Practice and Procedure


PUBLISHED March 27, 2003

Where an injunction had been granted to prevent the defendant using the initials "WWF", a third party licensee of intellectual property rights from the defendant was entitled to a suitable declaration to protect its position in relation to use of the initials which it was not practical to discontinue.Appeal by a licensee of intellectual property rights from the decision of Jacob J holding that the sale of computer games by the appellant incorporating a "WWF" logo was in breach of an injunction obtained by the claimant Fund against the defendant Federation. In WWF - World Wide Fund for Nature (formerly World Wildlife Fund) v World Wrestling Federation Entertainment Inc (2002) FSR 33 the Court of Appeal upheld an injunction against the Federation designed to enforce an agreement made in 1994 between the Fund and the Federation settling a long-running dispute over the use of the "WWF" symbol. The injunction restrained the Federation whether directly or indirectly by its officers, servants, agents, subsidiaries and licensees from using the initials WWF. The Federation had taken extensive steps to comply with the injunction including rebranding its products under the symbol "WWE". The appellant ('THQ') made video and computer games and was a licensee of the Federation under a 1998 agreement. THQ had eliminated all references to the WWF logo from the packaging and promotional materials of existing games and the logo had not been incorporated in any new games. However some existing games had the WWF logo embedded into the computer programming code of the gameplay. THQ said that cost and technical difficulty made it practically impossible to reprogramme the games to eliminate all references to the logo in the gameplay. THQ applied in the proceedings between the Fund and the Federation for a declaration that continued marketing of video games containing the initials WWF was not in breach of the injunction and so not in contempt of court, alternatively for a stay of the effect of the injunction. The judge held that the injunction imposed an absolute obligation on the Federation to discontinue the use of the prohibited marks by its licensees, alternatively that the 1998 licence agreement gave the Federation the power to require THQ to stop using the logo. On either view THQ's continued use of the logo would involve a breach of the injunction by the Federation aided and abetted by THQ. He therefore declined to make the declaration sought or to stay the injunction in relation to THQ. On appeal by THQ the issues were: (i) whether the injunction imposed absolute liability on the Federation for the acts of licensees; (ii) whether the Federation had taken all reasonable steps within its power to prevent THQ performing infringing acts; (iii) whether THQ's conduct constituted aiding and abetting breach of the injunction by the Federation; and (iv) whether THQ was entitled to a stay of the injunction as against it.HELD: (1) The injunction imposed obligations on the Federation, not anyone else, and did not impose on the Federation absolute responsibility for acts of independent third parties. The inclusion of licensees did not require the Federation to do things that were outside its powers. Its effect was to restrain the Federation from in the future authorising or causing the doing of the prohibited acts by licensees but not to make it absolutely liable for actions of licensees under existing agreements. (2) The Federation had some responsibility for the acts of its licensees (Hone v Page (1980) FSR 501). It was possible for the acts of THQ to result in the Federation being in contempt if it failed to take all reasonable steps within its power to prevent such acts. The Federation did have a power under the 1998 licence agreement to require THQ to discontinue use of an element of intellectual property, the precise limits of which were open to argument. In any event there was no evidence that the Federation had failed to exercise such powers as it had. (3) Even if there were to be a contempt by the Federation it could not be said to be aided and abetted by THQ. There was no interference with the administration of justice (Attorney-General v Times Newspapers Ltd (1992) 1 AC 191 and Attorney-General v Punch Ltd (2003) 2 WLR 49 considered). THQ was an independent party pursuing its own commercial interests under a licence granted before the injunction was made. THQ was entitled to a suitable declaration to protect its position. (4) (Per Peter Gibson LJ and Blackburne J) If the issue of stay had arisen the balance of considerations favoured a stay. (Per Carnwath LJ) A stay would not have been an appropriate course in this case. In principle the judge was right that THQ should look to the Federation to recoup any losses.Appeal allowed.

[2003] EWCA Civ 401