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
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
"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
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,
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
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
To print this article, all you need is to be registered on Mondaq.com.
Click to Login as an existing user or Register so you can print this article.
As a licensor or a licensee, here are some tips you should consider when negotiating your next licence agreement.
Some comments from our readers… “The articles are extremely timely and highly applicable” “I often find critical information not available elsewhere” “As in-house counsel, Mondaq’s service is of great value”
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).