Knight v Beyond Properties Pty Ltd & Ors [2007] EWHC 1251 (Ch)

[2007] EWHC 1251 (Ch)Case No HC06C00084
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
Venue Royal Courts of Justice, Strand, London, WC2A 2LLDate 24/05/2007
Before
MR JUSTICE DAVID RICHARDS
Between
Andrew KnightClaimantBeyond Properties Pty LtdDefendantsBeyond Productions Pty LtdDefendantBeyond International Services LtdDefendantDiscovery Communications IncDefendant
Mark Platts-Mills QC and Benet Brandreth (instructed by Field Fisher Waterhouse) for ClaimantCharlotte May and James Whyte (instructed by DLA Piper) for DefendantsHearing Hearing dates: 30, 31 January, 1, 2, 5, 6, 7, 8, 9 February 2007
Judgment

Introduction

[1]This is an action for passing off, in which the claimant seeks damages and injunctive relief.[2]The claimant Andrew Knight is a British citizen who lives in Australia. Between 1991 and 1996 he published three books in the United Kingdom with the word Mythbusters in the titles. Since publication of the first book, he has sought to promote his books and related activities, under the name “Mythbusters”, in different parts of the world, principally the UK, Australia and South East Asia. In doing so, he has styled himself “Bowvayne” or “Bow”. It is accepted that there has been no significant activity in the UK since 1996.[3]The first to third defendants (collectively Beyond) are companies in the same group, which is based in Australia. The first and second defendants are Australian companies and the third defendant is an English company, and they are all engaged in the production and distribution of television programmes or in the ownership of related intellectual property rights. The fourth defendant (Discovery) operates the Discovery channel and broadcasts in the UK and elsewhere.[4]In 2002 Beyond made a pilot series of three programmes under the name Mythbusters. A second series of 13 episodes was made in 2003, followed by the third and fourth series comprising 26 episodes and 30 episodes respectively, which were made between January 2004 and November 2006. The first broadcast in the UK was in November 2003. They have been broadcast by Discovery and more recently by the BBC.[5]In addition to the present proceedings, Mr Knight has brought claims against the defendants in Australia. Following a trial before Buchanan J in the Federal Court of Australia, the claim was dismissed on February 2007: [2007] FCA 70. I was told that the claim in Singapore has been stayed, following a failure to comply with an order for security for costs. Each claim relates to passing off in the relevant jurisdiction, requiring the claimant to establish the existence of goodwill and misrepresentation in that jurisdiction. The essential issues on the facts, particularly as regards to goodwill, are not therefore the same in the English and Australian proceedings.[6]Mr Knight’s pleaded case is that by reason of the “substantial use” made by him of the word Mythbusters:
“members of the relevant UK public have come to understand the name “MYTHBUSTERS” when used in relation to books and television programmes concerning the investigation of myths to mean exclusively the business and goods of the Claimant. In the premises, the Claimant is the owner of a very substantial goodwill and extensive reputation in MYTHBUSTERS as applied to books and television programmes concerning the investigation of myths.”
The “relevant public” was defined as:
“The UK Public. In the alternative, those members of the UK public involved in the Television and Book Publishing trade in the UK.”
No separate case was made at trial for those engaged in book publishing, and in his closing speech Mr Platts-Mills QC for Mr Knight made clear that he was not pursuing a separate case of goodwill among those involved in the television business.[7]Apart from the name Mythbusters, Mr Knight’s books and television appearances and Beyond’s programmes are not strikingly similar. Mr Knight’s books are children’s books, aimed at an age range of about 8 to 12. They were marketed principally through primary schools. He always used the name Bowvayne in conjunction with Mythbusters in his books and other material: Bowvayne is the lead Mythbuster. His own description of the concept is set out in a letter dated 4 May 1993:
“The Mythbusters are a wacky team who travel the world looking for monsters, ghosts, UFOs, buried treasures and things that go bump in the night. They are in the grand English literary tradition of jolly children who have lots of scrapes and see extraordinary things. But the Mythbusters are real and they’re grown men who don’t have to be home in time for tea. And extraordinary things they have seen: A monster lurking in a British seaside resort, fantastically coloured UFOs in Czechoslovakia’s Carpathian mountains…and that’s just for starters.”
Mr Knight’s television appearances, none of which lasted more than a few minutes, involved him and others in locations such as woods or a seaside pier “investigating” some local legend or story, such as a dragon or a sea monster. They have an amateur feel and reflect a zany sense of humour.[8]Beyond’s programmes are primarily aimed at the “dads and lads” market, with lengthy items, investigating in an entertaining way subjects such as a jet-propelled car, mobile phones as a cause of petrol station fires, and whether a wallet made from electric eel skins could demagnetise credit cards. To the extent that Mr Knight’s books and Beyond’s programmes have a common theme, it is that suggested by the title: each investigates improbable events or stories, in an entertaining way.[9]There is no significant difference between the parties as to the applicable law. Both start with the three basic elements of passing off, goodwill, misrepresentation and damage, as set out in Reckitt & Colman v Borden [1990] 1 WLR 491 at 500 per Lord Oliver. Each of these elements is in dispute.[10]Before coming to the detail of the evidence on which Mr Knight relies to establish goodwill, there are two issues which I shall first address. The first is a submission by Miss May for the defendants that Mythbusters is a descriptive name which is, in the absence of special facts, incapable of generating goodwill for passing off purposes. The second is an allegation made by Mr Knight that Beyond knew of his concept and title before making their programmes and copied at least the title for their programmes.

Is Mythbusters descriptive?

[11]A mark which is prima facie descriptive will only be protected if it can be shown to have acquired a secondary meaning: that is to say, if it has become distinctive of the claimant (Wadlow: The Law of Passing Off, 3rd ed (2004) para 8-53).[12]Mr Platts-Mills submits that the word Mythbusters is distinctive and highly memorable, unashamedly similar to Ghostbusters, the name of a highly successful film. I agree that it is memorable and has the clear advantage of being a one-word title. Miss May submits that it is a descriptive word, clearly indicating the subject matter of the books or programmes.[13]The word Mythbusters is in one sense descriptive, in the sense that it tells the reader or viewer that the book or programme concerns people who investigate and disprove “myths”, whether ancient or modern. This was also the joint view of the experts. The combination of “bust”, “busting” or “buster” with another word, to describe the disproving or destruction of the latter, has become commonplace. Fifty years ago, the obvious example was the Dambusters, and there was also a successful US television series called Gangbusters in the early 1950’s. However, since the release of Ghostbusters in 1984, there has been a proliferation of these terms. Examples used in recent newspaper articles include jargon-buster, debt-buster, scambuster, gangbuster and, describing the Chairman of the Committee on Standards in Public Life, sleazebuster. An example from a pitch document prepared by Beyond in relation to the proposal for the programmes in issue is Legend Busters. In Hormel Foods Corp v Antilles Landscape Investments NV [2005] RPC 28, Richard Arnold QC (sitting as a deputy High Court judge) concluded, obiter, that spam buster when applied to a computer program for combating unsolicited commercial messages was prima facie descriptive for the purposes of registration of a trade mark. He found that “spam” had acquired a general meaning as referring to such messages and that buster had a general meaning as a person who beats, prevents or eliminates something.[14]Mr Knight believes that he invented the word Mythbusters. He probably did, in the sense that he had not heard of it before. However, it is clear from the evidence that it has been used by others in a wide variety of contexts, including some which pre-dated its use by Mr Knight, for example an article published in National Wildlife in 1985. Other examples include an NHS website, a mental health users group, a survey on the BBC Radio 1 website, the Sustainable Office Forum and a golf magazine. In my view, most people nowadays seeing Mythbusters applied to a book or television programme would assume that it concerned the investigation and disproving of myths. It accurately describes what the book or programme is setting out to do.[15]It does not however necessarily follow that Mythbusters as used by an author for a series of books is prima facie descriptive, such that goodwill cannot normally attach to it. There are some words which, although newly minted, are so obviously descriptive that goodwill could rarely attach to them. “Oven chips” is an example: McCain International Ltd v Country Fair Foods Ltd [1981] RPC 69. They are words which could easily pass into everyday ordinary speech. That is not, however, true of all descriptive words. In Phones 4u Ltd v Phone 4u.co.uk Internet Ltd [2006] RPC 583, the claimants owned and operated a nationwide chain of shops called Phones 4u, selling mobile phones, which had been well established on a wide scale for a considerable period before the defendants adopted the same name for a business selling mobile phones on-line. The Court of Appeal held that there was goodwill in the name as applied to the claimant’s business, notwithstanding its descriptive quality. Jacob LJ said at para 34:
“The Judge also thought the "descriptiveness" of the name affected the question of whether it had a goodwill. But the name is not descriptive in the sense that anyone would describe a business or shop selling mobile phones as a "Phones 4U" business or shop. It is that sort of name which tells you what the business is, but is also obviously intended to be an invented name to denote a particular business.”
[16]In my judgment the same approach is applicable in this case. While Mythbusters tells you about the books, it is not a word which would be used in ordinary speech to describe a book, a person or an activity, despite Mr Knight’s description of himself in one of his television appearances as a “fully qualified mythbuster”. Rather, it is 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. It is therefore in my view a title which in this context is capable of generating goodwill for the purposes of the law of passing off. This is in contrast to spambuster: quite apart from the different legal context of registration of a trademark, there was in the Hormel case evidence of the extensive general use of the word to describe a person or thing which combats spam. Miss May placed some reliance on the decision by the Court of Appeal in County Sound Plc v Ocean Sound Ltd [1991] FSR 367 that “The Gold AM” as the title of a radio programme playing old pop hits was descriptive and did not attract goodwill, but it was critical to the decision that it had been used for only six months and almost invariably with the prefix County Sound.

Beyond’s knowledge of Mr Knight’s Mythbusters

[17]The second preliminary issue is Mr Knight’s un-pleaded allegation that Beyond already knew of his concept and title before making their first programmes and had the title in mind, and in effect copied it, for their programmes. This is not an essential element of a passing off claim but, if established, it may strengthen a claimant’s case on both goodwill and misrepresentation.[18]This allegation first requires Mr Knight to establish that Beyond knew of his concept and title. He alleges that in late 1998 or January 1999 Bruce Harley sent material to Beyond which included a television production “bible” for Mr Knight’s Mythbusters and a copy of his third book. Mr Harley was a television scriptwriter based in Australia. He and Mr Knight had entered into a partnership agreement in November 1998 for, amongst other things, the development and exploitation of Mythbusters television scripts. Mr Knight also says that Mr Harley sent a video of their Mythbusters pilot and a promotional brochure to Beyond in mid-2000. Mr Harley died in March 2002.[19]There is no record of the second submission but there is in evidence a copy of a letter dated 29 January 1999 from Beyond to Mr Harley, which is headed “Re Mythbusters”. The letter is signed by Jo Telfer, on behalf of John Luscombe, who was head of production at Beyond. I heard evidence from Mr Luscombe and Miss Telfer.[20]The letter was in a standard form used in response to unsolicited approaches by writers and others with ideas for programmes. Beyond’s policy was not to consider any proposal or look at any material until the person sending it had signed a copy of the standard form letter, which set out the terms on which Beyond would consider material.[21]Beyond denies that it received any material from Mr Harley. It does so because it maintained records of material received and neither of Mr Harley’s alleged submissions appear in the records. Mr Knight relies on what Mr Harley told him and others at the time, and on the terms of Beyond’s letter, as establishing that material was sent. Read on its own, the letter is in terms which clearly suggest that Beyond has received material from Mr Harley. However, when read alongside a form of letter sent to an unconnected submitter of material in April 1999, it is not so clearly the case.[22]Having heard Mr Luscombe and Miss Telfer, I am satisfied that a system was operated for recording the receipt of material. I am also satisfied that there is no basis for suggesting that the record has been doctored to remove any reference to material sent in by Mr Harley. It remains possible that the records were not as efficiently kept as intended but I think it unlikely.[23]It is clear from the letter to Mr Harley that Beyond knew that Mythbusters was the proposal’s title, but I am satisfied that Beyond did not have Mr Knight’s title in mind when it chose the same title for its programmes. The title was chosen following a meeting in the United States on 31 May 2001 with executives from Discovery. Mr Luscombe presented a pitch document for the programme with a working title of “Tall Tales or True”. Mr Luscombe has produced in evidence the pitch document, which contains several references to the “Legend Busters”, a reference to the “myth busters” (lower case, appearing also in a slightly earlier draft on which Mr Luscombe was cross-examined) and also a reference to “The Myth Busters”.[24]Mr Luscombe’s evidence is that the relevant Discovery executive rejected “Tall Tales or True” as a title and that in discussion, she and Mr Luscombe picked out Legend Busters or Myth Busters as possible titles. By July 2001 Beyond had fixed on Mythbusters as the title and it appeared as such in all subsequent documents. I accept the evidence of Mr Luscombe, who was a credible witness. Moreover, if Mr Knight’s charge were well-founded, and assuming that Beyond had received his material in early 1999 and mid-2000, the programmes would originally have been pitched to Discovery under the Mythbusters title. Mr Platts-Mills put the allegation to Mr Luscombe in these terms:
“the truth is that you were well aware of my client's pitch, you had that name imprinted into your mind, you came across a project which was quite similar to my client's project and you decided that you would use that name on the new project. That is how the name came to be adopted by your company?”
That allegation is not supported by the evidence.[25]Mr Platts-Mills sought also to rely on the timing and results of title and business searches made by Beyond in mid-2002, and in particular on the reaction of an in-house lawyer to a search disclosing Mr Knight’s Australian company, that she did not think it would cause any concerns. It was suggested that this reflected Mr Luscombe’s view and that he had ordered the business search. I am satisfied by Mr Luscombe’s evidence that he did not order the search and knew nothing of its results. I accept that he would have become involved only if the in-house lawyers considered that there might be a problem.[26]Accordingly, I find Beyond did not have Mr Knight’s project or title in mind when developing its programmes and when it decided to give them the same title. Precisely the same issue was contested in the Australian proceedings on much the same evidence. Buchanan J came to the same conclusion.

Goodwill

[27]I turn now to the issue of goodwill. The parties are agreed that Mr Knight must establish the existence of goodwill in the UK in November 2003 in a business under the Mythbusters name in relation to books and television programmes concerning the investigation of myths. It is accepted by Mr Knight that at no time did he have a large reputation: Bowvayne and his Mythbusters were not household names. A reputation on a relatively small scale will still attract the protection of a claim in passing off, but at some point the reputation may exist among such a small group of people that it will not do so. The minimum size of goodwill required for this purpose is a matter of fact and degree. A claim in passing off cannot be sustained to protect goodwill which any reasonable person would consider to be trivial: Sutherland v V2 Music Ltd [2002] EMLR 568 at para 22 per Laddie J.[28]The first principal issue is therefore whether in November 2003 Mr Knight had a reputation which could reasonably be regarded as more than trivial in a business under the Mythbusters name. The parties were agreed that if he had not established such a reputation by 1996, nothing done after then would have established it. There were therefore two principal issues on this aspect of the case. First, Mr Knight must show that by 1996 he had established a sufficient reputation for the purposes of a passing off claim. Secondly, he must also show that it survived in November 2003 to an extent which was more than trivial. The greater the reputation originally established, the greater are the chances that a sufficient residual goodwill still existed in November 2003. The extent of any reputation by 1996 is therefore of some significance.[29]In view of the absence of activity in the UK after 1996, apart from some pitches to television producers, most of the evidence in the case has inevitably been directed to the existence and size of any goodwill established by Mr Knight’s activities in the UK in the period 1991 to 1996. The principal matters in issue relate to sales of Mr Knight’s books, a competition run in conjunction with promotion of the second book, fan mail and his television appearances. I will deal with each of these in turn.

Sales of Mythbuster books in the UK

[30]The centrepiece of Mr Knight’s case is the three books published in those years. His pleaded case, as contained in paragraph 1(a) of his Re-Re Amended Particulars of Claim dated 11 September 2006, is as follows:
“a. The Claimant has published three books under the name MYTHBUSTERS. i. The first, published in 1991, was entitled “Mythbusters: First Cases”
. Sales to date of the first book are approximately 40,000. The book was also made into an audio book. ii. The second, published in 1993, was entitled “Mythbusters: Nut Cases”. Sales to date of the second book are approximately 60,000. iii. The third book, published in 1996, was entitled “Mythbusters: Real-Life adventures in the world of the supernatural”. Sales to date of the third book are approximately 10,000 copies. The book was advertised in the Puffin Post magazine that was distributed to approximately 1 million children and 12,000 schools in the UK.” In his response to a request for further information, Mr Knight clarified that the pleaded figures for sales for the first two books of 40,000 and 60,000 were worldwide sales and that the sales in the UK were approximately 10,000 for the first book and 16,000 to 25,000 for the second book. The UK sales for the third book was the pleaded figure of 10,000. The parties agree that only the UK sales are relevant to the present claim.[31]Except as regards the third book, for which Penguin Books produced records of sales at the start of the trial, there is a dearth of documentary evidence as regards sales. Penguin’s records establish that out of a total print-run of 9,000 copies, there were 2,102 retail sales in the UK and 1,707 copies were remaindered in November 1997. There are no figures for retail sales of the remaindered copies.[32]Mr Knight’s case of 10,000 sales of his third book is not therefore made out. His case for sales of the first and second books is based on his own recollection and on inferences drawn from other facts, such as print runs. Assertions by Mr Knight of sales figures have in my judgment to be treated with great caution. Mr Knight has regularly over the years exaggerated sales figures and I did not regard him as an entirely reliable or credible witness.[33]There are numerous examples of Mr Knight’s exaggerations. In a pitch document sent to LWT Productions in 1994, he wrote that the Mythbusters concept:
“takes its case from the international success of Bowvayne’s non-fiction Mythbusters books: nearly 200,000 so far and sales still escalating.”
The same figure for sales was used in other promotional material at the same time. There have never been sales of 200,000 and, even on Mr Knight’s case, a total of 45,000 copies of the first and second books had been printed by 1994. In 1997, Mr Knight was working with Jim Adolph of Video Artworks, an Australian television production company, on preparing a pitch for television programmes. Mr Adolph requested sales figures for the books. Mr. Knight replied with figures of approximately 100,000 copies for the first book and 250,000 copies for the second book, adding in each case that “papers stating exact figures could be faxed from UK”. On Mr Knight’s case, total print runs of the books, including reprints which he says occurred in 1996, were 40,000 for the first book and 65,000 for the second book. In a pitch to an Australian production company in 2002, Mr Knight stated that by 1998 sales of his books had reached over one million copies.[34]Mr Knight sought in evidence to explain away all these figures as marketing hype, which is not taken seriously by people in the entertainment industry who receive these pitches. If that is right, one wonders why any figures are included. Ian Llande, the managing director of a film and video production company, assisted Mr Knight in the promotion of his Mythbusters concept to television companies in 1994 and used the figure of 200,000 sales. Called as a witness by Mr Knight, he agreed in cross-examination that it was being presented as the truth, not as marketing hype. Even if some exaggeration is expected, a figure of 1 million sales was not so much exaggeration as fantasy.[35]Some measure of the unreliability of figures put forward by Mr. Knight can be seen from the following evidence, referring to the letter to Mr Adolph:
“Q. So as at November 1997, you had papers documenting exact sales figures of your First Cases book in the UK, according to this document.”
A. Well, the first thing is I remember this only too vividly. I should not have had that last glass of wine before I wrote this note. Those figures are wildly out. What it shows to me is I have absolutely no idea what I have sold because if I had requested exact sales figures from my agent, that would have been corrected immediately. Clearly they are not the truth – like the true figures, clearly. But I am offering to find the figures out. That is what comes across to me there. Q. So, why is it, Mr Knight, that you have not found the figures out for the purposes of this trial? A. Because we were not able to find figures. It is as simple as that. Q. Well, you clearly had something in mind that you could access in the UK which could be faxed through to Mr Adolph to prove to him that you had sold 100,000 copies of your first cases in November 1997. A. Yes. Q. What document was it that you had in mind that would prove that figure at that point? A. I do not recall. But my most likely explanation is that I would have checked with my agent and asked for her recollections. Q. So your evidence is that your agent would have always known what your book sales were at any point in time. Is that right? A. On reflection, she did not have much to do with those two books and that was probably an unfair thing to say. I am not quite sure what you are asking me because I do not know what paper I am referring to now.”[36]Mr Knight did not confine these inflated figures to pitches to television producers. In 2004 Mr Knight engaged an Australian businessman, Andrew Graham, to raise capital for a Mythbusters television project. Mr Graham prepared and distributed to potential investors an investor package containing information about the project, with a view to encouraging their interest and participation. On the basis of information provided by Mr Knight, the first paragraph of the document entitled Business Concept Information stated that the three Mythbuster books had sold over 1 million copies in the UK, Australia and South East Asia. Whatever may or may not be standard practice in pitches to television companies, investment documents are expected to be accurate, as Mr Graham confirmed. In his oral evidence, Mr Knight agreed that exaggeration of this sort in an investment context was not acceptable. In the same paragraph of the document, it was stated that in the mid-1990’s Mr Knight and the Mythbusters were “resident investigators of the unexplained on the United Kingdom’s Channel 4 programme “The Big Breakfast” which had 11 million viewers daily”. This too was untrue. Mr Knight had appeared only twice on the programme, in 1993 and 1996; in no sense could he be described as a “resident investigator”.[37]In circumstances where Mr Knight has no contemporary records to assist him, I cannot accept as reliable his assertions in these proceedings as to the volume of sales of his books. The instances given above show that he is prepared to be untruthful to a significant extent on significant occasions and, while that would not mean that he was willing to give deliberately false evidence in court, I did not find him to be an entirely credible witness. One example related to his evidence concerning fan mail received by him in the mid-1990’s.[38]His written evidence was that he received around 15,000 fan letters from around the world, of which a significant proportion came from fans in the UK. In cross-examination, he said that he did not count them but his recollection was of about 15,000 letters. Speculating, he thought they came in over a 4-5 year period from 1992/93 to perhaps 1998. He mentioned for the first time that he had maintained an extensive handwritten list of names but he could not now find it. There were then the following exchanges between Mr Knight and myself:
“Q: I still do not know why you think 15,000; it might have been 10,000. A. It could have been. Q: It could have been 20,000. Why15,000? A. I really do not know – Q: At one point you had a handwritten list of the people who had written? A. We tried to keep tabs on it, as you say, for a future database and there were vast pages, we would add the new names to the list and there were -- a number beside each one and I remember it being about 15,000. It was an enormous number. Q: I see, so you kept that database throughout the time that you were receiving these fan letters. A. Yes, we did. It would have been one of those documents I would dearly like to have found. At least a large part of the database was in my former partner's handwriting. I recall that. But other than that – and then subsequently, I added names as well but for some reason, the figure 15,000 sticks in my mind but, as you say -- Q: Did you start writing it in when you and your partner broke up? A. Yes, I did. I am trying to think when we broke up, we broke up in 1995. Q: Where did you keep this list? A. This list for the most part was when we lived together in the United Kingdom. This was the "Elizabeth" referred to. But after that, I think I continued to keep the list. But apart from it being in my head, I do not know. 15,000 just sounded the right figure.”
Q: It could have been 20,000. Why15,000? A. I really do not know – Q: At one point you had a handwritten list of the people who had written? Q: Did you start writing it in when you and your partner broke up?

Q: Where did you keep this list?

[39]I find it incredible that, if there had been a list of fan mail with a number by each name which Mr Knight could recall as reaching 15,000, he would not have mentioned it in his witness statement and would not have immediately mentioned it in cross-examination as his reason for thinking he received 15,000 letters instead of saying that he just had a recollection of 15,000 letters.[40]I turn now to consider each of the books in turn. The pleaded case is that approximately 10,000 copies of the first book were sold in the UK, broken down as follows: “several thousand” copies were sold through personal visits by Mr Knight to schools, about 1,000 copies in shops as a result of distribution by Vine House Distribution (Vine House) and about 4,500 in schools by School Book Fairs (SBF). The defendants submit that Mr Knight has failed to prove any sales of the book, and question whether it was ever offered for sale in the UK.[41]I am satisfied on the documentary evidence dating from 1991 that 20,000 copies were printed in Singapore by Grenadier Press, of which 10,000 copies were shipped to the UK in that year. There is however little evidence to establish what then became of them. They are likely to have been stored in the garage of a house occupied by Mr Knight and perhaps also at properties occupied by Ian Digweed and Phil Young, both friends of Mr Knight.[42]According to Mr Knight, he promoted the book through personal visits to schools starting in, perhaps, April 1992. He says that from about May 1992 he ran a special offer of the book at a reduced rate with all profits going to an appeal by St Thomas’ Hospital for premature baby incubators. In a letter dated 14 October 1993 Mr Knight wrote, referring to the first book, that “Copies of this edition that exist in Britain have been donated to the charity, Tommy’s Appeal”. Mr Knight rejected in evidence the suggestion, justified by the language he used, that all copies in Britain had been donated to the appeal. As regards promotion by Mr Knight personally through school visits, his evidence is that once the second book was launched, he promoted both books simultaneously. I will look at the issue of sales in this way for both books when I deal with the second book.[43]The only documentary evidence to support sales through Vine House is an agreement dated 12 October 1992. It does not expressly relate to the first book but is a general distribution agreement. Clause 4 provides for the provision to Mr Knight of monthly sales figures but he said in cross-examination that he never received any. His evidence is that his intention was for copies of the first book to be in shops around the time of his promotional tour in 1993, which in fact took place in July 1993, and that while Vine House did not distribute the first book as effectively as he had hoped, around 1,000 copies were sold through them. Mr Knight gave no basis in his witness statement for the figure of 1,000 sales but in cross-examination he gave the following explanation for the first time. He said that he went to see Richard Squibb, the owner of Vine House, at his home:
“because we did not see any evidence of [the book] in the shops, because we wanted them in the bookstores because we had paid a considerable amount of money to publicise them and; as well as covering the schools, we wanted to have bookshops and I was not seeing much evidence of sales or them being supplied into the stores.”
In response, Mr Squibb told him that about a thousand copies had been sold. I find this an inadequate basis on which to make any finding that copies of the book were sold as a result of distribution by Vine House. No attempt was made to obtain evidence from Mr Squibb.[44]As regards sales by SBF, Mr Knight’s written evidence is that SBF placed an order for 4,500 copies of the first book around the beginning of 1993, which he and a friend, Matt Deal, delivered to SBF’s warehouse in Christchurch, Dorset. None was returned and he believes that they continued to promote them until they sold out. Mr Deal gave evidence that he remembers hiring a van to transport a pallet’s worth of books from the garage at Mr Knight’s house to SBF’s warehouse.[45]There is no documentary evidence to support this order. Mr Knight’s solicitors ascertained that SBF has since been sold and that its records from this period do not survive. The individual at SBF who dealt with Mr Knight was Sue McCabe but there is no evidence from her. However, in addition to Mr Deal’s evidence, there is some further support for Mr Knight’s case. First, the SBF brochure for autumn 2003 featured a picture of the first book as well as the second book, although the attached order form refers to only one book. Secondly, the additional fact that SBF placed a firm order for 15,000 copies of the second book is at least consistent with SBF having marketed the first book, with some level of success.[46]On balance I accept Mr Knight’s case that SBF ordered 4,500 copies of the first book and sold at least a substantial proportion of them. SBF sold books through visits to school and it was by all accounts an effective marketing and selling organisation.[47]The second book was launched in the autumn of 2003. There is in evidence an estimate dated 10 March 1993 from printers in England for 25,000 copies of the book; it erroneously refers to the title of the first book. Mr Knight’s evidence is that he then placed an order for that number because SBF ordered 15,000 and he wanted more so as to be able to sell some himself. I accept that 25,000 copies were ordered and printed.[48]Mr Knight alleges that 16-25,000 copies were sold, of which SBF’s order accounts for 15,000. He assumes that SBF sold all its copies because none was returned to him and he never heard that any had been pulped. He says in his written evidence that the book sold so well in schools that SBF made it the “book of the term” (i.e. its bestselling book) for the 1993 autumn term. However, I am satisfied on the evidence of Miss Gritten that “book of the term” was a marketing tool and that if chosen, a book would be promoted in SBF’s publicity material in that way. Mr Knight’s book was not promoted as book of the term in the SBF brochure for the 1993 autumn term and I find that the book was not chosen to be book of the term.[49]It is difficult to determine the number of books sold by SBF. They would not have ordered 15,000 if they thought there was no prospect of selling that number. However, Penguin’s experience with the third book shows that sales do not necessarily match expectations. They did not re-order any copies, which they would have done if their stocks were running low while it was still being marketed. As it was a firm order for the 15,000 copies, unsold copies would not have been returned to Mr Knight. Unsold copies might have been remaindered or might have been pulped: there is no evidence to say which.[50]Some indirect assistance might be gained from the number of entries for the competition which SBF ran as part of the promotion of the book, although of course a competition entry would not necessarily mean a sale of the book. Mr Knight was able to produce 150 entries, of which 35 came from one school and 29 from one class, which suggests that some teachers may have organised competition entries as a class exercise. Mr Knight’s written evidence is that there were around 10,000 entries. The same number was given by Mr Digweed who added that Mr Knight was responsible for choosing the winners and received all the entries in a big sack. He recalled helping Mr Knight go through the entries. In his oral evidence, Mr Knight expanded on this. It was, he said, extraordinary. He got 10,000 responses, so many that he had to clear out the cupboard under the stairs and store the entries there. Then:
“We had to wade through them all and pick winners out of the competition winners. You are asking me to remember certain things. Some things stick in my mind and that is one that does. We were amazed. It was really exciting actually.”
When asked why he had not got all 10,000 entries, he replied:
“It was just not practical. There was an enormous amount. When you went through them, there were all sorts of things. Some of them did not fill in their name, some were just… I mean obviously you do not keep that amount of fan mail. We actually – the ones that were spoiled or whatever, they forgot to put their name on, we threw out. We needed to weed some out and the rest, you cannot keep that amount over the years.”
He could not recall how long it had taken him to read all 10,000 entries. He had the help of Mr Deal and Mr Digweed, and “it was definitely 10,000 letters and we took a period of days”.[51]Mr Deal gave no significant evidence on the volume of competition entries, but, as I have mentioned, Mr Digweed’s written evidence was that they received about 10,000 entries. This evidence changed in cross-examination. Initially he said that the entries came “in vast amounts over a period of time” and that it took a good week or two to go through them. However, when asked how he knew that there were about 10,000 entries he replied that SBF had told Mr Knight that they had received 10,000 entries and had forwarded a proportion, of which he himself saw about 1,500 to 2,000. Once read, he thinks some of them may have been stored in a box in a spare room but he was not sure.[52]I find the evidence on the competition very unsatisfactory and I consider that the evidence of 10,000 entries represents an exaggerated figure on Mr Knight’s part. I am prepared to accept that there were more entries than Mr Knight has retained, but I see no proper basis for measuring the number of entries in thousands rather than hundreds.[53]Returning to the issue of sales through SBF, there is no firm basis for finding a particular number. It is likely, I think, to have been significantly less than 15,000, because of the absence of any interest by SBF in placing a further order. On the other hand, the marketing of a book in schools by SBF is likely to have achieved a reasonable number of sales. I find that several thousand copies were sold by SBF.[54]If the evidence is vague in relation to sales by SBF, it is a good deal worse as regards sales of the first two books by Mr Knight through school visits. Mr Knight’s written evidence is that between April 1992 and the end of 1993 he visited over 100 schools in England giving talks to assemblies and doing book signings. He did this with Mr Digweed and Mr Deal. They would not themselves sell the books, but would leave books and order forms with teachers and return a week or two later to collect any monies and unsold books. It became easier to arrange school visits once SBF was promoting his books. Mr Knight has produced a list on a single page of schools in Kent visited in October and November 1993, which, he says, formed part of a much larger list produced by his agent at the time, Annie Stanage.[55]Mr Knight’s case is that about 4,500 copies of the first book and between 1,000 and 10,000 copies of the second book were sold through school visits. There is no evidence, beyond Mr Knight’s recollection, to support these figures. As Miss May pointed out, sales of 4,500 copies of the first book and 10,000 copies of the second book on about 100 school visits would mean average sales of about 150 copies per visit. There is no suggestion that sales ran at that level. The total print-run for the second book was 25,000 copies which, after supplying SBF, left Mr Knight with 10,000 copies. As was made clear in opening, Mr Knight used that stock for sales abroad as well as sales in the UK.[56]I accept that some copies were sold as a result of Mr Knight’s school visits, but I see no reason to put the number of sales of the second book at more than the low end of Mr Knight’s range, i.e. 1000 copies. Nor is there any reason to suppose that sales of the first book did better. I find therefore that sales of about 1,000 copies of each book were made through school visits.[57]Fortunately, thanks to the records produced by Penguin Books, it is possible to be accurate with the third book. Mr Knight’s pleaded case of 10,000 sales is well wide of the mark. In fact, as I have mentioned, just over 2,100 copies were sold in shops and about 1,770 were remaindered following a decision taken by Penguin at the end of 1997. There is no evidence as to the number of remaindered books which were sold nor any substantial basis on which to infer even an approximate figure. Mr Friedman, the expert called by Mr Knight, said that remainder shops are “very good at getting rid of everything they have got, even if they do it at a loss.” I do not regard that as a sufficient basis for a finding that all the remaindered copies of the third book were sold.[58]Overall, therefore, I find that the sales of the first book were of the order of 5,000, sales of the second book were of the order of 10,000 copies and that 2,100 copies of the third book were sold, with perhaps some of the remaindered copies.

Press and radio interviews

[59]Awareness of Bowvayne and the Mythbusters would have extended beyond the purchasers of the books. The school visits and SBF’s promotion will have contributed to this. Mr Knight gave a number of radio and newspaper interviews during a two week period in July 1993 when he travelled round the country in what was called the Mythtour. Mr Knight has been able to produce copies of four articles in regional newspapers. A press release and copies of the first book were sent to media organisations. There is a list of 300 media organisations prepared by a PR firm hired by Mr Knight, with dates and times of interviews, but it is a draft list. The details are vague, but I accept that Mr Knight undertook the tour and gave a fair number of press and radio interviews. The tour does not appear to have assisted greatly with sales. In a letter dated 1 December 1993, a director of the PR firm wrote:
“Right at our earliest meeting I explained that the only area I had no control of was sales and distribution. It is this part of the equation that has sadly failed you.”

Fan mail

[60]Mr Knight relies on fan mail as evidence of his following among his target audience. I have already referred to his evidence on this and rejected his explanation for the suggested figure of 15,000 letters. I should also mention Mr Digweed’s evidence.[61]An address for fans to write to appeared for the first time in the second book, in autumn 1993. In September 1994 Mr Knight moved back to Australia. There was no explanation as how fan mail sent to him after the move reached him or was dealt with, until Mr Digweed gave his oral evidence. Mr Digweed stated in his written evidence that that he personally responded to fans’ letters and requests at a time when they were receiving 60 to 100 letters a week, and in his oral evidence, he said that this lasted for 3 ½ years from early 1993 to late 1996. He said that when Mr Knight returned to Australia in September 1994 the fan mail came to him and he replied to it, funding the postage and other costs for replies to 60 to 100 letters per week out of his own money. Moreover, he added that he too kept a list of the fan letters once he took over dealing with them, but he no longer had it. I am unconvinced by this late and rather improbable evidence and I reject his evidence that he saw about 10,000 fan letters.[62]I reject Mr Knight’s case that he received about 15,000 fan letters. I accept that he received some fan mail but not at a level which would add materially to any reputation which he gained from the sale of his books.

Television appearances

[63]Finally, Mr Knight relies on his television appearances as one of the means by which his reputation was established. There was a total of six broadcasts, but no real reliance was placed on the first, in 1988, which was too early to have any relevant impact. The remaining five were in 1991 (on TVS’s Coast to Coast), 1992 (Coast to Coast), 1993 (The Big Breakfast and BBC South West Today) and 1996 (The Big Breakfast). The appearances on the BBC South West Today and on Big Breakfast in 1993 were not in evidence. I saw videos of the rest. They are all jokey pieces, with a zany sense of humour and an amateur appearance. The 1991 piece lasts 1 minute 44 seconds, in which Mr Knight appears for 51 seconds and speaks for 11 seconds. The word Mythbusters is mentioned once and there are no references to any books. It was filmed in St Leonards Forest and concerned the search for a dragon. TVS rejected Mr Knight’s suggestion for a regular slot on Coast to Coast. The 1992 piece was filmed at Worthing Pier and featured a lead actor from the Australian TV soap Home & Away, looking for a marine monster spotted by a small boy. Mr Knight was on screen for 24 seconds and spoke for 8 seconds. There was one mention of Mythbusters and one reference to a book. On the first Big Breakfast appearance, Mr Knight states that he and Mr Digweed were interviewed by the presenter Chris Evans, showing him their equipment and a photograph of a sea serpent. The second Big Breakfast piece, in 1996, is a series of short appearances in Clapham Wood, Sussex which together last 8 ½ minutes, in which Mr Knight appears for 3 minutes 18 seconds and speaks for 2 minutes 22 seconds. There are three mentions of Mythbusters and no reference to any book.

Conclusions on goodwill in 1996

[64]In my judgment the overall impact of these few, short television appearances spread over five years is likely to have been minimal. Children who had bought a book or seen Mr Knight at school or written a competition entry, and who happened to see one of the programmes might well make the connection but otherwise in terms of creating a reputation for Mr Knight in relation to Mythbusters they were, in my view, likely to have been insignificant.[65]Leaving aside Mr Knight’s unsuccessful attempts to pitch his concept to television producers, this is the totality of his activities in the UK. The best period for him was 1993, when SBF was promoting his first two books and he was able to make some sales himself through schools. That such reputation as may then have been established was not obviously strong or enduring is demonstrated by the disappointing performance of his third book, despite its publication by a leading children’s imprint.[66]I conclude that Mr Knight has shown that by the end of 1993 he had established a reputation in connection with the use of the word Mythbusters to describe the investigation of myths for a children’s audience of primary school age, on a very minor scale but sufficient to attract protection under the law of passing off. The reputation had significantly diminished by 1996, as evidenced by the sales of the third book. The low sales are the more striking because Puffin is a leading children’s imprint. The book was promoted in the spring 1996 edition of Puffin Post Magazine which, according to Mr Knight’s account of what he was told by Puffin, was distributed to approximately one million children and 12,000 schools in the UK. It was also included in a Puffin bulletin sent to libraries throughout the UK. Despite the low sales, I consider that there remained in 1996 a reputation which, although very small, was sufficient for passing off purposes.[67]An issue which might have had some bearing on reputation in 1996 was whether the first and second books were reprinted in Singapore in that year. The defendants challenged Mr Knight’s case that there was a re-print at all. As on so many matters, the evidence was unsatisfactory and in my judgment Mr Knight fails to establish that the re-prints occurred. However, I need not spend time on it because it was accepted for Mr Knight that the number, if any, sent to the UK was not large. There is no evidence of any sales of any imported re-prints and I find that, even if there were any sales, they had no effect as regards the reputation of Mythbusters. I do not regard this issue as having a significant bearing on the volumes of sales of books one and two in the UK. The re-prints, if they occurred, were for the purposes of sales in South East Asia and Australia, not for meeting a market need in the UK.

Goodwill in November 2003

[68]The important issue is whether any reputation still existed in November 2003. Mr Platts-Mills submitted, correctly, that this involves the interplay of a number of factors: the extent of the original reputation, continuing promotion and other activities, the nature of the goods and the nature of the mark. I have addressed already the first of these factors and found that by 1996 Mr Knight had a very small reputation but one which was just sufficient for passing off purposes.[69]As to promotion and activities after 1996, the only features were as follows. The decision to remainder the third book was taken in November 1997 and some 1770 copies were remaindered. It is not known whether any and, if so, how many were in fact sold, although presumably some were sold. The books remained available in some public libraries. There are estimates of borrowing figures from 1995/1996 to 2005/2006 in evidence. Not surprisingly, the peak for the third book was in the year after publication when it reached nearly 1200. By 1999/2000 it was down to 227, with 252 and 185 in each of the next two years. The numbers reduced to 74 in 2002/2003 and only 37 in 2003/2004. The total number of borrowings for all three books in 2003/2004 was 55.[70]After 1996, in the UK, there were no promotional or publicity campaigns, no television appearances, and no radio or newspaper interviews. Reliance was placed on a reference to Mr Knight’s Mythbusters in two sentences out of a 21-paragraph article on the subject of Clapham Wood, which appeared in September 2005 in a magazine on “strange phenomena” called the Fortean Times. The obvious inference is that in researching the subject the writer accessed some archived material which referred to the Mythbusters. Neither this nor the odd scattered reference on the internet serves to establish the continued existence of any reputation or goodwill which could be described as more than trivial.[71]As regards the nature of the goods, Mr Platts-Mills relied on the fact that they were not consumables but were books which would remain for years on the bookshelves of their owners, reminding them of the Mythbusters name and reputation. It is difficult to prove an assertion like that with evidence and none has been produced. With children’s books, I would think it much more likely that after a few years the books were either thrown away or given to jumble sales or charity shops, where a few might be bought, or stored in a cupboard or an attic. There is, in my view, no reason to suppose that many of the books were still on bookshelves by 2003.[72]Mr Platts-Mills relied on the distinctive and memorable nature of the mark Mythbusters, which I accept.[73]Mr Knight relied on a number of witnesses to establish the continued existence of some reputation. One, Marcus Papa, worked at a TV production company which had pitched proposals on behalf of Mr Knight. Another, Angela Grace, was managing director of Nickelodeon UK Limited who reviewed proposals from Mr Knight. Another, Simon Mann, was in a band in the early 1990’s for which Mr Knight acted as manager and event organiser. All these witnesses had personal connections, directly or indirectly, with Mr Knight which would account for their recollection of his Mythbusters concept.[74]Two witnesses were the result of an evidence-gathering exercise undertaken by Mr Knight’s solicitors, who wrote to the writers of the 22 fan letters produced by Mr Knight. They received no response from 17, with four letters returned marked addressees gone away. They spoke by telephone to each of the five who did respond. One remembered reading one or more Mythbusters books but no longer had them and could not remember what they were about. He was not aware of Beyond’s programmes. Another remembered the books and had seen that the Beyond programme was being broadcast, but made no connection between the two. A third also remembered the books and that they were “supernatural stories, ghosts and stuff like that”. He had seen the Beyond programme and made no connection with the books. When asked why he did not associate them, he replied:
“Well the Mythbusters on TV is going through like actual possible real events while Mythbusters books are on supernatural ghosts and werewolves.”
[75]The remaining two were asked to, and did, provide witness statements. David Parkes read the first two books and was a member of the fan club. He had seen two of Beyond’s programmes on the Discovery Channel and associated them with the books because of the name. His evidence on association in cross-examination was as follows:
“Q: And as I understand it, it is right from your evidence, it is the name of the Discovery programme that prompted you to call to mind the name of the Bowvayne books, is that right? A: Yes. Q: But you did not actually think that the content of the programme that you saw on television was the same as the content of the Bowvayne books, did you? A: Initially when I saw the advertisement -- the programme summary in the Sky information, it sounded very similar to what Bowvayne had written when I was a child. Q: But when you actually watched it, you realised that they were different, did you? A: Yes, they were different. It was not -- as my interests went, it was more scientific, whereas Bowvayne's books so far as I can remember are paranormal. Q: And it is clear that the programme had nothing to do with his books? A: Most definitely. Q: And you never thought that he had made the programme that you were watching? A: Initially I did think that it was associated with Bowvayne. Hence why I started watching it and then I have come to realise that it is possibly not what Bowvayne would do. Q: So you realised then that it had nothing to do with him? A: That is correct.”
Q: But when you actually watched it, you realised that they were different, did you? Q: And it is clear that the programme had nothing to do with his books? Q: And you never thought that he had made the programme that you were watching? Q: So you realised then that it had nothing to do with him? A: That is correct.”

Q: So you realised then that it had nothing to do with him?

[76]The other witness, Victoria Walker, read the second book when she was about 8 years old and only recently threw it away. She saw a Mythbusters programme listed in the Freeview televised programme listings; it required three prompts in the telephone call to her to remember that she had seen this listing. When she saw its name, she remembered the book and associated it with the programme because of the name. She never watched the programme.[77]I am satisfied that no reputation which was more than trivial existed in the UK in November 2003. The evidence of a couple of people that, when asked, they remembered writing fan letters about Mr Knight’s books does not itself or with other evidence establish the continuing existence of the reputation.[78]I should mention that each side called an expert to give evidence on, among other topics, the reputation of Mythbusters as used by Mr Knight for his books and concept and on whether it survived until November 2003. Without any disrespect to them, their evidence on this aspect of the case did not carry the matter very far.[79]My decision that by November 2003 Mr Knight had no more than a trivial, if any, reputation in the Mythbusters name means that his claim fails. As the other issues were fully argued and there was evidence relevant to them, I will go on to consider them.

Misrepresentation

[80]The second element in the tort of passing off is misrepresentation. The issue is whether the use by Beyond of Mythbusters as the title of its television programmes is likely to cause confusion among a substantial number of people who know of Mr Knight’s books, such that they think the two are connected. In my judgment, there is scope for initial confusion but any confusion would be quickly dispelled once watching the programme. By initial confusion, I mean that someone who knew of the books seeing the name in TV listings whether on screen or in a publication, with perhaps a brief reference of a few words to exploring myths in an offbeat or entertaining way, might think that there is a connection. However, the whole approach of the programmes is so obviously different from the books that within a very short time of starting to watch a programme, a viewer would know that there was no connection. Not only is this my own personal assessment, as it was also the assessment of Buchanan J in the Australian proceedings (para 176-180 of his judgment), but it was the experience of most of the witnesses who made an initial connection between the two: see the evidence of Mr. Papa, Mr. Parkes and Mr. Digweed. Ms Walker associated the names but has not seen any of Beyond’s programmes. Mr. Mann associated the names but only saw the last 30 seconds of a programme and assumed there was no connection when he did not see Mr. Knight’s name in the credits. One of the fan mail writers not called to give evidence, Ms Gardiner, had seen that there was a television programme but did not connect it with the books. Another, Mr. Maher, had watched the programmes but made no connection at all. Only Mr Llande, who had been involved in helping Mr Knight pitch to the television companies in the mid 1990’s and again in 1999-2000, watched three programmes before concluding there was no connection. Mr Llande explained that he assumed that Mr Knight had taken advice from the producers and made amendments to his original format.[81]The issue which then arises is whether initial confusion of this sort is sufficient to ground a claim in passing off, assuming some damage to the claimant’s goodwill. In my view, this issue has to be taken with the issue of damage. If initial confusion in the context of a television programme would cause damage to the claimant’s goodwill, it should in my judgment be sufficient. Miss May submitted by reference to authorities such as Schweppes Ltd v Gibbens (1905) 22 RPC 601 and Julius Samaan Ltd v Tetrosyl Ltd [2006] EWH6 529 (Ch) that it was necessary for the claimant to show that confusion could exist after watching the whole programme. Those cases concerned the sale of goods in a shop, in which context the point of sale is the critical time, because it is then that damage may result. It is necessary to show that a sufficient number of reasonable buyers looking at the goods in question would at that time be confused. The goods would for these purposes include the prominent parts of the label, the shape and get-up of the goods and their presentation. Although Mr Platts-Mills drew support from Neutrogena Corporation v Golden Ltd [1996] RPC 473, it is in my view a case of the same type as Schweppes and Julius Samaan: see the test posed by Morritt LJ at pp 493 (line 49) – 494 (line 1) and the citations from authorities at pp 494 – 495.[82]By contrast, in the case of a film showing at a cinema, the point of sale is before the film is seen. The name and subject of the film and generally its advertising and promotion will be the critical elements.[83]The position as regards a television programme is not directly analogous to either goods in a shop or a film at a cinema. Unless it is shown on a pay per view channel, there is no point of sale as far as the viewer is concerned. Miss May relied on Newsweek v BBC [1979] RPC 441 in which the publisher of an American magazine, not then widely read or known in the UK, failed before Walton J and on appeal to obtain an interlocutory injunction to restrain the BBC from screening a news and current affairs programme with the same name. While it is true that Walton J refers to an “intelligent viewer, viewing the programme from beginning to end” who would not be confused, he was concerned on the facts of that case with “an intelligent viewer…… who is going to look at a serious programme”. Likewise, Lord Denning MR at p 447 refers to “those who see the BBC2 programme”, but there are a number of different grounds for the decision of the Court of Appeal. Most importantly, it was not suggested that the plaintiff would suffer damage to its goodwill as a result of any initial confusion.[84]In my judgment, the relevant time for determining confusion must be defined by reference to the damage alleged to flow from it. If initial confusion of the type shown in this case can also be shown to cause damage to the claimant’s goodwill, it is actionable.

Damage

[85]The next and critical issue would be: what damage has Mr Knight shown to be caused, or likely to be caused, by the initial confusion? The pleaded heads of loss are as follows. The first and second heads are damage resulting “through lost sales and through loss of the exclusive use of the name Mythbusters in relation to books and television programmes concerning the investigation of myths.” Any loss in relation to books, including lost sales, is not in my judgment sustainable. Mr Knight does not currently have any books available for sale in the UK, nor is there any evidence that he intends to re-publish any of the Mythbusters books in the UK, other than some discussions in 2002-2003 with Usbornes which did not lead to any re-publication. In any event, there is no evidence that the Beyond programmes would cause a loss of sales of his books. I will return to the loss of the exclusive use of the name in relation to television.[86]The third head is “confusion as to whether or not the claimant has already licensed his goods and therefore they are not available for licence”. There is no evidence to support this head of loss. No-one has ever expressed any interest in licensing Mr Knight’s goods and there is no basis for finding that there is ever likely to be an interest in doing so.[87]The fourth head is “lost opportunities to produce or have produced his television programmes”. There is a further pleading as to loss which I think is more by way of expansion of the other heads of damage rather than a new head:
“The damage may arise as a direct result of the misrepresentation and confusion or as an indirect result as where, for example, the apprehension of confusion on the part of the general public and/or the loss of exclusivity results in better informed users refusing to produce the Claimant’s television programmes.”
[88]The main case advanced by Mr Knight is that because Beyond has produced programmes with the title Mythbusters which are broadcast on national channels such as Discovery and the BBC, it has become impossible for him to sell his concept to television producers under the same name. In this way, assuming that he has retained a recognisable goodwill in the name as applied to his concept of Mythbusters, he has lost the value of his goodwill as regards television. It is analogous to the loss recognised by Laddie J in Sutherland v V2 Music Ltd at para 48.[89]In my view, this is a possible head of damage which, with evidence to support it, could lead to a claim in respect of actionable loss. I accept Mr Platts-Mills’ submission that goodwill built up in relation to books may be capable of exploitation on television and that the loss of the ability to exploit it in that medium can represent a real loss. As he put it, television is not a speculative or distantly possible related business; there is a direct link with books. Further, on the evidence, it seems clear that because of Beyond’s programmes, television companies would not now broadcast a programme with the same name, as applied to Mr Knight’s concept. As Steven Wright, the defendant’s television expert, said producers would not want to be seen to be copycats.[90]However, the evidence, in my view, demonstrates that Mr Knight has not suffered any loss or any real prospect of loss in being unable to promote television programmes with the title Mythbusters. There are two separate reasons for this conclusion. First, the evidence shows that he has not been able to sustain any significant interest in such programmes in the UK, despite many attempts over many years, and that he has no real prospect of ever doing so. According to his evidence he and others on his behalf have since 1993 made promotional presentations in the UK, Australia, Singapore and the United States to television networks and other broadcasting organisations, television production companies, and others by way of extensive written proposals, promotional video tapes, his books and pitch presentations. He gives a long list of the recipients of these proposals and pitches in the television world, spanning a period from 1993 to 2000. In the UK, they included in particular the BBC and Nickelodeon (a dedicated children’s channel). In his witness statement, Mr Knight gives a substantial amount of evidence as to this activity and I heard evidence from him and other witnesses about it. Despite this activity and Mr Knight’s consistent ambitions for television programmes based on his concept, he got nowhere with it. Having reviewed the evidence, he cannot, in my judgment establish any real likelihood that he will have his proposal accepted. The evidence of Mr Wright shows that there is great demand among producers and broadcasters for what they consider to be good quality concepts that will work well on television. After this length of time, the efforts made by or on behalf of Mr Knight would have met with some success if those who commission programmes were impressed with his programme concept.[91]The second ground for my conclusion is that if, contrary to my finding, his concept has some real prospect of acceptance, Mr Wright’s evidence shows that the programmes could and would be made but with a variation in title. His evidence was that broadcasters are far more concerned with content than they are with the title. This was borne out by Mr Luscombe’s evidence that when pitching Beyond’s programme idea, Discovery was attracted by the concept but required a change in the title. A programme using Mr Knight’s concept might be called Bowvayne’s Mythbusters. Assuming that Mr Knight still had some goodwill associated with the Mythbusters title, that name would inform the small section of the public who recalled it that this was the Mythbusters which they remembered. In my view, Mr Wright’s evidence establishes that Mr Knight would sustain no loss if the programmes were made with that or a similar title.[92]Mr Knight relies in particular on the loss of the opportunity of an investment in his project by Winners Alliance. His case is that they withdrew because of Beyond’s programmes. I heard no evidence from any of the potential investors, so I am unable to gauge how serious their interest was in the project. What is clear is that there was a gross and highly misleading exaggeration of the number of book sales in the opening paragraph of the investment memorandum. I am not prepared to assume that they would have had any serious interest in the proposal if the true figure for sales had been made known to them.[93]In my judgment, even if a residual reputation existed in November 2003, Mr Knight has failed to establish any damage or real likelihood of damage to his goodwill, as a result of Beyond’s use of the title Mythbusters for its television programmes.

Conclusion

[94]In conclusion, therefore, Mr Knight’s claim fails because he cannot establish any goodwill as at November 2003 and, in addition, because he cannot establish any actual loss or any real likelihood of loss.

Cited in 5 later judgments