BETTY BOOP TRADEMARK INFRINGEMENT CASE
High Court of Justice, Chancery Division, Intellectual Property, Community Trade Mark
Before: Mr Justice Birss
Between:
Claimants
(1) Hearst Holdings Inc
(2) Fleischer Studios Inc
and
Defendants
(1) A.V.E.L.A. Inc
(2) Poeticgem Limited
(3) The Partnership (Trading) Limited
(4) U Wear Limited
(5) J Fox Limited
[2014] EWHC 439
Facts
Hearst Holdings and Fleischer Studios are co-owners of a valid trademark registration of the animation cartoon character below commonly known as Betty Boop first shown in 1930s America. Hearst held the UK and Community Registered trade marks for the words “BETTY BOOP” and the image for, among other goods, shirts, sweatshirts, tops, sleep shirts, and jean shirts. Fleischer a subsidiary of Hearst sued AV.E.L.A Inc and others for passing off and trademark infringement of BETTY BOOP (words and image). Hearst had previously lost in the US. AVELA argued that it was a legitimate source of the Betty Boop imagery in the UK. Both parties sold Betty Boop merchandise in the UK and the wider European Community. AVELA contented that Hearsts’ trademarks were invalid and denied passing off. Hearst also alleged copyright infringement but that claim was separated and is due to heard in January 2015. One of the defendant’s trade mark invalidity arguments (bad faith) was split off since it was linked to the copyright arguments.
The claimants argued that they had put the marks to use in the UK and the Community and had goodwill and reputation. The claimant’s argued that any image resembling BETTY BOOP words or image irrespective of the pose will infringe their mark. The claimant argued that by granting licenses AVELA was liable or was liable as joint tort-feasors with others. Also any manufacture or importation into the UK or the Community will constitute infringement. The infringement claims were based on double identity s10(1) of the Trade Marks Act 1994 (the “Act”) /Art9(1)(a), s 10(2) the Act/Art9(1)(b) likelihood of confusion, and s10(3) the Act/Art9(1)(c) unfair advantage and on detriment to the distinctive character were advanced.
AVELA argued that they had reconditioned old BETTY BOOP movie posters and claimed that their imagery was derived from these old posters. AVELA contended that the source from which it derives its licence to reproduce BETTY BOOP images do not derive from works in which the claimants’ own copyright. The defendants did not dispute that AVELA offers licences to reproduce Betty Boop imagery. They denied trademark infringement on the basis that they did not use Betty Boop imagery as a trademark. The Betty Boop imagery is merely decorative and makes no mention as to the origin of the goods so there cannot be infringement nor is there any misrepresentation for passing off to be possible. The defendants also counter-claimed for threats.
JBirss, commented that there is no such thing as a free standing general right by a famous person to control the reproduction of their image. This repeated his sentiments in the case of Fenty v Arcadia [2013] EWHC 2310 (Ch) involving the pop star Rihanna.
However if the public can be educated that the goods related to a particular invented character from an official source over a substantial period of time then the average consumer would see the character as both aesthetic and as a sign related to trade origin.
JBirss, held that the claimant’s case had been proved. The defendants had infringed the claimants’ UK and Community trade marks under section 10(10, 10(2) and 10(3) of the Trade Marks Act 1994 (and their equivalents under the Community Trade mark regulations) and had committed acts of passing off. The judge rejected all the arguments of the defendants. The defendants attacks on validity, descriptive use were dismissed.
The judge also rejected the assertion that’s AVELA use was in line with honest commercial practice.