A different kettle of fish – performance artist kippered by his red herrings

The judge, Master Teverson (sitting in retirement), was satisfied that the defendant had no real prospect at trial of successfully defending claims of passing-off, copyright infringement and malicious falsehood.

Factual background

Samerji hf., one of the largest Icelandic fishing and fish-processing companies, sought summary judgment against the defendant, Oddur Fridriksson, an Icelandic performance and conceptual artist and self-styled “cultural activist”.

Since 1983, the claimant has operated under the name and trade mark SAMHERJI, and since around 1985 it has used a square logo featuring a stylised white line drawing, suggestive of two interlocking fishes within a circle, on a plain blue background. The claimant’s website at samherji.is describes its business.

In February 2023, the defendant registered the domain name 'samherji.co.uk'. In May 2023 the claimant became aware that a website had been linked to that domain name, with the web address 'https://samherji.co.uk/'.

The website was presented as if it were the UK website of the claimant. It displayed the statement “WE’RE SORRY” in large blue font, accompanied by a tagline stating, “For more information, please read our full press release statement”, and a “CLICK ME” link, which led to a purported press release by the claimant dated 11 May 2023 from London.

Headed “Samherji Apologizes, Pledges Restitution and Cooperation with Authorities”, the press release purported to apologise for the so-called “Fishrot scandal”, a financial scandal named after a 2019 Wikileaks release about trading activities of former subsidiaries of the claimant in Namibia. The release contained an apology and various admissions purporting to be from the claimant, but which the claimant had never made, including “using facilitation fees to enable corrupt transactions”, “extracting profits from Namibia” and a purported concession that it had “illegally benefitted from mackerel quotes which led to job losses and long-lasting damage to the Namibian economy”.

The claimant’s logo and trade mark appeared immediately below the press release, which was sent out to a number of substantial publishers worldwide. The logo and trade mark appeared on the top of each page on the website, which contained details about the claimant, its products and its fleet, such that the website was made to look as if it were the claimant’s official UK website.

On 11 May 2023, industry newspaper Fishing Daily reported the apology as genuine in an article, and that day the claimant posted a message on its website acknowledging the fake press release and website. Some days later Nominet, the operator of the '.uk' domain-name register, disclosed the defendant’s name and address to the claimant, and on 16 May 2023 the claimant wrote to the defendant requesting that he immediately cease use of all Samherji trade marks and close the website. The following morning, the defendant replied, saying that “at this point, we’re sorry to inform you that no changes will be made to the website or the artwork”.

Procedural background

Over the course of the following week:

• The claimant applied without notice for an interim injunction, which was adjourned to enable the defendant to respond.
• The defendant issued a press release in Iceland, revealing that the website and the fake press release were his work.
• The claimant became aware of an article published in Iceland reporting that the website and fake press release constituted an artwork (described by the defendant as “‘fuck you’ Samherji and I’m sorry Namibia”), and that the words “WE’RE SORRY” had appeared in a large mural on the wall of the Reykjavik Art Museum. The artwork was described as using the art form of cultural distortion, and the piece was stated to be the defendant’s graduation from a BA programme at the Icelandic Academy of the Arts and to form part of a 2023 graduation exhibition.
• The claimant’s application for interim relief came back before the court, and the defendant did not attend and was not represented. The court ordered that the defendant transfer the domain name to the claimant, take down the website and ensure that the website and all related email accounts were non-operational. The court also ordered that the defendant must not use the claimant’s logo.
• The domain name was transferred to the claimant, and the website was taken down.
• The court ordered that the order would continue until the final order of the court following trial or a further court order in the meantime.

Particulars of claim were served on 7 June 2023, and a professionally drafted defence and counterclaim was filed and served on 17 July 2023.

On 14 March 2024 the claimant issued an application for summary judgment under CPR 24.2(b) on its claims for passing-off, copyright infringement and malicious falsehood. The claimant did not seek summary judgment on its claim for trade-mark infringement, nor in relation to the defendant’s counterclaim for revocation of the claimant’s trade marks for alleged non-use.

In response, the defendant applied for permission to amend the defence.

Application for summary judgment

The claimant submitted that the defendant had “no real prospect of successfully defending” its claims, and that there was “no other compelling reason why” those parts of its claim should be disposed of at trial, under CPR 24.3.

In response to the application, the defendant’s main argument was that his right as an artist to freedom of expression under Article 10 of the European Convention on Human Rights (as incorporated into the Human Rights Act 1998) outweighed the claimant’s intellectual property rights. The defendant relied on various decisions, most notably the Plesner v Louis Vuitton case.^[2]

In Plesner, Nadia Plesner had sought to raise awareness of the conflict in Darfur by creating art works contrasting it with the world of glamour, using illustrations in which some intellectual property rights were vested. The court in Plesner noted that artists enjoy a considerable protection of their artistic freedom in which, in principle, art may “offend, shock or disturb”, and that Ms Plesner’s use was functional and proportional and did not serve a commercial purpose. The court decided it was plausible that Ms Plesner’s intention was to use Louis Vuitton’s reputation to pass on her society-critical message.

Master Teverson, in the current case, summarised the defendant’s position as “the end justifies the means”, in that the artwork was created to attract attention to the claimant’s involvement in the Fishrot scandal. The defendant argued that the claimant’s interests in its reputation and intellectual property did not prevail over the interest of society in being informed and able to debate on matters of public interest.

Decision

The Master acknowledged that, while the present case bore some similarities with Plesner, there were important differences. While Plesner concerned Community design rights, the defendant in the present case created the website as a vehicle for sending a fake press release and, in a contrast to Plesner, the defendant’s art involved “a form of deception and impersonation and misinformation”.

The Master held that the defendant, relying on Article 10 alone, had no reasonable prospect of opposing the transfer of the domain name to the claimant. The domain name and website were vehicles for the fake press release, and there could be no justification for allowing the defendant to retain the domain name, now that the artwork had been performed. Similarly, the Master held that the defendant had no real prospect of success at trial of opposing a final injunction that would prevent the defendant from repeating or making further use of the claimant’s logo and trade mark.

Passing-off

The Master noted the claimant’s substantial sales of high-quality seafood produce in the UK, and did not consider that the defendant had a real prospect at trial of showing that the claimant has no goodwill in the UK. While the Master acknowledged the defendant’s case that the website and fake press release were elements of a performance artwork known as “culture jamming”, that did not contradict a misrepresentation by passing off those elements as those of the claimant. Further, the Master held that the claimant was likely to have suffered some damage to its goodwill and reputation in the UK.

Accordingly, the defendant had no real prospect of success at trial of opposing a final injunction in relation to the domain name and website, nor could it be argued that the use of those caused no damage to the claimant’s goodwill.

Copyright infringement

The Master recognised a clear infringement of the claimant’s copyright in the logo and other documents by copying, and that its use in the design of the website was to give it authenticity and not, as the defendant contended, for the purposes of criticism or review, quotation, parody and/or pastiche, under sections 30 and 30A of the Copyright, Designs and Patents Act 1988. While the Master accepted that the motive of the defendant was to draw attention to the Fishrot scandal, he did not accept that the means by which this was done was fair dealing, on the basis that it could not be relied on to justify the creation of the website and the fake press release. While, in the Master’s view, this defence should be construed liberally to give effect to Article 10, he did not accept that it was realistic to evoke Article 10 in the circumstances. It was open to the defendant instead to criticise the claimant publicly, but the defendant instead “put statements into the mouth” of the claimant that were “factually incorrect”, in the sense that they were not statements made by the claimant, and that this was a “ploy or hoax” and “was not in accordance with the ethics of journalism whose principles must apply to others who engage in public debate”.

Malicious falsehood

The Master dealt with this briefly, noting that the claimant needed to show a falsehood published about or concerning it, and also malice and damage, identifying malice as the “key ingredient” of the tort. The Master applied the same logic to this claim as to the elements of misrepresentation in the passing-off claim. He found that the domain name and website were “instruments of fraud”, in that they were set up with the intention of deception in the knowledge that their content was false and was calculated to cause pecuniary damage to the claimant.

Conclusion

As a result, the Master held that the defendant had no real prospect of success at trial of successfully defending the claimant’s claims of passing-off, copyright infringement and malicious falsehood, and that there was no other compelling reason why those issues should be disposed of at trial. The defendant’s artwork had been performed, and his hoax had taken place. As such, no order was made on the defendant’s application for permission to amend the defence.

Comment

This is an unusual case that explores the boundaries of artistic freedom and their interaction with legal principles. While artists enjoy a considerable degree of protection in relation to their artistic freedom, as illustrated by Plesner, that latitude did not extend, on the facts of the present case, to outright deception and misinformation. The defendant sought to make, and probably achieved his aim of making, a statement by artistic means. But Article 10 does not offer protection where the means by which that is achieved involves deceptive stunts like those deployed by the defendant, nor does it protect against acts that unduly harm the reputation and rights of others.

Article written for Entertainment Law Review.