakings prohibited the provision of goods under or by reference to the name ‘Diddy’ and the Press Play album contained references to that name;
· the whole point of the Settlement Agreement was to recognise that Mr Dearlove was ‘Diddy’ in the UK and to prohibit Mr Combs from ‘swamping and destroying’ Mr Dearlove’s goodwill; and
· references by Mr Combs to himself as ‘Diddy’ in song lyrics were a form of advertisement and self-promotion.
Mr Combs’ response was simply that the lyrics themselves could not be said to advertise goods or services in the UK under the name ‘Diddy’ or, indeed, at all.
Of the six tracks, Mr Justice Kitchin considered that only one track, entitled ‘The Future’, was in breach of the Settlement Agreement. The relevant references to Mr Combs as ‘Diddy’ were contained in the following lines of the second verse of the song:
o …mainline this new Diddy heroin…
o …iTunes, download me in every resident…
o …My CD’s in 3-D, holograms…
o …The live show’s a hard act to follow man…
The judge found that the effect of these lyrics was that ‘The listener will understand he is being encouraged to buy the ‘Press Play’ CD, to download the songs and that the live show is an event well worth attending.’ and therefore constituted straightforward advertisement by Mr Combs of his CD, his songs that could be downloaded from iTunes and his live shows, all under and by reference to the word ‘Diddy’.
However, in relation to the references to ‘Diddy’ in the other five tracks, Mr Justice Kitchin did not consider them to be advertising goods or services in the
Commentary
In light of the increasing popularity of Web sites such as MySpace and YouTube, not only for members of the public to share their own user generated content but also for major artists to advertise and promote their goods and services, the approach set out by Mr Justice Kitchin to establish whether such ‘global’ Web sites are being directed at consumers in the UK will no doubt be of use to UK claimants in future actions for trade mark infringement and/or passing off in the digital realm.
Nick Mathys is an Associate in the Intellectual Property Group of Baker & McKenzie LLP,
