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This case examines a key question - How can the law of passing off and trade mark law effectively protect rights in a well-known image?
Hearst bought a claim against US company Avela, along with its licensing agent and various licensees, alleging that they had:
The defendants counterclaimed for trade mark invalidity but this will be heard during the copyright infringement hearing in 2015 as the two issues are linked.
Hearst established that they had significant goodwill being the only source of official Betty Boop merchandising in the UK over the last 20 years (or at least until the defendants' activities came to light).
The central issue in this case was misrepresentation—whether the general public would recognise the Avela-licensed goods as official merchandise or not. In some senses, Avela made matters worse for themselves as they required their licensees to ensure that all products were labelled 'Official Licensee' or 'Officially Licensed Product'. The High Court concluded that such labelling would indicate that the item was licensed by an official source (namely the claimants). Accordingly, the defendants had made a misrepresentation.
Unusually, this case concerned another category of consumers, the retailers (such as Argos and Primark), who believed they were buying products from an official licensee. The court found that they too had been misled.
The deception of both the end consumers and the retailers clearly damaged Hearst's goodwill and therefore the defendants were liable for passing off.
In respect of both the trade mark infringement and passing off claims, Avela and the other defendants argued that their use of the Betty Boop image was purely decorative and was not being used in a trade mark sense (ie as a badge of origin). The judge agreed that the images were decorative and attractive but not purely so. Applying Adidas-Salomon AG v Fitnessworld Trading Ltd: C-408/01  Ch 120,  All ER (D) 504 (Oct), the court considered that the fact a sign is viewed as an embellishment does not prevent it being protected as a trade mark where the relevant section of the public establishes a link between the sign and the mark. In this particular case, the average consumer would recognise the Betty Boop image as decoration but also, partly as a result of Hearst's marketing activity for many years, as an indication that the product was licensed from an official source.
Not necessarily—the answer to the question depends on the factual context. The crucial question is what does the particular image signify to a consumer? If it is simply recognition of a famous person or character that would be unlikely to support a trade mark infringement or passing off case. For example, many goods bear an image of Marilyn Monroe but consumers do not associate the various images of Marilyn Monroe with a single official source. If, on the other hand, the image signifies some kind of trade origin—for example, an expectation that the goods would be officially licensed—then a claim for passing off or trade mark infringement is more likely to succeed. On the facts of this particular case, the court found that consumers would associate the Betty Boop image with a single official source.
In contrast to this case, there are numerous cases where the courts have been hesitant to curb the rights of retailers to make creative use of well-known names (Tavener Rutledge Ltd v Trexapalm Ltd  FSR 479,  RPC 275 (‘Kojak’ lollipops case) and Wombles Ltd v Wombles Skips Ltd  FSR 488,  RPC 99 (rubbish skips branded Womble). On the other hand, the creators of cartoon characters Teenage Mutant Ninja Turtles, were able to prevent others using images of the Turtles for clothing on the grounds that the public would expect such goods licensed and official Mirage Studios v Counter Feat Clothing Co Ltd  FSR 145.
This judgment serves as a reminder of the close factual analysis that comes with a passing off and trade mark infringement case. Brand owners who use images of well-known characters (and wish to protect those images as trade mark rights) should consider how the public perceive those images. In this case much was made of the fact that the relevant public don't consider Betty Boop as a 1930's cartoon character but rather as a contemporary brand which had been developed and maintained by Hearst.
In this case, the court held that there was no law which provided that invented characters had stronger rights than real people in respect of control of the reproduction of their image. However, it was noted that it seemed to be easier to educate the public to believe that goods relating to an invented character derived from a single official source than it might be for a real person. That said, the same judge ruled last year that an individual could prevent the reproduction of his or her image under the law of passing off, in certain circumstances.
Jessica Stretch, solicitor in the Lexis®PSL IP & IT team.
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