A string of clubs called The Glee Clubs in the UK has sued, and a judge has ordered Glee to come up with a new title in Britain. When I saw this story, I told my husband it cried out for a Straight Dope thread.
http://www.pressdemocrat.com/entertainment/2406159-181/uk-court-british-glee-must
So what do you think?
I don’t know the answer but I do know that is an amazingly stupid decision.
Eelg
Agreed, the judgement here is ridiculous.
Speech And Drama
Ah, British judges. Fingers on the pulse as always. Here’s Rowan Atkinson et al satirising it thirty years ago: Not the Nine O'Clock News Rowan Atkinson Judge - YouTube
“Sharkjumpers” (has any show’s appeal fallen faster?)
Twin Peaks.
GL33
Why? If the Glee Clubs in the UK had been using that as the trademark ten years prior to the TV show being broadcast here then what would you have the judge do?
The trouble is that “glee” and “glee club” have been used in the sense of the TV series “Glee” for more than 100 years before the Glee Club chain started using the phrase. If I started a business called “The Debating Society”, similar to the Glee Club, I could probably register that as a trade name, but I don’t think I could stop a TV series being called “Debating” – the words are too generic.
Right - according to Wikipedia, the term Glee Club in fact originated in London, in 1787.
Stoic Resolve
I don’t know anything about British trademark law, but this seems like an odd ruling. “Glee” is a common English word, the title of the show isn’t exactly the same as the name of the club chain, and since The Glee Club is a comedy club rather than a choral group it doesn’t seem like the similar names would cause British audiences to mistakenly assume that the TV show was associated with the clubs.
IIRC, the short-lived sitcom The New Normal (created by one of the co-creators of Glee) featured a character who worked on a Glee-like show called Sing. So that’s one possibility for a new title. High School Musical is already taken, but New Directions (the name of the choir on the show) and Don’t Stop Believing also seem like obvious choices. Under US law at least I don’t think the latter could have been trademarked by the band Journey.
If I could travel back in time and suggest a different title at the time of the show’s creation I’d probably go with You Might as Well Stop Watching at the End of Season Two, or even Seriously Lamia, Why Are You Still Watching This Show? You Deserve Better Than This, although I’ll admit that’s not as catchy.
And using the same research skills as you, it died out in the UK in the mid-19th century. A UK business picked it up, established it as a thing (OK, in a small way) and is trying to defend the trademark against a foreign competitor. What’s wrong with that?
Too late to edit: The judge recognises I think that there’s no loss, but if you don’t defend trademarks, you lose them, right legal types?
No, that’s not a proper basis for a ruling, not of it were being considered under U.S. law, anyway.
Seems to me that, in order to defend a trademark, it needs to be under attack first. I don’t see how the existence of a TV show named Glee harms a bar named Glee Club in anyway. It’s not like people are saying, “Honey, we don’t need to go out to that stand-up show - it’s right here on TV!” And then not figuring out the difference after an hour of a sit-com set in an American high school.
Well, I suppose they might have complaints from some people who show up at the club, expecting song and dance numbers. But I’m not sure how much damage that does. They’re still paying for their drinks, right?
To be more specific, the question of defending a trademark is relevant only to the question of whether the plaintiff has legitimate rights in a protectable trademark. It isn’t relevant to the question of whether there is a likelihood of confusion.
The harm in a trademark claim is the confusion itself. So, even here, the issue turns on whether there’s a likelihood of confusion.
I haven’t been able to find a text of any opinion in this case, and I am under the impression that in England, such rulings are often delivered from the bench, without any written opinion. Without that, it’s hard for me to entirely understand the basis of the decision or to critique it.