Lady Gaga is one of music's most successful pop stars.
Well known for her over the top, controversial and bizarre fashion,
Lady Gaga is a music icon. Like many celebrities, Lady Gaga is
registering and has registered a suite of trade marks all over the
world in her company's name 'Ate My Heart Inc' to
protect her well known brands.
UK company Mind Candy is one of the world's fastest growing
social online gaming companies and the global developer, operator
and publisher of Moshi Monsters. The Moshi Monsters is an online
game that is targeted at children between 6-12 years. The game
allows children to adopt and care for their very own pet
The website has 50 million users worldwide and is a hugely
successful UK company valued at Ł125 million.
Lady Goo Goo was one of the 52 animated characters of the Moshi
Monsters. Other musical characters on the website have spoof names
of stars including Dustbin Beaver, 49 Pence and Broccoli
Lady Goo Goo, a baby with a long blonde fringe and large
sunglasses, is a spoofy animated version of the singer that dresses
and acts like a baby version of Gaga.
Lady Goo Goo appeared in a video clip called "The Moshi
Dance" released in June 2011 on YouTube. Lady Goo Goo became a
YouTube sensation with tunes including one called
Due to its popularity, Mind Candy intended to release the song
as a single to be sold on iTunes.
Lady Gaga commenced proceedings in the UK High Court against
Mind Candy alleging that the sale of the song on iTunes would
infringe her registered trade marks and that the public would
confuse the character Lady Goo Goo with Lady Gaga and her trade
mark Lady Gaga Gaga.
The High 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 marks.
The High Court granted a temporary injunction to prevent Mind
Candy from "promoting, advertising, selling, distributing or
otherwise making available to the public The Moshi Dance".
It also prevented Mind Candy from doing the same with "any
musical work or video which purports to be performed by a character
by the name of Lady Goo Goo, or which otherwise uses the name Lady
Goo Goo or any variant thereon".
YouTube has since removed the video.
The High Court ruled that Lady Goo Goo could still appear in the
Moshi Monsters game, without copycat songs.
Mr Michael Acton Smith, the founder and chief executive of Moshi
Monsters was quoted in the Guardian newspaper as saying:
"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. I think this could be a worrying precedent for other parody
acts and tribute bands".
This case reminds us of the importance of registering trade
marks in the jurisdictions in which you intend to use the marks.
Registered owners are granted exclusive monopoly rights in the
trade marks and can prevent unauthorised use of their valuable and
Parody or satire are defences for copyright infringement under
the Australian Copyright Act 1968. Whilst you may be able
to get away with acts of parody in Australia because of this
statutory defence, it is possible that if a person has a registered
trade mark for a particular brand, parody could amount to trade
mark infringement and misleading and deceptive conduct. It is
possible that if the case had been decided in Australia, the
Australian High Court would make the same findings.
If Mind Candy continues to contest this matter, there may be
some useful common law guidance for Australia about the
relationship between parody and trade mark use.
As a licensor or a licensee, here are some tips you should consider when negotiating your next licence agreement.
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