England and Wales High Court (Chancery Division) Decisions

IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
INTELLECTUAL PROPERTY

		Royal Courts of Justice Strand, London, WC2A 2LL
		28 February 2007

MrJustice Kitchin :

Introduction

1. This is an application by the claimant ("Mr Dearlove") for summary judgment in respect of the alleged breaches by the defendant ("Mr Combs") of the terms of a settlement agreement ("the Settlement Agreement") set out in the schedule to a Tomlin Order made by Master Price on 5 September 2006.
2. Essentially this is a dispute about the use of the name "Diddy". Mr Dearlove is a record producer, re-mixer and recording artist. He claims he has been known as "Diddy" professionally since the early 1990s and that he has enjoyed considerable commercial success in the UK and elsewhere.
3. Mr Combs is the internationally famous record producer, re-mixer and recording artist known variously as "Puffy", "Puff Daddy" and "P.Diddy". In August 2005, Mr Combs announced to the world in an MTV broadcast that he was henceforth going to be known professionally as "Diddy". Very shortly afterwards, Mr Dearlove's former solicitors, Messrs. Lee & Thompson, wrote to Mr Combs explaining that Mr Dearlove claimed rights in the name "Diddy" and requesting that Mr Combs cease using the name in the UK. Mr Combs refused and so Mr Dearlove instructed the firm of Messrs. Jens Hills & Co, who continue to act for him, to commence proceedings for passing off. The claim was issued on 16 November 2005.
4. On 16 November 2005, Mr Dearlove served particulars of claim asserting that Mr Combs had in the course of trade in the UK advertised, promoted and provided his goods and services under or by reference to the word "Diddy". Mr Dearlove provided details in his pleading of the particular acts of Mr Combs of which he was then aware. They included allegations that Mr Combs had licensed Atari Inc to sell a computer game including his recordings under the name "Diddy", that Mr Combs had produced or re-mixed certain tracks recorded by an artist known as "The Notorious B.I.G." which were to be released in the UK under the name "Diddy" and that in August 2005 Mr Combs had acted as the host of the MTV Music Awards, a show which was televised globally and throughout which Mr Combs was referred to as "Diddy". They also included the following specific complaint about a website www.diddyonline.com:

"To the best of the Claimant's knowledge and belief, the Defendant registered, or caused to be registered, the domain name diddyonline.com on 2^nd August 2005. Thereafter, the Defendant has advertised, or caused to be advertised, or otherwise promoted, within the content of a website located at www.diddyonline.com and within the content of a website maintained by the Defendant's record label Bad Boy Records (www.badboyonline.com) his products and services by or under the sign "Diddy". By way of example, the Defendant's website has featured such phrases as "Diddy On Line", "Diddy Guest Book", "Diddy 2-Way Blog", "Diddy TV", and "Diddy Style", together with a further new form of trading style, namely "Sean "Diddy" Combs"…."

5. In his defence, Mr Combs disputed that Mr Dearlove had any goodwill or reputation in the UK, admitted that in relation to musical activities he had announced in August 2005 that he was going to be known as "Diddy" and asserted that he had used and been recognised as "Diddy" since 1997. In support of that allegation he provided various particulars, including an assertion that he had called himself "Diddy" in the lyrics of songs released in 2002. As to the website www.diddyonline.com, Mr Combs admitted the allegation save that he disputed the website was directed towards persons within the UK. He therefore admitted that he had advertised his products and services on that website under the name "Diddy".
6. The action was set down with a trial window opening on 23 October 2006. On 18 August 2006, shortly after disclosure, Mr Combs proposed terms of settlement. They were accepted by Mr Dearlove on 20 August 2006 and the parties thereby entered into the Settlement Agreement which formed the schedule to the Tomlin order made by Master Price on 1 September 2006. Mr Combs was ordered to pay to Mr Dearlove the sum of £10,001 in lieu of damages and his costs of the proceedings, to be assessed if not agreed.
7. The terms of the Settlement Agreement tracked the relief sought in the Particulars of Claim and, so far as material, read as follows:

"1. Mr Combs undertakes, whether acting by himself, his employees, his agents, or otherwise however, from doing the following acts or any of them within the United Kingdom, that is to say:

1.1 advertising, offering or providing, or causing/procuring others to advertise, offer or provide any goods and services not being the Claimant's goods and services as a remixer, producer, songwriter, recording artist and DJ under or with reference to the word "Diddy"; or

1.2 otherwise passing off or attempting to pass off and/or enabling and/or assisting and/or causing and/or procuring others to pass off or to attempt to pass off any goods and services not of the Claimants, as identified in 1.1, as the same as or for goods and services connected or associated with the Claimant.

2. For the avoidance of doubt, the Defendant's professional name "P Diddy" is not affected by this undertaking.

3. The Defendant undertakes to remove from the United Kingdom all materials or articles that are in the possession, custody, power or control of the Defendant, the use of which would contravene the foregoing undertaking."

8. There was no dispute before me that the words "to refrain" have been inadvertently omitted from the second line of clause 1 and that the words "under or with reference to" in clause 1.1 go no wider than the more usual "under or by reference to".

The application

9. Since September 2006 Mr Dearlove, with the assistance of his solicitors, has attempted to secure the compliance by Mr Combs with the terms of the Settlement Agreement. Very shortly after it was agreed he raised complaints about what he perceived to be the piecemeal and ineffective way that Mr Combs had set about complying with its terms. Mr Dearlove was not satisfied with the response he received and so launched this application for summary judgment.
10. The application is supported by two witness statements of Mr Christopher Woods, a solicitor employed by Jens Hills & Co, and by a witness statement of Mr Dearlove himself. The evidence in response is contained primarily in a witness statement of Mr Nigel Calvert dated 24 January 2007. He is the senior partner of the firm Calvert Solicitors who have been instructed by Mr Combs in these proceedings. Mr Calvert made a second witness statement on 31 January 2007, shortly before the hearing began and a third witness statement on 1 February 2007, during the course of the hearing. The evidence in reply is contained in a third witness statement of Mr Woods made on 29 January 2007. The result of this late flurry of evidence has been that Mr Dearlove does not now pursue on this application a number of his original strands of complaint.
11. The first concerns recordings released in the UK prior to the date of the Settlement Agreement but which have remained on sale here thereafter and which credit Mr Combs as being artist or producer and refer to him as "Diddy". Mr Calvert has explained that Mr Combs does not have control over these recordings. In the light of that evidence Mr Dearlove accepts that this complaint cannot be determined summarily.
12. The second arises from the lyrics of certain records released by Mr Combs's record company in the UK prior to the date of the Settlement Agreement but which have remained on sale in the UK thereafter. The lyrics contain references to Mr Combs as "Diddy". The response of Mr Calvert is that the mere use of the word "Diddy" in a song lyric is not a breach of the Settlement Agreement because it does not amount to the advertisement or offer in the UK of any goods or services. Mr Calvert also says that Mr Combs has used the word "Diddy" in lyrics since 1997 and this was never the subject of any complaint in the original action. Finally Mr Calvert explains that Mr Combs no longer has any control over this material. Once again Mr Dearlove accepts that this complaint is not susceptible of summary determination and must be left over to trial.
13. The third concerns references to "Diddy" in the lyrics of records released by third parties. Mr Calvert confirms that the repertoire of third party artists is not and has never been within the control of Mr Combs. Again, Mr Dearlove accepts that in the light of this evidence the complaint cannot be pursued, at least summarily.
14. The fourth concerns two web addresses www.diddy.com and www.diddyonline.com. As I have mentioned, www.diddyonline.com formed part of the original complaint and was specifically identified in paragraph 6 of the Particulars of Claim. Following the Settlement Agreement both sites continued to operate with multiple references to Mr Combs as "Diddy". Further, until about 18 January 2007 both sites were readily accessible from the UK. Since that date any UK user attempting to access the sites has been automatically re-directed via a new homepage to a new site located at the web address www.p-diddy.co.uk. Neither the new homepage nor the new website contains any material which is said to breach the terms of the Settlement Agreement. In the circumstances Mr Dearlove does not pursue his application for summary judgment in respect of these sites.
15. This brings me to the complaints which remain in dispute on this application. They fall into two categories. The first concerns the use of the name "Diddy" in connection with web-presences at the web domains MySpace and YouTube and a further website, www.badboyonline.com. The second concerns an album called "Press Play" which was released in the UK and in the US in October 2006. Six tracks on this album are said to contain references to Mr Combs as "Diddy". Before addressing the details of these complaints I must set them in context by providing a little more of the background.
16. Mr Calvert explains in his first witness statement that all recordings made by Mr Combs or other artists signed under the name of Bad Boy Records are released by Bad Boy Records LLC ("the Company"), a company registered in Delaware. The Company is a joint venture company owned equally by Bad Boy Records ("BBR"), a New York General Partnership owned by Mr Combs, and BB Investments LLC ("Warner Music"), a Delaware company owned and controlled by the Warner Music Group, a New York company. Warner Music Group also owns the Atlantic Records group of companies ("Atlantic Records"), which itself comprises recording companies and distributors.
17. The relationship between Warner Music and BBR is governed by an agreement ("the Operating Agreement") entered into by the Company, Warner Music, BBR and Mr Combs. In addition, Mr Combs has entered into a recording agreement with the Company ("the Recording Agreement").
18. I return to consider certain details of these agreements when addressing the matters in dispute between the parties. For present purposes I would simply note that the Operating Agreement provides that the purpose of the Company is to engage in the recorded music business but not music publishing and artist management and that Mr Combs is described as "the Managing Member" of the Company and has authority to manage and control the business and affairs of the Company, subject to the provisions of the agreement.
19. Mr Calvert says in his first witness statement that Mr Combs decided to stop using the name "Diddy" in the UK in or around July 2006, at the time settlement negotiations were taking place between the parties. Mr Combs requested Warner Music to agree to the re-branding of his activities in the UK as "P. Diddy". Apparently lengthy discussions took place with representatives of the Company, Warner Music and Atlantic Records and a decision was finally made to re-brand Mr Combs as "P. Diddy" throughout the world outside North America. The decision to re-brand beyond the UK was apparently not done out of any obligation under the Settlement Agreement but rather, according to Mr Calvert, because it was recognised that it would be impossible to control the movement of licensed product from one country to another.
20. As I have mentioned, Mr Combs's latest album "Press Play" was released in the UK and in the US in October 2006. This album has been the subject of extensive promotion and is being supported by a US and European tour which began in January of this year. It is also clear that the Company has taken substantial steps to re-brand Mr Combs as "P. Diddy" throughout Europe. CDs of "Press Play" refer to Mr Combs as "P. Diddy", as do posters, billboards, in-store and other promotional materials, such as bus and road advertisements. Nevertheless, certain problems remain and it is these which have led to the present proceedings.

Legal principles

Summary judgment

21. The court may give summary judgment on the whole of a claim or a particular issue if it considers that the defendant has no real prospect of successfully defending the claim or issue and there is no other compelling reason why the case or issue should be disposed at a trial. The approach the court should adopt was explained by the Vice-Chancellor in Celador Productions v Melville [2004] EWHC 2362 as follows:

i) it is for the applicant for summary judgment to demonstrate that the respondent has no real prospect of success in his claim or defence as the case may be;

ii) a "real" prospect of success is one which is more than fanciful and merely arguable;

iii) if it is clear beyond question that the respondent will not be able at trial to establish the facts on which he relies then his prospects of success are not real; but

iv) the court is not entitled on an application for summary judgment to conduct a trial on documents without disclosure or cross-examination.

Internet use of trade marks

22. The use of trade marks on websites has now been considered in a number of cases. Two are of particular assistance in the context of the present application. In 800-FLOWERS Trade Mark [2000] FSR 697 Jacob J had to consider whether or not Internet use of the mark 1-800 FLOWERS constituted a use of that mark in this country. He said this at p.705:

"Reliance is also placed on Internet use of 1-800 FLOWERS. This name (with the addition of Inc.) is used for a website. Mr Hobbs submitted that any use of a trade mark on any website, wherever the owner of the site was, was potentially a trade mark infringement anywhere in the world because website use is in an omnipresent cyberspace; that placing a trade mark on a website was "putting a tentacle" into the computer user's premises. I questioned this with an example: a fishmonger in Bootle who put his wares and prices on his own website, for instance, for local delivery can hardly be said to be trying to sell the fish to the whole world or even the whole country. And if any web surfer in some other country happens upon that website he will simply say "this is not for me" and move on. For trade mark laws to intrude where a website owner is not intending to address the world but only a local clientele and where anyone seeing the site would so understand him would be absurd. So I think that the mere fact that websites can be accessed anywhere in the world does not mean, for trade mark purposes, that the law should regard them as being used everywhere in the world. It all depends upon the circumstances, particularly the intention of the website owner and what the reader will understand if he accesses the site. In other fields of law, publication on a website may well amount to a universal publication, but I am not concerned with that."

23. On appeal (reported at [2001] EWCA Civ 721; [2002] FSR 12) Buxton LJ expressed some concern that use of a trade mark placed on the Internet at a location outside the UK may constitute use in the UK simply because someone here chooses to download it. As he explained at [137] – [138]:

"137. I would wish to approach these arguments, and particularly the last of them, with caution. There is something inherently unrealistic in saying that A "uses" his mark in the United Kingdom when all that he does is to place the mark on the Internet, from a location outside the United Kingdom, and simply wait in the hope that someone from the United Kingdom will download it and thereby create use on the part of A. By contrast, I can see that it might be more easily arguable that if A places on the Internet a mark that is confusingly similar to a mark protected in another jurisdiction, he may do so at his own peril that someone from that other jurisdiction may download it; though that approach conjured up in argument before us the potentially disturbing prospect that a shop in Arizona or Brazil that happens to bear the same name as a trademarked store in England or Australia will have to act with caution in answering telephone calls from those latter jurisdictions.

138. However that may be, the very idea of "use" within a certain area would seem to require some active step in that area on the part of the user that goes beyond providing facilities that enable others to bring the mark into the area. Of course, if persons in the United Kingdom seek the mark on the Internet in response to direct encouragement or advertisement by the owner of the mark, the position may be different; but in such a case the advertisement or encouragement in itself is likely to suffice to establish the necessary use. Those considerations are in my view borne out by the observations in this court in Reuter v Mulhens [1954] Ch. 50. The envelopes on the outside of which the allegedly infringing mark was placed as advertising matter were sent by post into the United Kingdom by the defendants. It is trite law that the Post Office is the agent of the sender of a letter to carry it, and thus it was the defendants who were to be taken to have delivered the letter to the recipients and to have displayed the mark to them within this jurisdiction. No such simple analysis is available to establish use by the applicant within the jurisdiction if he confines himself to the Internet."

24. The same issue arose again before Jacob J in Euromarket Designs Inc v Peters and Crate & Barrel Ltd [2001] FSR 20. In that case the claimant brought proceedings for infringement of its UK and Community trade mark registrations for the words "Crate & Barrel" against the defendants who ran a shop in Dublin called "Crate & Barrel" selling household goods and furniture. The defendants had never traded in the UK and denied they had any intention to do so. Jacob J said at [21] - [24]:

"21. Here the point about the locality of the trade is even clearer. The defendants' website opening page has a picture of a piece of furniture with the words "Crate & Barrel" above. The text says: "An emporium of furnishings and accessories on four floors. We offer a wide range of services including, wedding lists, consultation and furnishings". There follow many picture of items. Only two (the "hurricane lamp" and the "beaded coasters") are said to be within the specification. I will assume that is so, though the point is not entirely beyond argument. The fact that there are only two items out of many - items which could easily be removed – shows the triviality of the complaint.

22. Now a person who visited that website would see "ie". That would be so, either in the original address of the website, "crateandbarrel-ie.com" or the current form, "createandbarrel.ie." The reference to four floors is plainly a reference to a shop. So what would the visitor understand? Fairly obviously that this is advertising a shop and its wares. If he knew "ie" meant Ireland, he would know the shop was in Ireland: otherwise he would not. There is no reason why anyone in this country should regard the site as directed at him. So far as one can tell, no one has.

23. Now almost any search on the net almost always throws up a host of irrelevant "hits". You expect a lot of irrelevant "hits". You expect a lot of irrelevant sites, moreover you expect a lot of those sites to be foreign. Of course you can go direct to a desired site. To do that, however, you must type in the exact address. Obviously that must be known in advance. Thus in this case you could get to the defendants' site either by deliberately going there using the address, or by a search. You could use "Crate" and "Barrel" linked Booleanly. One could even use just one of these words, though the result then would throw up many more irrelevant results.

24. Whether one gets there by a search or by direct use of the address, is it rational to say that the defendants are using the words "Crate & Barrel" in the United Kingdom in the course of trade in goods? If it is, it must follow that the defendants are using the words in every other country of the world.

25. Miss Vitoria says that the Internet is accessible to the whole world. So it follows that any user will regard any website as being "for him" absent a reason to doubt the same. She accepted that my Bootle fishmonger example in 800 FLOWERS is that sort of case but no more. I think it is not as simple as that. In 800 FLOWERS I rejected the suggestion that the website owner should be regarded as putting a tentacle onto the user's screen. Mr Miller here used another analogy. He said using the Internet was more like the user focusing a super-telescope into the site concerned; he asked me to imagine such a telescope set up on the Welsh hills overlooking the Irish Sea. I think Mr Miller's analogy is apt in this case. Via the web you can look into the defendant's shop in Dublin. Indeed the very language and the Internet conveys the idea of the user going to the site – "visit" is the word. Other cases would be different – a well-known example, for instance, is Amazon.com. Based in the U.S. it has actively gone out to seek world-wide trade, not just by use of the name on the Internet but by advertising its business here, and offering and operating a real service of supply of books to this country. These defendants have done none of that."

25. I believe it is clear from these authorities that placing a mark on the Internet from a location outside the UK can constitute use of that mark in the UK. The Internet is now a powerful means of advertising and promoting goods and services within the UK even though the provider himself is based abroad. The fundamental question is whether or not the average consumer of the goods or services in issue within the UK would regard the advertisement and site as being aimed and directed at him. All material circumstances must be considered and these will include the nature of the goods or services, the appearance of the website, whether it is possible to buy goods or services from the website, whether or not the advertiser has in fact sold goods or services in the UK through the website or otherwise, and any other evidence of the advertiser's intention.

Alleged breach of the Agreement by MySpace and YouTube web-pages and www.badboyonline.com website

26. Two issues arise in relation to these materials. The first is whether they are activities prohibited by paragraph 1.1 of the Settlement Agreement, the only provision relied upon for the purposes of this application. Mr Epstein QC, who appeared on behalf of Mr Combs, contended they are not because they do not involve the promotion of goods or services under the name "Diddy" in the UK. The second is whether they are activities which Mr Combs has conducted or caused or procured others to conduct. Mr Epstein submitted the answer to this question is also no, because Mr Combs has no control over the promotional activities conducted by the Company. I will deal with these issues in turn.

Advertising in the UK under the name "Diddy"

27. MySpace is something of an online cultural phenomenon. It describes itself as a social networking service that allows members to create personal profiles online in order to find and communicate with old and new friends. Members are able to maintain web-pages accessible by members of the public and which contain photographs, music, videos and text. MySpace is now widely used by artists as a way of promoting and marketing their music following the enormous success of bands launched largely through MySpace, such as the Arctic Monkeys and Lily Allen.
28. YouTube is in some ways similar to MySpace, but concentrates on allowing users to share and view video footage online. It originally started as a personal video sharing service but, like MySpace, is now used by artists as a way of promoting their recordings and performances. As Mr Calvert accepts, YouTube is a valuable promotional and marketing tool for many current music artists. Indeed, it is one of the fastest growing websites on the Internet. As of July 2006, one hundred million clips were viewed daily on YouTube, with an additional sixty five thousand new videos uploaded every 24 hours. The site has almost 20 million visitors each month. YouTube commands up to 64 % of the UK online video market.
29. Mr Woods has exhibited colour copies of the web-pages concerning Mr Combs on each of the sites. In addition I was invited to visit them online myself and I did so. But for the purposes of this judgment it is convenient to refer to the copies exhibited by Mr Woods.
30. As for MySpace, the first of the web-pages concerning Mr Combs displays a banner bearing the words "DIDDY PRESS PLAY" and then "THE INNOVATIVE NEW ALBUM PRESS PLAY". Below that are numerous other references to "DIDDY". For example, there is a reference to "DIDDY HipHop/Rap/R&B" above a picture of Mr Combs and then, below the picture, the words "CONTACTING DIDDY". In the centre right of the page visitors can download four songs from the "Press Play" album by clicking an icon and "Diddy" is identified as the performer. In the bottom right hand corner of the page is a list of "UPCOMING SHOWS". This includes a number of shows in Europe including the Wembley Arena, London on 27 March 2007, the Cardiff International Arena on 28 March 2007, the MEN Arena, Manchester on 29 March 2007, the SECC Hall in Glasgow on 30 March 2007 and the Nottingham Arena on 2 April 2007. In the bottom left hand corner of the page there is a reference to "DIDDY: GENERAL INFO" followed by a representation of the Union Jack bearing the words "UK users must click here" in bold. If they do so they are directed to the site www.pdiddymusic.co.uk which promotes the "Press Play" album under the name "P.Diddy".
31. On the second page there is a reference to "Diddy's Latest Blog Entry" and visitors are invited to subscribe to the blog and view blog entries. The third page depicts various magazine covers referring to "Diddy" and a link to a YouTube video with the banner "Diddy announces the birth of his twin girls from the delivery room". On the fourth page there is an invitation to join "Diddy's" mailing list and what is described as a "wireless list". This explains that a user may subscribe to "Join the wireless list to get info and personal messages from Diddy sent straight to your phone". On the fifth page users are invited to order "PRESS PLAY" from itunes by clicking an appropriate icon.
32. As for YouTube, these web-pages also contain numerous references to "Diddy". Across the top of the first page appears the banner "DIDDY TV" with a photograph of Mr Combs. Numerous videos are then identified. On the left hand side of the page is a box with the words "Press Play" and below that, in relatively small type, the words "UK Users Click Here: http://www.p-diddy.co.uk/". But the link is not active. A total of 77 videos are available through these web-pages. Particular attention was focused on one called "Thank you". In this video Mr Combs is seen thanking viewers for buying his new album "Press Play" and for supporting "Diddy". He also promotes the YouTube and MySpace web-pages.
33. As for the website www.badboyonline.com, a UK based user attempting to access the site is automatically taken to a web-page with a picture of Mr Combs above a logo carrying the words "BAD BOY". Immediately below the logo is a legend reading "CLICK HERE TO VISIT BADBOYONLINE.COM". If this tab is clicked, the user is taken to a website containing references to "Diddy". Immediately below this tab is the title "FOR PRESS PLAY". Below are two invitations written in small letters. The first reads "US Residents Enter Here" and the second "UK Residents Must Click Here". On the second page there is a reference to "DIDDY PRESS PLAY" and "THE INNOVATIVE NEW ALBUM PRESS PLAY".
34. In my judgment it is plain that the MySpace and YouTube web-pages and www.badboyonline.com website do advertise and promote goods, namely recordings and, in particular, the "Press Play" album, under and by reference to the name "Diddy". They also promote Mr Combs's activities as a recording artist and performer under and by reference to the same name. In the case of MySpace, the web-pages also advertise his promotional tour, again under the name "Diddy".
35. I have also reached the conclusion that these web-pages and website are directed at UK users. The following circumstances are material. First, Mr Combs is an international celebrity and his new album "Press Play" is sold here. Secondly, Mr Combs is shortly to visit the UK in the course of his current tour and will perform at a series of shows in London, Cardiff, Manchester, Glasgow and Nottingham. These shows will no doubt promote and support the sales of his new album. Accordingly, it is quite clear that Mr Combs does have a substantial continuing business in the UK. Thirdly and importantly, Mr Calvert says in paragraph 85 of his first witness statement that "maintaining a page on MySpace and YouTube websites is a valuable promotional and marketing tool of many current artists" and that Mr Ferguson, the Chief Financial Officer of the Company, and Mr Asare, the New Media and Marketing Manager of Atlantic Records, have confirmed that the web-pages concerning Mr Combs on MySpace and YouTube and his www.diddy.com website were the "primary means" by which Mr Combs's "Press Play" album was "advertised and promoted". Indeed, Mr Calvert also explains in paragraph 86 of that statement that the maintenance of Mr Combs's web-pages on MySpace and YouTube is a "key piece" of his global marketing campaign and, in paragraph 87, that the websites are marketing tools used "internationally" to "promote the Defendant and his professional services and goods". It is therefore clearly intended they should be accessed by users outside the US. Fourthly, Mr Calvert's evidence is confirmed and supported by the fact that all three sites refer to UK visitors and the MySpace web-pages specifically promote the forthcoming UK shows. It is right to acknowledge that the MySpace and YouTube web-pages invite the UK users to click on an icon. But in the case of YouTube the icon is ineffective and in the case of MySpace it will only be seen by users on reviewing the whole page and there is much on the rest of the page that is apparently directed to them – most notably the UK shows. Similarly, the www.badboyonline.com website contains separate icons which US and UK residents are asked to press but the presentation of the site suggests that the general site is intended for both and that for further information the user should press the appropriate icon depending upon his country of residence.
36. I invited counsel to consider whether disclosure, further evidence or even cross-examination might assist a trial judge to decide whether or not the MySpace and YouTube web-pages and the www.badboyonline.com website constituted an advertisement of goods or services within the UK. Their submissions confirm my own view that it is most unlikely that anything useful will emerge before or at a full trial. This is a matter which I am as well placed as a trial judge to decide. In my judgment and for the reasons that I have given, these web-pages and website do constitute the advertisement of goods and services in the UK under and by reference to the word "Diddy". Mr Combs has no real prospect of succeeding on this issue at trial and I determine it in favour of Mr Dearlove.

Are the sites under the control of Mr Combs?

37. The second issue is whether or not the MySpace and YouTube web-pages and the www.badboyonline.com website are under the control of Mr Combs. As I have indicated, Mr Epstein submitted that they are not or, at least, this is an issue which must go to trial. Mr Purvis QC, who appeared on behalf of Mr Dearlove, submitted that the suggestion that Mr Combs was not responsible and had no control over these materials is pure sophistry. Before dealing with these rival submissions I must first refer to the relevant clauses of the Operating Agreement and the Recording Agreement.
38. Clause 3.1 of the Operating Agreement reads:

"Managing Member. Except as otherwise provided in this Agreement, SC BB [BBR] shall be the managing Member of the Company. The managing Member of the Company shall, subject to the provisions of this Agreement, have authority for the management and control of the business and affairs of the Company."

39. The parties also placed particular reliance upon clauses 5(b) and 6(a) of the Recording Agreement. They read, so far as relevant:

Clause 5(b):

"Company and each Person authorized by Company shall have the perpetual right, without cost or any other liability to you [a company controlled by Mr Combs] or any other Person, to use and to authorize other Persons to use the names (including any professional names heretofore or hereafter adopted), and any likenesses, whether or not current (including photographs, portraits, caricatures and stills from any Artwork or Video made hereunder) and biographical material of or relating to Artist [Mr Combs], to any producer and to any other Person performing services in connection with Recordings hereunder, on and in the packaging of Records, and for purposes of advertising, promotion and trade and in connection with the marketing and exploitation of such Recordings and Records and general goodwill advertising (i.e., advertising designed to create goodwill and prestige for Company and its Principal Licensees and not for the purpose of selling any specific product or service), without payment of additional compensation to you, Artist or any other Person, in accordance with paragraph 6(a) below ...."

Clause 6(a):

"During the Term, with respect to Phono Records manufactured for sale in the United States, all photographs, portraits, caricatures and other likenesses of Artist (including any stills from any Artwork or Videos hereunder), biographical material concerning Artist and other major marketing materials which Company uses or authorizes others to use for the purposes herein stated shall be subject to your approval. …..

….

Promptly following the execution of this agreement, you shall furnish Company with a reasonable number of photographs of Artists and biographical material concerning Artist. All photographs and biographical material concerning Artist furnished by you to Company or used in connection with any Catalog Record shall be deemed approved by you. …..

.…

Company will instruct its Principal Licensees, outside the United States to comply with the foregoing provisions of this paragraph 6(a): provided that Company shall in no event be liable or in breach of this agreement for any such Principal Licensee's failure to comply with such instruction. You shall cooperate with Company's efforts to promote throughout the Territory any Records released hereunder. Without limiting the foregoing, you shall cause Artist to be available (at Company's non-recoupable expense), at Company's reasonable request: to appear for photography, poster and cover art and the like, under the direction of Company or its designees; to appear for interviews anywhere in the Territory with representatives of the communications media, including representatives of the domestic and international press and Company's publicity personnel; to appear for in-store promotional events; to make personal appearances anywhere in the Territory on radio and television and elsewhere and to record taped interviews, spot announcements, trailers and electrical transcriptions; and to perform for the purpose of recording for promotional purposes by means of film, videotape or other audiovisual media performances of Compositions embodied on Masters, provided Videos produced pursuant to paragraph 18 shall be subject to the terms of such paragraph. You shall also cause Artist to be available upon Company's reasonable request to appear for exclusive on-camera interviews, so-called online "chats," webcasts and other promotional activities. ….."

40. I do not find these clauses easy to interpret. Mr Epstein submitted that their effect is that Mr Combs has no control over the MySpace and YouTube web-pages or the www.badboyonline.com website. In particular he submitted that by clause 5(b) of the Recording Agreement Mr Combs has granted to the Company the perpetual right to use and authorise others to use his names, including any professional names, likenesses, photographs, artwork, videos and biographical material for the purpose of advertising and promoting and marketing any records made by Mr Combs. He also relied upon clause 6(a) which requires Mr Combs to cooperate with the Company to promote throughout the Territory (which includes the UK) any recordings released under the Agreement and which also requires Mr Combs to be available upon the reasonable request of the Company to appear for exclusive on-camera interviews, so-called online "chats", webcasts and other promotional activities.
41. These submissions are supported by the evidence of Mr Calvert. He explains in paragraph 27 of his first witness statement that, in effect, all important decisions of the Company affecting Mr Combs are made unanimously or not at all because Warner Music "dictates" over all matters connected with the recording, marketing, manufacturing and promotion of recordings made by Mr Combs. Mr Calvert elaborates upon these matters in paragraphs 76 to 87 of his same witness statement. There he explains that the website and web-pages in issue are not controlled by Mr Combs but are maintained by Warner Music and Atlantic Records. Further, Warner Music contemplated referring to Mr Combs as "P. Diddy" throughout the MySpace and YouTube web-pages but this was considered to be hugely damaging to Mr Combs's international branding and went beyond what Warner Music was prepared to do as a matter of business judgment. Mr Combs cannot overrule that decision. He concludes in paragraph 87:

"Finally, the Defendant [Mr Combs] has no possession, custody, control or power over these websites and Warner Music was under no obligation to make any amendments. They are marketing tools used internationally to promote the Defendant and his professional services and goods. While Warner Music have made attempts to comply with the Defendant's requests, I understand Warner Music feel under no obligation to put into motion any act which might cause a negative effect upon the business as a whole. This confirms the position that the Operating Agreement limits the Defendant's control and power over his own interests."

42. I have to say I am deeply sceptical of the evidence given by Mr Calvert. First, the web-pages and the site in issue hold themselves out as being the personal pages and site of Mr Combs. They are concerned not only with recordings but also relate to the shows at which Mr Combs is scheduled to perform and contain all kinds of promotional materials of him as an artist. What is more, Mr Combs has evidently played an active role in creating much of the materials available through these sites. For example, he has participated and cooperated in the production of the video materials accessible through the YouTube web-pages.
43. Second, the position now taken by Mr Combs is wholly inconsistent with that taken in the original proceedings. There, as I have indicated, it was specifically alleged that Mr Combs had, in the course of trade in the UK, advertised and promoted goods and services under the word "Diddy" and the particulars of that allegation included a complaint about the contents of the www.badboyonline.com website. The defence admitted that allegation save that it was contested that any of the activities complained of constituted offers for sale to or advertisements directed towards persons within the UK. In other words, Mr Combs admitted that he had advertised and promoted goods and services under the name "Diddy". It was not suggested that the website was something over which he had no control. It was on that basis that Mr Dearlove accepted the terms of settlement offered by Mr Combs and entered into the Settlement Agreement which has given rise to these proceedings. This conduct is wholly inconsistent with the position now taken by Mr Combs although Mr Purvis accepted that, at least at this stage, he could not contend that it created some kind of estoppel. Further, it seems to me to be inconceivable that the Company and Warner Music did not participate in making the proposal by Mr Combs to settle the original proceedings and did not approve the Agreement. Yet at no stage did they suggest that Mr Combs did not have authority to enter into it or have control over the use of the name "Diddy" in the UK.
44. Third, the terms of the agreements give strong grounds for supposing that Mr Combs has far more control over the use of his names than he is currently prepared to acknowledge. Clause 3.1 of the Operating Agreement gives him authority to manage and control the business and affairs of the Company. Further, the rights given to the Company under clause 5(b) of the Recording Agreement are subject to clause 6(a) of that same agreement and that under the latter clause the use of photographs, portraits, biographical material and other marketing materials concerning Mr Combs can only be used subject to his approval. It is right to note that "names" are not specifically mentioned in clause 6(a) in this context. Nevertheless it seems to me to be at the least strongly arguable that the names of Mr Combs constitute major marketing materials and that their use is therefore subject to the same approval requirements.
45. For all these reasons I am very doubtful that Mr Combs does not have control over the use of the word "Diddy" on the MySpace and YouTube web-pages and on the www.badboyonline.com website. I have little or no information as to the actual efforts that he has made to modify them. Nevertheless, I am conscious that I must now take into account the evidence Mr Calvert has given on the basis of a series of conversations with executives of the Company, Warner Music and Atlantic Records. I am also conscious that the Agreement to which I have referred was entered into by Mr Combs with various corporate entities that are not party to these proceedings. In all the circumstances I do not feel able to say at this stage that Mr Combs's case has no real prospect of success at trial on the issue of control. I am not entitled to conduct a trial on the basis of documents without disclosure or cross-examination and so I am not able to decide this issue summarily.

Lyrics on the Press Play album

46. Mr Dearlove complains that six tracks on the "Press Play" album contain a number of references to Mr Combs as "Diddy" and that these constitute a breach of the Settlement Agreement. He does not and cannot complain of the presentation of the album itself because the cover only refers to Mr Combs as "P. Diddy".
47. Mr Purvis advanced three submissions in support of Mr Dearlove's contention. First, the undertakings prohibit the provision of goods under or by reference to the name "Diddy" and the album contains references to that name. Secondly, the whole point of the Settlement Agreement was to recognise that Mr Dearlove was "Diddy" in the UK and to prohibit Mr Combs from swamping and destroying Mr Dearlove's goodwill. Constant references to himself as "Diddy" in song lyrics serve to continue to educate the public that Mr Combs is "Diddy" and will continue to damage Mr Dearlove's goodwill in that name. Finally, references by Mr Combs to himself as "Diddy" in song lyrics are a form of advertisement and self-promotion. Every time the song is played on the radio, and the reference to "Diddy" is heard, members of the audience will recognise it as a reference to the artist, and his profile will be strengthened. Mr Epstein's response was admirably concise: the lyrics themselves cannot be said to advertise goods or services in the UK under the name "Diddy" or, indeed, at all.
48. In assessing these rival submissions the starting point must be the terms of the Settlement Agreement itself. Mr Combs promised not to advertise or provide any goods or services not being Mr Dearlove's goods or services as a re-mixer, producer, songwriter, recording artist and DJ under or with reference to the word "Diddy". The question I therefore have to decide is whether or not the provision of the album containing the offending lyrics constitutes the provision or advertisement in the UK of Mr Combs's goods or services under the name "Diddy".
49. I do not believe that it can be said that the album has been provided under the name "Diddy" simply because the word appears in some of the lyrics. As I have said, the album cover actually bears the name "P. Diddy". The key question, and the one on which most of the argument turned, is whether the lyrics constitute the advertisement of goods and services in the UK under the name "Diddy". I see no reason in principle why a lyric cannot be used to advertise goods or services under a particular name. Whether it does so or not must depend on all the circumstances including, in particular, how the lyric would be understood by the average consumer. Further, the alleged offending use must be considered in the context of the lyric as a whole. Once again I invited the parties to consider whether or not this is an issue which I am as well placed to decide as a trial judge. Neither counsel suggested that I would be assisted by disclosure or further evidence or cross-examination and it seems to me that this is therefore another issue which I ought to decide now.
50. I have already set out the background to the dispute and must now provide the context of the use complained of by setting out at least parts of the lyrics of the relevant songs. Although Mr Dearlove complains of six songs the transcripts only reveal the use of the name "Diddy" in five. The first is called "We Gon' Make It". It includes:

"As my, Daytons spin lowrider sittin low

Hittin corners so hard you can taste my rims

Hard top six-four, I'm Diddy no tint

I can't hide in New York City

I'm 'bout it in the South, sleep good in the West

Know a chick from Watts with Bad Boy tatted on her breast

I done been there and did it (I done been there and did it)

Ten years without getting sweat inside my Yankee fitted"

Later it continues:

"Nine-Six Big showed me what to do

But deep in my heart, this is "No Way Out II" (let's rock)

I spend absurd money, private bird money

That Bill Gates, Donald Trump, Bloomberg money (you know what it is)".

51. The song "The Future" includes:

"I can't hear you!

I like it when you say my name

(The Fu-The Fu-The-Future-ture-ture-ture-ture…")

Y'all gon' love me

Feelin it's about to get ugly

Inject this dose of the future

Tap them veins, grab hold, let me shoot ya

Mainline this new Diddy heroin

The Afro-American dream is too evident

The potential to be the first black President

iTunes, download me in every resident

Early, I skip break-fast

Nigga be on his grind like he need new brake pads

We in the hood like black soap and dollar vans

My CD's in 3-D, holograms

The future, y'all need to holla man

The live show's a hard act to follow man

Bronze my likeness, y'all need to follow him

From now to 3000, I'll be a problem man

The future"

52. The song "Hold Up" includes:

"Easy now I'm seein 'em, mind where you patrol

Fall back young 'un, play your lane like a goal

When his majesty speaks, speech defy gravity

Bluetooth nigga but I don't have any cavities

Diddy got it wrapped like cocoons

Pop shit like needles through balloons"

53. The song "P. Diddy Rock" includes these lyrics sung by the artist "Shawnna":

"I'm from the city where nothing pretty

And everybody know

i spit a flow to get up with diddy

and now we finna blow...

…

its shawnna twist and diddy with timb on the track

you know its gotta be tint with 20's on the lac

i see em lookin at me like whats up

but i was hit low in the cut"

54. Finally, the song "Everything I Love" includes:

"Decimal doctor, multiply to get richer,

I'm a entrepreneur, I'm

the heart of the city,

I'm a part of the sewers,

I'm the honourable diddy,

I taste the dirt in my

sweat, that's from the

Harlem struggle,

All in my swagger that's the reason why I got my hustle,

I got the highest stature, Miami diamond flasher,

I got you caught in the most flyest and stylish rapture"

And a little later:

"The Cartier consigieres be near me,

Canary yellow cuts in my pinky yearly,

Liz Taylor tried to joke me

Coz I keep it green like the other side of bill hicks be

When he gets mean,

Think fast before I blast hoes,

Like Grassino,

Went from scraggly old clothes to the illest fashion,

And realest rappin',

Pablo bath on the scene, won't go back to no green,

Strictly paper cruising through the strip in Vegas,

Two of New York's biggest niggaz,

Y'all used to hate us, but now you love us,

Nas and Diddy, power hustlers."

55. I have reached the conclusion that the songs fall into two categories. The first comprises only one song, "The Future". The second verse refers to Mr Combs as "Diddy" as he invites the listener to "mainline this new Diddy heroin". Mr Combs expressly refers to itunes and asks the listener to "download me in every resident". He refers to his CD as "my CD's in 3-D holograms" and finally refers to his shows with the words "the live show's a hard act to follow man". I see this as straightforward advertisement by Mr Combs of his CD, his songs which can be downloaded from itunes and his live shows, all under and by reference to the word "Diddy". The listener will understand he is being encouraged to buy the "Press Play" CD, to download the songs and that the live show is an event well worth attending. I am confirmed in this view by the evidence of Mr Woods that performers such as Mr Combs are making increasing use of lyrics to advertise goods and services in which they have a commercial interest.
56. The second category comprises all the other songs. As for "We Gon' Make It", this contains the words "Hard top six-four, I'm Diddy no tint. I can't hide in New York City". Would the average listener understand this song to be an advertisement of goods or services in the UK under the name "Diddy"? I do not think so. He would appreciate that Mr Combs is referring to himself as "Diddy". But that does not mean he is advertising goods or services in this country under that name. The relevant lyrics contain no reference to goods or services at all. I am sympathetic to the argument that references by Mr Combs to himself as "Diddy" in the lyrics of a song may serve to dilute or diminish the goodwill that Mr Dearlove enjoys. But on this application I am simply dealing with the terms of paragraph 1.1 of the Settlement Agreement. That paragraph requires me to consider whether the word "Diddy" is being used to advertise goods or services in the UK. In my judgment it is not.
57. In the lyrics of the song "Hold Up" the word "Diddy" appears once in the line "Diddy got it wrapped like cocoons". It appears in the context set out in paragraph [52] above. As in the case of the song "We Gon' Make It", I believe the listener would understand the word "Diddy" to be referring to Mr Combs but the lyrics contain nothing to suggest the promotion of any goods or services in this country under that name. The same applies to "P. Diddy Rock" and "Everything I Love".
58. To summarise, I find that the lyrics of the song "The Future" do constitute the advertisement within the UK of goods and services under or by reference to the word "Diddy" but that the lyrics of the other songs complained of do not.
59. Mr Epstein accepted that Mr Combs does have artistic control over the content of his songs. However, the parties agreed that the evidence before me does not enable me to determine whether or not Mr Combs has control over the "Press Play" album and the songs it contains, and that this issue must therefore be left over for further argument or, possibly, determination at trial.

Conclusion

60. For the reasons I have given I conclude that the contents of the MySpace and YouTube web-pages and the www.badboyonline.com website the subject of this application do constitute the advertisement within the UK of Mr Combs's recordings and services under the name "Diddy", but I am unable to make a finding on this application that they are under the control of Mr Combs. I also find that the lyrics of one (but only one) of the songs on the Press Play album released in the UK, namely "The Future", constitute the advertisement within the UK of goods and services under the word "Diddy".
61. I will hear argument as to the appropriate form of order if it cannot be agreed.