Bettys Cause of action against Jenny de Winter - Essay Example

?Betty v. Jenny de Winter The first pairing is Betty’s cause of action against Jenny de Winter, and what Betty should have done to protect herself against Jenny’s actions. There are a number of violations that Jenny might be guilty of – passing off, trademark infringement and breach of confidence chiefly among them. The first cause of action that will be examined will be that of passing off. Jenny worked for Betty for many years, as she was referred to as “one of Betty’s longest-serving employees.” It is implied in the facts that Jenny probably had dealings with Betty’s suppliers over the years, as well as Betty’s customers. Moreover, Betty’s business was apparently called “Betty’s” from the period spanning 1986 to 1994. However, the name “Betty’s” was never officially trademarked, at least the facts do not indicate that it was. If the name was trademarked, then obviously Betty would have a stronger case. However, Betty might have a cause of action for passing off. Passing off, traditionally a tort that referred to attempting to represent one’s goods as the goods of somebody else, has the modern definition of using a person’s goodwill and reputation in an attempt to benefit oneself, and, in the process, injuring the original person’s good name, reputation and connections (Taittinger and others v. Allbev Ltd. and others [1994] 4 All ER 75). There are five elements in the tort of passing off, and they are “1. A misrepresentation 2. Made by a trader in the course of trade, 3. To prospective customers of his or ultimate consumers of goods or services supplied by him 4. Which is calculated to injure the business or goodwill of another trader (in the sense that this is a reasonably foreseeable consequence and 5. Which causes actual damage to a business of goodwill of the trade by whom the action is brought or will probably do so (Erven Warnick BV v. J Townend & Sons (Hull) Ltd. [1979] 2 All ER 927). In examining these elements, it is unsure whether Betty can prevail on the tort of passing off. The first element is that there must be a misrepresentation. Calling her company “Betty’s Produce,” when Jenny had previously worked for Betty for a long period of time, and Betty’s business was known as “Betty’s” for a number of years would certainly seem as if Jenny is misrepresenting her own produce as Betty’s. Jenny was no doubt highly associated with Betty in the mind of the consumers and the people to whom Betty catered, so those people probably would assume that Jenny was still with Betty, and that Jenny’s produce was Betty’s produce. Jenny would be using Betty’s name in the course of trade and to prospective customers, and these same customers were also Betty’s customers, so those elements are satisfied as well. Whether it was calculated to damage the goodwill of Betty is a question for which there is no clear answer. Certainly it seems that Jenny was attempting to capitalize on Betty’s goodwill and reputation, but whether or not she wanted to injure Betty is questionable. However, as long as damage to Jenny’s reputation is reasonably foreseeable, this element is satisfied as well. Betty worked hard to establish a firm reputation for her products. Jenny’s products might not have the same standard. If Jenny’s products are not the same standard as Betty’s products, then Jenny would be damaging Betty’s reputation. “a misrepresentation by B that his inferior goods are of a superior quality, which is that of A’s goods, whereby people buy B’s goods instead of A’s, is actionable” (Reckitt and Colman Products Ltd. v Borden Inc. and Others, [1990] 1 All ER 873). Jenny was clearly trying to represent her products as Betty’s products, in an effort to get these restaurants to buy her products instead of Betty’s products, so this element is satisfied as well. As to the final element, that the passing off causes actual damage to Betty’s reputation, actionable damage can be that which is gradual depreciation to the reputation that Betty enjoys (Erven Warnick BV v. J Townend & Sons (Hull) Ltd. [1979] 2 All ER 927). Therefore, in order to protect herself in this instance, Betty should bring suit for an injunction against Jenny to keep her from using the name of Betty, on the grounds that Jenny is attempting to pass herself off as being a part of Betty’s organization, and that the customers would likely be confused and believe that Jenny is selling Betty’s goods. This injunction would likely be effective, as Jenny is blatantly trying to capitalize on Betty’s reputation and goodwill, therefore, Betty would have an excellent chance of prevailing on the merits, which is what a court must ascertain before granting an injunction. Moreover, the injunction should also prevent Jenny from having the name “Betty’s Produce” registered as Jenny’s trademark. Betty must show the existence of a right and a prima facie case that would likely succeed in a trial (Herman Pictures NV v. Osborne [1967] 1 WLR 723). Betty can show that she has a prima facie case, as all the elements for passing off are present in the fact, and she can show that she has a right that needs to be protected, so Betty should prevail on injunctive relief. The second question is whether Betty can bring an injunction against Jenny for using Betty’s list of organic farmers and Betty’s contact with the London restaurants. This question is governed by the seminal case Faccenda Chicken Ltd v. Fowler [1986] IRLR 69. In this case, Mr. Fowler was the sales manager of a company that deals with chickens. After being fired, Fowler went into business for himself selling fresh chickens, and this business directly competed with Faccenda. What's more, many of Faccenda's employees left and went to work for Fowler. Faccenda sued, and his case was dismissed by the High Court Chancery Division and the Court of Appeal. The House of Lords refused the appeal. The reason was that the obligation not to use or disclose information pertained to trade secrets, but not information that given or acquired by the employee during the course of his employment, and does not extend to information that is only considered to be confidential because the disclosure of such would constitute a breach of good faith (Faccenda Chicken Ltd. v. Fowler [1986]IRLR 69). What's more, the Competition Act 1991 states that any agreement that has “as their object or effect the prevention, restriction or distortion of competition in trade in any goods or services in the State or in any part of the State are prohibited and void” (Competition Act 1991). Therefore, according to the Fowler case, Jenny’s mere act of competing with Betty would not be actionable, even if Jenny is dealing with Betty’s former customers (Robb v. Green [1895] 2 QB 315; Wessex Dairies Ltd. v. Smith [1935] All ER Rep 75). Wessex establishes that contact lists, such as address books, do not constitute confidential information, and that they are not protected after employment had ceased (Wessex Dairies Ltd. v. Smith). However, the Fowler case left open the possibility for an injunction if there was the use of trade secrets or confidential information by the defendant. Confidential information that is given in confidence and is capable of being confidential – in other words, the information should not constitute public or common knowledge (Saltman Engineering Co. Ltd. v. Campbell Engineering Co. Ltd (1948) 65 R.P.C. 203). However, even information that is common knowledge may become confidential if that knowledge is used in a novel or ingenious way (Coco v. Clark, [1969] R.P.C. 41; ). Such examples of confidential information can be costs and prices (Herbert Morris Ltd. v. Saxelby [1916] 1 AC 688); and secret manufacturing processes (Amber Size and Chemical Co. Ltd. v. Menzel [1913] 49 RPC 461). The cases dealing with trade secrets and confidential information make a distinction between the divulging of information during employment, information which would be a clear breach of the duty of good faith, and disclosing this same information after employment has ceased (Printers and Finishers Ltd. v. Holloway [1964] 3 All ER 731; E Worsley & Co. Ltd. v. Cooper [1939] 1 All ER 290). An ex employee may divulge information that a current employee may not. So, Betty probably cannot do anything about Jenny using her contact list, and, what’s more, even a restrictive covenant that states that Jenny cannot compete and use Betty’s list would not have done any good, although that is one step that Betty might have taken during Jenny’s employment. The question is whether Jenny is using any of Betty’s trade secrets, and if Betty could have protected herself from Jenny using these secrets while Jenny was an employee. Betty certified her products as organic, and she was able to do so by visiting each farm with whom she worked and inspected every aspect of the production process. Her staff would do the same on a regular basis. This does not appear to be a secret process, however, perhaps Betty had a special way of ascertaining which farms were truly organic and which were not. If this is the case, and Jenny has appropriated these methods as her own, then there might be an actionable breach of confidentiality or revealing trade secrets, and an injunction might be in order. Also, if Jenny is using special information about prices and sales, then this might be considered confidential as well, and Betty can protect herself with an injunction. Moreover, Betty could have further protected herself by impressing upon Jenny that the secret processes and prices are confidential, and putting this information into the contract for employment, and putting in a restrictive covenant in the contract for employment that states that Jenny is not to use these processes or prices. Betty v. GoGoGo and Greengage Wines These two causes of action will be considered together, as they rely on similar aspects of the law, which is basically trademark law. In this case, the names “GreenGauge,” “Green,” and “GGG” were all trademarked by Betty. “GoGoGo” also trademarked “GGG,” while “Greengage” sounds very similar to “GreenGauge.” Since GoGoGo trademarked an identical mark to GreenGauge, this will be examined first. Trademarks are governed by the The Trade Marks Act 1994, which states that a trademark is “any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings” (Trade Marks Act 1994 § 1(b)). In this case, GoGoGo delivers “perishable commodities,” which, it is assumed, means foods that are perishable, such as fruits and vegetables. It is unclear whether the foods are organic, and, if they are, different sections of the Trademark Act would be implicated. At any rate, even if the goods are not organic, they are similar to Betty’s goods, as Betty also deals with perishable commodities. Therefore, Section 10(2) of the Trademarks Act 1994 is implicated, and this section states that a person infringes on another trademark when that person uses an identical trademark, and this is used in relation to goods and services which are similar to the person or company that registered the trademark, such that the ordinary buying public would be confused, or the goods and services are similar to the company that had registered the trademark (Trademarks Act 1994 §10(2)). This would require that there would be a risk that the public would believe that the products came from the same undertaking as the original company who trademarked, or that the two are economically linked in some way (Lloyd Schufabrik Meyer & Co. GmbH v. Kijsen Handel BV Case C-342/97 [1999] All ER (EC) 587). The function of the trademark is to designate origin (Arsenal Football Club plc v. Reed, [2003] EWCA Civ. 696). The function of the trademark is also to guarantee that the products originated from a certain source, which acts as a sign of the product’s quality, for that certain company who owns the trademark is responsible for the products quality (Canon Kabushki Kaisha v. Metro-Goldwyn Mayer Inc. [1999] RPC 117). In other words, the buying public buys a certain product because of its reputation of quality, and the trademark is a kind of guarantee that the customer will get the quality he or she seeks from the product. Moreover, there does not have to be proof that people are actually confused by the two products, nor is there a requirement that the defendant represents that his goods are the goods of the plaintiff (Vine Products Ltd. v. Mackenzie & Co. Ltd. [1969] RPC 1). Additionally, the court is going to look at how similar the marks look – just because the two marks have the same letters does not mean that they look the same, and court must look at the trademarks as a whole, and whether they look similar as a whole and also whether one sign is distinctive and the other sign copies this distinctiveness, so this will be another component as to whether an injunction would prevail (Sabel BV v. Puma AG [1998] RPC 199). The court will also look at how much knowledge the buying public had of the earlier trademark, and one of the guiding points for this is how long the trademark had been in the public domain (General Motors [1999] All ER (EC) 865). There must also be detriment to the first mark, and the detriment can either be free-riding, tarnishment or dilution. Free-riding means that the second mark benefits from the reputation of the first mark, therefore the first mark does not necessarily have to be impaired, as long as there is unfair benefit to the second mark (L’Oreal v. Bellure [2007] EWCA Civ 968). Dilution is where the distinctiveness of the first mark is impaired by the fact that the second mark is attached to a wide range of goods and services (Intel v. CPM (C-252/07). Tarnish means that the reputation of the first mark is impaired by the unsavory reputation of the second mark (L’Oreal v. Bellure [2007] EWCA Civ 968). In this case, there would be a clear cause of action for Betty, and she should be able to prevail on an injunction against GoGoGo. Betty’s trademark “GGG” had been in the public eye since around 1994, and her products were associated with “GGG” to the buying public. GoGoGo produces perishable commodities, presumably produce; Betty does as well. GoGoGo probably does not product organic produce, therefore its association with Betty’s brand would tarnish her brand, especially if GoGoGo does not have a good reputation for its produce. It is unclear who the target is for GoGoGo – the facts only indicate that they deliver the perishable commodities. If they deliver the commodities to restaurants and hotels, as Betty does, then this would be even stronger grounds for an injunction, as the possibility of confusing the two products would be inescapable. If GoGoGo delivers only to individuals, however, then the case is weaker, as individual consumers are unlikely to be privy to Betty’s produce, so there would be less chance for confusion. Therefore, there is the possibility that an injunction would not be given, if their markets are totally different, therefore confusion would be less likely. But if GoGoGo delivers to even one hotel or restaurant, then Betty should be able to get an injunction from GoGoGo getting the trademark “GGG,” even if GoGoGo never attempts to explicitly link itself with Betty’s products. Additionally, Betty can probably bring a claim for revocation for GoGoGo, in the case that GoGoGo actually receives a trademark for “GGG,” which means that their trademark would be revoked. As for Greengage Wines, the analysis is a bit different. Greengage does not necessarily market similar products as Betty, and the trademark is a bit different from Betty, as they call their products “Triple G,” while Betty’s products are “GGG.” Also, the name “Greengage” is undoubtedly similar to Betty’s trademarked name “Greengauge.” Therefore the trademarks are a bit different, but still very similar. The rules are that a person infringes on a trademark if they use, in the course of trade, a sign that is similar to the trademark, and their goods are similar, therefore there is a likelihood of confusion in the buying public; or that the sign is similar, and products are dissimilar, and the mark has a reputation in the United Kingdom (Trade Marks Act 1994 §§ 10(2), 10(3)). The facts are similar to another case, Premier Brands UK Ltd. v. Typhoon Europe Ltd. [2000] ETMR 1071. In that case, the claimant was an importer, blender and supplier of tea whose trademark was TY.PHOO. In addition to importing tea, TY.PHOO also made tea pots, canister, and tea towels. The defendant was named Typhoon, and Typhoon manufactured kitchen housewares. Therefore, the product line was similar, because kitchen housewares could conceivably consist of tea pots, canister and tea towels, in addition to the other various sundry kitchen housewares TY.PHO sells, such as kitchen utensils, cutlery, glassware, porcelain, and kitchen brushes and combs. The facts of this case are similar to the case at bar – while Greengage sells different products from Betty, they are somewhat the same, as both Betty and Greengage specialize in marketing and distributing items that are to be consumed, and it would be conceivable that Betty might go into the wine business, therefore there could be confusion between Greengage products and Greengauge products. It would, of course, be a different story if Greengage was engaged in the business of, say, manufacturing electronics, or some completely different line of products then Betty. But, since Greengage is manufacturing products that are for consumption, then there could be confusion. Therefore, the facts of the Premier Brands will govern the case at bar. In Premier Brands, the court ruled that the plaintiff could not prevail on their claim for revocation, as the products are dissimilar and there would not be a likelihood of confusion on the part of the buying public (Premier Brands UK Ltd. v. Typhoon Europe Ltd. [2000] ETMR 1071). Further, the Plaintiff in that case could not make a case for tarnishing. Therefore, under the auspices of the Premier Brands case, Betty would have a hard time proving trademark infringement – the products are dissimilar, therefore there probably would not be confusion between the brands. Betty probably would not prevail on an injunction if the court uses the precedent of Premier Brands. The above analysis would go also towards whether there is passing off. Since “Triple G” is not necessarily a trademark of Greengage Wines, the tort of passing off might be more appropriate to examine anyhow. As stated above, there must be a misrepresentation that is designed to cause damage to another company, or is reasonably foreseeable to cause damage to this company (Erven Warnick BV v. J Townend & Sons (Hull) Ltd. [1979] 2 All ER 927). Also, as with trademarks, there must be the likelihood of confusion in the buying public. Again, this is not a fruitful line of inquiry for Betty. Their products are dissimilar, and Betty sells to restaurants and hotels. There is no indication that Greengage does the same, although it is a definite possibility. However, as stated above, it is not outside the realm of possibility that Betty would go into the wine business, so this is where the confusion might lie, as her customers might be confused and believe that Greengage is Betty’s new line of products, and, if Greengage markets inferior products, this could tarnish Betty’s brand, therefore an injunction for Greengage’s passing off could be had. For that matter, a trademark infringement injunction might be had for the same basis. However, the likelihood of either of these injunctions being granted is slim, because of the overall dissimilarity of the products. Betty v. Dave Stroud The possible action against Dave Stroud would be for defamation of character. Betty might be able to either get an injunction against Dave that would restrain him from making any further defamatory remarks, or get damages from him for the remarks that he has made, or both. To prevail on a suit for defamation, Betty must show that the statement adversely affected her reputation, although she does not have to show actual damage. However, if Dave shows that the words are true, then he has a defence of justification, even if he said the words spitefully (Reynolds v. Times Newspapers Ltd and others [1990] 4 All ER 609). Dave also has defences even if the statement is no true. One such defence is that of public interest, which means that the matter affects the people at large (London Artists Ltd. v. Litler [1969] 2 All ER 193). In this case, the opinion must be honestly held by the person stating the opinion, and the comment must not be driven by malice (Silkin v. Beaverbrook Newspapers Ltd. [1958] 1 WLR 743). This is if the words are held to be a comment, as opposed to imputation of fact (Reynolds v. Times Newspapers Ltd. and others [1990] 4 All ER 609). The question here is whether Dave has a defence of justification, in that the words are true, or if he has the defence of public interest. There is nothing in the fact pattern that would indicate that the words are true. In fact, the facts state just the opposite – that Betty has been a reliable source of fresh produce, and that she continues to inspect the farms herself or have one of her staff inspect each farm. Therefore, the statement does not seem to be true, so there is no defence of justification. Is there a defence that the statement is a matter of public interest? Perhaps, because the public has an interest in whether the produce they buy is genuinely organic, and whether they can rely upon certain brands to provide truly organic, fresh produce. Moreover, people who own stock in the company would have an interest in whether Betty’s produce is doing well or struggling. So, the statements might be considered to be in the public interest. So, the next line of inquiry is whether Dave had an honest belief in the statement. If he was motivated by malice, or if he did not believe the statement to be true or was indifferent to the truth of the statement, then he loses the privilege. In this case, there was no basis for Dave to make this statement, at least the statement that Greengauge could not be relied upon to provide fresh produce. Therefore, that part of the statement might be actionable. However, the first part of the statement might have some truth to it, or Dave might have honestly believed that the statement had truth to it, as firms in general are struggling in the recession, so Betty’s firm might be as well. So, that part of the statement might not be actionable for this reason. Betty v. Sophie Winthrop The first pairing that will be examined will be Betty v. Sophie Winthrop. Sophie was the actress who was hired to front GreenGauge’s commercials from 2004 to 2008, and these advertisements featured Stonehenge as a backdrop. Later, Sophie took a job for a car insurance agency, and these commercials also featured Stonehenge, only in these commercials, there were cars being wrecked behind Sophie in the backdrop. In this case, Sophie was the face of GreenGauge. Stonehenge also may be said to be a trademark of the advertisements that Sophie was a part of, even if it was not an official trademark. Therefore, the analysis will center around passing off. Was there a misrepresentation that is designed to damage to Betty’s brand? Might the public become confused about the two brands, and is the car insurance website attempting to pass itself off as being associated with Betty’s firm? This is a distinct possibility, due to the similarities of the commercials. Stonehenge and Sophie were linked for four years, and the public came to associate these two symbols, Stonehenge and Sophie, with Betty’s brand. Now there are other commercials using Stonehenge and Sophie, but for a completely unrelated company. It certainly is feasible that the car insurance company is trying to capitalize upon the goodwill of Betty’s firm, seeing as they are using the same actress as Betty used and the same backdrop. However, the company is completely different from Betty’s company. If the new company that used Sophie and Stonehenge was at all related – perhaps it would be for a chicken company, and the public would become confused because a chicken company might be associated with Betty’s organics, or even for a kitchenware company, because perhaps Betty has associated herself with kitchenware. If the other company was anything related to food, there would be a problem, and it could be said that the firm is trying to deliberately trying misrepresent itself as being associated with Betty. However, this is a car insurance firm, so the likelihood that the public would become confused as assume that the car insurance firm is related to Betty’s firm is pretty slim. Therefore, Betty would not have cause for an injunction for the insurance company to cease and desist with the advertisements. That said, if Betty really wanted Sophie to stay the face of her products, and her products alone, she could have signed Sophie to an exclusive contract that stated that Sophie could not work for anybody else. Of course, that would have been prohibitively expensive, but this was an option for Betty. Sources Used Amber Size and Chemical Co. Ltd. v. Menzel [1913] 49 RPC 461 Arsenal Football Club plc v. Reed, [2003] EWCA Civ. 696 Canon Kabushki Kaisha v. Metro-Goldwyn Mayer Inc. [1999] RPC 117 Coco v. Clark [1969] R.P.C. 41 E Worsley & Co. Ltd. v. Cooper [1939] 1 All ER 290 Erven Warnick BV v. J Townend & Sons (Hull) Ltd. [1979] 2 All ER 927 Faccenda Chicken Ltd v. Fowler [1986] IRLR 69 General Motors [1999] All ER (EC) 865 Herbert Morris Ltd. v. Saxelby [1916] 1 AC 688 Herman Pictures NV v. Osborne [1967] 1 WLR 723 Intel v. CPM (C-252/07) Lloyd Schufabrik Meyer & Co. GmbH v. Kijsen Handel BV Case C-342/97 [1999] All ER (EC) 587 London Artists Ltd. v. Litler [1969] 2 All ER 193 L’Oreal v. Bellure [2007] EWCA Civ 968 Premier Brands UK Ltd. v. Typhoon Europe Ltd. [2000] ETMR 1071 Printers and Finishers Ltd. v. Holloway [1964] 3 All ER 731 Reckitt and Colman Products Ltd. v Borden Inc. and Others, [1990] 1 All ER 873 Reynolds v. Times Newspapers Ltd and others [1990] 4 All ER 609 Robb v. Green [1895] 2 QB 315; Wessex Dairies Ltd. v. Smith [1935] All ER Rep 75 Sabel BV v. Puma AG [1998] RPC 199 Saltman Engineering Co. Ltd. v. Campbell Engineering Co. Ltd (1948) 65 R.P.C. 203 Silkin v. Beaverbrook Newspapers Ltd. [1958] 1 WLR 743 Taittinger and others v. Allbev Ltd. and others [1994] 4 All ER 75 Trade Marks Act 1994 Vine Products Ltd. v. Mackenzie & Co. Ltd. [1969] RPC 1 Wessex Dairies Ltd. v. Smith [1935] All ER Rep 75 Read More