Dr Sabine Jacques (University of Liverpool)
Last week, the High Court of Justice in London issued its summary judgment in the case of Samherji v. Odee [2024] EWHC 2892 (Ch). The case involved a dispute between Samherji, an Icelandic fishing company, and Oddur Eysteinn Friðriksson, an Icelandic artist known as Odee. At the core of the litigation was Odee’s use of the Samherji logo and registered mark on a satirical website designed to mimic the company’s official site. The website included the caption: “Samherji Apologizes, Pledges Restitution and Cooperation with Authorities,” ostensibly presenting a false apology related to a corruption scandal widely referred to as the Fishrot Files. This controversy arose from documents published by WikiLeaks in 2019 and investigative reporting by Icelandic media, which alleged that Samherji had engaged in bribery to secure trawling rights in Namibia.
Samherji filed an application for summary judgement on the grounds of trade mark infringement, passing off, copyright and malicious falsehood. However, Samherji eventually dropped the claim on trade mark infringement (unfortunately) so the remaining of this post will focus on the claims of passing off, copyright and malicious falsehood but before doing so, it’s worth noting the balancing of rights carried out by Master Teverson.
On Freedom of Expression
The court noted the importance of Article 10 of the ECHR in protecting political and artistic expression, particularly when addressing matters of public interest. It acknowledged Odee’s argument that the satirical use of Samherji’s logo served to critique the Fishrot scandal and stimulate public debate, noting that such expression generally warrants heightened protection. However, this right is not absolute and must adhere to principles of good faith, accuracy, and ethical considerations (citing Steel & Morris v United Kingdom [2005] E.M.L.R 314 at para 90).
Conversely, Samherji’s rights under Article 1 of Protocol 1, protecting intellectual property as property, were deemed equally important. The court found that the Defendant’s use of Samherji’s logo and mark in a misleading manner exceeded acceptable artistic expression, involving deception that infringed on the Claimant’s intellectual property and reputation. This, in the eyes of the court, contrasted with cases like Nadia Plesner Joensen v Louis Vuitton Malletier SA. [2011], where artistic use did not involve impersonation or misrepresentation or misinformation.
In balancing these rights, the court ruled that freedom of expression does not override intellectual property rights (at para 52). While acknowledging the Odee’s critique of the Fishrot scandal as valuable, the court held that as the art work had been performed, there balance would tilt in favour of Samherji today.
On Passing Off
“Passing off” is a legal remedy intended to protect commercial interests by preventing companies from misrepresenting their goods or services as those of another. To be successful, Samherji must establish i) a reputation or goodwill acquired by the Claimant in its goods, name, or mark (ii) a misrepresentation targeted at the jurisdiction by the Defendant leading to confusion or deception and (iii) damage to the Claimant or in relation to behaviour which is to happen in the future, a likelihood of future damage. Unsurprisingly given previous case law in regard to foreign companies, the court found that Samherji did have goodwill in the UK, that there was a misrepresentation by Odee’s work and likelihood of damage to the Claimant’s reputation (even if tempered by the interim injunction) in regard to the two types of passing off in the domain name and the spoofing website.
On Copyright
The Court found that Odee infringed Samherji’s copyright. Turning to the application of defences, Master Teverson was not convinced that the defendant had any real prospect of success if the case was to go to full trial. Odee invoked sections 30 and 30A of the Copyright, Designs and Patents Act 1988 (“CDPA 1988”), “namely fair dealing for the purposes of criticism or review, quotation and/or parody and/or pastiche”.
The court found that the Defendant’s use of the Claimant’s logo and brochure in designing the website was aimed at creating an impression of authenticity rather than serving as criticism, review, or quotation of the Claimant’s copyright. Criticism, for the purpose of copyright law, relates to the content of a specific work or performance, not broader critiques of a party’s conduct, such as in the Fishrot scandal.
The court also determined that the Defendant’s use did not qualify as caricature, parody, or pastiche. Parody requires an existing work to be evoked in a way that is noticeably different and conveys humour or mockery, while pastiche involves imitating a style in a distinct manner. The Defendant’s actions, designed to mimic the Claimant’s official website without noticeable distanciation or humour, failed to meet these criteria.
The court, while noting the absence of a reliance on fair dealing for reporting current events, acknowledged that the Fishrot scandal remains a matter of ongoing public interest. It accepted that the Odee intended to highlight this controversy but concluded that the methods employed did not satisfy the fairness standards required for such use.
On the issue of public interest, the court briefly considered this defense but found it underdeveloped in the absence of substantive legal arguments. Instead, it applied the proportionality test under the framework of freedom of expression. The court held that public interest considerations could not justify the Odee’s actions, particularly the fabrication of statements attributed to Samherji. These statements, including apologies and commitments, were not made by the Claimant but were presented as such to serve the Defendant’s critical agenda (para 77).
Finally, regarding the tort of malicious falsehood, the court found that the Defendant’s malicious intent was evident. It held that the Domain Name and the Website constituted instruments of deception, deliberately created to mislead users into believing they were engaging with the Claimant’s official communications. This intentional misrepresentation further underscored the fraudulent nature of the Defendant’s conduct.
Comments
It is believed that Odee intends to appeal the court’s decision, and if permission is granted, the matter could proceed to a full trial. To succeed, Odee will need to demonstrate that the appeal has a real prospect of success or that there exists some other compelling reason for the appeal to be heard. Several key issues warrant consideration:
- Balancing Freedom of Expression and Intellectual Property Rights
The court appears to conflate the domain name and the website in its analysis. However, it can be argued that these two elements should be treated separately, as their functions and implications differ significantly. - Passing Off and Cybersquatting
The doctrine of passing off is designed to protect commercial interests by preventing misrepresentation that could lead to consumer confusion. In British Telecommunications (BT) v One in a Million [1998] EWCA Civ J0723-8, the court addressed cybersquatting, where domain names of well-known marks were registered with the intent to resell them for profit. In Odee’s use, however, there is a critical distinction: he did not acquire the domain for commercial gain or resale, which is typically central to establishing a claim of passing off. - Parody and Passing Off in UK Law
The intersection of parody and passing off has historically been contentious in UK law. For example, in the Alan Clark case, politician and author Alan Clark successfully prevented the Evening Standard from publishing a satirical column titled Alan Clark’s Secret Diaries, which included his name and photograph. The court found that a substantial portion of readers had been, or were likely to be, misled into believing Clark was the author. This confusion was neither fleeting nor inconsequential, and disclaimers by the publication were deemed insufficiently clear to dispel the misunderstanding. These teachings are still very relevant today and perhaps provides context for the difficulties faced in this case. - Parody Exception in Copyright Law
The judgment makes limited reference to the parody exception under UK copyright law. But it must be noted its relatively recent introduction and sparse case law, with only one significant decision from the Intellectual Property Enterprise Court (Shazam). This summary judgements nevertheless reflects the difficulty in appraising the contextual nuances of humorous uses. Yet, the European Court of Human Rights has noted that owners of well-known brands may be subject to a higher tolerance for critical use (Steel & Morris v UK, para. 94). In the context of the Fishrot scandal, Samherji issued a 2021 statement apologising for “mistakes” while denying criminal wrongdoing. Additionally, a report by the Namibian think tank Institute for Public Policy Research (IPPR) urged Samherji to apologise for its role in Fishrot and to provide redress to affected individuals and communities. Given Samherji’s consistent denial of responsibility, it is arguable that an average member of the public would not reasonably believe the website in question was genuinely associated with Samherji. - Odee’s Intent and Execution
Odee’s primary intent was to draw public attention to and encourage debate about Samherji’s alleged denial of accountability in Namibia. However, unlike cases such as AGL Energy Limited v Greenpeace in Australia, Odee failed to include clear indicators distancing the website from Samherji. This absence of contrast or disclaimers increases the likelihood that members of the public might mistakenly attribute the statements on the website to Samherji.
As outlined above, this case is far from straightforward. Its complexity arises from the challenges of contextualising Odee’s use, balancing the competing rights of freedom of expression and intellectual property, interpreting the evolving scope of passing off, and applying the relatively new requirements for parody as well as adapting old doctrines. Additionally, it raises broader questions about the extent to which copyright law can be leveraged to protect a company’s reputation….