When Grumpy Cat entered the public consciousness back in 2012, she quickly moved from being merely another meme, to being the face of countless products ranging from pillows and mugs to clothing and bags. The melancholic feline even ‘authored’ a book, The Grumpy Guide to Life, which went on to be a New York Times bestseller.
In January it was reported that Grumpy Cat Limited, the company behind the Grumpy Cat (real name Tardar Sauce), was awarded a six figure sum as damages for copyright and trade mark infringement by the Grenade Beverage company.
The background to the dispute was an agreement previously reached between Grumpy Cat Ltd and Grenade whereby Grenade were authorised to use the Grumpy Cat brand on a product marketed and sold by Grenade, Grumpy Cat Grumppuccino. When Grenade subsequently launched lines of coffee and T Shirts with the Grumpy Cat brand however, not covered by the original agreement, fur was ruffled and court action taken.
So, where does the law stand in cases like this, and what can brands do to protect themselves from infringement?
It is always important for licence agreements to clearly set out what permission is being granted for the use of trade marks and copyright works under the licence agreement. In this case the licence agreement was apparently very clear that the permissions granted were limited to the Grumppuccino product. In fact, Grenade asked permission of Grumpy Cat Ltd to extend the use to other lines, including the ground coffee line and were expressly told that they did not have permission to do this.
They went ahead anyway and therefore cannot have been too surprised when the law suit for breach of the agreement and copyright and trade mark infringement followed.
Grenade did try to put forward a defence of its actions, claiming that Grumpy Cat Ltd had not upheld its part of the agreement, which was to promote the Grumppuccino. This promotion included promises allegedly made that Grumpy Cat would be making waves in Hollywood which, thus far, have failed to materialise. Grumpy Cat’s team also failed to mention the Grumppuccino during TV appearances and on social media.
If Grenade had a genuine grievance about the failure to promote the Grumppuccino brand in accordance with obligations in the agreement then they should have taken action in respect of this by taking action against Grumpy Cat Ltd, and seeking recompense in the courts. Instead they exploited Grumpy Cat Ltd’s intellectual property (IP) without permission, and therefore opened themselves up to a claim.
In cases such as this, much will rely on the original agreement and contract signed between Grumpy Cat Ltd and Grenade. Where licence agreements are in place it is useful for such contracts to include a process for disagreements to be dealt with initially by an agreed dispute resolution procedure so that the parties can try to find a way to continue to work together and to work out their differences without the need to go to court.
In this case Grenade Beverages should certainly have given “paws” for thought before using Grumpy Cat’s trade mark and copyright beyond the scope of the original agreement. Grumpy Cat’s intellectual property rights here were clear. Whether or not the six figure settlement will bring a smile to the miserable moggy’s face is less so.
This article first appeared in Advertsing Week.