Irvine v Talksport Ltd
1 April 2003
Civil Procedure Rules 1998
Passing Off; Endorsement; Costs; Damages; Licence Fees
Michael Briggs Q.C, Lindsay Lane, Murray Rosen Q.C., Stephen Tudway
Fladgate Fielder for the Appellant, Rosenblatt for the Respondent.
Parker LJ, Brooke LJ, Schiemann LJ
Court of Appeal (Civil Division)
2003] EWCA Civ 423;  2 All ER 881;  EMLR 26;  FSR 35; (2003) 147 SJLB. 421; (2003) 26(5) IPD. 26029
Eddie Irvine, a well-known Formula One racing driver sued Talksport Radio for passing off and in particular, for using his image in an advert advertising the radio station without obtaining his consent. Talksport had sent promotional packs to persons and companies within the advertising industry which contained a brochure on the front of which was an image of Irvine holding a radio bearing the Talksport name.
In reality, Talksport had taken a previous photo of Irvine in which he had originally been holding a mobile phone and edited the picture by superimposing the Talksport radio onto the image in place of the phone. In essence, this amounted to false endorsement and it was held at the trial of the action that such endorsement constituted a form of passing off. At first instance Laddie J. held that:
- there is nothing which prevents an action for passing off succeeding in a false endorsement case.
- however, in order to succeed, the Claimant includes a need to prove at least two, interrelated facts. First, at the time of the acts complained of he had a significant reputation or goodwill. Second, that the actions of the Defendant gave rise to a false message which would be understood by a not insignificant section of his market that his goods have been endorsed, recommended or are approved of by the Claimant.
Both the Irvine and Talksport appealed against the decision at first instance.
At the hearing of the inquiry as to damages, Irvine sought to recover sums in the region of £50,000 on the basis that this was a reasonable sum for him to have charged Talksport for the right to use his image. Evidence was adduced showing licence fees for other endorsement activities he had carried out. Expert evidence was also adduced as to what a willing licensor may have paid a willing licensee. However, although the Judge accepted that the correct measure of damages was a reasonable endorsement fee, namely what would have been agreed between a willing endorser and willing endorsee, the Judge found that the campaign by Talksport was of a much smaller and different kind that the other endorsement deals which Irvine had been involved in. Therefore he restricted damages to £2000.
Irvine appealed against the award of damages made by the Judge, and Talksport appealed against the finding that it had falsely represented that Irvine had endorsed its product and in particular, it alleged that the image of Irvine was humorous and that the public would not genuinely have regarded it as an endorsement.
On appeal the Court of Appeal held that:
- The assessment of damages in a case such as this is a matter for the Judge, requiring “judicial estimation” of the available indications. However, where the assessment made by the Judge is clearly wrong, the court (CA) has a duty to intervene in order to put it right.
- A reasonable endorsement fee must in a case such as this represent the fee which on a balance of probabilities Talksport would have had to pay in order to obtain lawfully that which it obtained unlawfully (i.e. it is a question of what Irvine would have charged rather than what the parties would have agreed or that which Talksport could have afforded to pay).
- Whether or not the size of the Talksports’s promotion would have affected the amount of the licence fee charged by Irvine should have been assessed having regard to the evidence put forward. The fact that at the time Irvine only entered into large endorsement deals for large sums is relevant when considering this issue.
- The Judge was wrong to have dismissed the evidence put forward by Irvine of a typical licence fee as this provided an indication of the minimum fee which he would have charged. In particular he should not have dismissed the fact that Irvine asserted that "he would not get out of bed for less than £25,000."
- The Court could not conceive of a clearer example of endorsement than the manner in which the Defendant had used Irvine’s image, namely the use of a "doctored" image of Irvine so as to make him appear to be holding a Talksport Radio and placing the said image on the front cover of their brochure. The fact that the whole brochure was intended to be a joke was irrelevant nor does the fact that the image was not a genuine photographic image.
Accordingly, Irvine’s appeal was allowed and Talksport’s appeal was dismissed. The particular importance of the Court of Appeal decision is in connection with the basis on which royalties for the use were calculated. The factors identified in this decision arguably affect the calculation of what sums should be paid in registered trade mark infringement cases.
Note that, as from 6 April 2007, Part 36 of the Civil Procedure Rules has been amended so that it no longer requires a payment into court by a defendant.