In Brief
Last month the controversial and highly successful singer and songwriter Lady Gaga successfully stopped the creators of animated children's character Lady Goo Goo and the successful children's phenomenon, Moshi Monsters, from promoting and releasing a song entitled "The Moshi Dance" on iTunes. Lady Gaga enforced her exclusive rights in the registered trade mark LADY GAGA, on an interlocutory basis.
Lady Goo Goo is a popular character in the children's online computer game and social networking site, Moshi Monsters, designed for children aged 6 to 12.
"The Moshi Dance" song was previously released on YouTube and received a strong following. Before the song could be released and sold on iTunes, Lady Gaga commenced proceedings in the UK High Court against the creators of Moshi Monsters, alleging that the sale of the song on iTunes would infringe her rights.
Lawyers for Lady Gaga argued that the public would confuse the character of Lady Goo Goo with Lady Gaga and her trade mark LADY GAGA. They also submitted that "The Moshi Dance" song parodied elements of other Lady Gaga works and that some children had already been confused by the two works and questioned whether they were associated.
The Court held that although people may appreciate that one song was a parody of the other, some people were still likely to consider that the two were economically linked, which may cause confusion with the Lady GAGA trade mark.
While the Court did not prevent the use of the Lady Goo Goo character and song within the children's online computer game, the Court granted an interim injunction to prevent temporarily the promoting, advertising, selling, distributing or otherwise making available to the public "The Moshi Dance" or any musical work or video that purports to be performed by a character by the name of Lady Goo Goo, or that otherwise uses the name Lady Goo Goo.
Until the matter is finally determined by the Court, Moshi Monsters is prohibited from promoting the song on YouTube or releasing it on iTunes.
The Guardian newspaper attributes to Michael Acton Smith, the founder and chief executive of Moshi Monsters, the following comment:
"It's pretty obvious that kids will be able to tell the difference between the two characters," ... "The shame is that millions of kids fell in love with Lady Goo Goo's debut single on YouTube and now won't be able to enjoy her musical exploits. It was all done in the name of fun and we would have thought that Lady Gaga could have seen the humour behind this parody."
This is another example of the power of a registered trade mark, and the control that a vigilant trade mark owner can wield, provided that action is taken swiftly, in order to protect a valuable and recognisable brand. It is also a reminder that, whilst parody is a clear defence for copyright infringement, its role in trade mark infringement allegations is less than clear, with significant arguments yet to be resolved as to whether use by way of a parody can amount to use as a trade mark and, therefore, infringement.
It is not clear whether Moshi Monsters will continue to contest the matter, and seek to release the song on iTunes, or whether it will not pursue that strategy, in light of the injunction that has been ordered. If it does want to pursue the matter, it will have to convince the Court that final injunctions should not issue. If so, there may be some further useful guidance on the relationship between parody and trade mark use.
If you have any questions about obtaining or enforcing trade mark rights, or potential exposure when using a parody of a registered trade mark, please contact our trade mark experts:
Swaab Attorneys was the highest ranking law firm and the 13th best place to work in Australia in the 2010 Business Review Weekly Best Places to Work Awards. The firm was a finalist in the 2010 BRW Client Choice Awards for client service and was named the winner in the 2009 Australasian Legal Business Employer of Choice Awards.
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