Thu 5. Dec 2024, 20:47
Miss Moneypenny, the secretary eternally in love with James Bond, must also live with rejection in court: The hOLG Hamburg denied her independent legal protection in a dispute with a secretarial service (judgement of 24.10.2024 - Ref. 5 U 83/23).
25 James Bond films have been released since 1962. In the films, the character ‘James Bond’ is a secret agent working for the British secret service MI6, while the character ‘Moneypenny’ or ‘Miss Moneypenny’ is his secretary. After the reboot of the James Bond film series with ‘Casino Royale’ in 2006, the character ‘Moneypenny’ or ‘Miss Moneypenny’ did not appear in the first two films and reappeared in the 2012 film ‘Skyfall’ as a younger ‘Eve Moneypenny’. The plaintiff - together with M.-G.-M. S. Inc. - is named in the copyright notice on reproductions of films in the ‘James Bond’ series. Defendant 1), MONEYPENNY Verwaltungs GmbH, was entered in the commercial register of the Local Court of Tostedt on 19 November 2019; defendant 2) is the managing director and sole shareholder of defendant 1). The object of the company of defendant 1) is the holding and administration of trademark rights, in particular in relation to secretarial and assistance activities for companies and the granting of rights of use thereof using the ‘MONEYPENNY’ trademark registered with the German Patent and Trademark Office (DPMA) and the conclusion of franchise agreements in this context. Defendant 2) is the owner of the German word mark ‘MONEYPENNY’ with a priority date of 19 June 2015. Defendant 2) is also the owner of the domains my-moneypenny.de, my-moneypenny.com and moneypenny-werden.com. The plaintiff sent the defendant 2) a warning letter for the first time on 11 November 2015. In this context, the plaintiff asserted, among other things, its Union word mark ‘MONEYPENNY’, which was registered on 21 July 2006; however, this mark was cancelled with effect from 14 May 2020. On 18 November 2015, the plaintiff also applied for the EU word mark ‘MONEYPENNY’, against which the defendant 2) filed an opposition, which is currently still pending. The plaintiff is now asserting competition law and trade mark law claims against the defendants based on the use of the designations ‘MONEYPENNY’ and ‘MY MONEYPENNY’. The Hamburg Regional Court dismissed the action in a ruling dated 15 June 2023 (case no. 327 O 230/21). It held that the plaintiff was not entitled to the claims asserted under either competition law or trade mark law. The plaintiff appealed against this, so it was up to the Hamburg Higher Regional Court to review the judgement at first instance.
However, the plaintiff was also unsuccessful in the appeal proceedings. In the opinion of the hOLG Hamburg, the plaintiff was not entitled to injunctive relief under either competition law or trade mark law. Accordingly, further applications for injunctive relief, including the cancellation of the domains mymoneypenny.de, my-moneypenny.com and moneypennywerden.com, were also unsuccessful. Insofar as the plaintiff had asserted a claim for injunctive relief within the meaning of Section 8 (1) UWG, the Senate denied the existence of a concrete competitive relationship within the meaning of Section 2 (1) No. 4 UWG due to the lack of competitive character. At best, competition by hindrance could be considered. However, with regard to the activities of the plaintiff (and M.-G.-M. S. Inc.) concerning the marketing/utilisation of the James Bond films, the actions of the defendant challenged by the plaintiff did not constitute an impairment. As far as the film series and its exploitation are concerned, it is neither shown nor apparent that the exploitation of the James Bond films could be hindered by the defendant's offer, which uses ‘MONEYPENNY’ in relation to secretarial and assistant activities for companies and operates a licence and franchise business in this respect. A merely potential competitive relationship with regard to possible licences for secretarial services under the name ‘Moneypenny’ was not sufficient; there was no concrete probability of market entry.
It therefore remained to be clarified whether the plaintiff could successfully invoke special legal protection under trademark law - the alternatively asserted work title protection pursuant to Sections 15 (2) and (3), 5 (3) MarkenG or the further alternatively asserted protection of a trade mark pursuant to Sections 14 (2) sentence 1 no. 1, no. 2, (5), 4 no. 2 MarkenG - which the hOLG Hamburg also denied. Protection of the work title for the character ‘Moneypenny’ or ‘Miss Moneypenny’ could not be assumed. It presupposes a certain degree of recognition and separation from the work in which they are used, as only then can they develop a ‘life of their own’ that can be separated from the work. However, it was not possible to determine a specific visual form of the character ‘Miss Moneypenny’; in this respect, the Senate referred to the various actresses who played the character. A clear image could not be derived from the character traits of the character either, even though it could be assumed that the character had been known for many years; in any case, the public would not associate her with the provision of particularly reliable and dependable secretarial services. The public would merely associate the character with the executive secretary who was always flirting with James Bond and who never had more than harmless physical contact. Finally, in the absence of trade mark use, there was also no trade mark with a reputation.
However, as is often the case with James Bond, the plaintiff still has one last chance. The hOLG allowed the appeal. The present case gives reason to draw up or specify guiding principles on work title law regarding the protection of work titles of (film) characters. So can James Bond save his Moneypenny from the BGH ‘in the last instance’ after all?
The judgement of the hOLG Hamburg of 24.10.2024 (Ref. 5 U 83/23) can be found (in German) at:
https://www.landesrecht-hamburg.de/bsha ... E001590092