In early February, a court in the United Kingdom held that the title of the television show “Glee” infringed and tarnished the trademark of a local music and comedy club. The plaintiff, Comic Enterprises, is a small U.K. company that for around 20 years has run a string of music and comedy clubs called “The Glee Club.” “Glee” is a T.V. show about high school students who are members of a glee club “Glee” has been on the air since 2010 and is set to enter its final season.
In 2011, Comic Enterprises sued 20th Century Fox, the producer and distributor of “Glee,” in the United Kingdom for infringement and tarnishment of its “Glee Club” trademark. On February 7, 2016, the U.K. court held in the plaintiff’s favor on liability, although it reserved judgment on damages. Those who are familiar with United States trademark law might find the decision odd. Since “glee club” is simply a descriptive term for clubs that sing music with choreography, it is even questionable whether Comic Enterprises has a protectable trademark under U.S. law. Additionally, while both marks are used in the context of entertainment, they are for different services, a live performance venue and a television show.
For content producers and the lawyers who advise them, this decision is particularly vexing, but it contains an important lesson. If a film or television show is intended to reach a global market, production counsel must clear the title in every jurisdiction the production may be exhibited, and conduct a trademark search that includes all potentially related goods or services.