Children’s social network Moshi Monsters had a hit on their hands with the popular summer 2011 release on YouTube of a music video called the Moshi Dance, starring cartoon character Lady Goo Goo. An iTunes release of the song was planned but Lady Gaga had other ideas as Tom Harding reports from Chancery.
Topic: Brands
Who: Ate My Heart Inc v (1) Mind Candy Limited (2) Moshi Music Limited [2011] EWHC 2741 (ch)
When: 10 October 2011
Where: High Court, Chancery Division
Law stated as at: 1 November 2011
What happened:
Let's face it, it has been pretty hard to ignore Lady Ga Ga's dominance of the charts in recent years, and being the all conquering pop starlet that she is, it was perhaps only a matter of time before others tried to ride her coat tails (as long as they weren't made of meat or other dubious materials of course).
The defendant in this case was Mind Candy. Mind Candy operate a popular children's social networking online game called 'Moshi Monsters', which claimed to have almost 50 million users in September 2011. Various cartoon characters appear in the game, including 'Lady Goo Goo', a character generally acknowledged to be a parody of Lady Ga Ga. To give you an idea, Lady Goo Goo was described in the judgement as a 'cartoon character featuring a baby and wearing a nappy. The head however has large sunglasses with crystals on the right side, blond hair in some images worn in a style that is at least reminiscent of Lady Ga Ga on some of her album or other video poses.'
Lady Goo Goo became a popular character on Moshi Monsters. We understand Goo Goo enjoyed previous YouTube success with the 'hit' 'Peppy-razzi' (a parody of the Lady Ga Ga song 'Paparazzi') and constantly featured in the monthly Moshi Monsters magazine. It seems the Claimants were previously content not to pursue any actions against Mind Candy despite this, but it was at the point that Mind Candy were seeking to release a Goo Goo track called the 'Moshi Dance' on iTunes that the Ga Ga team launched into action. The song was a seemingly clear a parody of Ga Ga's song 'Bad Romance', with even Mr Justice Vos stating 'indeed, I have had the opportunity to listen to both … and even to an untutored ear it is clear that there are similarities in relation to rhythm and tune.' It had also already attracted some 3.5 million hits on YouTube so was seemingly set to be a hit.
No copyright infringement claim
The claim was not, as you may have expected, brought for copyright infringement however, as had been the case with previous song parodies, such as the 'Newport State of Mind' parody of Alicia Keys and Jay-Z's hit 'Empire State of Mind' which EMI had removed from YouTube. No, in this case the claimants brought an action for trade mark infringement, having previously registered CTMs for the words 'Lady Gaga' for 'sound and video recordings …' in class 9 and 'streaming of audio and video material on the internet' in class 38.
The main thrust of the claim was therefore was that there was a real likelihood of confusion, a risk that consumers might think that the Moshi Dance came from the same source, or an economically linked source, as Lady Ga Ga's songs and that the character had in some way been adopted by Ga Ga. As Mr Justice Vos put it the adoption argument was 'not so far fetched as it sounds since the contract with Polydor [Ga Ga'a label] establishes that such a tie-up was in the contemplation of Polydor'.
The High Court found in favour of the claimant. It granted an interim injunction to restrain the defendants from releasing the Moshi Dance through iTunes (or any other medium) and to take the song off its YouTube pages; no injunction was sought as to the use of Goo Goo in the Moshi Monsters game itself however. In summarising the arguments, Mr Justice Vos stated 'I have formed the clear view that there is a real likelihood of confusion …[and] If this injunction is not granted Lady Goo Goo may become an important pop star in her own right and it may at that stage be extremely difficult to prevent her tarnishing the reputation of Lady Ga Ga and continuing to infringe the trade marks that Lady Ga Ga has'.
Why this matters:
In terms of the trade mark elements of the ruling, the ruling may potentially have an impact on tribute bands and characters with similar names to original acts. Brand owners should also be wary of the facts here if they are considering launching any type of parody-based campaign.
In terms of parodies and copyright claims however, this does not take us any further forward as this was not a cause of action here. However, as noted in the Hargreaves Report, the case for allowing a UK parody copyright exemption is strong in both cultural and economic terms, so it may in fact be something that is legislated for going forward, which would effectively remove this potential cause of action.
