Gaga goes gaga over Goo Goo

In Brief

Last month the con­tro­ver­sial and high­ly suc­cess­ful singer and song­writer Lady Gaga suc­cess­ful­ly stopped the cre­ators of ani­mat­ed children’s char­ac­ter Lady Goo Goo and the suc­cess­ful children’s phe­nom­e­non, Moshi Mon­sters, from pro­mot­ing and releas­ing a song enti­tled ​“The Moshi Dance” on iTunes. Lady Gaga enforced her exclu­sive rights in the reg­is­tered trade mark LADY GAGA, on an inter­locu­to­ry basis.

Lady Goo Goo is a pop­u­lar char­ac­ter in the children’s online com­put­er game and social net­work­ing site, Moshi Mon­sters, designed for chil­dren aged 6 to 12.

“The Moshi Dance” song was pre­vi­ous­ly released on YouTube and received a strong fol­low­ing. Before the song could be released and sold on iTunes, Lady Gaga com­menced pro­ceed­ings in the UK High Court against the cre­ators of Moshi Mon­sters, alleg­ing that the sale of the song on iTunes would infringe her rights.

Lawyers for Lady Gaga argued that the pub­lic would con­fuse the char­ac­ter of Lady Goo Goo with Lady Gaga and her trade mark LADY GAGA. They also sub­mit­ted that ​“The Moshi Dance” song par­o­died ele­ments of oth­er Lady Gaga works and that some chil­dren had already been con­fused by the two works and ques­tioned whether they were associated.

The Court held that although peo­ple may appre­ci­ate that one song was a par­o­dy of the oth­er, some peo­ple were still like­ly to con­sid­er that the two were eco­nom­i­cal­ly linked, which may cause con­fu­sion with the Lady GAGA trade mark.

While the Court did not pre­vent the use of the Lady Goo Goo char­ac­ter and song with­in the chil­dren’s online com­put­er game, the Court grant­ed an inter­im injunc­tion to pre­vent tem­porar­i­ly the pro­mot­ing, adver­tis­ing, sell­ing, dis­trib­ut­ing or oth­er­wise mak­ing avail­able to the pub­lic ​“The Moshi Dance” or any musi­cal work or video that pur­ports to be per­formed by a char­ac­ter by the name of Lady Goo Goo, or that oth­er­wise uses the name Lady Goo Goo.

Until the mat­ter is final­ly deter­mined by the Court, Moshi Mon­sters is pro­hib­it­ed from pro­mot­ing the song on YouTube or releas­ing it on iTunes. 

The Guardian news­pa­per attrib­ut­es to Michael Acton Smith, the founder and chief exec­u­tive of Moshi Mon­sters, the fol­low­ing comment:

“It’s pret­ty obvi­ous that kids will be able to tell the dif­fer­ence between the two char­ac­ters,” … ​“The shame is that mil­lions of kids fell in love with Lady Goo Goo’s debut sin­gle on YouTube and now won’t be able to enjoy her musi­cal exploits. It was all done in the name of fun and we would have thought that Lady Gaga could have seen the humour behind this parody.”

This is anoth­er exam­ple of the pow­er of a reg­is­tered trade mark, and the con­trol that a vig­i­lant trade mark own­er can wield, pro­vid­ed that action is tak­en swift­ly, in order to pro­tect a valu­able and recog­nis­able brand. It is also a reminder that, whilst par­o­dy is a clear defence for copy­right infringe­ment, its role in trade mark infringe­ment alle­ga­tions is less than clear, with sig­nif­i­cant argu­ments yet to be resolved as to whether use by way of a par­o­dy can amount to use as a trade mark and, there­fore, infringement.

It is not clear whether Moshi Mon­sters will con­tin­ue to con­test the mat­ter, and seek to release the song on iTunes, or whether it will not pur­sue that strat­e­gy, in light of the injunc­tion that has been ordered. If it does want to pur­sue the mat­ter, it will have to con­vince the Court that final injunc­tions should not issue. If so, there may be some fur­ther use­ful guid­ance on the rela­tion­ship between par­o­dy and trade mark use.

If you have any ques­tions about obtain­ing or enforc­ing trade mark rights, or poten­tial expo­sure when using a par­o­dy of a reg­is­tered trade mark, please con­tact Swaab Attorneys.

Co-authored by M Hall.