Hearst et al v AVELA et al  EWHC 439 (Ch)
Birss J has handed down a decision in the English High Court relating to trade marks and passing off and character merchandising. This follows his decision in Fenty v Arcadia  EWHC 2310 (Ch) which involved the pop star Rihanna.
This case reiterates that in English law there is no such thing as a free standing general right by a famous person to control the reproduction of their image. However, depending on the facts, and in particular where it can be shown that a fictitious character is seen by consumers as a badge of origin, trade mark law and passing off can be used to enforce rights in that character.
The Claimants were Hearst Holdings Inc and Fleischer Studios Inc ("Hearst"). Hearst were the successors of the originator of the cartoon character Betty Boop, first shown in 1930s America. They licensed Betty Boop merchandise in the UK. The first defendants (AVELA) licenced Betty Boop images for use on merchandise, which was manufactured, distributed and sold by the remaining defendants. AVELA claimed to be a legitimate source of Betty Boop merchandise. They had reconditioned old Betty Boop movie posters and claimed that its imagery was derived from those old posters.
Hearst brought a claim for trade mark infringement based on various registrations for the word mark BETTY BOOP and a device depicting the Betty Boop character. The claim also included passing off and copyright infringement, although the copyright element of the case was separated and was due to be tried later.
The defendants denied infringement on the basis that their use of Betty Boop and associated imagery is purely decorative; neither they nor their customers use Betty Boop as a trade mark. They also raised attacks on the validity of Hearst's trade marks.
Fictional characters as trade marks
The Judge commented that without many years of education of the public, the appearance of a well known character (real or fictional) on a product may not have origin significance. The Judge repeated his recent statement in Fenty v Arcadia that there is no such thing as a free standing general right by a famous person to control the reproduction of their image.
The Judge further commented, however that it may be easier to educate the public that the goods related to an invented character derive from an official source, for example because copyright law gives the inventor of the character the ability to control the reproduction of the character for a long time.
In this case, having considered the evidence filed by the parties, the Judge came to the conclusion that in this particular case, the average consumer would see the Betty Boop character as both aesthetic and as a sign related to trade origin, i.e. a trade mark. The effect of Hearst's trading in the UK for over 20 years had been to imbue the Betty Boop character with trade mark significance in the mind of the public.
The Judge's conclusion
The Judge held that the defendants had infringed the claimants’ UK and Community trade marks under section 10 (1), 10 (2) and 10 (3) of the Trade Marks Act 1994 (and their equivalents under the Community Trade Mark Regulation) and had committed acts of passing off.
The Judge held that the defendants had no defence on the basis of descriptive use; the use they made could not be seen as descriptive, in particular given tags on their products which used the words "officially licensed" or similar. In addition, the use was not in accordance with honest commercial practices, considering that the defendants knew of Hearst's Betty Boop trade marks and reputation, and sought to take advantage of that reputation. The Judge also rejected the defendants' attacks on the validity of Hearst's trade marks.