In Dearlove v Combs, decided by the English High Court on 28 February 2007, Kitchin J had to consider whether a defendant’s online activities were targeted at the United Kingdom. The case is a useful illustration of the factors that an English court is likely to take into account when considering targeting in a trade mark or passing off case.
The claimant, an English record producer and re-mixer, successfully applied for summary judgment for breach of a settlement agreement compromising English passing off litigation. In the agreement the defendant, a well known hip-hop artist, had undertaken not to advertise, offer or provide certain goods and services within the United Kingdom under or with reference to the word ‘Diddy’. Kitchin J had to decide whether a website (www.badboyonline.com) and certain web pages on YouTube and MySpace were directed at UK users.
The judge first determined that the MySpace and YouTube web-pages and www.badboyonline.com website did advertise and promote goods, namely recordings (including the new Press Play album), under and by reference to the name "Diddy". They also promoted Mr Combs's 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".
The judge went on to conclude that the web-pages and website were directed at UK users. He cited the following circumstances as material.
Mr Combs is an international celebrity and his new album "Press Play" was sold in the UK.
He was shortly to visit the UK in the course of his current tour and perform at a series of shows in UK cities. These shows would no doubt promote and support the sales of his new album. Accordingly, it was quite clear that Mr Combs did have a substantial continuing business in the UK.
Importantly, evidence on Mr Combs’ behalf stated that "maintaining a page on MySpace and YouTube websites is a valuable promotional and marketing tool of many current artists" and confirmed that the web-pages concerning Mr Combs on MySpace and YouTube and his www.diddy.com website were the "primary means" by which Mr Combs's "Press Play" album was "advertised and promoted". Such evidence also stated that the maintenance of Mr Combs's web-pages on MySpace and YouTube was a "key piece" of his global marketing campaign and that the websites were marketing tools used "internationally" to "promote the Defendant and his professional services and goods". It was therefore clearly intended they should be accessed by users outside the US.
This evidence was confirmed and supported by the fact that all three sites referred to UK visitors and the MySpace web-pages specifically promoted the forthcoming UK shows. The MySpace and YouTube web-pages did invite the UK users to click on an icon. But 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. 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 website 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.
The judge concluded that there was a breach of the settlement agreement and granted summary judgment. In reaching his findings, the judge said:
“The fundamental question is 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. All material circumstances must be considered and these will include the nature of the goods or services, the appearance of the website, whether it is possible to buy goods or services from the website, whether or not the advertiser has in fact sold goods or services in the UK through the website or otherwise, and any other evidence of the advertiser's intention.”
This approach generally follows that of previous English cases such as Euromarkets v Peters and 1-800 FLOWERS, although there may be a difference as regards whether the conduct under consideration should be regarded from the point of view of the reasonable trader or that of the average consumer.
Although Kitchin J did not elaborate on whether the advertiser’s intention was to be regarded subjectively or objectively, the fact that he proceeded to grant summary judgment suggests that he had in mind an approach based on objectively ascertainable conduct. This is reinforced by his further comments:
“I invited counsel to consider whether disclosure, further evidence or even cross-examination might assist a trial judge to decide whether or not the MySpace and YouTube web-pages and the www.badboyonline.com website constituted an advertisement of goods or services within the UK. Their submissions confirm my own view that it is most unlikely that anything useful will emerge before or at a full trial. This is a matter which I am as well placed as a trial judge to decide.”