By Sam Lucas, Associate, and Amy Galloway, Trainee Trade Mark Attorney, Bond Dickinson LLP
Up until the last 10 years, there were very few celebrities that could claim that they were a brand in their own right, however in the past decade we have seen celebrities go to great lengths to protect their intellectual property. From Beyoncé and Jay-Z’s trade mark application of the name of their daughter Blue Ivy Carter to, more recently, Taylor Swift applying to register a variety of song lyrics and phrases, including THIS SICK BEAT. It is clear that celebrities want to retain control over how their image is used by preventing unauthorised exploitation by third parties, as well as build up a brand which acts as a source of income.
Last month we saw Rihanna win a UK Court of Appeal case against Topshop, preventing them from selling t-shirts displaying her image without her permission. Rihanna relied upon the law of passing off to show that a substantial number of people buying the t-shirt would think that she had endorsed it when, in fact, it was not connected with her at all. The court drew the distinction between character merchandising and endorsement, stating that in merchandising the public will not necessarily think that the products are connected with the celebrity. Whereas in endorsements, there will be an expectation that the celebrity approves of the goods and is therefore materially responsible for their quality, which was what occurred in this case.
Whilst on the face of it the outcome appears to be a step forward for celebrities wanting to control the use of their image, it was very much decided on the specific circumstances of the case. Rihanna had a previous association with Topshop, such as being the subject of competition prizes, also the image on the t-shirts was similar to those used for her album, leading people to think that the t-shirts were part of a promotional campaign. It is unlikely that this decision will open the floodgates to celebrities taking similar legal action in order to protect and control their image. However, it does highlight how important it is for celebrities to monitor the use of their image and to obtain proper protection for their intellectual property.
In the UK trade mark rights are protected by the law of passing off and, if the marks are registered, by legislation. Passing off occurs where one business passes off its goods or services as those of another. This might simply be the aping of a core brand name or more broadly, the aping of get up, images or designs which have become heavily associated with a business (whether that be a corporation or business based upon a celebrity image). In practice this is usually expensive and difficult to show. It is important to know that passing off will unlikely protect a trade mark in the early stages, when most vulnerable to attack, as you have to prove goodwill and reputation which accumulates over time.
An alternative and far easier method of protection is afforded by the Trade Marks Act 1994 (and the equivalent European legislation) but this only applies to registered trade marks. Registered trade marks offer protection from the date of application and in many cases trade mark infringement actions are significantly quicker and cheaper than passing off proceedings. When an application is made to register a trade mark, it is necessary to specify the goods or services in relation to which you use or intend to use the mark.
If a trade mark application is granted, the registration gives the owner a monopoly right in the UK to use the mark in respect of the goods or services in which it is registered and provides protection against infringement.
Obtaining registrations as early as possible and for carefully selected goods and/or services can prevent the costly and time consuming task of having to prove distinctiveness. It is possible that the more famous the name, the more likely it will be seen as descriptive of the goods or services in question, especially for merchandise. Procuring early trade mark registrations also prevents unwanted third parties from “getting there first”. In the UK, there is no law stating that only the individual in question can register their name and the options to oppose these applications are limited and may be difficult to prove.
The drawing power of a celebrity name is of great commercial value for both the individual and manufacturers either through increased sales or royalties received from licensing arrangements. Trade mark registrations will also allow individuals and companies to maintain control over what products or services they are associated with, especially where they may be of variable quality or nature, which could ultimately result in damage to their reputation and brand.
In today’s technology driven climate, where we consume the media through various channels, celebrities have the ability to connect with their fans instantly, thereby conveying their brand to millions of individuals across the globe. Trade mark registrations are lucrative assets, potentially providing a stream of revenue, as well as protection against opportunistic third parties from using their image or brand for commercial gain.