The recent tongue-in-cheek “cease and desist” letter sent to Jacob Rees-Mogg MP created quite a talking point.
Scotland-based comic the Beano recently alleged that Mr Rees-Mogg was infringing its intellectual property rights by “masquerading as Walter Brown” (one of its characters) for the purposes of “enhancing [Rees-Mogg’s] career and popularity”.
Whilst the purpose of the Beano’s letter was plainly one of publicity, there being no genuine legal basis for the Beano’s claim, the letter nevertheless raises several interesting legal points.
It further demonstrates how companies are starting to use the traditionally staid domain of legal letters to garner publicity for their brand.
Take, for example, Netflix’s letter to an unauthorised Stranger Things theme bar which contained multiple references to the show. The letter concluded “please don’t make us call your mom”. Then there was Budweiser’s use of a town-crier to complain about the unauthorized use of a medieval phrase for which Budweiser had obtained a trade mark.
In both cases, rather than running the risk of an accusation of bullying (as Nando’s recently endured when reading chicken shop, Fernando’s leaked its letter before action to the press), these companies have benefited from the positive publicity generated by their light-hearted approach.
So, are there any circumstances in which the owner of a fictional character could have a claim against a real-life impersonator? Possibly – though they will certainly be rare!
Let’s look at the options.
Option one – “passing off”
Where a person falsely represents that his or her business (in the sense of the provision of goods or services) is endorsed by the owner of the goodwill in the fictional character, the character owner may have a claim for passing off.
But the success of that claim would depend on a key question. Do the impersonator’s actions give rise to a false message which would suggest to a significant section of the character owner’s market that the impersonator’s goods or services are endorsed by the character owner?
This will not be the case for Mr Rees-Mogg. Whilst Mr Rees-Mogg is an MP – which may be sufficient to meet the requirement that the defendant be engaged in business (although we are doubtful), it is stretching the limits of the claim too far to suggest that Mr Rees-Mogg is, by his innate physical appearance and personality, somehow misrepresenting that his political services are endorsed by the Beano.
So, let’s look at option two – defamation
It is even more unlikely that the Beano would be able to sue for defamation on grounds that, by (unintentionally) mimicking Walter Brown, Mr Rees-Mogg had caused serious harm to the Beano’s reputation (but not the fictional Walter, of course).
It’s worth noting, however, that in different circumstances – for instance where a public figure intentionally and recognisably impersonates a well-known fictional character whilst advocating controversial views – a claim for defamation may well stand a better prospect of success.
And here’s another interesting way to look at it. Could Mr Rees-Mogg counterclaim?
What if he had had not taken the jibe in such good form? It is conceivable that he may, in fact, have had grounds to bring a defamation claim against the Beano on the basis that their letter is likely to adversely affect his reputation in the estimation of reasonable people.
Or he could have considered making a claim against the Beano for unjustified threats. But given the language and tone of the letter, it is unlikely that such a claim would be successful, since a reasonable person reading the letter would have understood that the Beano did not genuinely intend to bring infringement proceedings.
So, in short, I would be very surprised if we saw this matter go any further. However, as legal letters become more popular as a publicity tool, rights owners should will still need to exercise care when making allegations of trade mark, design or patent infringement (though not copyright infringement or passing off) to ensure that they do not give the infringer the ability to turn the tables on them with a claim for unjustified threats.