TEN vs Community TV in legal battle for the Couches

Fred MafricaA Community TV presenter in Perth is accusing Network TEN of trademark infringement, using the title Couch Time on ELEVEN when he has had The Couch on air for over ten years.

Fred Mafrica, host and producer of the light entertainment show, says TEN paid him a license fee for two years to use the name, but is no longer paying him and he believes they are forcing him into a legal battle he cannot afford.

The Couch began in 2002 and Mafrica has had the name trademarked with IP Australia under Class 41 which covers Radio and TV Broadcasting. This protects him from similarly-titled programmes emerging.

“That includes any show that has the name as The Couch which has interviews, entertainment, giveaways,” he said.

When afternoon show Couch Time with hosts Labby & Stav began on ELEVEN in 2011, TEN agreed to pay a license fee for the name at $10,000 a year. After two years he tried to lift the price to $15,000 but Mafrica says the new TEN management has refused.

“TEN turned around and said ‘No, we’re not going to be renewing our deal. We don’t want it at any price. We’re going to keep using our name but we’re not going to pay you,'” he said.

“As from January of this year TEN is in breach of trademark because they are continuing to do what they’ve done but they haven’t changed the name of the show.

“My lawyer wrote to them and said ‘My client is still willing to negotiate a licensing agreement at the same price and we’ll give you until the 31st of January.” But basically they wrote back and said they weren’t interested and would keep using the name, take us to court.”

Mafrica is also facing a second battle with Austereo’s MIX 94.5 in Perth which has a radio show called The Big Couch. It too has been paying him a license fee for 8 years for the name but is also refusing to renew its agreement beyond June.

“I knew there was something up so I went and registered the trademark Big Couch and I also registered Couch Time. On the premise that I already owned The Couch I knew IP Australia would approve it. It would stop them trying to use the name and never giving me anything for it,” he said.

“I paid all the fees but 3 days before they were due to be registered Channel TEN and Austereo put oppositions into those trademarks.”

He is suspicious that the two objections are linked.

“I got my opposition papers from Austereo on Christmas Eve and ten minutes later the papers from TEN. It might be coincidence but it’s funny how they both opposed the registration of those trademarks.

“Channel TEN was using the same Austereo licensing agreement just with different name changes.”

Having already paid a lawyer for legal advice so far, Mafrica is accusing both media companies of trying to back down from a fight he cannot afford.

“Basically I’m now in a position where I have to take them to court to get justice but I don’t have the money to take them to court, because as you can imagine it’s not cheap,” he said.

“It’s not a fair way of running a company and it’s not Australian. I invented this name in 2002 and registered it. I never made millions of dollars out of it, but it was my idea.

“They took advantage of the cheap fee that I gave them. They took advantage of my generosity. I could have said 8 years ago ‘I’m not going to let you use it, drop the name.’

“With the two trademarks I was actually going to register them and sell them to them. There was always an intention to help them but they’ve gone nasty.”

Ironically Mafrica is also a TEN shareholder.

“I bought them at $1.60 and now they’re only worth about 30c,” he said.

“I don’t know about the new executive who’s come on board, but what makes me really angry is all the money they’re wasting on shows and redundancies and getting rid of people. Then they’re quibbling over $10,000.

“I’ve promoted their shows, I went over to The Circle when it was finishing and did a story on them.

“When (TEN newsreader) Charmaine Dragun died it was my footage that TEN used because I was the only one who had an interview with her. We’ve always played ball with them.”

TEN would not confirm if it had been paying a license fee to Mafrica or whether it had not been renewed.

A TEN Spokesperson told TV Tonight, “We have never discussed confidential commercial agreements in public and we are not about to start now.

“But TEN does not consider that it requires a licence from Mr. Mafrica in connection with Couch Time.”

But Media & Entertainment lawyer Shaun Miller said Mafrica has a strong case.

“It is arguable that by Channel 10 naming its television programme Couch Time, there has been a breach of the registered trade mark The Couch under the Australian Trade Marks Act. Couch Time is deceptively similar to the name The Couch in relation to the provision of entertainment services,” he said.

“However, there is no breach of copyright under the Australian Copyright Act. Titles and names of films, television and radio shows and books are not generally accepted as having copyright protection under the Australian Copyright Act because insufficient ‘judgement, effort and skill’ has gone into their formulation for them to qualify as ‘original literary works’ in themselves.”

Foxtel’s On The Couch has been able to operate because it too began in 2002 but without an objections from Mafrica and falls under simultaneous use.

Mafrica continues as host of his weekly community TV show on West TV. But he holds little hope of reaching an outcome with TEN.

“They’ve gone dirty and grubby and they don’t value people anymore,” he said.

“If I started a show called MasterChef Perth, you don’t think they’d come after me and say ‘That’s our name?'”

36 Comments:

    • Beds and Toys do not compete with the same products. It has been explained ad nauseum this is not a copyright infringement, this is a trademark infringement. I won’t be approving any more comments that raise the issue of copyright infringement, thanks.

  1. Nothing stopping TEN from changing it to Sofa Time, which they could have instead of entering the agreement in the first place. It’s a bit like when the Pro-Wrestling organisation used WWF and agreed to it being a US only usage with the World Wildlife Fund. They then went Global still used the name got sued and are now known as the WWE and in other markets other than the US blurr out the WWF initials.

    Fred Mafrica only has this argument because it is a similar concept of a show and he owns the name for that (no-on owns the name NEWS), in another concept with a different audience, he seems not worried i:e no-one is confusing the AFL Show on Foxtel On The Couch with his show. and they’re free to use it.

    Same as Sky TV in the UK and New Zealand, Murdoch couldn’t call Foxtel Sky here as there was already Sky Racing, yet Sky is just a name as well, however in the context of it being a broadcast station it is no go.

  2. @Secret Squirrel: Fair enough. I’m not saying he doesn’t have a case. He definitely does (especially if Ten were silly enough to pay him for something that’s so easily replaceable – especially since they’re only a few 5 minute segments that are pretty much advertorials and a bit cringeworthy to watch). I just think it’s a bit precious to claim ownership of a talk show named “The Couch”. I understand if it’s a drama or a sitcom but in the case of a talk show, there is very little room for variation in that genre and the word “Couch” is so common (and talk shows usually involve couches). I mean, nobody owns a trademark for the word “News” but if you replace “Couch” in this instance with “News” you can see how silly it sounds for someone to own it. And why does nobody own the trademark to a news program with the word “News” in the title? Because it’s so fundamental, that’s why. Like I said, he totally has a case but from a non-legal perspective, it sounds a little crazy to me.

    And I wasn’t clear when I said it but when I said “trademark a bunch of random words”, I meant as show titles like a talk show called “The Show” or a comedy program called “The Sketch” or a cooking show called “The Cook”.

    Also, just out of curiosity, has anyone been to Aldi recently? That place is full of knockoffs that are arguably more infringing than the whole Couch thing.

  3. Secret Squirrel

    @Chris N. – nobody sued because nobody owns “Breakfast” or “News” as a trademark.

    “…I might not know much about trademark law…”
    You got that right. You can’t just go and trademark a bunch words. You have to demonstrate that you have a unique concept, or a unique implementation of an idea.

    If Ten wanted to create a drama or a comedy called “The Couch”, Mafrica would have no claim as that is a sufficiently different usage of the term “couch”. However, “Couch Time” is clearly a very similar program to “The Couch” and people could easily confuse the two.

    It’s the same law that would prevent me from creating a drink full of sugar and caffeine and calling it “Red Ball”, even though a ball and a bull are two very different things.

    @William – you’re confusing copyright with trademark law. They’re completely different.

  4. Where would Labby and Stav go? I am sure that TEN is safe on this one
    @TheCouch
    I am sorry that The Couch and Couch Time are two sepearate titles. Like David pointed out there is no copyright but if you would of gone for a cooking show MasterChef Perth then you really copied the title but you could change th title of the cooking show

  5. I’m going to quit my job and trademark a bunch of random words instead. Yes, I might not know much about trademark law but regardless of technicalities, this whole thing seems a bit petty to me. It sounds like when Apple sued Samsung for using rounded corners (because Apple owns rounded corners, apparently).

    Why didn’t ABC sue Ten for Breakfast? Why aren’t any of the networks suing eachother for “Ten/Seven/Nine News”? Maybe I would feel differently if the product in question was actually original or if Ten weren’t being sued, not for a duplicate but for a *variant* of a name just because it happens to include one banal word.

    Though if Ten could see this coming, they probably could have avoided this mess by coming up with a different name. I’m surprised they liked the word “Couch” so much that they were willing to pay $10 000 for it, rather than think of any other name.

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