As Mr Justice said in the recent Rihanna v Topship litigation, that there is no such thing as a matter of UK law as a free standing general right by a famous person (or anyone else) to control the reproduction of their image – although in that case the judge did find in favour of Rihanna in her claim for passing off as the image had been lifted by Topshop from an official video shoot.
Tis position has now been re-affirmed in Hearst Holdings Inc and another v A.V.E.L.A. and others  EWHC 439 (Ch) a case involving the cartoon character Betty Boop. Nevertheless, a liability for infringement was found.
Hearst maintained that they were the successors of the originator of the cartoon character Betty Boop, first shown in 1930s America, and that they were the only legitimate source of Betty Boop merchandise in the UK. AVELA said that it too was a legitimate source of Betty Boop “imagery” in the UK (TPTL being AVELA’s UK licensing agent, with Poeticgem and J Fox being AVELA’s UK licensees and U Wear both distributing AVELA-licensed goods to retailers and selling them directly to the public online). Hearst alleged that AVELA and the other businesses were infringing its nine Community and UK word and figurative trade marks, passing themselves off and infringing copyright. AVELA and the rest denied infringement and said Hearst’s registrations were invalid. The copyright infringement action won’t be heard till January 2015, after the defendants were allowed to make amendments to their defence; the counterclaim for invalidity based on bad faith will also be heard then since it’s tied in with the copyright arguments. There was also some previous litigation between the same parties: AVELA was successful in a corresponding lawsuit in the US, but had failed to oppose the grant of one of Hearst’s Community trade marks. This case centered on the trade mark and passing-off claims. Hearst contended it was the only legitimate source of Betty Boop merchandise. It raised a claim for trademark infringement (of the word mark and the logo) and for passing off. AVELA argued that it was also a legitimate source of the Betty Boop brand, having sourced their Betty Boop imagery from reconditioned posters – and in all events their use of the image was purely decorative and made no representation about the origin of the goods. As such, their merchandise could not infringe Hearst’s trade marks or pass off.
The Court disagreed. The judge explained that in cases involving famous faces and merchandising the question is always concerned with what the relevant sign signifies to the average consumer. citing the ruling of the Court of Justice of the European Union (CJEU) ruling in Case C-408/01 Adidas-Salomon v Fitnessworld where the CJEU considered the use of a sign as embellishment, Birss J reminded AVELA and colleagues that just because the average consumer views the use as decorative does not necessarily avoid infringement: such usage only avoids infringement if it is purely decorative or purely an embellishment. While he accepted that the average consumer (the general public) would see the use of the picture of Betty Boop on AVELA-licensed t-shirts as decorative, he rejected the argument that it was purely decorative: “It is not purely decorative, it also conveys a message concerned with the origin of the goods. Thus given that the picture is instantly recognisable as Betty Boop, I find the average consumer would establish a link”.
Whilst being an indicator of origin is still the essential function of a trademark, the somewhat controversial decision of the CJEU in L’Oreal v Bellure does extend this. Here the court found that even if a defendant’s marks did not affect their essential function, it nevertheless affected other functions. Such functions include the guarantee of quality, and the advertising, communication and investment functions). A defendant can take ‘unfair advantage’ of a trade mark even where there is no likelihood of confusion and even where the allegedly offending use of the similar sign “is not detrimental either to the distinctive character or to the repute of the mark or, more generally, to its proprietor.” The IPKat comments
“This decision is notable for the careful manner in which the court has picked its way through the facts and has so carefully weighted their significance, bringing out the significance of investment in the development and re-imagining of the parameters of a fictional character of considerable antiquity. The IPKat notes how Disney has done much the same with regard to Mickey and Minnie Mouse, for example, to stimulate and maintain interest in each new generation of consumers. While the importance of this exercise is sometimes more apparent with regard to copyright law (see eg the relatively unappealing image of an early Mickey Mouse, right), it is clearly important when generating goodwill for trade mark and passing off purposes too.”