With the immense popularity of Hollywood blockbuster movies that are sweeping the globe, it is not surprising to see businesses attempting to attract and turn the massive fandoms into their own customer base by borrowing some of the well-liked characters, scenes and elements surrounding such movies. However, one must not lose sight of the fact that every original film comes with various intellectual property (“IP”) rights that can be protected not only nationally but also worldwide, and steep consequences may follow if businesses use the IP without authorization from the legitimate rights holder.
Case Update – the 9 ¾ Cafe Case
On 8 August 2023, the High Court of Hong Kong (the “High Court”) in HCIP 67/2019 found that a local Harry Potter-themed café infringed the copyright and trademarks of Warner Bros. Entertainment Inc. (“Warner Bros”), the entertainment giant who owns the copyright to the renowned Harry Potter film series including the characters, names and related indicia within, and all Harry Potter-related trademarks in Hong Kong. The High Court has yet to hand down a written judgment or decision for the ruling, but the case has received wide media attention and coverage in Hong Kong.
The dispute revolved around a local Harry Potter-themed café named “9 ¾ Cafe”. The interior of the restaurant is marked by half-disappearing trolley and owl cage, resembling the famous 9 ¾ platform in the Harry Potter movies, and decorated with lookalike movie props such as the sorting hat. The restaurant also sells food and drinks with names such as “海格” (Hagrid) and “魁地奇” (Quidditch) (both of which are registered trademarks of Warner Bros) on the menu.
According to local media reports, the plaintiff, Warner Bros, filed an action with the High Court in 2019 against the defendants D.K.A.J. Limited and its four directors, who operate the 9 ¾ Cafe. Warner Bros’s claims were succinctly for passing off, trademark infringement and copyright infringement. In allowing all three claims of Warner Bros, the High Court recognized that Harry Potter is a world-famous movie franchise, and found that the use of the names, elements and graphics etc. taken from the movies causes confusion to the public that the café is authorized or endorsed by Warner Bros. Given the café has never obtained licence or consent from Warner Bros to use its trademarks and copyright works, the High Court ruled that the defendants acted in bad faith in using the trademarked properties and copyright of Warner Bros without authorization.
In that context, the High Court granted an injunction ordering the defendants to immediately cease use of the copyright or trademarked properties of Warner Bros, including the names of the characters and places in the café’s name, decorations and menu etc. Further, Warner Bros was entitled to an account of profits, and the café’s registered trademark which consists of the name “9 ¾ cafe” is liable to be revoked.
Discussion
As one would note from the 9 ¾ Cafe case, there are different kinds of IP that come with an original film. Considerations must therefore be given to the different IPs when taking inspiration from movies, dramas and animations: –
- Copyright – Copyright protects expressions not ideas. Taking up of an idea or concept from a movie does not of itself infringe copyright, however, if elements from it are replicated or if there is substantial copying, such acts would potentially be liable for copyright infringement.
- Trademark – Often times, names, logos or even characters of the movies are registered as trademarks. The unauthorized use of names and logos registered as a trademark in Hong Kong, or something confusingly similar to that may constitute an act of trademark infringement.
- Rights under the common law action of passing off – Passing off is a common law action for the protection of goodwill of a trade or business. Even if the names or logos are not registered in Hong Kong, unauthorised use would still risk liability for a passing off claim if it harms or causes damage to the goodwill of the rights owner.
Where a party succeeds in claims for copyright infringement, trademark infringement and/or passing off, several remedies and reliefs will be opened to it, including but not limited to economic compensation such as damages or alternatively an account of profits, and an injunction prohibiting the infringing party from registering or using the relevant trademarks (including any variations or confusingly similar marks), and restraining the reproduction or display of the relevant copyright works (as a whole or any substantial part of it) in any material form.
It is not the first time Warner Bros took action against unauthorized Harry Potter-themed restaurants to protect its IP rights internationally. The High Court’s decision reinforces the idea that while freedom of expression and fair trade practices should not be stifled, it is important to respect IP rights and not to free-ride on the coattails of and profit from the success and reputation of others. This case serves as a helpful reminder of the key issues and legal principles surrounding themed restaurants and the implications for IP infringement on the part of the restaurants’ owners. We are eagerly awaiting the written judgment to gain more insight into the arguments and legal analysis leading to the decision.
