Boop oop a doop—protection for cartoon image of Betty Boop

Authors: Jeremy Blum and Nicholas Round (Bristows LLP)

Hearst Holdings Inc and others v AVELA Inc and others [2014] 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 [2013] 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 their recent article (Jeremy Blum, Nicholas Round and Tom Ohta ‘Personality disorder: strategies for protecting celebrity names and images in the UK’ (2014) 9(2) JIPLP 137), the authors explained that, since umbrella ‘image right’ protection is not provided in the UK, a creative and imaginative approach is required to protect name and image rights. In particular an important strategy is to educate the public that the image or celebrity name at issue actually denotes trade origin. Not all strategies are successful and there are examples of many famous losers, both fictional characters and real celebrities. These include Tarzan (TARZAN [1970] RPC 450 (CA)); the Wombles (Wombles v Womble Skip Hire [1977] FSR 62); and the band Linkin Park (LINKIN PARK LLC's Application [2006] ETMR 74).

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 [1999] 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.

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.

Disk brakes, hockey sticks and added matter

Author: Paul England (Taylor Wessing LLP)

AP Racing Ltd v Alcon Components [2014] EWCA Civ 40, Court of Appeal, England and Wales, 28 January 2014

Journal of Intellectual Property Law & Practice (2014) doi: 10.1093/jiplp/jpu052, first published online: April 25, 2014

The Court of Appeal has overturned the first instance decision to hold that a disk brake caliper patent does not disclose added matter.

Legal context

The rule on added matter, as summarized by the Court of Appeal in AP Racing Ltd v Alcon Components, is ‘the rule that a patent application or patent may not be amended in such a way that it contains subject matter which extends beyond the content of the application as filed. If it has been so amended, and the added matter is not or cannot be removed, the patent will be invalid.’ A particular issue when assessing whether there has been added matter in a granted patent specification, is the relationship between the breadth of the granted claim, and what is disclosed in both the specification of the granted patent and its corresponding application.


In AP Racing, the patent application and granted patent in question are for disk brake calipers used in motor vehicles, and particularly the asymmetrical peripheral stiffening bands (PSBs) associated with the caliper body embodied in the application as having a ‘J’ or hockey stick shape. The granted patent contains materially the same disclosure as the application, but the following feature of claim 1 of the granted patent is not disclosed in the application ‘in which each of the stiffening bands has a profile that is asymmetric about a lateral axis of the body when viewed in plan’.

This feature of the claim gave rise to two points of dispute:

* Is there a clear and ambiguous disclosure in the application of PSBs asymmetric about the lateral axis of the caliper body?

* Nonetheless, if only a class of generally hockey stick shaped PSBs is disclosed in the application, does the claimed feature contain added matter?


On issue 1, the Court of Appeal has held that, although not expressly stated in the application, it would be abundantly clear to the skilled reader that the PSBs were, individually, asymmetric about a lateral axis of the caliper body, and the presence of the PSBs had the effect of giving the overall shape of the caliper body an asymmetric appearance.

Answering issue 2, the Court of Appeal says, depends on whether it is legitimate to add to a claim features that describe the invention in more general terms than a specific embodiment. Summarizing authorities from the English courts and the European Patent Office's Technical Boards of Appeal, the Court of Appeal concludes that it is clear that the law ‘does not prohibit the addition of claim features which state in more general terms that which is described in the specification’.

In this case, the application would be understood by the skilled person as disclosing that the asymmetrical design of the PSBs is significant in imparting stiffness to the caliper, and that the hockey-stick shaped PSBs are ‘necessarily asymmetrical’. It must then be asked whether any disclosure has been added to this in the granted specification. The description of the PSBs in claim 1 as ‘asymmetric’ has to be read as part of that disclosure. From this, the skilled person would understand that the claim covers asymmetric PSBs generally. The skilled person would also understand that the PSBs are exemplified by the hockey-stick shapes described in the specific embodiments. The skilled person would not, therefore, learn any new information about the invention from the granted patent.

Practical significance

The Court of Appeal appears to say in A P Racing that the skilled person would understand the breadth of the claim in question to be supported by a coextensively broad disclosure in the application. Although the Court of Appeal does not say so, the case invites comparison with sufficiency cases in which the principle of an inventive concept derived from the specification can have a general application across a claim.

Passing off: Another ‘no’ from the Court of Appeal on survey evidence

Authors: Sarah Burke and Joel Smith (Herbert Smith Freehills LLP)

Zee Entertainment Enterprises Limited and others v zeebox Limited [2014] EWCA Civ 82, Court of Appeal, England and Wales, 24 January 2014

Journal of Intellectual Property Law & Practice (2014) doi: 10.1093/jiplp/jpu059, first published online: April 18, 2014

The Court of Appeal refused permission to adduce survey evidence in the first case to come before it on the admissibility of survey evidence in a passing off case since the landmark judgments of the Court of Appeal in Interflora Inc v Marks and Spencer Plc.

Legal context

In Interflora Inc v Marks and Spencer Plc [2013] EWCA Civ 319, Lewison LJ set out a strict test in relation to adducing survey evidence in trade mark cases, namely that ‘a judge should not let in evidence of this kind unless the party seeking to call that evidence satisfies him that (a) that it is likely to be of real value; and (b) that the likely value of the evidence justifies the cost’. Some uncertainty remained after the Interflora cases as to whether the tests as set out in them could be extended to survey evidence in passing-off cases, given that Lewison LJ had made certain obiter comments about different considerations coming into play in relation to passing-off cases, since it was necessarily a different legal question.


The appellants, Zee, owned a number of satellite and cable television channels, including Zee TV. In November 2011, zeebox Limited launched a free app marketed under the name ‘zeebox’, which acted as a second screen companion for use while watching TV. Zee issued proceedings against zeebox for trade mark infringement and passing off in July 2012. Zee carried out a pilot survey in September 2012 and a second pilot survey in May 2013, although the questions used in each survey were largely identical. Zee then sought permission to adduce survey evidence in support of its passing-off case, claiming that the surveys showed deception among the British Asian population. Birss J refused permission to conduct a full survey at an interim hearing in June 2013, finding that the survey failed the ‘real value’ test as set out by Lewison LJ in the Interflora cases.

Zee appealed to the Court of Appeal, citing five grounds of appeal:
that the judge failed to differentiate, in applying the real value test, between passing off and trade mark infringement cases;

that the judge failed to appreciate that the relevant public was a cultural and linguistic subsection of the UK public and not the population at large;

that the judge took too strict an approach to the real value test;

that the judge failed to take account of the fact that he had not found any criticism of the surveys to be proved; and

that the judge made errors in the assessment of the likely costs.

The Court of Appeal dismissed the appeal on all five grounds, and refused permission to adduce the survey evidence, upholding the judgment of Birss J for additional reasons. Floyd LJ delivered the leading judgment, with Lewison LJ adding additional comments in his assenting judgment. The Court of Appeal found that Birss J should have gone further in deciding the value of the survey itself, and felt bound to exercise his discretion afresh. The most significant factor was that the survey was obviously flawed, and that any marginal value that it might have had was outweighed by the disproportionate costs of introducing such evidence. Whilst there was a balance to be struck in considering that the appellants would be prevented from adducing potentially relevant evidence, the Court of Appeal held that the ‘balance came down heavily in favour of refusing permission for the survey evidence’.

The Court of Appeal did not raise any issue with Birss J's application of the Interflora tests to this case, accepting that he had been live to the legal distinction and had not applied the real value tests too strictly in relation to a passing off case.

Real value (Grounds 1 and 3)

Lewison LJ made it clear that he had not intended his judgment in Interflora to invite a mini-trial of the strength of the parties' cases at the stage of deciding whether to allow a survey. The real value test is not intended to invite the court to evaluate the likely outcome of the case. If there was a special factor about the goods or services, or their consumers, survey evidence may well be of real value but this was not the case here.

Subsection of the UK population (Ground 2)

The pilot surveys had been directed at British Asians in the UK. Zee claimed that the trial judge would likely have little familiarity with its channels or the reactions of an ethnically distinct market to which it was directed. Floyd LJ was not concerned by the fact that the trial judge might not be a watcher of Zee TV (or indeed, a watcher of television at all). If the trial judge were equipped with knowledge of the extent and popularity of Zee's channels, he would be capable of assessing the susceptibility of watchers of those channels to any alleged deception when confronted with the zeebox sign. Floyd LJ saw nothing in this case which would not be readily understandable by the trial judge since the case concerned the delivery of television services to people in the UK.

Criticism of the survey (Ground 4)

The use of leading questions in the pilot surveys was criticized and, in particular, the fact that survey respondents were told that zeebox is an app or website ‘relating to TV’. The Court of Appeal found that this was unfair, given that no further information was provided as to the precise nature of zeebox's service. There was also criticism of the acontextual display of the zeebox sign in the survey, with Lewison LJ noting that, even in cases of alleged trade mark infringement, the acontextual comparison of mark and sign had been abandoned. The show card depicting the zeebox sign as shown to the survey respondents did not accord with how real-world users would encounter the zeebox app.

The Court of Appeal found that the judge had not gone far enough in considering the survey itself. The reliability of the survey forms an important part of the real value determination and this survey had ‘obvious flaws’.

Costs (Ground 5)

The cost of introducing the survey evidence (in the region of £100,000) was a factor that the judge could and should have properly borne in mind when making his decision. The estimated costs of £100,000 were found to be significant, especially when viewed from zeebox's perspective as a small start-up company.

Practical significance

Parties should give careful thought to the design of any pilot survey since the pilot survey will ultimately inform the full survey, if the court grants permission to proceed with a full survey. The court will consider the design of the survey and the questions in some depth in deciding whether to grant permission to adduce survey evidence. Survey questions should be drafted carefully and respondents to the survey should not be shown a mark and sign in circumstances devoid of context. Further, a survey should take care not to introduce factors that would not be present in normal use, and an attempt must be made to minimize the artificiality inherent in most surveys. Since passing off is a ‘real world’ cause of action, the circumstances of the real world should be present when carrying out the survey, in so far as this is possible.

It is clear that the real value test as set out by Lewison LJ in Interflora can be applied to passing-off cases despite the legal distinction between trade mark infringement and passing off. In this case, Lewison LJ has once again emphasized that survey evidence is not necessary in cases involving ordinary consumer goods or services. Parties should not seek to deploy survey evidence other than in exceptional circumstances, where the goods or services are sufficiently non-mainstream that the court is likely to need assistance by way of a survey.

Editorial: The quest for ‘real’ protection for indigenous intangible property rights

This month's Editorial is by guest editors Keri A.F. Johnston and Marion Heathcote. It reads as follows:
The quest for ‘real’ protection for indigenous intangible property rights 
Intellectual property rights (IPRs) and the regimes of protection and enforcement surrounding them have often been the subject of debate, a debate fuelled in the past year by the increased emphasis on free-trade negotiations and multi-lateral treaties including the now-rejected Anti-Counterfeiting Trade Agreement (ACTA) and its Goliath cousin, the Trans-Pacific Partnership Agreement (TPPA). The significant media coverage afforded to these treaties, however, risks thrusting certain perspectives of IPR protection and enforcement into the spotlight, while eclipsing alternative, but equally crucial voices that are perhaps in greater need of legitimate dialogue to safeguard their own collection of intangible rights. Caught in the vortex of inadequate recognition and ineffective protection, are the communal intellectual property rights of indigenous communities, centred on traditional knowledge (TK), traditional cultural expressions (TCE), expressions of folklore (EoF) and genetic resources (GR).

The fundamental incompatibility between current IPR regimes and the rights of indigenous peoples stems largely from the lack of understanding of the driving forces that have led to the development of TK, TCEs, EoFs and GRs – that of the protection of whole indigenous cultures through the preservation of the traditional knowledge acquired by these communities as a whole.

The issues are complex. Professor James Anaya's 2014 keynote speech at the 26th Session of the Intergovernmental Committee on Intellectual Property and Genetic Resources, Traditional Knowledge and Folklore at WIPO (1) highlighted the differences governing the intangible rights of indigenous peoples generally, and why these world views have so often been left out of the current mainframe of IPRs. Whereas the majority view of IPRs tends to focus on the rights of the individual and their protection as such, indigenous cultures are inherently built over centuries and across generations on communal understandings and organic exchanges of knowledge, making it practically impossible to ascribe the ownership of a certain set of IPRs to one or a few individuals.

As Professor Anaya articulates and the authors of this special issue of JIPLPvaryingly contemplate, the similarities between the inadequacies of the protection of tangible rights of indigenous peoples (eg indigenous land rights) and that of their intangible rights protection (including IPRs) tend to stem from a common source – the failure to acknowledge the “inherent logic of indigenous peoples' world views”.(2)

Perhaps the solutions lie not just in finding ways to include indigenous IPRs in current IPR regimes, but through the facilitation of an entire paradigm shift to capture the nuances of these issues both effectively and precisely. How, for instance, can indigenous IPRs be valued commercially, and how may adequate compensation models be developed in exchange for the commercial use of these rights? A key to increasing the recognition of the inherent value of indigenous IPRs within their traditional cultural settings may lie in developing methods to properly value this worth in tangible terms. What seems necessary is a model to adequately measure the significance of indigenous IPRs, starting at the source (the indigenous community), and finding ways of translating this value into benefit systems that can be returned to the communities from which the IPRs were sourced. Hence recognition is attributed to the crucial part these IPRs play within the cultures from which they are derived.

The strength of intellectual property law lies in its ability to meet the demands of a frenetically changing world, thus affording it vast amounts of power in shaping the law of the future; but this brings with it the challenge – can that power be harnessed to adequately protect rights of the past? Even if the answer is in the affirmative, it does not necessarily follow that the purpose of IPR protection should be to reduce IPRs to protectable commodities solely for the purpose of commercial exploitation. Protection of IPRs might be secured for any number of reasons, including the recognition of the right for ownership of those rights to be retained within the community. IPRs thus have the capacity to function both as shields and swords. Such weaponry however brings with it obligations: “With great power, comes great responsibility” (3).
The Guest Editors would like to thank Mekhala Chaubal, Student-at-Law, Johnston Law for her assistance, adding "It is reassuring to know that a new generation of lawyers is willing and able".
(1) James Anaya (Prof.), UN Special Rapporteur on the Rights of Indigenous Peoples, Keynote address at UN, Special Rapporteur on the Rights of Indigenous Peoples: Intellectual property and genetic resources: What is at stake for indigenous peoples? (3 February 2014), 6th Session of the World Intellectual Property Organization Intergovernmental Committee on Intellectual Property and Genetic Resources, Traditional Knowledge and Folklore, Geneva. 
(2) Id. 
(3) Stan Lee & Steve Ditko, The Amazing Spider-Man: Amazing Fantasy #15, Marvel Comics (Aug. 1962). This quote has alternately been attributed to Benjamin “Uncle Ben” Parker and the French writer, François-Marie Arouet (Voltaire), bringing up the completely separate issue of the intellectual property rights around misquotations, if there are any.

Special Issue: The quest for ‘real’ protection for indigenous intangible property rights

The May 2014 issue of JIPLP is a special one, featuring a series of contributions on a topic that is politically, culturally, philosophically and economically challenging -- the protection that is or should (not) be granted to what the guest editors Keri Johnston and Marion Heathcote term "indigenous intangible property rights". We expect that there will be some vigorous responses to some of the contributions -- and look forward to publishing further pieces on this topic in future, especially from intellectual property practitioners whose client work may have to address topics with which most of us remain unfamiliar and often uncomfortable.

The full list of contents reads as follows:
  • Editorial

Current Intelligence

State of the art


From GRUR Int.

IP in Review


The full text of the Editorial will be published shortly on this weblog.