The case
Background
The World Wildlife Fund registered the "WWF" initials as a trademark in 1961, despite changing its name to the World Wildlife Fund for Nature in 1989, the Fund retained use of the "WWF" initials as its logo and in-print. [3]
In 1979, the World Wide Wrestling Federation (WWWF) rebranded as the World Wrestling Federation (WWF). The business primarily conducted operations in the United States. [4]
Initial 1989 agreement
On September 6, 1989, the Fund had filed for extensions of time to oppose a trademark application by the Federation for "WWF", on the grounds of potential confusion with their own registered "WWF" trademark. [5]
On September 12, 1989, the Federation sent a letter to the Fund addressing its federal trademark application for the "WWF" mark in International Class 41 (for wrestling entertainment services). This marked the beginning of formal discussions between the two parties regarding the use of the "WWF" initials. [6]
On September 26, 1989, both parties reached an agreement that the Federation would not use the "WWF" mark in the Times Roman typeface when the mark appeared alone, without the Federation's logo. In exchange, the Fund agreed not to oppose the Federation's federal trademark registration for "WWF" in Class 41. [7]
International conflict and subsequent 1994 agreement
By 1993, despite the 1989 agreement, both parties had been involved in further disputes, as the Federation had grown in popularity across Europe. Both the Fund and Federation had contested international trademark applications the other party had made. The Fund obtained an interim injunction against the distributor of the Federation's WWF Magazine in Switzerland citing trademark infringements. [8]
On January 20, 1994, the Fund and the Federation formed a new agreement, including that the Federation would stop using the "WWF" initials in printed, written, or visual form in connection with its business, though allowances were made for pre-approved merchandise and publications. [9] The Federation was also prohibited from filing any new trademarks with the "WWF" initials and had to cancel existing registrations, except for those associated with the Federation's “block logo.” The Federation was allowed to occasionally use the initials in verbal contexts, such as referring to the “WWF champion", but was otherwise expected to avoid using them. Other terms included that business partners were required to exclusively refer to the company as the "World Wrestling Federation". [10]
In June 1997, the Federation launched WWF.com. Whilst the site used "World Wrestling Federation" in its title, the use of "WWF" in the site's web address would later cause legal implications with the Fund. [11] In November 1997, the Federation also introduced a new logo at their Survivor Series pay-per-view event, dubbed the 'scratch logo', that separated the W's more than the previous block logo had, making the "WWF" initials appear more prominent. [12]
In May 1999, the Federation used an alternative logo for a Sky Box Office promotional advertisement relating to its No Mercy live pay-per-view event from the Manchester Evening News Arena in the United Kingdom, splitting the "WW" and the "F". This would not be maintained for other events. [13]
2001 High Court of Justice decision
On April 17, 2000, the Fund commenced proceedings against the Federation at the High Court of Justice in England through international arbitration, claiming that the Federation had violated the 1994 agreement, particularly with their use of the new logo, WWF.com, and other Internet-based endeavors using "WWF". [14]
On August 10, 2001, the court ruled in favor of the Fund. [15] The court found that the Federation had failed to comply with the 1994 agreement since at least 1997. [16] The Federation filed against the decision in England's Court of Appeal on October 1, 2001. [17]
2002 Court of Appeal decision
On February 27, 2002, the Court of Appeal dismissed the Federation's challenge to the High Court of Justice's decision. However, the Federation was granted a stay by the Court of Appeal. [18] The Federation announced on the same day that it would seek leave to appeal in England's House of Lords. [19]
On May 6, 2002, the Federation announced that it would abandon its attempt in seeking leave to appeal in the House of Lords, and would rebrand from World Wrestling Federation (WWF) to World Wrestling Entertainment (WWE). [20] The WWE would be able to still use its block 'WWF' logo in some contexts, as well as the term 'World Wrestling Federation', but would be prohibited from using the 'WWF' initials moving forward, as well as the 'WWF scratch' logo introduced at Survivor Series 1997. The WWE would also have to censor any "WWF" spoken references, and the former 'WWF scratch' logo and typefaces in any previous footage. [21]
In the same statement, Linda McMahon, CEO for WWE, said that the rebranding allowed for the company to emphasize its focus on entertainment, and the company also launched its "Get the F Out!" marketing campaign. [22]
