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How to protect an image

Print publication

16/04/2014

There is in English law no free standing general concept of “image rights” protecting against the reproduction of a person’s image. However, there are other ways in which an image can be protected, as was seen recently in the singer Rihanna’s successful passing off action against Topshop, which we reported here. The High Court judgment in Hearst v AVELA [1] is another illustration of this.

The claimants, Hearst, were the successors of the originator of the cartoon character, Betty Boop and owned UK and Community trade marks for the word BETTY BOOP and a figurative mark, which can be seen here. They licensed Betty Boop merchandise. They brought a claim for trade mark infringement and an action for passing off against AVELA. AVELA denied infringement, maintaining that they were a legitimate source of Betty Boop imagery in the UK. They claimed that their source was reconditioned old posters and that the imagery was decorative and made no representation as to trade origin so could not infringe or pass off.

AVELA also argued that the trade marks were invalid for lacking distinctive character and that they consisted exclusively of indications of characteristics of the goods for which they were registered.

The judge, however, was unimpressed by these submissions, finding that the trade marks had been infringed and that there was passing off.

The judge accepted that it was possible that the appearance of a well-known character, real or imaginary, on a product may not have origin significance. However, it was also possible, that it may do. In this case, the judge concluded that the average consumer would see the Betty Boop character as both aesthetic and as a sign related to trade origin. The judge considered that consumer would perceive the BETTY BOOP mark as a mark of origin and believe that there was a single “official” source of BETTY BOOP merchandising.

The judge rejected the argument that AVELA’s use of the mark was purely decorative. The average consumer would recognise the mark as merchandising and would take the presence of the mark as an indication that the product was licensed.

The judge dismissed the claim for invalidity, finding that the BETTY BOOP image was distinctive and that there was no evidence that the marks had not acquired sufficient distinctiveness through merchandising by the time of their registration.

On passing off, the judge found that Hearst had established a goodwill and reputation in the UK and that there was evidence of confusion on the part of customers some of whom appeared to believe that AVELA were officially licensed.

The reasoning is very much in line with that in the Rihanna case – unsurprising as it was the same judge – although in this case the character merchandising was fictional rather than real. The case reaffirms that, whilst there may not be a standalone “image right” in UK law, the weapons of trade mark infringement and passing off may be sufficient to protect such a right in practice.

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[1] [2014] EWHC 439 (Ch)