Mirage Studios v Counter-Feat Clothing [1991] F.S.R. 145

• Claimant was a company set up to exploit marketing potential of ‘Teenage Mutant Ninja Turtles’.

• Defendant asked for licence to use Turtles on their clothing, but was refused. Defendant then got an artist to draw his own version of humanoid turtles which similar to Claimant’s, which were then used on Claimant’s clothing.

Held

• There is arguable case of passing off

• Misrepresentation

  • Substantial number of buying public believe that where a cartoon character has been reproduced, this is as result of a licence.

  • Thus there is a misrepresentation by Defendant.

    • I.e. as substantial number of public will believe there is some connection between Defendant and Claimant.

• Damage

  • Damage to Claimant is loss of chance to obtain royalties.

  • Such loss of royalties may result from:

    1. Fall in market value of licence (as Defendant’s use of character makes character less exclusive)

    2. Loss of money caused by Defendant’s failure to take a licence

       • I.e. as goods that could have been made under licence from Claimant (by Defendant or someone else) are being made elsewhere