Disappearance of goodwill in 'Mythbusters' term means no passing off

In Knight v Beyond Properties Pty Ltd ([2007] EWHC 1251 (Ch), May 24 2007), the High Court of England and Wales has issued a ruling on a passing off case involving use of the term 'Mythbusters'. The court held that as the claimant had not engaged in any significant use of the term since 1996, any rights he had in the term had been lost by November 2003, which was the date of first use of the term in the United Kingdom by the defendants.

The claimant, an individual named Knight who is a British citizen living in Australia, published three books in the United Kingdom between 1991 and 1996; each had the word 'Mythbusters' in its title. After the first book was published he promoted his books and related activities under the name Mythbusters in different parts of the world, principally Australia, Southeast Asia and the United Kingdom. However, he had not engaged in any significant promotion in the United Kingdom since 1996.

The defendant Beyond Properties Pty Ltd is made up of a group of three companies, the first two being Australian and the third English. All are engaged in the production and distribution of television programmes and related IP rights. The fourth defendant is the Discovery Channel, which broadcasts programmes in the United Kingdom and elsewhere. In 2002 Beyond piloted a series of three programmes under the name Mythbusters, the first being transmitted in the United Kingdom in November 2003.

Knight sued for passing off and argued that, by reason of his use of the word 'Mythbusters', members of the relevant UK public had come to understand the name - when used for books and television programmes concerning the investigation of myths - to refer to his products exclusively. Beyond and Discovery disagreed: they said the word 'Mythbusters' was descriptive and could not, in the absence of special facts, generate goodwill for passing off purposes. In these proceedings the High Court had to decide whether, in November 2003, Knight had a reputation in the name Mythbusters which could reasonably be regarded as more than trivial in relation to books and television programmes concerning the investigation of myths.

The court dismissed Knight's claim, finding as follows:

• To succeed in an action for passing off, a claimant must establish the three basic elements of passing off: goodwill, misrepresentation and damage. In this context a word or other mark that is descriptive can be protected only if it can be shown to have become distinctive of the claimant's goods or services: this secondary meaning has to be real, not trivial.
  
  
• Despite its descriptive quality, 'Mythbusters' could be distinctive. Although it described the books in question, it was not a word which would be used in ordinary speech to describe a book, person or activity. Rather, it was adopted as a distinctive title for the series, used in a way which would readily lead to the series being associated in the public mind as the work of a particular author.
  
  
• The good news for Knight was that, on the evidence, he had indeed established a reputation in Mythbusters by 1993. Although this was on a very minor scale, it was still sufficient to attract protection. However, by November 2003, no more than a trivial reputation, if any, remained in the Mythbusters name and he had insufficient goodwill upon which to launch a passing off action.

The decision is of interest because there are plenty of cases which show that goodwill persists after a business stops trading. Under this line of reasoning, the goodwill is sustained in the mind of the relevant consumer and may be turned into a real business again at a later stage. Circumstances in which real goodwill has evaporated totally, as appears to have occurred in the case at hand, are unusual.

Jeremy Phillips, IP consultant, Olswang, London