Member Article

There are many famous cases where trademarks and passing off come into contact with unofficial merchandising and the right holder has been unsuccessful. They range from the fictional character Tarzan, to the rock band Linkin Park, to Diana Princess of Wales. There is no such thing as a matter of UK law as a free standing general right by a famous person (or anyone else) to control the reproduction of their image. This was confirmed recently by the English High Court in deciding Rihanna’s claim against the retailer, TOPSHOP, for selling garments bearing her image without her permission. Despite this, the judge found in favour of the fashion icon in her claim for passing off. The Court has now reiterated this statement while, at the same time, finding the infringement of the intellectual property rights associated with another icon of a different era, Betty Boop (Hearst Holdings Inc and another v A.V.E.L.A. and others [2014] EWHC 439 (Ch)).

The Claimants, Hearst Holdings Inc and Fleischer Studios Inc (‘Hearst’), own registered UK and EU trade marks for the word “BETTY BOOP” and for a figurative mark of the 1930s cartoon character. Hearst has been operating a Betty Boop merchandising business in the UK since 1984, registering the earliest of its marks in 1992. AVELA, the first defendants, who have operated in the UK since 2009, licensed Betty Boop images for use on merchandise, which was manufactured, distributed and sold by the other defendants.

Hearst contended it was the only legitimate source of Betty Boop merchandise. It raised a claim for trademark infringement (of the word mark and the logo) and for passing off. AVELA argued that it was also a legitimate source of the Betty Boop brand. It claimed that their use of Betty Boop and associated imagery derived from reconditioned posters, that it was purely decorative and made no representation about origin. As such, their merchandise could not infringe or pass off.

The Court disagreed. The judge explained that in cases involving famous faces and merchandising the question is always concerned with what the relevant sign signifies to the average consumer. A sign on merchandise may not be an indicator of origin which is the essential function of a trademark. A famous face, for example, can be photographed and reproduced by anyone. The appearance of an animated character on a product will not always have origin significance.

However, this case demonstrates how a fictional character can act as a sign of origin. Betty Boop had become famous not because she is a 1930s animated cartoon, but as a result of the merchandising work of Hearst for over 20 years. The public had been subject to this prolonged ‘education’ such that the average consumer was deemed to now view the mark as a sign of origin. Interestingly, it was the need for ongoing work to renew and refresh the reputation associated with the marks that enabled the judge to distinguish a finding of infringement from effectively awarding the Claimants a form of unlimited copyright.

Some further interesting comments from the Court suggested that fictitious characters should be distinguished from real people. It is easier to educate the public to believe that merchandise derives from a single source if it depicts a fictitious character. The public are used to seeing images of famous people in contexts far removed from endorsement or merchandising. The same may not be the case for invented characters.

For more on this topic, listen to our webinar Protecting images without image rights: https://vimeo.com/80469898.