Return to main Advice page

Legal Eagle

Copyright

Q: Passing Off - remedy

A theatre group listed itself under our venue's name in a theatrical yearbook without permission, and gave its director's home number in place of ours. It has since disbanded and no calls or messages intended for us have ever been forwarded. I informed the publisher's of this and was told the mistake would not be repeated, only to read the same error in this year's book. What can we do?

A: There is no copyright in a name so no action will lie for breach of copyright, nor is the wrongful use of your name defamatory since it does not of itself injure your reputation. However, an action may lie against the perpetrators for what is called "passing off' or for injurious falsehood or both. To have a good cause of action for passing off your business as theirs, you would have to establish - to the satisfaction of the court - on the balance of probabilities that there has been a misrepresentation (clearly so in the present instance), which is likely to lead to confusion of your business with theirs in the minds of reasonable members of the public, and in a way which has damaged or is likely to damage the goodwill of your business. Damage may be inferred by the court since it is difficult to prove. Instances of actual confusion, while helpful, are not necessarily conclusive. However, it has been held that mere postal confusion (and by analogy mere telephonic confusion), is not of itself enough without proof of loss of business since it may result in mere embarrassment and inconvenience. Therein lies the nub. It is difficult to express a definitive opinion without knowing more about the circumstances and particularly how the inscription in the directory was presented.

An action for injurious falsehood (also known as malicious falsehood) would lie if it can be shown that the perpetrators made an untrue statement about your business without just cause, calculated or likely to cause damage to your business.

Much will depend on whether a court can be persuaded to take the view that persons intending to place business with you were likely to telephone the other party in the belief that they were you, which presupposes that such persons have some knowledge of you or your reputation in the first place, so that business which should have come to you was, or was likely to be, diverted to the other party. In this connection it is relevant to ask oneself why they should have done it if diversion of business was not their motive.

If, as seems likely, you have a good cause of action against them as indicated, your remedy will be a claim for an injunction to restrain any repetition and for damages.

As to their apparent disbandment, the individual persons concerned will be liable to you personally (assuming them to be worth powder and shot) and it is simply a question of tracing them by whatever means are available to you, if you are prepared to bear the expense. Otherwise, forget it and concentrate on ensuring that the publishers do not repeat the mistake. If the theatre group operated as a company then a company search should disclose the names and addresses of the directors which will be a starting point for your tracing efforts.

The publishers would not be liable for the original entry unless they were aware of the true position but, once put on notice by you, they would thereafter owe you a duty of care not to repeat the mistake. Clearly there was a breach of that duty, which would give rise to your having an action against them in negligence, but again the court would need to be satisfied on the balance of probabilities that some damage to you was likely to be sustained. I should imagine that lodging of a claim against the publishers in negligence would result in negotiations for compensation. It would be a salutary lesson to them not to repeat the mistake yet again. You could also seek to prevail upon them to publish a correction and apology. You could also, if you are so minded, publish a correction yourself in some suitable journal or forum and include the cost of this in your claim against the theatre group and/or the publishers.

First published January 1998