Lady Gaga Faces Off with a Children’s Website Character
This past Friday, Lady Gaga won a court injunction to stop London-based Mind Candy from selling songs sung by its fictitious character Lady Goo Goo. Sure, the two names are very similar, but this still surprised me because I viewed the two parties as making different products for different audiences. After reading up on it, though, I actually agree with the court awarding the injunction. Because the High Court of Justice’s Chancery Division issued it, I presume that U.K. law governed the dispute. I had never delved into U.K. law before, so I hope you’ll indulge me as I explain why I agree Lady Gaga is entitled to stop the sale of songs sung by a fictitious character on a children’s tamagotchi-esque website.
According to Part 1, Section 10(2) of the U.K.’s Trade Marks Act of 1994, someone infringes upon a registered trademark if, in relation to similar or identical goods or services, he or she uses a mark that is sufficiently similar so as to cause a likelihood of confusion, including implying that there is a mere association between the two marks. In other words, the crucial elements of a trademark infringement claim are:
- The claimant’s trademark is registered;
- The two goods/services are identical or similar; and
- The two marks’ similarity creates a likelihood of confusion regarding the relationship between them.
So many trademark infringement cases are decided by looking at this third element, and justifiably so. After all, how do you measure a “likelihood of confusion,” and against whose threshold of not being confused is this measured? In U.S. law, this is done by turning to a list of factors, including but not limited to things like: strength of the trademark; similarity of the marks; evidence of actual confusion; and the degree of care likely to be exercised by the purchaser. U.K. law, however, construes “likelihood of confusion” much more broadly.
In O2 Holdings, Ltd. V. Huchison 3g, Ltd., (2006) the Chancery Division’s High Court held that trademarks are infringed under the U.K.’s Trade Marks Act of 1994 when the similarity of another good’s or service’s mark causes consumers to be confused as to whether there is merely an affiliation between the two. This is significant because under this standard, the “likelihood of confusion” does not have to imply that the goods are from the same source or origin. A trademark-infringing product or service doesn’t have to appear to be from the trademark holder – only from someone who got a license to use the trademark. Because a trademark holder might license it out for a product they wouldn’t make themselves, I think this makes U.K. trademark protection much broader.
On top of this, the confusion threshold is gauged from the perspective of an average consumer, who doesn’t consider the marks’ various details but instead judges them from their overall impression. I understand this to mean that infringement is more likely if the “average consumer” in the brands’ audience is more likely to be confused, then the trademark protection is all the stronger.
Given this rundown of the law, it’s time to judge for yourself. First, here’s Lady Gaga being all strange but singing a catchy song (after the advertisement). Next up, here’s Lady Goo Goo singing an arguably similar song, albeit for a completely different audience. If we assume that Lady Gaga’s trademark brand is registered in the U.K., that meets one element for her claim. Next up, I won’t argue that the goods are identical or similar. Both Lady Gaga and Lady Goo Goo make pop songs, they both wear similarly shaped glasses, and their names are similar. I don’t think the music is too similar, but if Lady Gaga wants to bring a claim and say that they are, I’d concede that her music is as flashy and obnoxious as Lady Goo Goo’s.
At the crux of it all is whether Lady Goo Goo’s brand is similar enough to cause a “likelihood of confusion.” Remember that Lady Goo Goo infringing even if it’s only similar enough to cause its “average consumer” to think it’s affiliated with Lady Gaga. No one has to confuse one for the other, but the similarities just have to reasonably imply Lady Gaga was somehow involved in the creation of Lady Goo Goo. On this point, I think Gaga clearly wins. There isn’t much to Lady Goo Goo, but her name is very similar, she wears stylish and boxy glasses, and she sings lines like “my crazy outfits seem to shock.” Furthermore, it’s not unheard of for pop starts to be involved with and make guest appearances on children’s TV shows. I was actually kind of surprised to find out Lady Gaga hasn’t been on Yo Gabba Gabba!, a children’s show which has had guest appearances like Jack Black, Weezer, and even Snoop Dogg.
It’s a different matter entirely to ask whether Lady Gaga should have taken this to court, but I think she was definitely entitled to relief under U.K. law.
Lady Gaga Faces Off with a Children’s Website Character: Lady Gaga just won an injunction stopping a U.K. co… http://t.co/WmtArROT #IP
Lady Gaga faces off with a children’s website character. http://t.co/GyJR6JYw
Who cares, she's being a bitch about it. It's a children s website, more fame for her. :S
Lady Gaga faces off with Children’s Website Character: http://t.co/40lT3DVI #trademark
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she needs to protect her image and name that she worked so hard for.
I agree with you, and I think it's the underlying reason why there's a law that allows her to do this. She has put a lot of time and work into creating a celebrity character that she uses as a brand, and Mind Candy is profiting off the goodwill of that brand.
I wonder though, if there is any type of parody defense that Mind Candy could use.
Great post, Jess, and very educational! I too immediately thought of the parody defense, and I wonder if the attorneys for Nickelodeon did as well before the Goo Goo segment was first aired. For a parody defense to work, the parody has to simultaneously a) unmistakably refer to the trademark holder, and b) be framed such that a likelihood of confusion is highly unlikely given the parodic nature. To me, it seems like Nickelodeon purposely went out of their way to make the reference to Gaga unmistakable– if the name itself wasn't enough, surely the glasses, diva attitude, and song conjures Gaga in viewers' minds.
However, it's shakier grounds for Goo Goo with regards to likelihood of confusion, if, as you stated, UK law includes confusion not just to the source but also as to whether Gaga perhaps licensed her name to Goo Goo. I also don't know how UK law treats fair use and free speech in trademark litigation.
Oddly enough, Lady Gaga has actually herself parodied the Yo Gabba Gabba! show on a Mad episode, where the skit portrayed her hosting (unsurprisingly), "Yo Gagga Gagga."
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Does Lady GaGa have a valid trademark in her image / personality / likeness in the UK? Also, this is just at the injunction stage, so it remains to be seen whether the actual use is held to be infringing her intellectual property or not. The injunction would have been granted on a balance of convenience basis.
TM law requires that their be confusion as to origin and quality. I don't see how a kid could be confused that this is the actual Gaga. Its just a cartoon character based on her real one – surely it cannot damage her reputation or goodwill where her actual commercial audience is concerned. Copyright infringement in her music would probably also be an issue in the actual litigated case.
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Congratulations Jess Robinson.
Arguments like yours will ensure that satire, parody and tongue in cheek humour will die the kind of tragic death its cynical advocates could only dream of.
Thanks for your perspective, Jez.
When I was doing research for the post, what I found is that a lot of news outlets were reporting about this, but none of them were explaining the reasoning behind the court granting the injunction. After looking into U.K. trademark law, I was surprised to find out how far a trademark holder can go to protect their brand. Based on the scope of protection allowed, I took a guess as to how to the court supported its injunction.
There's definitely room for debate in the matter. Maybe there are protections built into the law like fair use and parody that limit the protection afforded to trademark holders. I didn't address that in my article, but it seems like they could apply. Even if they didn't apply, it's not like the law is permanent. Either through court or legislation, why couldn't the law can change so you don't allow for eliminating parody or satire?
I agree with you that cases like this show that trademark protection can be so strong that it unfairly curtails the right to satire. It's another matter entirely to say that an instance of unfair curtailment today signals its death and it won't ever be available for use again.