Dearlove (t/a and Professionally Known As "Diddy") v Combs (t/a and Professionally Known As "Sean 'puffy' Combs", "Puffy" and "P.Diddy")

For internet advertising, accessibility in the United Kingdom does not alone establish use in the United Kingdom. The question is whether the average UK consumer would regard the website as aimed and directed at them, assessed in all the circumstances. Relevant factors include the goods or services, the website’s presentation, purchasing facilities, actual UK sales and the advertiser’s intention.

A lyric may advertise goods or services under a name, but the assessment depends on how the average consumer would understand the lyric in its full context. Summary judgment may determine such issues where further evidence or cross-examination is unlikely to assist. Issues requiring factual investigation, such as control over third-party websites or recordings, should proceed to trial.

The claimant, a UK recording artist known professionally as “Diddy”, sought summary judgment for alleged breaches of a settlement agreement under which the defendant undertook not to advertise or provide goods or services in the United Kingdom under or by reference to that name.

The remaining complaints concerned promotional pages on MySpace and YouTube, the badboyonline.com website, and references to “Diddy” in songs on the defendant’s Press Play album. The central issues were whether the materials advertised goods or services in the United Kingdom and whether they were activities conducted or controlled by the defendant.

The application was determined in part on the evidence available and in part left for trial or further determination.

1. Summary judgment. Applying the approach explained in Celador Productions v Melville [2004] EWHC 2362, the court could decide issues summarily where the defendant had no real prospect of success and further disclosure, evidence or cross-examination was unlikely to assist. The court could not conduct a documentary trial on disputed factual issues.
2. Internet advertising. Use of a mark on an overseas website can constitute use in the United Kingdom. The decisive question was whether the average UK consumer would regard the site as aimed and directed at them. The court applied the reasoning in 800-FLOWERS Trade Mark [2000] FSR 697, its appeal [2001] EWCA Civ 721; [2002] FSR 12, and Euromarket Designs Inc v Peters and Crate & Barrel Ltd [2001] FSR 20.
3. The MySpace and YouTube pages and the badboyonline.com website promoted the defendant’s recordings, album, services and forthcoming UK performances under or by reference to “Diddy”. Their international marketing purpose, UK references, UK sales and advertised UK shows showed that they were directed at UK users. The defendant therefore had no real prospect of defeating that issue at trial.
4. The control issue could not be decided summarily. The contractual arrangements and the defendant’s previous admissions strongly suggested control, but the evidence concerning the corporate entities required further investigation.
5. A lyric can constitute advertising, depending on the average consumer’s understanding of the lyric as a whole. The song “The Future” advertised the defendant’s CD, downloadable songs and live shows under or by reference to “Diddy”. The other songs merely referred to the defendant by that name and did not advertise goods or services in the United Kingdom.

The court found the relevant website materials and “The Future” to constitute advertising within the undertaking, but left the control of the websites and album for further determination. The appropriate form of order was to be addressed separately.