Lady Goo Goo is an animated sunglasses wearing blond baby that that bears a resemblance to and apparently sounds like Lady GaGa. A recent YouTube sensation, she has featured in songs including “The Moshi Dance” and “Peppy-razzi”. The Moshi Dance song has received 3.5 million views and was set to be released as a single on iTunes. Lady Goo Goo is a Moshi Monsters character, which is an online computer game and social networking site for children, operated by Mind Candy Ltd.
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The popularity of Lady Goo Goo and the proposed release of her song on iTunes sparked an injunction application in the UK. Lady GaGa’s, Ate My Heart Inc. argued that there was a real risk that the public would confuse Lady Goo Goo with Lady GaGa and her trademark LADY GAGA. Mind Candy Ltd argued that there would be no confusion between their parody animation and Lady GaGa. On 10 October 2011, the UK High Court granted an interim injunction that restrained Mind Candy Ltd from promoting its animated character, Lady Goo Goo, and its associated songs on You Tube and from releasing the songs on iTunes (Ate My Heart Inc v Mind Candy Ltd (unreported)).
What is the relevance of parody to a trade mark infringement dispute? The fact that a sign is a parody is not a specific defence to trade mark infringement under the UK or Australian Trade Marks Acts. However, it may bear upon the question of whether the parody is deceptively similar to or is likely to cause confusion with the trade mark. It might be argued that an obvious or well-done parody of a well known trade mark will not generally cause confusion. However, in Ate My Heart Inc, Justice Vos found that although some customers might believe that Goo Goo was a parody of Lady GaGa, some might believe that they were connected and were likely to believe that the two were economically linked. There was evidence led of actual confusion of customers on blogs and on YouTube.
A parody of a trade mark may also be infringing under s 10(3) of the UK Trade Marks Act 1994 if it causes trade mark dilution, or the ‘tarnishment and blurring’ of a trade mark. This occurs when a similar sign has taken unfair advantage or caused detriment to a well known trade mark. A similar anti-dilution provision may exist in Australia through s 120(3) of the Trade Marks Act 1995, though this has yet to be specifically considered by the courts. (See part of the academic debate here and here.) In Ate My Heart Inc, Justice Vos considered that there was a real risk of actual tarnishment, as consumers might believe that there is a link between Lady GaGa and Lady Goo Goo, or believe that Lady GaGa had approved of the imitation. In addition, if Lady Goo Goo became a popular artist in her own right, this might take unfair advantage of Lady GaGa’s market.
A number of reports have commented that it seems surprising that there has been confusion between Lady GaGa and Lady Goo Goo. It is uncertain whether Lady GaGa and Lady GooGoo actually operate in the same market and have the same audience. However, the injunction did not prevent the Lady Goo Goo character from being used within the Moshi Monsters game, where it would seem that there would be less risk of confusion than by use of the character on YouTube or iTunes.
Passing off or copyright
Other options that may have been available to Ate My Heart Inc to protect its brand included a claim passing off or a claim for copyright infringement. Although, proving that a parody infringes copyright may soon prove more difficult in the UK. The UK Government has recently proposed an fair dealing exception to copyright infringement for parodies (see our blog post here). The Australian Copyright Act 1968 was amended to include a fair dealing exception for parodies in 2006.