20 November 2018Copyright

Shakespeare trust hits ex-licensee with copyright and TM suit

The Shakespeare Globe Trust (Globe), a charity focused on promoting and celebrating William Shakespeare’s impact on the world, has accused a former licensee of infringing its copyright and trademarks.

The trust filed its lawsuit against Kultur International Films, a film company that specialises in the distribution and production of performing arts and other genres on DVD, yesterday, November 19 at the US District Court for the District of New Jersey.

Since 1997, Globe has owned and operated the Globe Theatre in Southwark, London, which stages works of Shakespeare and his contemporaries.

Built in 1599, the original Globe Theatre became the home of Shakespeare, a partial owner, and his acting company The Lord Chamberlain’s Men.

American actor, director, and producer Sam Wanamaker founded the modern day Globe in 1970 and dedicated it to the reconstruction of the theatre and the creation of an educational centre and permanent exhibition.

According to the claim, Globe entered into a distribution agreement with Kultur in 2011, under which Kultur received an exclusive licence to make and sell certain Globe works in the US and Canada.

Globe gave notice to terminate the licence in March 2017. The licence expired in May 2017, but Kultur allegedly continued to sell the works.

Globe also claimed that it demanded that Kultur stop its infringing activities in a phone conversation with Dennis Hedlund, the founder and chairman of Kultur, who is also named as a defendant.

“Defendant Hedlund responded that ‘we are not going to stop selling the titles’ and Globe will need to ‘take this to a higher authority’,” alleged the claim.

Globe owns US copyright for a number of Shakespearean works, including ‘Shakespeare’s Globe: All’s Well That Ends Well’ and ‘Shakespeare’s Globe: Twelfth Night’.

It also owns two trademarks (US numbers 2,648,425 and 2,440,022) which feature the words “Shakespeare’s Globe” above a circular logo. One of the trademarks covers class 16 (paper goods and printed matter) and class 41 (education and entertainment services).

“Globe has expended a substantial amount of money and effort in advertising and promoting the Globe trademarks, including using the mark on merchandising, press releases, and other promotional material,” said the claim.

Along with offering allegedly infringing works for sale on its own website, Kultur is reportedly marketing the works on third-party vendors and displaying excerpts from Globe works on its YouTube channel.

“The controversy is sufficiently immediate and real, and defendants have threatened Globe with great harm by undercutting the price of the Globe works to wilfully ‘bring down the market’ for the Globe works as retribution for Globe’s protection and enforcement of its IP rights,” alleged the suit.

The trust has asked the court for injunctive relief, statutory damages of $150,000 per work infringed, profits, and for the remaining inventory of Globe’s works to be returned to the trust.

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7 July 2017   A screenwriter who claimed his copyrighted work on William Shakespeare had been infringed has lost his case at the US Court of Appeals for the Ninth Circuit.