Australia: Lady Gaga Eliminates Lady Goo Goo! London High Court Grants Lady Gaga an Injunction to stop Trade Mark Infringement

Lady Gaga is one of music's most successful pop stars. Well known for her over the top, controversial and bizarre fashion, Lady Gaga is a music icon. Like many celebrities, Lady Gaga is registering and has registered a suite of trade marks all over the world in her company's name 'Ate My Heart Inc' to protect her well known brands.

Background

UK company Mind Candy is one of the world's fastest growing social online gaming companies and the global developer, operator and publisher of Moshi Monsters. The Moshi Monsters is an online game that is targeted at children between 6-12 years. The game allows children to adopt and care for their very own pet monster.

The website has 50 million users worldwide and is a hugely successful UK company valued at £125 million.

Lady Goo Goo was one of the 52 animated characters of the Moshi Monsters. Other musical characters on the website have spoof names of stars including Dustbin Beaver, 49 Pence and Broccoli Spears.

Lady Goo Goo, a baby with a long blonde fringe and large sunglasses, is a spoofy animated version of the singer that dresses and acts like a baby version of Gaga.

Lady Goo Goo appeared in a video clip called "The Moshi Dance" released in June 2011 on YouTube. Lady Goo Goo became a YouTube sensation with tunes including one called "Peppy-razzi".

Due to its popularity, Mind Candy intended to release the song as a single to be sold on iTunes.

The Case

Lady Gaga commenced proceedings in the UK High Court against Mind Candy alleging that the sale of the song on iTunes would infringe her registered trade marks and that the public would confuse the character Lady Goo Goo with Lady Gaga and her trade mark Lady Gaga Gaga.

The Findings

The High Court held that although people may appreciate that one song was a parody of the other, some people were still likely to consider that the two were economically linked, which may cause confusion with the Lady Gaga trade marks.

The High Court granted a temporary injunction to prevent Mind Candy from "promoting, advertising, selling, distributing or otherwise making available to the public The Moshi Dance".

It also prevented Mind Candy from doing the same with "any musical work or video which purports to be performed by a character by the name of Lady Goo Goo, or which otherwise uses the name Lady Goo Goo or any variant thereon".

YouTube has since removed the video.

The High Court ruled that Lady Goo Goo could still appear in the Moshi Monsters game, without copycat songs.

Mr Michael Acton Smith, the founder and chief executive of Moshi Monsters was quoted in the Guardian newspaper as saying:

"It's pretty obvious that kids will be able to tell the difference between the two characters... the shame is that millions of kids fell in love with Lady Goo Goo's debut single on YouTube and now won't be able to enjoy her musical exploits. It was all done in the name of fun and we would have thought that Lady Gaga could have seen the humour behind this parody. I think this could be a worrying precedent for other parody acts and tribute bands".

Take Aways

• This case reminds us of the importance of registering trade marks in the jurisdictions in which you intend to use the marks. Registered owners are granted exclusive monopoly rights in the trade marks and can prevent unauthorised use of their valuable and recognised brands.
• Parody or satire are defences for copyright infringement under the Australian Copyright Act 1968. Whilst you may be able to get away with acts of parody in Australia because of this statutory defence, it is possible that if a person has a registered trade mark for a particular brand, parody could amount to trade mark infringement and misleading and deceptive conduct. It is possible that if the case had been decided in Australia, the Australian High Court would make the same findings.
• If Mind Candy continues to contest this matter, there may be some useful common law guidance for Australia about the relationship between parody and trade mark use.

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This report does not comprise legal advice and neither Gadens Lawyers nor the authors accept any responsibility for it.