The Law Reports are littered with examples of failures by celebrities and the owners of well-known fictional characters to prevent third parties using their images, or the images of those fictional characters, on merchandise. Examples of well-known “losers” include Tarzan, the rock band Linkin Park, the pop group Abba, the TV detective Kojak, the Wombles and Diana, Princess of Wales.
There have, however, also been some notable winners, including the Teenage Mutant Ninja Turtles, Eddie Irvine, the Formula 1 motor racing driver, the pop star Rihanna and most recently the 1930’s cartoon character Betty Boop.
In this article we examine a key aspect of the recent High Court decision in the Betty Boop case, Hearst Holdings Inc and another v AVELA Inc and others [2014] EWHC 439 (Ch), which is likely to be of assistance to both celebrities and the owners of fictional characters, but which is also of potentially wider significance.
The background
The claimants, Hearst Holdings Inc and Fleischer Studios Inc, were the successors of the originator of the 1930’s cartoon character Betty Boop. They claimed to be the only legitimate source of Betty Boop merchandise in the UK.
The first defendant A.V.E.L.A. Inc (AVELA) contended that it was also a source of legitimate Betty Boop “imagery” in the UK. This imagery was licensed for exploitation to various licensees who were also defendants in the action.
The claimants own various UK and Community Trade Marks for the word mark “BETTY BOOP” as well as for certain device marks. For the purposes of this article only the word mark is relevant.
Complaints by the claimants
One of the claimants’ arguments was that any unauthorised product which bore an image recognisable as Betty Boop would infringe the word mark BETTY BOOP under section 10 (2) Trade Marks Act 1994 (TMA), regardless of whether those words or the word “Boop” or a slogan like “Boop oop a doop” appeared on the product.
The law – trade mark infringement based on likelihood of confusion – section 10 (2) TMA
There are six conditions which need to be satisfied to establish infringement under section 10(2) TMA:
- there must be use of a sign by a third party within the relevant territory;
- the use must be in the course of trade;
- it must be without consent of the proprietor of the trade mark;
- it must be of a sign which is identical or similar to the trade mark;
- it must be in relation to goods or services which are similar to those for which the trade mark is registered; and
- it must give rise to a likelihood of confusion on the part of the public.
One of the issues which arose under this aspect of the trade mark infringement claim related to whether there was a likelihood of confusion between an image of Betty Boop dressed as a cowgirl, which appeared on the front of a t-shirt sold by one of the defendants, and the word mark BETTY BOOP registered in Class 25. The goods were identical and so the only issue was the degree and nature of the similarity between the image and the words BETTY BOOP and the overall likelihood of confusion.
The judge pointed out that the claimants’ marks were well known and enjoyed a significant reputation. That enhanced their distinctiveness. There was also a clear and strong association between the words and the character. These factors had to be taken into account when considering the global test to be applied in assessing the visual, aural and conceptual similarity between the image and the word mark.
The defendants’ sought to rely on a decision of Mr Geoffrey Hobbs QC as the Appointed Person in La Chemise Lacoste [2011] RPC 4. In that case it was decided that the similarity between the word ALLIGATOR and the well-known Lacoste crocodile device was not sufficient to give rise to a likelihood of confusion. Mr Hobbs noted in that case that a concept was not a sign capable of being protected by a registration of a trade mark – the rights conferred by a trade mark are centred on the registered representation of the protected mark and they do not enable the concept(s) of a mark to be protected without regard to the distinctive character of the mark as registered.
But what Mr Hobbs had also mentioned in the Lacoste case was that the outcome of the comparison between a word mark and a device might be different if the word had the power to trigger perceptions and recollections of the imagery of the earlier mark with the same degree of spontaneity and specificity as, say, the images conjured up by the words “MONA LISA”, “EIFFEL TOWER” and “STARS AND STRIPES”.
In other words, as the judge in the Betty Boop case remarked, it is not the law that words can never infringe an image mark nor vice versa. It is a question of fact in each case.
As referred to above, to assess infringement in this situation one must consider visual, aural, oral and conceptual similarities and differences between the sign being used and the registered trade mark owned by the claimant.
The judge was of the view that considering an average purchaser of a garment bearing an image of the Betty Boop cowgirl, the purchaser would inevitably recognise the garment as depicting Betty Boop. This is the converse of the situation which was being considered in Lacoste. Here it is the image which triggers the perception of words. According to the judge the words will be perceived spontaneously and inevitably because they are the name of the character. Both the character and the name are well known and there is a strong association between the two.
The conceptual similarity between the cowgirl image and the words BETTY BOOP would therefore cause the average consumer to think that the image conveys the same origin information as the words would. Accordingly they would be confused about the trade origin of the goods and so there was a likelihood of confusion under section 10 (2) TMA. Consequently the image of Betty Boop dressed as a cowgirl did in fact infringe the registration for the words BETTY BOOP, even though those words did not appear on the product.
Conclusion
What is particularly interesting about this case is the consideration of the question as to whether an image can infringe a word mark and vice versa. Here the judge has accepted that an image of Betty Boop does infringe the word mark BETTY BOOP. This is because on seeing the image the public will inevitably perceive the words “Betty Boop”. This principle, whilst perhaps having most relevance to the use of images of well-known characters and personalities, is of course of universal application – as suggested by the judge in the Lacoste case.
It seems that the decision in Betty Boop may lead to celebrities with trade mark registrations for their own names seeking to use those registrations to prevent the use of their images in relation to products or services covered by those trade mark registrations, even though their images may not be protected as trade marks. This could be an interesting development in the area of so-called “image rights”.