Betty Boop trademark- reputation and goodwill
It has recently been suggested that protection of a trade mark might extend beyond what is registered, if substantial reputation and goodwill have been created and consumers are in the belief that an official source of that character merchandise exists.
Hearst Holdings Inc. have an image of Betty Boop and the words “Betty Boop” registered as trade marks and have, since 1984, been granting licences for the use of Betty Boop images and words on merchandise in the UK. Hearst’s annual sales of licensed Betty Boop merchandise amounted to $24 million in the UK and $280 million worldwide in 2006. Hearst’s hard work throughout the years to develop the Betty Boop brand is a reason for its substantial value and popularity today and the brand is now recognised worldwide.
AVELA Inc. have used images of Betty Boop extracted from old movie posters in their portfolio, from which the company is licensing artwork. This has resulted in two intellectual property cases; one for trade mark infringement and passing off (by AVELA, its UK licensing agent, licensees of AVELA’s images and a retailer) and one for copyright infringement (the latter is scheduled to be heard in January 2015). The trade mark case took place in February this year.
AVELA’s pictures were very similar to the one Hearst has registered, except that Betty Boop was in a different pose. They contended that the use of the Betty Boop character, in different poses to the one in the registered trade mark, was purely decorative and made no representation about trade origin, therefore it did not constitute an infringement or passing off.
Hearst have been the sole source of Betty Boop merchandise in the UK for over 20 years and contended that they have goodwill and reputation in the UK and Europe, thanks to its investments in the trade mark and licensing of official merchandise.
The court held that the average consumer does not distinguish between poses as they primarily recognise the character’s head. The presence of Betty Boop would therefore be taken as an indication that the product was licensed from a source of merchandising licences, associated with that character. This would potentially constitute confusion under article 10(2) of the Trade Marks Act 1994.
It was pointed out that it is not possible to register a character or a concept as a trade mark, however it is still possible for consumers to recognise the character as a badge of origin. Consumers are likely to presume that fictional characters have one single official source, unlike famous people where images may pop up wherever from whatever source. Amongst other things, copyright law makes this possible as the copyright owner has an exclusive right to reproduce and license the created work.
It was found that the defendants had taken unfair advantage of Hearst’s investment in its marks, which constitutes a breach under section 10(3) of the Trade Marks Act 1994. This, and the likelihood of confusion on the part of consumers, amounted to AVELA and its UK licensing agent being jointly liable for the acts of trade mark infringement and passing off committed by the other defendants and themselves.