Goo Goo Gaga: trade mark confusion for the little monsters

Lady Goo Goo is a cartoon character (a singing blonde baby in big sunglasses) in an online game called "The Moshi Monsters Game", held to be at least "reminiscent" of Lady Gaga.

The claimants particularly objected to the internet release of a song by Lady Goo Goo, "The Moshi Dance", which bore a resemblance to Lady Gaga's song "Bad Romance". The song had already been very successfully distributed on YouTube, and the defendants were planning a commercial release on iTunes. The claimants sought an interim injunction to prevent this.

The defendants accepted, for the purpose of the interim injunction application, that there was a serious issue to be tried both in relation to confusion infringement under Article 5(1)(b) of the Trade Marks Directive (2008/95/EC), and reputation-based infringement under Article 5(2) (see box "Trade mark infringement").

Vos J echoed the average user test applied in Interflora in considering the relevant public which had to be confused in order for infringement to result. It was held that the average consumers in this case were 6-12 year olds likely to encounter Lady Goo Goo in the Moshi Monsters Game, and consumers likely to encounter the "The Moshi Dance" on YouTube and, if released, iTunes and other internet media, though consideration was also given to older users.

Vos J held that it was strongly arguable that young people playing the game may make a clear connection between Lady Goo Goo and Lady Gaga. He reached this conclusion partly on the basis of considering various posts on internet forums placed before him by the claimants. These did not show confusion, but did reflect an association in posters' minds between Lady Goo Goo and Lady Gaga.

Whether older consumers would make such a connection was less clear, but there was still a possibility that some would think Lady Goo Goo to be connected with Lady Gaga, for the following reasons:

All of this would give rise to a risk that consumers would think that Lady Gaga and Lady Goo Goo were economically connected. This was supported by the fact that Lady Gaga's record label, Polydor, had initially tried to establish some form of collaboration with the defendants.

The fact that there was no evidence of actual confusion at this stage was not relevant: the risk of confusion was sufficient for the purposes of granting the interim injunction.

Vos J held that it was quite clear that Lady Gaga had the necessary reputation, concluding that she had a "huge reputation" and a highly distinctive mark. There was therefore a clear likelihood of confusion as to the economic link between Lady Goo Goo and Lady Gaga.

Vos J also considered the requirement for a "link" between the two marks in order for infringement to result under Article 5(2). In considering this factor, he referred back to his previous comments regarding the confusion that the relevant public might experience when faced with Lady Goo Goo and Lady Gaga, particularly the tagging of the Moshi Dance song on YouTube and the similarity of "Goo Goo" and "Gaga". He therefore seemed to rely on the possibility of confusion as the basis on which to say there was a "link" between the two marks.

Vos J then examined the various forms of reputation infringement on the facts.

Dilution. Vos J differentiated the present case from Interflora, in which the ECJ held that if the use of the claimant's mark merely serves to draw an internet user's attention to the existence of an alternative product or service to that of the trade mark owner, there is no dilution.

In this case, when a user searched for "Lady Gaga" and found the Lady Goo Goo Moshi Dance song on YouTube, it was by no means clear that the latter was an "alternative". Given the similarities in appearance between Lady Goo Goo and Lady Gaga, it was likely that users would think it inevitable that Lady Gaga had approved the imitation.

In addition, the distinction between Lady Gaga and Lady Goo Goo had been "blurred". This therefore gave rise to a "good arguable case" on the question of damage to the distinctive character of the Lady Gaga mark. It is suggested that the Lady Gaga mark may become generic as a result.

The judge identified the tagging of the Lady Goo Goo song as an example of blurring which could lead to dilution, but did not analyse it as a separate infringing act. However, following the ECJ's approach in Interflora, this could presumably be an infringement in its own right (through use of an identical mark) because the tagging is similar to a Google search term and it is used in relation to an "imitation" of Lady Gaga.

Tarnishment or degradation. Vos J held that the key question was whether the average consumer would think that the origin of Lady Goo Goo and Lady Gaga was the same. This was satisfied on the facts, so there was a real risk of tarnishment.

There is no analysis in the judgment of whether the impact of the Lady Goo Goo use is likely to be tarnishment or degradation, although it is suggested elsewhere that the song, though catchy, is annoying, and that the launch of Lady Goo Goo into mainstream music might prevent Lady Gaga from launching her own cartoon sub-brand, and that it may be extremely difficult to prevent tarnishment from occurring if Lady Goo Goo were not injuncted.

There is also a suggestion that Lady Gaga fans may think ill of the Lady Goo Goo song, which was said to be of poor quality (though expected to reach number 1) and that there may be loss of reputation.

Unfair advantage. Vos J indicated that the use of Lady Goo Goo in the game was a take-off, on the basis that this could be seen as an effort at comedy, particularly given that other characters in the game were parodies (for example, "Broccoli Spears").

However, once the defendants moved out of the game and into the free distribution of popular music under the Lady Goo Goo mark, there was an arguable case of free-riding (indeed it may not be possible to exploit the name Lady Goo Goo without taking unfair advantage of the Lady Gaga mark), given the fact that this was independent of the other parodies, and what was being offered was an imitation (again, distinguishing Interflora).

Parody. The judge noted that there is no defence of parody, but that where use of a mark amounted to parody that might be relevant to whether the mark was used "without due cause", which is an element of reputation infringement. The judge distinguished the case from the South African case, South African Breweries v Laugh It Off Promotions (CCT 42/04) (in which a beer mark was used as a parody on T-shirts protesting against apartheid).

Lady Goo Goo had begun as parody but had transformed beyond that in going into popular music, and Vos J concluded that the use of the Lady Goo Goo mark to sell music was akin to using the mark in South Africa Breweries to sell beer rather than to sell protest T-shirts.

Damage to the claimants. In discussing the potential loss which could be suffered by the claimants if "The Moshi Dance" were released, Vos J speculated as to what would happen if Lady Goo Goo became a pop star in her own right, with chart-topping songs comparable to those of Lady Gaga. It seemed to him that, at that point, the Lady Gaga name would likely be depreciated, leading to dilution and loss.