Case Summary and Outcome

The High Court held that the Defendant’s creation of a fake website mimicking the Claimant’s, which included a fabricated apology for the “Fishrot scandal,” constituted passing off, copyright infringement, and malicious falsehood, resulting in reputational harm to the Claimant. The Defendant’s argument that his actions were protected under Article 10 of the European Convention on Human Rights, as part of an artistic project, was rejected. The Court found that the Defendant’s actions went beyond the bounds of artistic freedom, and it granted injunctive relief and ordered the transfer of the domain name to the Claimant, balancing the Claimant’s intellectual property and reputational rights with the Defendant’s right to free expression.

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Facts

Samherji HF, the Claimant, is a prominent Icelandic company in the fishing and fish processing industry, operating and marketing its business under the name and trademark “SAMHERJI” since 1983. The company uses a distinctive logo featuring a square with a circle encircling two fishes, which it claims is inherently distinctive and represents substantial goodwill and reputation among UK customers. [paras. 2-4] 

Oddur Fridriksson, the Defendant, (who uses the nickname “Odee”), is an Icelandic citizen known as a performance and conceptual artist who describes himself as a “cultural activist”. On February 23, 2023, he registered the domain name samherji.co.uk with a redacted registrant name and email. [paras. 5-6] 

On May 11, 2023, the Claimant discovered a website at samherji.co.uk that appeared to be their official UK website. The website’s homepage displayed a large “WE’RE SORRY” message with a link to a press release. The press release, purportedly from the Claimant, apologized for the “Fishrot scandal” – a financial scandal linked to a 2019 Wikileaks release, that implicated the Claimant’s former subsidiaries in corrupt practices in Namibia. The fake release alleged actions such as bribery, corruption, and the illegal extraction of profits from Namibian fishing quotas, which the Claimant categorically denies. [paras. 8-9] The press release was emailed to numerous media outlets including the BBC, Guardian, and other international media organizations. [para. 10]

To make the website appear authentic, Fridriksson included detailed information about the Claimant’s products, activities, and fleet. It even included a product brochure download and contact email addresses for sales and media inquiries. [paras.11-12] At least one media outlet, the Fishing Daily, initially reported the apology as genuine. On the same day, the Claimant posted a message on their official website stating that unknown dishonest parties had sent a fake press release and set up a fraudulent website. On May 15, 2023, Nominet revealed the domain registrant as the Defendant. [paras. 14-15]

When the Claimant contacted the Defendant on 16 May 2023 demanding he stop using their trademarks and close the website, he responded that “no changes will be made to the website or the artwork.” [para. 16] The Claimant then applied for an interim injunction, which was initially adjourned to allow the Defendant to respond. [para. 17]

On May 17, 2023, Defendant issued a press release in Iceland revealing that the website and press release were part of his artwork. [para. 18] The Defendant characterized the project as a cultural critique, consisting of the fake website, the fabricated press release, and a mural displayed in the Reykjavik Art Museum. This exhibition, part of the Defendant’s graduation project at the Icelandic Academy of Arts, ran from 18 May to 29 May 2023. [paras. 18-19] An Icelandic newspaper article further explained that this was part of his graduation project from the Icelandic Academy of the Arts, describing it as an artwork of ‘cultural distortion.’ The Defendant quoted the artwork as a “f..k you” to Samherji and an apology to Namibia on behalf of the Icelandic people. [para. 19]

After Nominet disclosed Defendant’s identity on May 15, 2023, the Claimant requested that Defendant cease using the trademarks and take down the fake website. The Defendant refused, asserting no changes would be made to the website or the artwork. [paras. 15-16]

On May 19, 2023, the Claimant’s application for interim relief came before the Court, but the Defendant did not attend or send representation, despite having downloaded the case papers. [para. 20] The Court vide Order dated May 24, 2023, ordered the Defendant to transfer the Domain Name to the Claimant; to take down the Website located at the Domain Name, and to ensure that the Website and all email accounts using the Domain Name continue to be non-operational pending final order of the Court following trial or further order in the meantime. [paras. 20-21] On May 24, 2023, the Domain Name was transferred to the Claimant and subsequently, the Website was taken down.

A professionally drafted Defence and Counterclaim was filed on behalf of the Defendant on July 17, 2023, challenging the Claimant’s claims. However, the Defendant’s legal representation ceased on 28 September 2023, leaving him to represent himself. [para. 26] 

On March 14, 2024, the Claimant filed an application for summary judgment on claims of passing off, copyright infringement, and malicious falsehood, alleging that the Defendant had damaged its reputation and misrepresented its identity through the fake website and press release. [para. 27]

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Decision Overview

Chancery Master Paul Richard Teverson wrote the decision. The primary issue was whether the Defendant’s creation of a fake website, mimicking the Claimant’s and involving defamatory content, constituted passing off, copyright infringement, and malicious falsehood.

The Claimant contended that the Domain Name and Website were targeted at the United Kingdom, evidenced by the .co.uk suffix. The Domain Name and Website specifically targeted the United Kingdom, a fact not disputed in the Defence. The evidence for UK targeting included: (a) the use of a .co.uk suffix, (b) deliberate distribution to UK media outlets on May 11, 2023, (c) the fake press release being issued from London, (d) references to London-based Restitution, and (e) the Website’s appearance to an average customer as the Claimant’s official UK website. The Court emphasized that these points about UK targeting remained uncontested by the Defence. [paras. 33-34]

The Defendant’s primary defense rested on artistic freedom under Article 10 of the ECHR, as incorporated by the Human Rights Act 1998. The Defendant contended that his actions were justified as performance art aimed at exposing the Fishrot scandal and the Claimant’s alleged lack of accountability. He specifically cited the Yes Men’s 2004 Dow Chemical Company hoax as inspiration, where similar impersonation tactics were used on BBC World News. Defendant maintained that society’s right to information and public debate on matters of interest should prevail over the Claimant’s intellectual property and reputational rights. [paras. 35, 49-51]

The Court examined the Plesner v Louis Vuitton case as a relevant precedent but distinguished it from the current situation. While both cases involved artists challenging large corporations, key differences emerged: Plesner involved Community Design rights and used Louis Vuitton’s reputation to convey a message, whereas this case involved direct impersonation and deliberate deception. The Court highlighted that the Defendant’s work went beyond artistic expression by creating false communications purporting to be from the Claimant. [paras. 46-48]

The Court outlined the legal framework under the Human Rights Act 1998, specifically noting that Article 10 rights cannot be considered in isolation from Article 10(2) qualifications. The Court emphasized the need to balance competing rights by examining individual case facts intensely and considering justifications for restricting each right. This framework was supported by precedents from Douglas v Hello! Ltd and Ashdown v Telegraph Group Ltd.  [paras. 40-44]

The Court concluded definitively that the Defendant, relying solely on Article 10 (freedom of expression), had no real prospect of opposing the transfer of the Domain Name to the Claimant. The Court’s reasoning was straightforward: since the Defendant’s artistic performance had already been completed, there remained no justifiable reason for him to retain or continue using the Domain Name. Furthermore, the Court held that the Defendant had no viable prospect at trial of successfully opposing a final injunction (in the form of paragraph 2 of Adam Johnson J.’s order, as continued by Sir Anthony Mann’s order dated May 25, 2023). This final order would serve three key purposes: it would prevent the Defendant from making any further use of the Claimant’s Mark and Logo, stop him from using the sign ‘Samherji,’ and prohibit him from misrepresenting through any means that the Website was operated or controlled by the Claimant. The Court determined that Article 10 rights alone were insufficient to prevent these restrictions from being imposed. [paras. 52-53]

The Court examined three claims: passing off, copyright, and malicious falsehood. For passing off, the Claimant needed to prove: (i) reputation/goodwill in its goods, name, or mark, (ii) misrepresentation targeted at the jurisdiction leading to confusion, and (iii) damage or likelihood of future damage. The relevant date for assessment was May 11, 2023, when the Website became active. [paras. 54-55]

The Court referred to Scandecor Development AB v Scandecor Marketing AB [1999], the Court confirmed that overseas businesses could acquire UK goodwill through subsidiaries. The evidence showed the Claimant had substantial UK seafood sales through Seagold Limited (former subsidiary) and Ice Fresh Seafood division. Mr Baldvinsson’s testimony proved that major UK retailers were aware of the Claimant’s role as the product source. The Court rejected the Defendant’s argument about lack of goodwill, noting the companies’ shared interest in protecting the goodwill.

On Passing Off

The Court highlighted the key elements of a passing off claim: reputation or goodwill, misrepresentation leading to confusion, and actual or likely damage. [para 55]. The Court relied on precedent from Scandecor Development AB v Scandecor Marketing AB [1999], which allows for goodwill to be established by an overseas company through local agents or subsidiaries. [para 57] The Claimant, a vertically integrated seafood company, demonstrated substantial sales in the UK, supported by audits from major UK retailers and evidence from its former subsidiary, Seagold Limited. [paras. 58-59] The Court rejected the Defendant’s challenge to the Claimant’s goodwill, noting the close ties between the Claimant and its marketing entities. [para 60]

The Defendant’s acts, including setting up a fake website with a misleading press release, amounted to passing off as they misrepresented the Claimant’s brand, causing reputational harm. The Court referred to Burge v Haycock [2002] and British Telecommunications Plc v One In A Million Ltd [1999]  to support its view that the Claimant had lost control over its goodwill and was entitled to injunctive relief. [paras. 62-64]

On Copyright Infringement

The Court found that the Defendant had infringed the Claimant’s copyright by copying its logo and brochure to lend authenticity to the fake website. [para 65] Ownership was established through evidence: the Logo’s copyright was assigned by designer Gudbjorg Ringsted (July 4, 2023), and the Brochures’ rights were acquired from Marketing by Design LLC through Ice Fresh Seafood ehf., the Claimant’s subsidiary. [para 68]

The Defendant’s reliance on Sections 30 and 30A of the Copyright, Designs, and Patents Act 1988 (CDPA) for fair dealing defenses (criticism, review, quotation, parody, pastiche) was rejected. The Court found that using the Logo and Brochure was meant to authenticate the fake website rather than criticize the works themselves. The Court emphasized that criticism of the Fishrot scandal differed from criticism of copyrighted works, and the website didn’t constitute parody or pastiche as defined in law. [paras. 69-75]

The Court considered the public interest defense under Section 171(3) of CDPA 1988 and Article 10 rights, referencing Ashdown v Telegraph Group Ltd [2002]. While acknowledging the Spiegel Online GmbH v Beck [2019] case, the Court focused on balancing freedom of expression with fair dealing. It concluded that publishing false statements and commitments in the Claimant’s name violated journalistic ethics principles (citing Steel & Morris v United Kingdom [2005]). The Court noted that the Defendant’s subsequent revelation of the hoax through an Icelandic press release was insufficient to end the deception, as the Website remained active until Court intervention. [paras. 76-77]

On Malicious Falsehood

On the claim of malicious falsehood, the Court found the Defendant’s actions—publishing a fake press release implying the Claimant’s involvement in misconduct—were deliberate and calculated to harm the Claimant’s reputation. The Defendant’s argument that the website was a ‘culture jamming’ performance did not negate the harm caused by the false representations. [para 61] The Court held that the Claimant had suffered reputational damage and incurred costs to correct the misrepresentation, warranting injunctive relief. The interim injunction granted earlier had mitigated further harm, but the Court acknowledged the potential for future damage absent a final injunction. [para 64] The Defendant’s conduct demonstrated no real prospect of success in defending the claims at trial, justifying summary judgment for the Claimant.

The Court addressed the issue of malicious falsehood under the tort law framework, emphasizing the necessary elements of the claim: falsehood, malice, and damage. [para 80] The Claimant argued that the Defendant knowingly made false statements with malicious intent, including claims that the Domain Name was an official domain of the Claimant and that the Fake Press Release was a genuine statement. [para 79] The Claimant further supported this claim by citing the Defendant’s quote published on 17 May 2023, which demonstrated the Defendant’s improper motive and intent to harm the Claimant. [para 82] The Defendant, however, denied malicious intent and argued there was no evidence of damage, invoking the right to freedom of expression under Article 10. [para 83]

The Court highlighted the statutory context, referencing Section 3 of the Defamation Act 1952, which eliminates the need to prove special damage if the false statements were calculated to cause pecuniary harm. [para 84] The Court applied this standard, concluding that the Defendant’s use of the Domain Name and Website was fraudulent and calculated to deceive, with the deliberate intention of causing financial harm to the Claimant. [para 85] This analysis aligned with the Court’s findings in the passing-off claim, where the Defendant’s actions were similarly deemed fraudulent and damaging.

The Court concluded that the Defendant had no real prospect of successfully defending against the claims for malicious falsehood, passing off, or copyright infringement. [para 86] The deliberate deception and fraudulent purpose were central to the Defendant’s actions, and there was no compelling reason for the case to proceed to trial. The Court emphasized that the Defendant’s artistic expression had already been performed, and the harm caused by the hoax had been realized.

In Conclusion, the Court indicated its strong inclination to grant final injunctive relief in line with the interim injunction, allowing for the possibility of an inquiry into damages. [para 88] The judgment was set to be handed down remotely, with provisions for a subsequent hearing to address consequential matters and finalize the order. [paras. 89–91] The Defendant’s recent name change was noted, and an application for amendment was directed to follow procedural rules. [para 92]

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