UK: Lady Gaga vs Lady Goo Goo - Spot The Difference?

Last Updated: 3 August 2012
Article by Liane Bylett


The High Court has ruled that the musical activities of the "Lady Goo Goo" character constituted an infringement of the Lady Gaga trademark, by applying the ECJ decision in Interflora v Marks & Spencer
. This decision will provide comfort to trademark owners who believe that their brand is being imitated.

The Court has provided brand owners with useful guidance particularly in circumstances where a competing product is an imitation of the brand (rather than simply an alternative product) by applying of the principles set down by the ECJ in the case of Ate My Heart Inc v Mind Candy Ltd & Ors. Liane Bylett in our IP team considers the Court's decision.

Background

This dispute involves Ate My Heart Inc, the US company used by Lady Gaga to control her brand rights, and Mind Candy, a UK company which operates an online computer game for children called Moshi Monsters. The game contains a number of parody characters, for example Taylor Miffed (resembling Taylor Swift) and Banana Montana (resembling Hannah Montana). One of the characters in the game is a blonde baby wearing sunglasses and a nappy called Lady Goo Goo, said to be reminiscent of Lady Gaga. Lady Goo Goo performs a song called the Moshi Dance Song which is very similar to Lady Gaga's Bad Romance. The Moshi Dance Song was published on YouTube and it was intended to release the song on iTunes.

Ate My Heart Inc applied to the High Court for an injunction preventing the release of the song on iTunes and requiring the song to be removed from YouTube. The application was based on the likelihood of confusion with the Lady Gaga brand and the damage to the reputation of the brand.

Key elements of the decision

The Court considered the evidence in this case and, applying the principles (outlined below) set out in the European Court of Justice (ECJ) decision in Interflora v Marks & Spencer, reached the conclusion that the release of the Moshi Dance Song would constitute an infringement of the Lady Gaga brand and granted the injunction. The reasoning is set out below.

1. Confusion

The first issue to be considered was the "average user" test which was applied by the ECJ in Interflora v Marks & Spencer i.e. is there a risk that the average consumer would believe that Lady Goo Goo was from the same source or economically linked to the songs of Lady Gaga? The Court identified two different classes of average consumer (a) 6-12 year old children at whom the Moshi Monsters game is targeted; and (b) older internet users who might see the Moshi Dance Song on YouTube or iTunes.

(a) 6-12 year olds –there is a strongly arguable case that this class of consumer playing the Moshi Monsters game would make a clear connection between Lady Goo Goo and Lady Gaga. This finding was supported by evidence from blogs and postings on the Moshi Monsters website showing that the gamers had made the connection between the two.

(b) Older consumers – whilst there was little conclusive evidence to support a finding of confusion, there was a reasonably arguable case that there could be confusion if the song were released on iTunes for the following reasons:

  • The similarity between "goo goo" and "ga ga" which are both noises made by babies;
  • The similarity between Lady Goo Goo's song the Moshi Dance Song and Lady Gaga's hit Bad Romance;
  • Lady Gaga refers to her fans as "Little Monsters";
  • The YouTube clip posted by Mind Candy was tagged "Lady Gaga".

So the Court concluded that there was a likelihood of confusion on the part of average consumer and a risk that consumers might believe that the Moshi Dance Song was from the same or an economically linked source to the songs of Lady Gaga. The fact that Mind Candy had previously met with Polydor, Lady Gaga's record label, to discuss a commercial tie-up with the Lady Goo Goo character (which did not, in the end, transpire) also influenced this decision.

2. Reputation

There are three factors which must be assessed when establishing a trademark infringement under Article 9(1)(c) of the Community Trade Marks Regulation; (a) the claimant has an established reputation; (b) does the alleged infringement create a link in the mind of the public with the trademark; and (c) has the claimant suffered or is likely to suffer damage as a result?

The first two factors are clear - Lady Gaga has a highly distinctive brand and a "huge" reputation. Also there is a clear likelihood of confusion that there is an economic link between Lady Gaga and Lady Goo Goo (as set out above).

Turning to the third factor, there were three types of damage identified by the court in Interflora v Marks & Spencer:

  • Dilution – Detriment to the distinctive character of the mark;
  • Tarnishment – Detriment to the repute of the mark;
  • Free-riding – Taking unfair advantage of the mark.

In relation to dilution, the Court held that if a consumer searched for "Lady Gaga" and was directed to the Moshi Dance Song on YouTube (due to Mind Candy using the "Lady Gaga" tag), there would be no way of knowing that the two were not connected or that the Lady Goo Goo clip had not been endorsed by Lady Gaga. Accordingly it was held that there was a good arguable case for dilution of the Lady Gaga mark. This is a different outcome from the Interflora case where the use of a trademark as an internet keyword simply drew the consumer's attention to what was clearly an alternative product or service then the mark was not diluted.

Tarnishment is when a mark's power of attraction is reduced. The key question for the court to consider is whether the average consumer would think that the origin was the same? Applying the same reasoning as to the likelihood of confusion, Mr Justice Vos held that there was a "real risk of actual tarnishment" in this case.

Taking unfair advantage of a mark is characterised as "riding on the coat-tails" of that mark by exploiting its reputation and the marketing effort of the owner of the mark. The Court again distinguished the Interflora decision on the basis that Lady Goo Goo is an imitation of Lady Gaga rather than an alternative. Whilst Lady Goo Goo is a "take-off" of Lady Gaga and an "effort at comedy" in the context of the Moshi Monsters game, once she goes beyond that into the "free distribution of popular music" on the internet then there was held to be an arguable case for free-riding.

Lastly, the Court considered the possibility that (if the injunction were not granted) in 12 months' time Lady Goo Goo might become a chart-topping pop star in her own right, comparable with Lady Gaga's success. In those circumstances, the Lady Gaga brand would be depreciated and damage to the mark would occur.

Comment

Ate My Heart Inc was successful in preventing Lady Goo Goo from encroaching on the popular music market and accordingly her music should only be used in the context of the Moshi Monsters game. This case provides an interesting insight into how the Courts will apply the principles confirmed in the Interflora decision and how the average user test may be applied. The Court distinguished this case from the Interflora case on the basis that Lady Goo Goo was an imitation, rather than an alternative product, which underlines the importance of considering each case on its own facts and seeking legal advice if you are in a similar situation.

This document is provided for information purposes only and does not constitute legal advice. Professional legal advice should be obtained before taking or refraining from taking any action as a result of the contents of this document.

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