Should famous people register their names and images as trademarks?

31 October 2021

Should famous people register their names and images as trademarks?

Celebrities have been trademarking their names for some time, including Beyoncé, Bruce Springsteen, Taylor Swift, Kylie Jenner and Justin Bieber. Several recent high-profile cases have led Espie Angelica A. de Leon to dive deeper into the world of celebrity branding.

In 2018, James Craig Benson sought to register the trademark “Aunty Helen” before the New Zealand Intellectual Property Office (NZIPO) for clothing, retailing and publishing-related services, among others.

The name Aunty Helen is closely associated with New Zealand’s former Prime Minister Helen Clark. She did not register the nickname as a trademark and had no intention of doing so. The nickname was given to her by journalists, bloggers, critics and supporters alike. It should also be noted that Clark and Benson were not in any way connected with one another.

The former prime minister opposed the registration.

According to the Assistant Commissioner, the trademark “Aunty Helen” was applied for in bad faith and may confuse the public since Clark was known by a significant segment of the public as Aunty Helen. In April 2021, NZIPO refused the registration of the mark. It stated that Clark did not have to be engaged in the same business as Benson and was not required to use “Aunty Helen” as a trademark.

Benson also sought to register “Jacindarella” as a trademark. Jacindarella is a nickname coined for New Zealand’s current Prime Minister, Jacinda Ardern. That registration was also refused.

From politics, let’s move to sports. In August 2021, Indian badminton player PV Sindhu considered taking legal action against brands that used her name and image without her consent in their congratulatory messages to her during the 2020 Tokyo Olympics. Sindhu won the bronze medal in women’s singles in Tokyo.

According to Tuhin Mishra, managing director of Baseline Ventures in Gurugram, a management firm which represents Sindhu, these acts infringe Sindhu’s intellectual property rights. However, unlike in the West, athletes in India do not register their names or copyright their unique elements. Thus, in this particular case, infringement of IP rights is non-existent.

From the same Olympics comes the Rayssa Leal incident. Leal is a 13-year-old Brazilian skateboarder who also competed in Tokyo. She won the silver medal and became famous internationally. Unbeknownst to her, a lawyer in Brazil by the name of Flavia Penido trademarked the name “Fadinha,” Leal’s nickname, before she left Tokyo after winning. Fadinha is Portuguese for “little fairy.” Curiously, Leal and Penido had never met. Penido says she registered the name to protect Leal and that she did not have any financial interest in the matter. Penido also signed a declaration stating she will give all the rights to the young skateboarder and her parents for free.

So, should a famous person register his famous name, nickname and image as trademarks to protection their rights?

If the individual intends to use his name and image for commercial purposes, by all means he should register his name, including any similar or relevant name, as a trademark. But what if there is no intent to sell merchandise or service?

“Even if the person does not have commercial intention, it would be advisable to make such registration to preempt abusive attempts of registration by other parties,” said Cai Guo, a partner at Jin Mao Law Firm in Shanghai.

Guo cited the case of former NBA star Michael Jordan as a classic example of the possible dangers of not registering one’s name or translated names. Various trade names and trademarks using Jordan’s name and translated names in Chinese characters were registered in China. Jordan’s battle to invalidate these trade names and trademarks before the Chinese court lasted for years.

“Due to loopholes in the law then in force, he had to take tremendous effort to prove that the concerned name – translated from ‘Jordan’ to corresponding Chinese characters – indeed identifies him,” Guo explained.

That effort contributed to promulgation of the revised Civil Code of the People’s Republic of China, which took effect on January 1, 2021. The PRC Civil Code explicitly provides that natural persons are entitled to personal rights including name rights and rights to the translation of one’s name.

And then there was the case involving a Chinese sportswear company which used Jordan’s silhouette image as part of its trademark. The basketball icon disputed the legality of such trademark using his silhouette without authorization, among others.

“We typically recommend famous individuals to proactively protect their own names or nicknames with trademark registrations. If celebrities don’t register their names as trademarks themselves, there is a risk someone else may try and do so,” said Jenni Rutter, a partner at Dentons Kensington Swan in Auckland.

“This was the case in Brazil, when Olympic skateboarding silver medalist Rayssa Leal’s nickname ‘Fadinha’ was applied for without her knowledge. In this case, the applicant claimed to be applying for the mark for Ms. Leal’s benefit and said she would assign it over,” said Rutter. “But not all applicants have good intentions.”

“Obviously, famous people should register their name – and sometimes likeness – if they have a bona fide intent to use their name or likeness as a mark in commerce. However, it cuts against the underpinnings of the trademark system when they attempt to register their name or likeness without such an intent,” said Rebeccah Gan, a partner at Wenderoth, Lind & Ponack in Washington. “Celebrities already have robust protection against unauthorized exploitation of a celebrity’s name, likeness, or persona as unregistered marks under Section 43(a) of the Lanham Act (U.S. Trademark Act), the common law right of publicity and various state business codes.”

According to Gan, registering a celebrity’s or famous person’s name for “defensive purposes” in the United States has its challenges, owing to strict rules under the law that require bona fide intent and actual use in commerce.

Singer Beyoncé and husband rapper Jay-Z are a case in point. For almost 10 years now, the couple has been effectively parking the names of their twins Rumi Carter and Sir Carter in trademark applications they’ve filed. They have yet to make use of such marks for any commercial undertaking or obtain U.S. registrations.

Taiwan’s Trademark Act also provides an obstacle to unscrupulous individuals seeking to register a famous person’s name or nickname as a trademark.

“Therefore, a famous person does not need to register their name or nickname to prevent others from doing so,” said Gary Kuo, a partner at Winkler Partners in Taipei.

As for registering one’s image or likeness, Kuo said: ““As long as the image or photo is distinctive enough to be recognized by relevant consumers as an indication of the source of goods or services and to distinguish from others, a person can register their image or photo as a trademark. It is also worth noting that under the act, if someone registers another person’s portrait or another famous person’s name or nickname as a trademark, the Taiwan Intellectual Property Office should reject the application.”

“In New Zealand, bad actors who use celebrity names or images without permission can also be taken to task for misleading or deceptive conduct under the Fair Trading Act and/or for passing off,” said Rutter.

Registering a celebrity’s or famous person’s name, nickname and photo or image comes with pitfalls, however.

“It takes money and resources to register and maintain trademarks, and if a trademark is not used within three years after its registration, it will be vulnerable to non-use cancellation. As such, it is not always necessary for a famous person to register their name or image if they do not intend to use their name or image as trademarks,” explained Kuo. “However, for someone recently famous in other jurisdictions like Rayssa Leal, it might be necessary to conduct protective registration for their own name, nickname, or image in Taiwan.”

Registering a name that is common and not distinctive can also be challenging.

“For example, a trademark for KYLIE for clothing might belong to Kylie Minogue or Kylie Jenner – whoever applied first,” said Lauren Royers, an associate at Dentons Kensington Swan in Auckland. “Unless a celebrity uses an unusual stage name like Sting or Beyoncé, their name could be quite common and therefore hard to get registered.”

That trademark registers are often searchable online presents another problem. This allows others to learn about a celebrity’s business plans before he can actually begin his new venture or launch a new product line.

“It’s possible to get around this by applying for the mark in a country that doesn’t have a searchable register,” said Royers, “but this can become logistically complex.”

Another pitfall is that even if a famous person’s name or nickname is registered as a trademark, an individual with ill intent may still be able to use that trademark on the ground of descriptive fair use. This is especially true if the individual has the same or similar name or nickname.

There may also be little possibility of exhausting registration targets “because potential perpetrators often do batch registration to cover as extensive targets as possible,” according to Guo.

Perpetrators are cunning and creative. They will think of certain spellings and character arrangements which they will use as part of the marks they will register. These spelling styles and character arrangements, though altered, can still identify a famous individual.

“Thus, no matter how much resource one spends on trademark registration, perpetrators are more likely than not to find other creative, or in other words, abusive, means to register trademarks that resemble the famous person’s names and cause confusion,” Guo explained.

Lastly, registering a celebrity’s likeness in the form of an image or a photo as a trademark may provide only limited protection.

“This would provide very limited protection given you can generally only protect one image per trademark. We usually recommend applying for a name or nickname word mark,” said Royers.

Despite these, however, the lawyers we spoke with believe it still makes sense for a famous person – whether an entertainment celebrity, political figure, elite athlete, or otherwise – to register his name, nickname and image, especially in this era of social media, e-commerce and moment marketing.

“It is especially important for celebrities to register their name and image because advertising and marketing today largely depend on evolving technologies and social media. As information transfers rapidly via the internet, people who intend to use their fame to generate profits can consider arranging trademark registrations in advance since they don’t know when the cash will come,” said Kuo.

For Guo, it helps to opt for selective registration rather than comprehensive registration. However, she also believes the bigger issue is not whether a famous person should register his name to acquire protection and prevent misuse.

“In practice and in some jurisdictions, abusive registration of famous names has become a business or industry chain already for unlawful economic gains. Thereof, it is not an issue whether a famous person should register his or her name,” Guo said. “The more relevant issue is how to effectively deal with such abusive registration long before these persons realize their names possess tremendous commercial value.”

There should be active monitoring and legal actions taken, according to Guo. Athletes who won medals and rose to fame during the 2020 Tokyo Olympics paved the way for potential perpetrators to attempt to register these athletes’ names or associated characters and spellings that could identify the athlete. However, the Trademark Office of the China National Intellectual Property Administration issued a public notice and rejected these applications for violation of the trademark law.

“It is vital to take legal actions as soon as abusive registration is discovered, because according to the current PRC Trademark Law, objection to abusive registration is subject to a time limit of five years from the date of trademark registration,” she says.

“A trademark registration without enforcement is a piece of paper with a shiny seal. If a celebrity truly intends to use his name or likeness as a mark, they should seek registration,” said Gan, “but they would also need to earmark time, energy and money into policing misuse of their mark.”

Still, recent trademark-related incidents have undoubtedly shone a spotlight on the importance of registering a famous individual’s name or likeness.

According to Rutter and Royers, who served as counsel for Clark in the Aunty Helen case, it is common for globally famous celebrities based abroad to protect their names as trademarks in New Zealand; Jamie Oliver and Taylor Swift are two celebrities who have done so.

Famous people based in New Zealand are less likely to do the same, Rutter notes.

“This may change in the future, as Kiwis are starting to appreciate that names and nicknames are valuable commercial assets that should be looked after,” said Rutter.

The Aunty Helen case also serves as a wake-up call for popular New Zealanders.

“While it shows that a well-known person’s name or nickname can’t be easily exploited by others, it highlights that the best course of action, especially if you trade under your name, may be to proactively protect your own name, before someone else tries to,” said Royers.

The unusual case involving Benson and Clark also gives IP practitioners in New Zealand the confidence to believe that the country’s trademark law can be relied on for all kinds of potentially misleading trademarks and novel situations.

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