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Elvis appears in Court, which is more than can be said for the defendant

By Johanna Gibson, David Pearce, Jeremy Phillips and Ilanah Simon.

Everness released this album in 2009: a 'Christmas Carollo'?

Elvis Presley may or may not be dead, but his intellectual property portfolio goes marching on. Elvis Presley Enterprises v Carollo (trading as Everness) is a decision of Sir William Blackburne, a retired judge sitting in the Chancery Division of the High Court, England and Wales.  Yesterday, in a decision picked up on the Lawtel subscription service, he was asked by Elvis Presley Enterprises (EPE), a business that licensed the use of the late Elvis Presley's IP to give summary judgment on a claim for trade mark infringement, passing off and breach of contract against Carollo, who was making and selling albums that carried its marks.

The background was that EPE, a US corporation, was set up by the co-executors of the estate of the late Elvis Presley for the purposes of worldwide sale, marketing and licensing of Elvis Presley products. EPE held several Community trade marks relating to the great man's name.  Carollo, a former licensee of EPE's intellectual properties in respect of various items of Elvis memorabilia, asked permission to make an Elvis album which EPE refused.  Undeterred by this trifling setback, Carollo carried on making and selling the album in the United Kingdom. Reassuringly for his customers, the album and its artwork bore EPE's marks and signature hologram, acknowledging that they belonged to EPE.

EPE sued Carollo in England and Wales; Carollo wrote to the court to dispute its jurisdiction, also arguing that he had a valid contract with EPE to make and sell the album. EPE stood its ground, also stating that it had built up significant goodwill in its trade marks and logos to the extent that a substantial body of the public, upon seeing those marks and logos, would believe those goods or services to be those of EPE and its lawful licensees.

Sir William Blackburne had no great difficulty in granting summary judgment in favour of EPE.  Carollo might have written to the court in order to dispute its jurisdiction, but in his attempt to wield the machinery of justice he hadn't pressed the right buttons, since he hadn't actually mounted a formal challenge to the court's jurisdiction so as to bar it from hearing the application [Merpel says, perhaps that's because he erroneously thought that, by doing so before the Court, he was implicitly recognising the Court's jurisdiction]. In any event, the court did have jurisdiction -- but Carollo didn't offer any proof of his entitlement to use EPE's intellectual property, so he wasn't likely to emerge victorious from this little spat. The fact that neither he nor any legal representative turned up in Court might just indicate the lack of conviction with which he asserted his position.

Says the IPKat, here we have an apparently unanswerable case, no difficult points of law to ponder, no serious defence and no-one in court to argue it: what a great way to give our retired judges a little post-retirement occupational therapy and make them feel both loved and needed.

Elvis Presley Enterprises here
More on Everness here
Why Elvis Presley still lives here

Full post as published by IPKat on February 03, 2011 (boomark / email).