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.
