Prick. Shakespeare knew its double-meaning
“But since she prick’d thee out for women’s pleasure / Mine be thy love and thy love’s use their treasure”
Over four hundred years after Shakespeare’s sonnet 20 was published, in April 2018 a judge of the intellectual property enterprise court in the High Court in London, HHJ Melissa Clarke, commenced a written judgment with the line:
This is a dispute between a tattoo artist and a retailer of cacti about the use of the trading name “PRICK”
Before going on to spell out:
“the allusive nature of the pun inherent in the use of the word “PRICK” … which is both slang for penis, and also allusive of what happens or might happen in the Tattoo Parlour and the Cactus Shop”
After such an opening line, who would not read on, in the case of Martinez t/a Prick and Henry Hate Studio & Prick Tattoo Parlour London Ltd v. Prick Me Baby One More Time Ltd t/a Prick and Gynelle Leon? I don’t practise in the specialist field of intellectual property law, but the essentials of a passing-off claim aren’t difficult to grasp. And it’s a topic on which people who are not intellectual property lawyers are positively invited in, as a claimant has to prove damage to business goodwill when ordinary members of the public are misled by over-similarity into mistaking a rival’s distinctive product or service for the claimant’s. A famous example of a successful passing-off claim was the Jif lemon case — years of litigation between one food manufacturing conglomerate which had been selling preserved lemon juice in plastic containers that looked like lemons since the middle of the 20th century, and another conglomerate which much later attempted to squeeze itself into the market with its own ‘lemon resembling container’. I once met a man who claimed that, as a trainee solicitor, he had spent hours on a street corner with a box of plastic lemons, vox-popping passers-by as to whether they thought a ReaLemon was a Jif lemon or not. Another, ultimately unsuccessful, claimant was nightclub proprietor Peter Stringfellow, who claimed that the image and reputation of his West End nightclub, with its “prominent black glass dance floor fitted with under-floor flashing lights” (the last word in nightclub sophistication of 1983) had been damaged by mistaken association with “Stringfellows” frozen oven chips and their TV commercial which featured a disco-dance routine in a suburban kitchen.
Fast-forwarding to the London Borough of Hackney in the early 21st century, Henry Martinez opened a tattoo and piercing parlour in Shoreditch called “Prick Tattoos” in 2001. His most famous client was the singer Amy Winehouse, for whom he created and applied the ‘Cynthia’ tattoo, which the judge described as having
“iconic status, symbolising its wearer both during her life and after her premature death”
Shoreditch and adjacent Hoxton itself had then been for about a decade a place of transformation, as a Guardian columnist described it in 2003, from
“A scruffy no-man’s land of pie and mash and cheap market-stall clothing, a place where taxi drivers of the old school were proud to have been born but were reluctant to take you to”
to the home and working and exhibition space of the Young British Artists of the 1990s (Tracey Emin and others, the White Cube Gallery which opened in Hoxton Square in spring 2000) and those who followed them.
Fifteen years after Prick Tattoos opened, and a mile further north up the Kingsland Road, in Dalston, where gentrification had by then also spread, Gynelle Leon registered her company “Prick Me Baby One More Time Limited”, the proprietor of “Prick” — a specialist shop selling cacti and succulent plants.
Mr Martinez claimed that the use of the word “Prick” for the cactus shop a mile away was passing-off. The judge disagreed. Although the tattooist’s barrister acknowledged that it would be “silly” to claim that there was a risk that people who mistakenly went to Prick in Dalston would buy a cactus instead of getting a tattoo, he claimed that the risks were:
i) customers will find the Cactus Shop when they intended to go to the Tattoo Parlour or Studio, and will not make it to the Tattoo Parlour or Studio, resulting in lost business;
ii) customers will find the Cactus Shop and assume that the Claimants have changed the nature of their business, no longer offering tattoo and piercing services or wider visual artistic services;
iii) and/or the edgy, rock ’n’ roll “PRICK” brand developed by the Claimants will be tarnished by association with the clean living, millennial style of the Cactus Shop, causing customers to turn to an alternative provider of tattoo and piercing services or artistic works.
The last of these — the claim that an “edgy rock ’n’ roll” brand might be tarnished by association with a “clean living, millennial style” is particularly eloquent of its time and place and of the difference between the trends of turn of the century Shoreditch and of nearby Dalston a generation later. In Shoreditch itself, in 2014, two brothers opened the Cereal Killer Cafe — as it described itself, the world’s first international cereal cafe, filled with memorabilia of breakfast cereal brands of the 1980s and 1990s — and another example of a business with an edgy pun in its name. Although no-one involved in any business promoting memorabilia of the serial killer Jack the Ripper (also associated with Shoreditch) has ever tried to claim its business was being damaged by being mistaken for the clean living, millennial style of Cereal Killer, the Cafe was the scene of an “anti-gentrification” riot in the autumn of 2015.
In the “Prick” case, although the judge agreed with Ms Leon’s barrister that
“it is difficult to imagine two businesses with two less closely related activities than the sale of potted plants by the Defendants and the provision of tattooing and piercing services”
the fact that two businesses in a passing-off case aren’t in the same field isn’t necessarily fatal to a claim. But it does make it more difficult to prove that the public have been misled into mistaking one for the other, as the judge emphasised here. She also thought the many differences between the “get-up” of the two shops, and their online presence, made it less likely that any member of the public could reasonably be deceived that there was any connection between the two businesses.
But the heart of the resounding failure of Mr Martinez’s claim appears to have been the lack of evidence of a substantial number of members of the public being deceived by the similarity of name and proximity of the businesses into thinking there was a connection between them. Some of the witnesses who gave evidence already knew Mr Martinez well, and one, who was subject to “skilful” cross-examination, was disbelieved by the judge when he denied having manufactured evidence to support the claim. Nor was she satisfied by the evidence of a few people who did not know Mr Martinez but who were said to have mistaken the prick of the cacti for the prick of the tattoo, dismissing one, who mistakenly left a tattoo review on the cactus shop website, as an example of a “moron in a hurry” (a recognised legal term in this area of law, coined by a judge in 1979, years before the internet met the unspoken need for every moron in a hurry to share their passing thoughts)— the judge said
“I am at a loss to understand how Lola R can believe that the Cactus Shop website has any connection with the Tattoo Parlour, given that she appears just to have come from the Tattoo Parlour and so must be well aware of the dissimilarities in style and get up of the place, compared to the website she is on”
She also agreed with Ms Leon’s barrister that the fact that both businesses used the name “Prick” did not make it more likely that people would be confused between them
“… with “PRICK”, they are … likely to come very quickly to an appreciation that the name refers to the specific properties of Cacti or Tattooing, as the case may be, appreciate the humour, and so not go on to assume that there must be a connection.”
It’s impossible to read this case without a degree of amusement, partly because there’s always something amusing about judges having to explain popular culture in a straight-faced and colourless way — in 2003 a High Court judge had to decide a music industry dispute about a compilation recording of UK garage music, which involved “the faintly surreal experience of three gentlemen in horsehair wigs examining the meaning of such phrases as “mish mish man” and “shizzle (or sizzle) my nizzle” — and partly because the claim so emphatically failed. One piece of evidence which might well find its way into students’ advocacy textbooks was the question the tattooist’s barrister asked the cactus shop proprietor in cross-examination, about how she had gone about checking she wasn’t copying the name of a similar business when she set hers up in 2016:
Q: Why did you not simply Google the word “prick”
A: “Because it would have shown me porn and penises” — an answer the judge described as one of admirable succinctness
Of course a small creative business in Hackney is just as much entitled to protect its intellectual property as a large food manufacturing company or any other business is, and another small business is equally entitled to vigorously — and in this case, successfully — defend a claim it believes is groundless. And being involved in, and funding, litigation is stressful, distracting and potentially ruinous for small business owners, and there’s nothing amusing about that.
I was surprised not to find any newspaper coverage of the case, though, because of its humour and because it’s very much a story of contemporary London — exactly the sort of story I’d expect to find in the Evening Standard, a London newspaper (which once interviewed a designer who described Hampstead Heath as having “this wonderfully unedited feel”) read by many people in a hurry on their way home.
One story which the Evening Standard did cover last week, though, was this:
and under this headline, the opening words:
“A mother who had a lovechild with a businessman she met at a tennis club has won the right to sue his widow for a share of his £2.5 million fortune.”
The story then only reveals in passing that the claimant was actually bringing the claim, not for a share of the £2.5m fortune for herself, but for “reasonable provision” on behalf of her daughter, the five year old child of the relationship. Under the Inheritance (Provision for Family and Dependants) Act 1975, reasonable provision is limited to what is necessary for maintenance of a child, and an order for reasonable maintenance for a child would never be so generous as to deprive a widow who had inherited an estate of what she was reasonably entitled to in all the circumstances — not limited to maintenance. The court’s decision — a judgment of High Court chancery master Julia Clark — dealt only with the first hurdle for such a claim, which is proving that the child’s father, the late Baldev Kohli, died legally domiciled in England and Wales. Decisions about domicile depend on evidence which ranges widely and deeply into the dead person’s life and thoughts about the place they believed to be their permanent home. The court must look back as from the date of death at:
“the whole of the deceased’s life, at what he had done with his life, at what life had done to him and at what were his inferred intentions in order to decide whether he had acquired a domicile of choice in England by the date of his death.”
The history of intimate relationships is a very important part, but not the only part, of a review of what a man has done with his life and what life has done to him. Portraying the two sides to this dispute as being the two women between whom the dead man’s “emotional centre of gravity” had shifted from India to England, without mentioning that the law unequivocally entitles children to bring claims for reasonable provision for their maintenance from a parent’s estate, inevitably distorts the true picture. A headline that suggests a struggle driven by greed, scorn or trinkets is more alluring than a headline about the costs of bringing up a child. As the child in this case is only 5, an adult has to litigate on her behalf, and the adult litigating for her is her mother. If her mother had any claim in her own right on her late lover’s estate, she would not be able to act on her daughter’s behalf, because she would have a conflict of interest. If the adult litigating on behalf of the child had been an uncle or aunt or grandparent, as in many cases it is, or if the dead man’s estate had been inherited, not directly by his widow outright, but by professional trustees to hold in trusts of which the widow was the principal beneficiary, the underlying story would be exactly the same. But would a newspaper have covered it in quite the same way? I doubt it.