The UK High Court issued a ruling on Tuesday in Hearst Holdings Inc & Another v A.V.E.L.A. Inc & Others ( EWHC 439 (Ch)) finding that so-called "image rights" may be protectable where they function as a badge of origin. This may be easier to prove for fictional characters whose reproduction is controlled by creators, as opposed to famous individuals whose image may appear in a variety of sources and contexts.
The claimant, Hearst Holding Inc. (Hearst), had issued proceedings against A.V.E.L.A. Inc. (AVELA) claiming trade mark infringement and passing off in relation to the latter's use of the image of 1930s cartoon character Betty Boop on merchandise. Hearst claimed to be the only legitimate source of Betty Boop merchandise in the UK citing its registered trade marks in the words "BETTY BOOP" and a device mark of a Betty Boop image. Hearst argued it had built up substantial goodwill and reputation in the UK through its sale of Betty Boop merchandise.
The Defendant, AVELA, claimed to have derived its images of Betty Boop separately from reconditioned old movie posters. It argued that its use of Betty Boop imagery was purely decorative and made no representation about trade origin and therefore could not amount to infringement or passing off.
Mr Justice Birss, who also found in favour of Rihanna in her passing off case against Topshop (Fenty v Arcadia  EWHC 2310 (Ch)), commented on the many famous losers where passing off and trade mark infringement actions were based on merchandising: Elvis, Tarzan, the Wombles and Diana Princess of Wales have all been deemed fair game for merchandisers. The Judge noted that the essential question to ask in such cases was whether the famous name or image was being used as an indicator of origin. He reiterated that there was "no such thing as a free standing general right by a famous person (or anyone else) to control the reproduction of their image".
The Judge ventured, however, that fictitious characters were potentially distinguishable from famous individuals. It might be easier to educate the public to believe that goods relating to a fictitious character derive from a single source as copyright law gives the creator control over a character for a long period of time. At the same time, the Judge noted the inherent danger that a finding in favour of the claimant could create "a copyright of unlimited duration" as the rights to a trade mark have the potential to last forever.
Nevertheless, in this instance the Judge accepted Hearst's argument that their exploitation of the Betty Boop image and character over many years had developed "a licence driven brand": the contemporary reputation of Betty Boop was based on the claimant's work in controlling how her image was presented to the public, and not on the original 1930s cartoon.
The Judge upheld Hearst's claims of passing off and found that AVELA had infringed Hearst's trade mark under sections 10(1), 10(2) and 10(3) of the Trade Marks Act 1994 (equivalent to section 14 of our Trade Marks Act 1996).
The use of the Betty Boop image was not purely decorative and the average consumer would assume a link with the Betty Boop brand built up by Hearst resulting in confusion. AVELA's use of the mark also took unfair advantage of Hearst's investment in the mark.
Of particular significance for the passing off case was AVELA's decision to ensure its licensed products were labelled "Officially Licensed". This amounted to an "instrument of deception" in circumstances where Hearst had been the sole source of Betty Boop merchandise in the UK for many years before AVELA commenced its activities.