Radio Gaga or Lady Goo Goo?

Following Lady Gaga’s recent court victory over Mind Candy, Oliver Smith urges companies to think twice before using parody as a marketing tool when the brand owner has deep pockets.

No one could accuse Lady Gaga of excessive originality – her name apparently being derived from Queen’s hit song and her style being reminiscent of Madonna – but having created a global brand, understandably she is now intent on protecting it.

So when online gaming company Mind Candy sought to expand its Moshi Monster gaming franchise into the music business with an animated character called "Lady Goo Goo", she took creative legal action.

This month, she won an injunction at London’s High Court and forced Mind Candy to suspend its plans to use "Lady GooGoo" to sing a track that was due to be sold on iTunes.

This temporary injunction highlights the tensions in English trade mark law between free expression and intellectual property rights.

Gaga’s rights management company, Ate My Heart, apparently alleged that the cartoon character had a name unfairly similar to her own and that it was likely to cause confusion amongst customers.

In defence, Moshi Monsters denied that fans of the hit singer would think that Mind Candy and Lady Gaga were in business together or that she was really the person behind the spoof song.The CEO of Mind Candy, Michael Smith, was reported as saying that the kids buying the tune could not confuse his latest "monster" creation with the hit singer.

Oliver Smith (no relation), an intellectual property lawyer with Keystone Law who was widely quoted in the media on the case, sees this decision as the latest battle in an on-going fight between artists’ desire for freedom and businesses’ hunger for revenue.

The use of a reference to a famous artist’s work is both a form of expression which spreads and extends human ideas and an easy and cost effective way of gaining the attention of a large and potentially valuable audience.

The American legal doctrine of "initial interest confusion" proposes that it should be unlawful to divert a potential consumer’s attention to your product from the general morass of competing brands in the high street or on the web by relying on the fame and success of another person’s brand. Even though the customer will quickly realise that you are not connected to the famous brand, you now have their attention and can sell to many members of this valuable audience in the same way that you might do so by paying Lady Gaga in order to sponsor her world tour or to have her appear in your global television advertising campaign.

The way that search engines such as Google operate makes it highly likely that Mind Candy would benefit financially from any connection between its website and those officially associated with Lady Gaga.

In the UK, the Trade Marks Act recognises that the overuse of variations of a famous brand by others will erode its distinctiveness over time, causing damage to the trade mark and therefore provides for a right to damages and an injunction.

It appears that brand owners are winning the legal war on the use of parody as a marketing tool in the global internet advertising business, and you should therefore take care before embarking on a marketing strategy based upon the parody of a valuable brand.