BBC v Talksport
British Broadcasting Corporation v Talksport Ltd
 Lexis Citation 1955
(Transcript: Marten Walsh Cherer)
Passing off – Injunction – Elements of passing off – Claimant holding live broadcasting rights in relation to Euro 2000 football matches – Whether goodwill established – Whether arguable case made out – Whether court should grant interim injunction
19 JUNE 2000
19 JUNE 2000
G Hobbs QC and P Roberts for the Claimant
Ms Dohmann QC and Mr Howe for the Defendant
None stated at original source
At the end of argument late on Friday afternoon I said that I was not persuaded to grant an injunction, briefly indicated my reasons for that conclusion and stated that I would give my reasons in greater length this morning. This I now do.
First of all, the background to the dispute.
As must be evident to just about everyone, this is the year of the European Football Championship, popularly known this year as "Euro 2000". It is taking place in Belgium and the Netherlands. It began on Saturday the 10th of June and culminates in a final on Sunday the 2nd of July.
It commands huge interest among the public and attracts widespread media attention. Since relatively few have the time or opportunity to travel to where the matches are taking place, and even fewer are able to obtain tickets to the games themselves, radio and television coverage of the event is of great importance.
In Europe, the broadcasting rights to the championship, ie. the right to broadcast on radio and television, live coverage of the matches from within the stadia where they are taking place has been granted to the European Broadcasting Union, which is an association comprising the major broadcasters in the countries in and around the continent of Europe. This was pursuant to an agreement entered into in 1994 between UEFA, European football's governing body which has responsibility for the championship, and the EBU. The result of this, and the rules governing the EBU, is that within the United Kingdom the exclusive right to broadcast live radio and television coverage of Euro 2000 is enjoyed by the very small number of UK broadcasting services, which are members of the Union. By "live coverage", I mean live radio and television coverage of the matches from within the stadia where and as the matches are taking place.
Prominent among those few in the United Kingdom is the BBC. Since the others similarly entitled are not offering radio coverage confining themselves to television transmission, the effect is that the BBC is the only UK broadcasting service legally entitled to do so, which is broadcasting live radio coverage nationwide of Euro 2000 matches. It is doing so through its Radio 5 Live channel. It has paid a considerable price for the privilege of providing live radio and television coverage. Capital Radio, another UK member of EBU, provides some live radio coverage in selected regions, notably in London.
Talksport Limited, the defendant before me, is a licensed United Kingdom radio broadcaster. As its name implies, its broadcast output is very heavily focused on sports coverage. It is not a member of the EBU. It has sought to acquire membership, but has so far failed to achieve it. The result is that, although dedicated to sports coverage, it is denied the opportunity of providing live, ie. in-stadium, radio coverage of what, by common consent, is the biggest sporting event of this summer.
Instead, it has resorted to another means of covering the event. It does so"off-tube"; ie. from a television screen outside the stadium where the match in question is being played. Off-tube coverage is a well-known broadcasting technique. The commentator sits in front of an ordinary television set watching the event as transmitted by some other organisation, and describes to the radio listener what he can see from the screen in front of him. The commentator's awareness of what is going on at the match, being confined to what he sees on the television screen, is necessarily more limited than that of the commentator viewing the event with his own eyes from within the stadium itself. Whereas the commentator in the stadium can pick up and comment on events away from the scene of play which he happens to notice elsewhere in the stadium, the off-tune commentator can only comment on what the producers of the television broadcast which he is watching choose to screen.
A major disadvantage of off-tube coverage is, or may be, its lack of background or ambient sound. Where the coverage is live, ie. from within the stadium, ambient sound is provided either from the broadcaster's own microphones placed by or near the commentary position in the stadium, or via a feed from the host broadcaster where the event is taking place. With an event such as a football match, ambient sounds – the roar of the crowd, the noise of the ball being kicked and the blowing of the referee's whistle – are essential to the quality of the radio broadcast, allowing the listener to experience the atmosphere of the stadium where the event is taking place.
To overcome this problem, without infringing the copyright of an authorised transmission from the stadium, the off-tube broadcaster must either somehow position his own microphones outside the stadium in an attempt to pick up the sound of what is going on within, which is usually wholly impractical and can rarely be effective, or else resort to sound effects disks; ie. he adds the crowd's noises and the like derived from some altogether different match. He does so in order to convey the sense of excitement, immediacy and presence at the event which is essential if the broadcast is to be of interest to the listener. A description of a football match without any ambient sound would be a tame and unengaging experience and would be unlikely to attract any listeners, especially if they could hear the real thing on another channel.
It is precisely this technique, off-tube coverage, supplemented by pre-recorded ambient sound effects, that Talksport has resorted to in its coverage of Euro 2000.
What prompted these proceedings was Talksport's advertising of its Euro 2000 coverage as being "live". The BBC objected to this. It considered that by representing that it was providing live radio coverage, Talksport was representing falsely that its coverage would be by commentators from within the stadium, describing what they see with their own eyes as distinct from what they see on the television monitor alone, together with ambient sound from the matches themselves. Believing correctly that, as a broadcaster without the right to provide live coverage from within the match stadia, Talksport's coverage would be off-tube with ambient sound provided by pre-recorded sound effects, the BBC complained that Talksport was incorrectly representing the nature of the coverage it was providing, and incorrectly representing itself to be the holder of live broadcasting rights. In a letter before action dated 8 June, it claimed that misrepresentations to this effect were, by their very nature, liable to injure the BBC in its exploitation of the goodwill and reputation to which it was entitled as the holder of live broadcasting rights to the Euro 2000 matches, and sought from Talksport undertakings of various kinds including an agreement to pay compensation and the BBC's costs.
In reply, Talksport claimed that to describe the broadcast as live did not imply that the coverage came from within the relevant venue; merely, that the commentary would be taking place at the same time as, or very shortly after, the event in question. It said that its commentators had been instructed to state that their commentaries were unofficial, or unauthorised and derived from television. It stated that it would be willing to use all reasonable endeavours to ensure: first, that no representation was made that any broadcast which did not consist of commentary from the commentator present in the stadium, would or did contain such coverage; two, that no representations were made that Talksport had official broadcasting rights to any Euro 2000 matches; and, three, that when broadcasting match commentaries, commentators would make clear that coverage was from a television set outside the venue and that the coverage was unofficial or unauthorised. It refused to agree to pay any compensation to the BBC or its costs, and denied that the BBC would be entitled to any such relief. The BBC countered by launching these proceedings.
By its amended Pt 7 Claim Form, the BBC claims as follows:
"1. An injunction to restrain the defendant, whether acting by its directors, officers, servants or agents or any of them or otherwise howsoever, from doing the following act, or any of them:
(a) representing or attempting to represent or causing or enabling or assisting any other person or persons to represent that any broadcast which does not contain coverage of a Euro 2000 football match (that is to say, coverage consisting of: (i) commentary on the football match provided by a commentator present in the stadium where the football match is being played and (ii) ambient sound from that stadium) will or does contain live coverage thereof;
(b) representing or attempting to represent or causing or enabling or assisting any other person or persons to represent that it holds official or live broadcasting rights in relation to any Euro 2000 football match.
2. An injunction to compel the defendant to use all reasonable endeavours to ensure that when broadcasting its Euro 2000 coverage, the presenters and commentators make it clear to listeners that such coverage is being provided from viewing a television set outside the venue, and such coverage is unofficial or unauthorised."
By para 3, the BBC claims an inquiry as to damages, or at its option an account of profits, and by para 4, interest and by, subsequent paragraphs, further or other relief and costs.
When the matter first came before me last Monday, which was after the opening matches had taken place, it was on an application by the BBC for interim relief substantially in the terms of para 1 of the relief set out in the claim form. The matter was disposed of by Talksport offering certain undertakings; namely, that until further order it would not do:
". . . the following acts or any of them whether acting by its directors, officers, servants or agents, namely:
1.1 represent (whether by the use of the word live, or other language, that any broadcast which does not contain coverage of a Euro 2000 football match which consists of;
(a) commentary on the football match provided by a commentator present in the stadium where the football match is being played, and;
(b) ambient sound from that stadium
will or does contain live coverage thereof.
1.2. Represent or attempt to represent, or cause or enable or assist any other persons to represent, that the defendant holds official live broadcasting rights in relation to any Euro 2000 football match."
By main paragraph 2, the defendant gave an undertaking that it would:
"use all reasonable endeavours to ensure that when broadcasting its Euro 2000 coverage, the presenters and commentators make it clear to listeners that such coverage is being provided from viewing a television set outside the venue and such coverage is unofficial or unauthorised."
There was then a proviso in the following terms:
"The defendant shall not be in breach of the aforesaid undertakings if a commentator, during the defendant's live coverage of Euro 2000, inadvertently makes use of the word 'live', in circumstances where the defendant has used all reasonable endeavours to prevent such usage."
At that stage, the emphasis in the BBC's claim was on Talksport's representation that its coverage was live, ie from within the stadium, and on the implied representation that its coverage was official, or authorised.
In offering the undertakings, Ms. Dohmann, QC for Talksport, made clear, one, that in volunteering the undertakings Talksport made no concession that the BBC had any cause of action against it, and, two, that it would not be abandoning the use of sound effects during its subsequent broadcasts. It was clearly my impression at the time that the real battle was yet to come – that is to say, over the use of pre-recorded ambient sound – and so it has proved.
While not, I think, suggesting that Talksport has acted in breach of its undertakings, the BBC now moves for additional relief over and above last Monday's undertakings, which Talksport is willing to continue; namely, an order that Talksport:
"be restrained until further order from representing by the use of sound effects that any broadcast which will not, or does not, contain coverage of the Euro 2000 football match which consists of:
(a) commentary on the football match provided by a commentator present in the stadium where the football match is being played; and
(b) ambient sound from the stadium will or does contain live coverage thereof."
This further claim was resisted.
The BBC's claim is in passing off. That involves a consideration of what, in the Parma Hamcase (Consorzio Del Prosciutto Di Parma v Marks & Spencer plc RPC 351), Nourse LJ described, (at at page 368) as:
"the classical trinity of (1) a reputation or goodwill acquired by the plaintiff in his goods, name, mark (2) a misrepresentation by the defendant leading to confusion (or deception), causing (3) damage to the plaintiff."
I will deal first with misrepresentation, since this lies at the forefront of the BBC's evidence. The complaint is not that Talksport has represented, and unless restrained will continue to represent, that its Euro 2000 coverage is in some way connected with or authorised by the BBC. On the contrary, Talksport is most anxious to stress its own separate identity and that it is very much in competition with the BBC. No reading Talksport's pre-championship advertising or listening to its match coverage would have any reasonable grounds for thinking that Talksport's coverage had the least connection with the BBC. The commentators go out of their way every few minutes to emphasise that the listener is listening to the Talksport channel.
Rather, it is of the wider kind which first found clear expression in J Bollinger and others v Costa Brava Wine Company Ltd Ch 262,  3 All ER 800, (and, later,  1 All ER 561,  1 WLR 277), was later developed and explained in Erven Warnink BV v J Townend & Sons (Hull) Ltd AC 731,  2 All ER 927, and, most recently, in Chocosuisse Union des Fabricants Suisse de Chocolat v Cadbury Limited RPC 826; namely, passing off where the defendant is representing, contrary to the fact, that his goods or services are goods or services of the same distinctive character as those of the claimant.
The essential features of Talksport's Euro 200 coverage, to which the BBC objects, and which it says grounds its cause of action in passing off, is the representation by Talksport that its coverage is live; ie. by a commentator sitting within the stadium, able to watch the match in question and reporting on what he sees with his own eyes.
Initially, as I have mentioned, the objection was to Talksport's description of its coverage as 'live'. The evidence discloses a difference as to what is meant by 'live' in this context. Does it mean, as the BBC evidence asserts, that the coverage is being broadcast at the same time as the event in question, and that the commentary is by someone watching the event with his own eyes? Or does it mean, as Talksport asserts, no more than that the commentary is contemporaneous with the event described, meaning that the commentator cannot stop and re-record what he is saying, whether or not present at the event that he is describing?
I have little doubt that in the minds of ordinary radio listeners, in which I would include myself, a live commentary of the sporting event means one by a person present at the event which he is describing, and able with his own eyes to see what he is commenting upon. It was doubtless to clear up any ambiguity over the use of the expression 'live', that Talksport volunteered the undertakings to the court last Monday.
Equally, I have little doubt, having listened to excerpts from a recording of Talksport's coverage of last Monday evening's England v Portugal match, and to an interrupted recording of the first 12 or so minutes of that broadcast, that the average listener would think that he was listening to a live broadcast ie. 'live' in the sense that I have described. This is, in large part, because of the extremely skilful use of ambient sound. Although such sound is wholly pre-recorded, and therefore has no connection with the actual sounds coming from the match being reported, the dubbing is so skilfully done that, in the absence of disclaimers, clearly and repeatedly made, explaining that the ambient sound is not from the match itself, the overwhelming impression is that it is.
Interspersed in the commentary every ten minutes or so – it occurred overall nine times during the 100 or so minutes of commentary – was a disclaimer in the following terms:
"This is Talksport, not the BBC, with unofficial full match commentary on Portugal v England on Talksport, courtesy of our TV monitors at the Talksport Amsterdam Studio."
To the listener caught up in the excitement of the game, conveyed by the skilful commentary and the clever use of ambient sound, these occasional disclaimers scarcely bring home that the commentators are located many miles from the action. More particularly, the disclaimers do not explain that although the commentator might not be at the match but in Amsterdam instead, the ambient sound is entirely false. For all the listener knows, the ambient sound is genuine and it is only the match commentary that is from outside the stadium.
So the element of misrepresentation, ie. that what the listener hears is commentary and ambient sound live from within the stadium, is sufficiently established. But that brings me to the no less important issues of goodwill and damage.
What is the goodwill to which the BBC claims to be entitled which it says is, or will be, damaged by the action of Talksport in falsely representing its Euro 200 radio coverage is live, ie. in-stadium? The goodwill claimed is as a broadcaster of live radio coverage of sporting events. It is not a question of the BBC marketing this activity in some particular way or by some distinctive description like, in another context altogether, champagne in the Bollingercase, or advocaat in the Warninkcase, or Swisschocolate in the Chocosuissecase.
Rather, it is the fact that the BBC has a widespread and long-established reputation as a broadcaster, live, of sporting events. Does such a reputation give rise to protectable goodwill such as to found an action in passing on when someone else falsely claims that its radio coverage of the sporting event is a live broadcast of that event? Although the BBC may choose to describe its live radio coverage of sporting events as a product, the fact is that what is involved is an activity, and that the expression "live broadcasting" or "live coverage of sporting events", or "live broadcasting rights" – the expressions used to describe the activity are various – are no more than descriptions of that activity. It is, of course, well established that if the words used to describe a product, be it goods or a service, are no more than descriptive, the words alone cannot found an action in passing off.
Whilst, no doubt, the BBC is concerned to protect its widespread and long-established reputation as a skilled broadcaster of live sporting events, I do not consider that, on the evidence before me, there is any protectable goodwill simply in what it does, which can ground a cause of action against another who falsely claims, of his coverage of the sporting event, that his broadcast is live. That is what the BBC is attempting to do in this action. The activity alone is not sufficient. It is the indicia by which the activity is known, which, if sufficiently established and distinctive, will provide the essential requirement of goodwill, without which the action of passing off has failed. The reputation the BBC seeks to protect lacks, on the evidence, any such distinctive indicia.
In announcing my decision on Friday, I indicated that the failure to establish an arguable case for protectable goodwill was one ground for dismissing the application. It is for the reasons just outlined that I came to that conclusion. Another was the BBC's failure to establish any real risk of damage from what Talksport was doing. I turn next to that issue.
Bound up with the question of goodwill is the risk of damage to the BBC from Talksport's activities. It is, of course, well established that the claimant in passing on must show that he has suffered, or that he is really likely to suffer, substantial damage to his property in the goodwill in question by reason of the activities of the defendant which he seeks to restrain. See the Warninkcase,  AC 731, at page 756, per Lord Fraser.
The BBC's evidence of damage is confined to the following passage in the witness statement of Robert Shannon:
"37. I and my colleagues at the BBC are concerned that when people see Talksport describing its Euro 2000 coverage as live coverage, they would expect to hear live coverage of each match. They will not. All they will hear is an inferior and limited form of commentary based on television pictures.
38. Talksport's claim that its matches are live has, and continues to, devalue the reputation of live coverage of sporting events and will cause significant damage to the reputation of the BBC and other broadcasters who have invested in and acquired the sporting rights properly and are providing a superior service to the standards that are now expected."
Mr Hobbs QC, for the BBC, added to this by suggesting that the BBC would lose listeners and that this might one day affect the amount which it could charge by way of licence fee.
I regard these claims, which are wholly unsubstantiated by any credible supporting evidence, as altogether fanciful, and even if less than altogether fanciful, as falling far short of what must be shown on an application of this kind. The idea that discovering that Talksport's broadcasts were off-tube, and that the ambient sound was pre-recorded and unrelated to the events themselves, will cause the radio listening public, or any significant part of it, to abstain from listening to live radio coverage of sporting events, or that any drop in BBC listening figures from such a cause would have other than a most marginal effect on the BBC's fortunes, is a matter on which I would require much more than mere assertion if I am to give any weight to it.
The reality, as it seems to me, is that what radio listeners want is a blow-by-blow account of what is going on at the scene of play as it is going on. This, the Talksport broadcast, amply provided. The fact that the ambient sound effects, although important and attracting the listener to the programme, are entirely false is, to my mind, secondary to the importance of the commentator's account of what is happening on the field of play. This is not to condone Talksport's technique. On the contrary, I find it deceptive and therefore wrong. But I do not consider that it gives to the BBC a cause of action in passing off.
Balance of convenience
Even if I had been of the view that the BBC had an arguable case for the relief claimed, I would have refused an injunction. This application will effectively determine the dispute. Euro 2000 will be over in under two weeks time. The substantial merits of this claim strongly favour Talksport. I am entitled to take that into account in deciding whether to grant interim injunctive relief; see NWL Ltd v Woods 3 All ER 614,  1 WLR 1294, at 1306-07.
That apart, the balance of convenience, as reflected in the court's practice of opting for the course which is likely to cause the lesser injustice as between claimant and defendant, favours withholding rather than granting the injunction sought. If granted, I am persuaded that the practical effect, ie. loss of ambient sound, is likely to cause Talksport to abandon altogether its further off-tube broadcasting of the championship, thus resulting in considerable financial loss to it if, at the trial, it should turn out that it should not have been granted. This is because its revenue, and therefore its commercial well-being, is dependent on the advertising it can attract which, in turn, depends on its listener numbers. Whereas, if the injunction is refused, the loss which the BBC is likely to suffer if it should turn up that an injunction should have been granted is, if measurable at all, of an altogether slighter kind.
It was for these reasons that, at the conclusion of Friday's hearing, I declined to grant the relief sought. The application must be dismissed.