March 3, 2017
BACKGROUND – The claimants had operated a Betty Boop merchandising business in the UK since the 1980s and registered a number of UK and Community trade marks for the term “BETTY BOOP” and for a related image. The earliest of these were registered in 1992, with subsequent trade marks registered for additional classes of goods.
The first defendant, AVELA Inc, operated in the USA and began offering to license Betty Boop imagery for merchandise in the USA in 2006. It moved into the UK in 2009. The parties had been involved in litigation over the use of Betty Boop in the USA, which AVELA had won. AVELA’s operation involves restoring and uploading poster images and artwork, which it makes available to licensees for them to display on merchandise.
They had made available several such posters displaying Betty Boop, which the other defendants in the case had used on a variety of merchandise.
KEY ARGUMENTS – The claimants argued that they were the only legitimate source of Betty Boop merchandise within the UK and other EU countries and that the defendants’ use of her image (and the occasional use of her name) amounted to passing off (a misrepresentation which leads the public to believe that the goods originate from the claimant) and trade mark infringement. They provided strong evidence that they had expended a lot of time and resources developing the Betty Boop brand within the UK and that the brand was capable of trade mark protection.
The defendants argued that they did not use the claimants’ trade mark because the imagery used on the merchandise was “purely decorative”, having been derived from old movie posters, and did not denote trade origin. They denied using the words “BETTY BOOP” and said that strict instructions were circulated not to use those words. However, the judge found that these instructions were not always followed.They also argued that the claimants’ trade marks were invalid because they were devoid of distinctive character and merely indicated the characteristics of the goods for which they are registered.
The defendants also disputed the claimants’ entitlement to the Betty Boop character in any event but that issue was not something which the judge considered.
DECISION – Following lengthy consideration of the various arguments and defences put forward, the judge agreed with the claimants on all counts.
Having considered a number of similar cases involving the use of people/characters – both real and fictional – he decided that the claimants’ work in building the Betty Boop brand had earned her trade mark protection. This can be distinguished from cases involving the use of imagery relating to Elvis Presley, Tarzan, ABBA, and The Wombles, where the trade mark holders lost.
The key reason for this was that the development of the claimants’ business over a period of nearly 30 years had resulted in a high level of brand recognition, so that the use of her image (and/or the words ‘BETTY BOOP’, ‘BOOP’ or ‘Boop oop a doop’) on goods indicated to businesses and customers that those goods had originated from an official source (i.e. the claimant). This was backed up by the labels used by the claimants on such goods, which consistently showed “BETTY BOOP ™” as well as a copyright notice.
The defendants were liable because, by selling goods with the image (and in some cases the words), they were misleading customers (both at trade and consumer level) into thinking that those goods were from the official source. The judge cited Express Gifts and Penneys – retailers which stocked merchandise from the defendants – as examples of confusion because both believed the goods originated under licence from the claimants.
Although there were no examples of such confusion at consumer level, he found there was enough evidence to show that such confusion was likely to occur.The judge also found that, although the defendants had given instructions not to use the term “BETTY BOOP”, so as to avoid association with the claimants’ business, those instructions had not always been followed.
In any case, the judge found that the image of Betty Boop alone was enough to mislead as it was so easily identifiable. Also, the use of wording such as “official licensee” on the defendants’ merchandise had led (or could lead) customers to believe that they were official licensees of the claimant, as opposed to the first defendant.
The defendants’ arguments relating to the validity of the marks were rejected. In doing so, the judge stated that the marks had become distinctive by 2009 (when AVELA entered the UK market). He also emphasised that a separate challenge lodged with the Intellectual Property Office had been rejected.
COMMENT – This is the latest in a long line of trade mark cases relating to well-known personalities and characters. The list of former winners (e.g. Teenage Mutant Ninja Turtlers and Eddie Irvine) and losers (e.g. Tarzan, The Wombles, Linkin Park) demonstrates that the decisions in these disputes will always be very fact-specific. In this case, the fact that the claimants had nearly 30 years unchallenged to develop their Betty Boop brand within the UK – and that the trade marks had been registered for some time – were highly persuasive.
The judge was eager to dispel fears that his finding would effectively result in a form of unlimited copyright. He explained that the validity of the marks as denoting the origin of the goods would depend on the claimants’ ongoing work to maintain and develop the reputation of their brand and the marks.
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