A Betty Blooper

Well-known images on merchandise: purely a pretty picture or indication of origin?

March 2014

The use of famous faces and characters in merchandising is hot-topic of late. The recent decision in Fenty v Arcadia concerning the use by TopShop of an image of Rihanna (comment here) has led some to celebrate a shift in the protection afforded to celebrities who wish to exploit their own image.

The reality is that no shift has occurred. The success of that decision - and what we should take away from it – lay in the strength of the evidence submitted; the outcome was heavily dependent on the facts.

We are reminded of this again by the latest instalment concerning the use of images on merchandise: Hearst Holdings Inc & Anor v A.V.E.L.A. Inc & Ors [2014] EWHC 439 (Ch). The case concerned a claim of trade mark infringement and passing off by Hearst, owners of UK and Community trade mark registrations for the word BETTY BOOP and “devices” or images depicting Betty Boop, against the brand and artwork licensing agency A.V.E.L.A Inc (and others including its licensing agent and a number of its licensees).

For 20 years Hearst was the sole “official” source of Betty Boop merchandise in the UK; A.V.E.L.A started selling products bearing a Betty Boop image in 2009. Through Hearst’s considerable investment and substantial quality controls (including consistent trade mark and copyright notices on swing tags and labels), a significant goodwill and reputation was established by them and the public had been educated to see the trade marks as identifying Hearst as the single official source of Betty Boop merchandise.

In the same way that use of a celebrity image on merchandise will not always be passing off, the use of a fictional character on merchandise will not always have trade mark significance. Such an image can and often does perform an aesthetic function.

However, in this case, it was held that the general public would believe t-shirts and bags bearing A.V.E.L.A’s images had been licensed by Hearst, not least because this was reinforced by the goods bearing the label “Officially licensed product”. The Betty Boop images used by A.V.E.L.A would not be perceived as pure decorative features.

A.V.E.L.A. were found to have infringed Heart’s UK and Community trade marks, and to have be liable under passing off.

The reputation attached to Betty Boop and the extensive use of her image by Hearst and its licensees, in a consistent manner to educate the public that they were the official source of the merchandise, were key facts leading to this decision. It may be easier to educate the public that a fictional character has trade mark significance than it is to do so with the image of a famous person but the key points of this case are transferable.

To discuss how any aspects of this case may affect you or your business, please get in touch.