Lady Gaga and Misgivings of the JPO? Dr. Shoichi Okuyama AIPPI Japan Okuyama & Sasajima

IP High Court decision  Handed down on December 17, 2013  2 nd Division presided by Judge Misao Shimizu  who headed a local district court for two years before coming back to IP  Affirmed a JPO decision which rejected a TM application filed by Ate My Heart Inc. owned by Lady Gaga 3

Trademark in question  “LADY GAGA” in standard characters  Goods “Records, music files that may be received and stored using the Internet, movie films, recorded video disks and tapes” in class 9  Narrowed down from goods and services in classes 3, 9, 14, 16, 18 and 25 in the parent application  The parent successfully resulted in a registration covering other goods and services  perfumes, printed matters, management of fan clubs, provision of information on music through websites, etc.

JPO decision  JPO Appeal and Trial Department made a decision to reject this application on January 28, 2013 on two grounds:  The lack of distinctiveness, and  The possibility of confusion as to the contents of the goods if used for goods unrelated to Lady Gaga  This is a regular practice at the JPO

Lack of distinctiveness (Ground 1)  Lady Gaga is well known as the name of a popular American musician  If the TM “LADY GAGA” is used for the designated goods (music files, etc.), dealers and consumers would consider the TM as indicating a singer who is singing songs contained in the goods, or a person who appears in video and sings songs; that is, they would consider the TM as showing the quality and contents of the goods. Therefore, it does not function as a mark distinguishing goods of the applicant from those of others.  Plaintiff argued:  “Distinctiveness” should not be judged based on the specific manner of use (this time, use for music files)  Under the current practice, if the applicant is Lady Gaga Inc. instead of Ate My Heart Inc., a registration would be granted. This is strange.

Possibility of confusion (Ground 2)  If the TM “LADY GAGA” is used on products unrelated to Lady Gaga among the designated goods, it possibly causes confusion as to the quality of the goods.  Plaintiff argued:  According to the JPO decision “who is playing is closely related to the quality of the goods,” but the quality of goods varies even if they are associated with a particular player.  As the JPO noted in its own decision, Lady Gaga is well known and the name represents the goodwill that should be protected by a TM registration  Past registrations: “MICK JAGGER”, “BRITNEY SPEARS”, “BEYONCE’”, “BILLY JOEL”, “JIMI HENDRIX”, “UTASA HIKARU”, etc.

IP High Court decision  Basically, the panel headed by Judge Shimizu reiterated what the JPO argued without getting into the substance of arguments the plaintiff made

What’s Lady Gaga is doing outside Japan  Europe  The U.S.

Lady Gaga wins injunction in Europe  Ate My Heart Inc. v Mind Candy and Moshi Music  Ate My Heart Inc. had CTM registrations for “LADY GAGA” covering sound, video and audio visual recordings, entertainment services and the streaming of audio and video material on the Internet  October 2011, British High Court gave an interim injunction order against “Lady Goo Goo” to stop the release of music sang by Lady Goo Goo, and take down the video on YouTube

Lady Gaga before the US courts  Ate My Heart Inc. sued Excite Worldwide before the Manhattan Supreme Court in September 2011 to stop the use of “Lady Gaga By Design” for a line of cosmetics and jewelry and also to stop the “frivolous” TM applications for “Lady Gaga” and “Lady Gaga LG”  Lady Gaga believes that Excite’s applications were blocking her application procedures  Lady Gaga also took legal action in 2011 when ice cream made out of breast milk was marketed under the name "Baby Gaga.“ The product has since been removed for hygienic reasons. Also, a pre-grant opposition was filed against a TM application for “BABY GAGA”  Lady Gaga filed a suit against a TM registration, for non-use, on “Gaga Pure Platinum” for cosmetics owned by a small family business for 12 years.

Was the JPO about to change?  JPAA did an international survey among 27 countries, and found only UK and Hong Kong may deny registrations (reported in its monthly journal)  JPAA submitted an opinion letter to the JPO in October 2012, asking the JPO to change its practice and register the name of a singer or a musical group for recordings and recorded media  This fiscal year ending March 2014, the JPO commissioned AIPPI Japan to carry out an international research on registrability of names of singers and musical groups  Well, how the IP High Court decision will play out?  Any appeal before the Sup. Ct.?