Hearst Holdings Inc and others v AVELA Inc and others  EWHC 439, Chancery Division, England and Wales, 25 February 2014
Journal of Intellectual Property Law & Practice (2014) doi: 10.1093/jiplp/jpu068, first published online: April 29, 2014
Fresh from deciding in favour of Rihanna in Fenty and others v Arcadia Group Brands Ltd (t/a Topshop) and another  EWHC 2310 (Ch), Birss J concludes that another (albeit fictional) ‘pin-up’, Betty Boop, is also deserving of protection due to the considerable efforts of trade mark owner Hearst.
Legal context and facts
In Hearst, the claimant owned several trade marks in relation to the cartoon character Betty Boop (including marks relating to the words ‘BETTY BOOP’ and a device mark for an image of Betty Boop) and contended that it was the only legitimate source of Betty Boop merchandise in the UK. The defendant, AVELA, contended that it was also a legitimate source of Betty Boop ‘imagery’ and that Hearst's trade marks were invalid. Hearst claimed for trade mark infringement and passing off (a further claim, for copyright infringement, is set to be tried separately).
In relation to the trade mark claims, Hearst considered that any unauthorized product bearing an image recognizable as Betty Boop would infringe the device mark regardless of the particular pose adopted by the character. Further, any such product would also infringe the word marks regardless of whether BETTY BOOP, BOOP or a slogan such as ‘Boop oop a doop’ was used. The passing off case related to two acts of deception: (i) deceiving the trade and public that Betty Boop merchandise sold under AVELA's licence is official merchandise (or authorized by Hearst); and (ii) deceiving AVELA's licensees that they had been granted an official licence (ie by Hearst).
AVELA's defence to both trade mark infringement and passing off was that the Betty Boop imagery appearing on the goods in question was purely decorative and made no representation about trade origin. Birss J recognized that this defence introduces a key problem in merchandising:
[W]hen famous names or images are applied to merchandise they are not necessarily being used as indicators of origin of the goods at all … what better way is there to describe a poster depicting the band LINKIN PARK [than] as a ‘LINKIN PARK poster’[?] (para 69).This problem arguably resulted in the famous losses outlined above and was something which AVELA sought to rely on. As Birss J noted at para 66: ‘[AVELA's] defence can be summed up as follows: “Elvis lost (ELVIS PRESLEY trade marks  FSR 60 CA) and so should Betty Boop”.’
Having considered at length the history of Betty Boop merchandising and efforts made by Hearst to build up a recognizable Betty Boop ‘brand’, Birss J found in favour of the claimants in both the trade mark and passing off claims. At para 110, Birss J stated:
[T]he effect of the claimants' trading has been to imbue the character with trade mark significance in the public mind. They do not need to look at the swing tag to make the assumption that it is official Betty Boop merchandise any more than they need to look at the swing tag on a t-shirt with Calvin Klein written in large letters across the front to assume that it is from Calvin Klein. Not all merchandising works in this way but in my judgment today and at all material times, in the UK (and the rest of Europe), Betty Boop is a sign which can convey that kind of information in the context of the goods in this case.Analysis
The key to Birss J's finding was the work Hearst had done to develop the brand of Betty Boop and to educate the public that there was a single entity responsible for its origin. Birss J did not consider that Betty Boop's current fame was due to her appearance in 1930s cartoons, and instead attributed it to Hearst. For 20 years Hearst had been the sole source of Betty Boop merchandise in the UK and had controlled what and how her image had been presented to the public in order to achieve her present appeal. The judge also reviewed security tags on merchandise which consistently attributed trade mark significance to the image and name as well as identifying the source of origin. Additionally, Hearst had been very active in promoting Betty Boop licences to the trade and had 20–25 active licensees, which Birss J accepted was a ‘significant network for a character brand’. Notably, the licensees sometimes emphasized that they were ‘official licensees’. Hearst also has ‘substantial’ approval and quality control arrangements in relation to the brand and overall its efforts have resulted in impressive growth in retail figures since 2000.
Birss J pointed to evidence that members of the trade believed that a licence was required to sell Betty Boop merchandise and that Hearst or its agent should be contacted in order to obtain such a licence. Although based on inference, Birss J also considered that the public believed that there was a single official source of Betty Boop merchandise. Crucially, Birss J concluded that it was the character Betty Boop herself who was recognized by the average consumers and who acted as a sign. It did not matter what pose the character appeared in as her head was still ‘instantly recognisable’.
In summary, the judge concluded that Hearst's work had resulted in a Betty Boop brand that was recognized by the public as coming from a particular source and so deserved fairly broad protection. Birss J's comments in para 101 summarize the reasoning and arguably hint at the tacit existence of an image right:
[T]he fact that one cannot register a character or a concept as a trade mark does not mean that the public do not in fact recognise a character as having origin significance.Practical significance
Hearst's success in this case highlights particular factors that the court will consider in ‘character merchandising’ cases and provides further guidance on the strategy that brand owners should adopt. Hearst was able to educate the public that it was the sole official source of Betty Boop merchandise by actively promoting the brand to licensees using tag labels which gave an impression of official merchandise from Betty Boop, and then controlling the quality of the brand to build the reputation.
The case shows the pre-Fenty reluctance to allow protection for ‘character merchandising’ cases can be overcome where the claimant can establish that the use, even on traditional merchandise, was denoting origin.
The judgment also suggests that such protection may be easier to achieve with fictional characters than with real celebrities. At para 107 Birss J stated:
[I]t seems to me that it is probably easier to educate the public to believe that goods relating to an invented character derive from a single official source than it might be for a real person, not least because copyright law may give the inventor the ability to control the reproduction of the character for a very long time.However, as demonstrated in Fenty, it is by no means impossible for real celebrities to also benefit from ‘image right’ protection. The authors consider that the overall impression created by both Fenty and Hearst is that the breadth of protection the courts will allow will depend significantly on the efforts made by the brand holder in creating and maintaining the image/celebrity name as a brand denoting origin.