The Real Diddy

"Will The Real ‘Diddy' Please Stand Up!!!"

It has been argued that the music industry is now more populous than ever, due to technological advancements. Websites such as YouTube and MySpace mean more choice for the consumer but of course this makes it harder for an artist to be distinguishable.  They must not only be distinguishable by talent, they must be distinguishable by name also. But with so many artists in the industry, how can you be certain that your chosen performance name has not been used previously? The Sean Combs[1] case is an example of how even the most successful recording artist can fall foul of using another artist's performing name without permission.

Background

The case involved Richard Dearlove who is a record producer, re-mixer and recording artist, and Sean Combs who is an internationally famous record producer, re-mixer and recording artist known as ‘Puffy', ‘Puff Daddy' and ‘P Diddy'. In 2005, Mr Combs announced that he would now be professionally known as ‘Diddy'. Shortly afterwards Mr Dearlove wrote to Mr Combs explaining that Mr Dearlove had rights in the name ‘Diddy' as he had been professionally using that name in the UK since the early 1990s and requested that Mr Combs cease using the name in the UK. Initially Mr Combs refused and Mr Dearlove commenced proceedings for Passing Off. The claim asserted that Mr Combs in the course of the trade in the UK advertised and provided his goods and services under or by reference to the word ‘Diddy'. Mr Combs disputed Mr Dearlove had any goodwill or reputation in the UK and that he had been using and been recognised by the name Diddy since 1997. However before the trial date, Mr Combs proposed terms of settlement which Mr Dearlove accepted and both parties entered into a Settlement Agreement.

Settlement Agreement

The main terms of this agreement were that Mr Combs as well as his employees, agents or otherwise would refrain from advertising/offering goods or services as a re-mixer, producer, songwriter, recording artist or DJ as ‘Diddy' within the UK, and undertakes to remove from the UK all materials or articles that are in possession, power or control of the defendant which would contravene the foregoing undertaking. Mr Dearlove claimed Mr Combs was not complying with the terms of the agreement so he launched an application for summary judgement.

What constitutes ‘use' of a Trade Mark on the Internet?

The first claim was the use of the name ‘Diddy' in connection with the websites My Space and YouTube and a further website www.badboyonline.com. As the terms of the settlement agreement stated that Mr Combs would not advertise goods or services under the name of ‘Diddy' in the UK, Kitchin J addressed whether or not placing a mark on the Internet can constitute the use of that Mark in the UK. Drawing from the decisions made in previous cases concerning the us of trade marks on websites[2], he concluded that although placing a Mark on the Internet from a location outside the UK can constitute use of that mark in the UK, it is reliant upon whether or not the average consumer of the goods or services in issue within the UK would regard the advertisements and site as being aimed and directed at them.

Mr Dearlove also claimed that 6 tracks on the Press Play album contained a number of references to Mr Combs as ‘Diddy' and constituted a breach of the settlement as these lyrics were a form of self-promotion and advertisement and would destroy Mr Dearlove's goodwill in the UK. In his judgement Kitchin J could see no reason why a lyric cannot be used to advertise goods or services under a particular name but it must depend on all circumstances including how the lyric would be understood by the average consumer.

The Ruling

In this case, Kitchin J found in favour of Mr Dearlove, ruling that the contents of the websites in question did constitute the advertisement within the UK of Mr Combs recordings and services under the name ‘Diddy' as the websites had promotional material relating to UK tour dates and performances. He also ruled that the lyrics of only one song on the album ‘Press Play' constituted the advertisement within the UK of Mr Combs recordings and services under the name ‘Diddy'.

Although in his judgement Kitchin J stated that he found it highly unlikely that Mr combs had no control over the websites due to its personal nature and his relationship with the record label, he was not able to rule on whether Mr Combs had control over the content of the websites due to the fact that there were other parties that were involved that were not part of the dispute.

What does this mean for artists?

This case has not changed the law concerning Passing Off dramatically, but it does highlight the need for artists in the record industry to do extensive research before they adopt a performing name. With search tools such as the Internet, it will become increasingly more difficult for artists to claim they had no knowledge of a previous claim to a performing name if a dispute arises. It has also highlighted that although the Internet is a global tool covering many jurisdictions, traditional principles of protecting Intellectual Property rights can still be applied to industries that are affected by rapid technological advances.

Mulika Sannie

Waterfront Partnership

©Waterfront Partnership 2007


[1] Richard Dearlove (T/A Diddy) v Sean Combs (T/A Sean ‘Puffy' Combs, Puffy and P Diddy) (2007) EWHC 375 (Ch)

[2] 800-Flowers Trade Mark (2002) FSR 697, 800-Flowers Trade Mark (2002) EWCA Civ 721: (2002) FSR 12 and Euromarket Designs Inc v  Peters and Crate & Barrell Ltd (2001) FSR 20

Intellectual Property