#6661 - World Wide Fund For Nature V. World Wrestling Federation - Commercial Remedies BCL

World Wide Fund for Nature v. World Wrestling Federation

Facts

The Fund is a well known charity concerned with a broad range of environmental conservation. The name and initials “WWF” were extremely well known worldwide and had enormous recognition. It was founded in 1961 as the World Wildlife Fund. To enhance its image and to raise money it engaged in a number of merchandising activities through gifts, catalogues and licensing. All the goods were consistent it is alleged with the Fund's “image”.

The Federation was originally known as Titan Sports Inc and was an American company which was the successor in business to the World Wrestling Federation. That organisation used the initials WWF in about 1979 and until the late 1980s, its activities were broadly confined to the United States. Its core business was organisation and promotion of live wrestling entertainment events. By the 1990s it was engaged in the sale of magazines, videos and associated merchandising.

The Fund did not object initially to any of this use but when the Federation made a US trade mark application for the initials WWF it objected. The objection was resolved by a Letter of Agreement of September 12, 1989 which placed a minor restriction on the Federation's use of the Initials.

By that clause the Federation undertook forthwith to cease and thereafter to refrain from using or causing to be used the Initials whether in printed or written or other visual form in any country of the world in or for the purpose or in connection with its business. It also agreed immediately to cease and thereafter refrain from using or causing to be used the Initials orally in any language in any country of the world in or for the purpose or in connection with the promotional sale or in any other connection with any goods whatsoever; to cease and thereafter to refrain from the encouragement directly or indirectly of support including donations or otherwise for charitable or similar purposes: and to cease and thereafter to refrain from the promotion or sale of or in any other connection with services other than those permitted.

Numerous breaches are identified in para.9 of the original Particulars of Claim. These breaches involve two main categories. First, there was a use of what was called the “Scratch” logo which was a different form of logo from that which was authorised. Secondly, there was extensive use of the Initials on the internet. The internet was in a fledgling state at the time of the Agreement.

Claim for Wrotham Park Damages: Thereafter the Fund issued two applications. First, by notice dated January 24, 2001 it sought permission to amend its Particulars of Claim to include a new remedy described in the covering letter as “restitutionary damages” following the decision of the House of Lords in Attorney General v Blake [2001] 1 A.C. 268.

Claim for Account of Profits: An order that the defendant account to the claimants for all profits that it has made by using the initials WWF otherwise than as permitted by the terms of the Agreement.

Question

Whether or not in law the Fund can bring a claim for damages in the form of a reasonable payment as a quid pro quo for it relaxing its rights under the Agreement as alleged in paras 6–8 in the amended claim for damages.

Holding

Difference between Wrotham Park Damages and Account of Profits

It is important to appreciate that damages under the Wrotham principle are not the same as an account. The judgments in the House of Lords must be read in the light of their primary decision that Blake was liable to account exceptionally. There is a close affinity in my view between damages under the Wrotham principle and an account. That closeness becomes marked when a claimant seeks damages under the Wrotham principle by reference to the defendant's profits especially when as in the present case the Fund seeks a percentage of all profits whether derived from the use of the Initials (and thus in breach of contract) or whether as a result of the Federation's separate and independent efforts to make profit.

One can see this blurring by considering the following. In...