What's the difference between a book, a film and a tour?
We argued that people are easily able to distinguish between a book, a film and a tour, and that most would not even be aware that Warner Brothers was the company behind the Harry Potter films. It was not accepted. "It is the brand itself that is damaged," we were told. "What if someone gets injured on the tour? We have no control over what they're doing," went the argument.
However, despite continued legal pressure over the past 16 months, British Tours has steadfastly refused to budge, arguing that there is nothing in law that entitles Warner Brothers to prevent people from pointing out where a film was filmed.
Warner Brothers agrees - now: "We are not asking them to stop the tour, just to rename it," the spokeswoman told us. "And to put up a notice to say that it is an unofficial tour." It has requested that British Tours change its "Harry Potter tour" to "Tour of Locations used in the Harry Potter films" and add a disclaimer that the tour is "not approved or endorsed by or otherwise connected with Warner Bros or JK Rowling".
British Tours speaks of a far less reasonable approach, however. After a year of letters, faxes and phonecalls, Warner Brothers' lawyers said it would consider not bringing an interim injunction against the company if it showed its goodwill. British Tours felt that the need to pay the lawyers £1,500 to reflect this goodwill was too much. It refused and stated quite clearly: "If your client decides to issue proceedings against us we shall be applying for a strikeout and for damages and costs resulting from such an attempted abuse of court processes."
The saga continued. Another letter arrived accusing British Tours of being "petulant", of "blatant use.. for commercial gain", of purposefully wasting its time and so increasing costs. British Tours got back again: "Any reasonable person reading the entire correspondence would be bound to conclude that you are the inititator of most of this wasted time and cost for both sides."
As a company whose business is showing people around old and ancient buildings and monuments, British Tours also sought to assure Warner Brothers that Harry Potter was not that important to it. "We are a tours company showing 2,000 years of British history to our clients, not a video seller and Harry Potter is of quite ephemeral interest to us."
This only incensed Warner Brothers further. In the course of another series of correspondence, it turned out that British Tours actually informed Warner Brothers about its intention to run Harry Potter tours in 2002 and received no suggestion that this would infringe any apparent trademark. Irrelevant, cried a letter from Warner Brothers dated 29 June 2004.
It's just business
And if there were any doubt of the mini-business run on top of the Harry Potter name, British Tours' Jason Doll-Steinberg informed us: "We received one fax from Addleshaw which contained pages taken from correspondence about another of their Harry Potter 'extortion attempts' with someone else. It seems Addleshaw are shooting their attempts off so fast that they are losing control of who they are actually writing to in each case." In fact, Warner Brothers' spokeswoman confirmed as much, telling us: "We're an IP company. This is what our company is and does."
So do the claims have any legal foundation? Warner Brothers says yes. "The company is using our intellectual property for commercial gain. We have to enforce our marks." We were pointed to several European and UK trademarks of "Harry Potter" that it holds. The relevant types were class 39 and class 41. That being "transport; packaging and storage of goods; travel arrangement" and "education; providing of training; entertainment; sporting and cultural activities" respectively.
It is more important than that though. "Under English law, if you don't enforce your trademark, you lose it," Warner Brothers' spokeswoman stressed. This is in Section 48 of the Trademark Act 1994. While the United States has chosen to interpret its trademark law so that a company has a duty to continually enforce its trademark or risk losing it, the UK has taken a less active route. Warner Brothers sees no difference between the two systems however.
The relevant section, entitled "Effect of acquiescence" refers only to a trademark "as acquiesced for a continuous period of five years" before it become invalid. Across the world, five years is the longest time that a trademark is held valid without enforcement, the shortest being two years, and most countries ending up in between.
Some pertinent questions
Why does Warner Brothers feel the need to intervene in the case of Harry Potter when the Winston Churchill Foundation has no problem with the Winston Churchill Tour, when the Conan Doyle Foundation has no problem with a Sherlock Holmes Tour, and Paul McCartney has no problem with a Beatles Tour?
"We can't comment on other people. We aren't those organisations," we were told. "We want to protect our fans."
Okay, why then, when British Tours has made it crystal clear that it has no intention whatsoever of following Warner Brothers' wishes, does the company not come good on its 16-month-long threat to sue and simple take them to court?
"We don't generally discuss legal issues or what action we might take. We are asking British Tours to do something very reasonable," came the response.
In the case of WB v British Tours it appears that there is no real litigious intent behind the sabre-rattling. The posturing is simply a pressure tactic, continued indefinitely until the weary defendant finally give in to the giant's demands.
In British Tours' case, however, the target has decided to take inspiration from the subject of one of its other character-based tours - Winston Churchill: "We shall go on to the end, we shall fight on the seas and oceans, we shall fight with growing confidence and growing strength in the air, we shall defend our Island, whatever the cost may be, we shall fight on the beaches, we shall fight on the landing grounds, we shall fight in the fields and in the streets, we shall fight in the hills; we shall never surrender." ®