Celebrity Brands: The Line Between Fair Use and Infringement
All brand owners are faced with difficult decisions regarding how aggressively to police their brands. The decision is particularly difficult when the unauthorized use is by a loyal customer or fan. While some traditional brands such as Harley Davidson and Tesla have fans; this dilemma is most often faced by celebrities. A cease and desist letter to a loyal fan can show up on social media with negative consequences. On the other hand, failing to police a trademark can lead to loss of trademark rights. Navigating this balance requires a deep understanding of trademark law and of public relations and social media.
Identify Your Trademarks
First, it is important for celebrities to identify their trademarks. Most often, the protectable trademarks of a famous person are his name, and sometimes his likeness.
Not all personal names are trademarks. Indeed, not all celebrity names are trademarks. A trademark is a word, name, graphic, phrase, color, sound or even a smell that identifies a single source of goods or services. A personal name is not a trademark unless and until it becomes associated in the minds of consumers with certain goods or services. The United States Patent & Trademark Office (“USPTO”) manual of rules for registering trademarks states that a personal name, both actual names and pseudonyms, of individuals function as trademarks “only if they identify and distinguish the services, not merely the individual.”
Although the name is associated with a person, that does not make it a trademark, even if that person is famous. The law requires that the person claiming a trademark over her name prove what is called secondary meaning. The first meaning of the name is to identify the person. The secondary meaning of the name is to identify specific goods or services. A good example of a person’s name that has acquired secondary meaning is Gucci in connection with purses. Through a long history of marketing and sales, the average consumer associates Gucci with the product rather than as simply referring to a person.
Secondary Meaning: More Than Just a Name
Creating secondary meaning in connection with services can be a bit trickier than with goods. Goods typically bear a label; and consumers know that the label of a product reflects the source of the product. Not so with services. The person delivering the services is not always the source of the services. In 1983, the United States trademark office refused an application by boxer Mancini to register BOOM BOOM because the trademark office determined that the name would be viewed by the public solely as his professional boxing nickname and not as an identifier of the service of offering professional boxing exhibitions. In other words, it identified the person, not the service.
In 1977, Johnny Carson applied to register his name with the USPTO. It was refused on the grounds that the proof of use showed use of the designation “JOHNNY CARSON” only to identify the individual who performs or will perform the services claimed rather than as a mark used to identify and distinguish services rendered by Carson. The USPTO said it would allow the registration if the application was amended its mark to read “THE JOHNNY CARSON SHOW,” but Carson was unwilling to make that change and appealed the denial. On appeal, the USPTO reversed its denial and permitted the registration of the trademark, stating, “we believe that these specimens are sufficient to establish that the designation “JOHNNY CARSON” is used by applicant not only as a name to identify himself but also as a service mark to identify services rendered by him in commerce. To hold otherwise would be to discriminate against applicant simply because he is an individual.”
Proper marketing is critical to proving that a personal name functions as a trademark. Marketing pieces should prominently feature the name in a manner that conveys that it is a brand, the marketing should be consistent, and often, marketing must be extensive.
Another challenge in creating trademark rights in a person’s name is that the name must be unusual enough to differentiate the goods or services from those provided by others. For those born with unusual names, meeting this requirement is not a problem. For others who have common last names and common given names, acquiring trademark rights over their name may be fraught with battles and may even be impossible. Often a rising star with a common name adopts a stage name or other pseudo-name to overcome this hurdle.
Registering a Trademark
Once trademark rights are established in a name, it is a good practice to register the trademark with the USPTO in connection with the appropriate goods or services. Trademark registration expands common law trademark rights to the entire United States, gives exclusive rights in the U.S. in connection with the goods or services and gives the brand owner the ability to use the ® symbol with the brand.
Once a sufficient amount of fame is achieved, a celebrity’s likeness may also be a trademark. The applicable federal statute defines trademark infringement as when a person on or in connection with any goods or services, “uses in commerce any. . . name, symbol, or device, or any combination thereof . . . which . . . is likely to cause confusion, or to cause mistake, or to deceive as to . . . the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person.” Courts recognize that a person’s image is capable of functioning as a trademark if it serves to identify a single source of services or goods. In 2012, Fifty-Six Hope Road Music, Ltd., the entity owned by Bob Marley's children, sued under this federal statute for trademark infringement against a company that was selling t-shirts and other merchandise bearing Marley’s likeness that were sold at large retailers. The Ninth Circuit (the federal appellate court that hears appeals from California and other western states) determined that Marley’s persona could fall within the definition of a symbol. The court then found that because of Marley’s high level of recognition, because his image has long been associated with apparel, and because there was evidence that the purchasing public believed that the apparel was endorsed by Marley’s heirs, the sale of the merchandise constituted trademark infringement.
Once you have identified and protected your trademark rights, in order to preserve those rights, the name or image must continue to be associated with a single source in connection with those goods or services. If six different, unaffiliated companies all provide the same service under the same brand, none of the companies can maintain their trademark rights because the name tells consumers very little about the source and, thus the quality. It is no different with celebrity names. If a celebrity permits others to use his name in connection with goods or services without permission or quality control, the celebrity decreases the strength of his brand and his trademark rights. If, for example, someone other than Emeril Lagossi had opened a restaurant called Emeril’s before Lagossi did, his failure to request that they cease use would have seriously harmed his ability to open a restaurant using his own name.
Indeed, the Trustees of Princess Diana’s memorial fund were unable to convince a court that use of her name and likeness was trademark infringement, principally because Princess Diana had not policed her brand. The Court held that “[P]ervasive unauthorized use of a celebrity’s persona will tend to dull the popular perception that use of that persona signifies an endorsement at all, weakening the initial automatic association between the celebrity and his or her estate.” This court case and others like it highlight the importance of not ignoring unauthorized usage.
In addition to understanding and policing trademark rights, a celebrity interested in brand protection should familiarize himself with the concept of nominative fair use. Nominative fair use permits use of another’s trademark to refer to the trademark owner’s actual good and services. It is generally permissible if (1) the product or service in question is not readily identifiable without use of the trademark; (2) only so much of the trademark as is reasonably necessary to identify the product or service is used and (3) use of the trademark does not suggest sponsorship or endorsement by the trademark owner. Nominative fair use is most applicable in comparative advertising, parody and noncommercial use of the trademark, such as in academic articles, media reports and other commentary about the goods or services.
Knowing that enforcing trademark rights is a critical element to maintaining trademark rights leads to the dilemma faced by celebrities who find themselves addressing the use of their name without permission. One common battle ground has been fan pages. Done correctly, they are fair use and can be a valuable source of publicity for the celebrity. But some well-intending fans create pages that appear to be sponsored by the celebrity herself, causing customer confusion and a weakening of the brand. Options range from ignoring the behavior to sending a strong cease and desist. As is usually the case, the best course of action is a moderate approach. A polite letter from legal counsel that explains the importance of trademark protection and requests modifications to the page will often solve the problem without backlash.
Another common challenge is the sale of wearables that feature the celebrity’s name or image. Etsy, Café Press and other personalizing stores and imprinting services make it easy for unauthorized users to create and sell t-shirts and other products bearing the name of a celebrity. Here again, the celebrity must balance the need to police the brand against both the benefit of the “free” publicity and the perception of being overly aggressive. Considerations include the inference of sponsorship, the amount of sales, and the way the name is presented. Also, some imprinting could be fair use.
There is no black line between when to send a cease and desist, when to tolerate the behavior, and when to explore a licensing relationship with the seller. If you are building brand recognition in your personal name in connection with goods or a service, it is a good idea to seek legal advice on the best way to establish and protect that brand. Once the trademark rights are established, make careful choices about whether and when to enforce those rights.
About the Author: Maria Crimi Speth is a shareholder and intellectual property attorney at the Phoenix law firm of Jaburg Wilk. As chair of their intellectual property group, she has expertise in copyright law, trademark law, Internet law and entertainment law. She focuses on litigation involving intellectual property rights - including brand protection - and First Amendment rights. Ms. Speth is the author of the book, Protect Your Writings: A Legal Guide for Authors.