Trade marking celebrities

IP/media litigator Della Burnside looks at two recent UK court decisions which have helped clarify the circumstances when a celebrity (or their estate) can use trade mark law to protect their name and likeness. [17.03.99]

In February, The Trade Marks Registry refused an application by the family and memorial fund of Diana, Princess of Wales to trade mark Diana's likeness. Now, Elvis Presley Enterprises, the marketing arm of Elvis Presley's estate, has failed in its Court of Appeal bid to register the names "Elvis", "Elvis Presley" and Elvis' signature "Elvis A Presley" as trade marks for its souvenir soaps and toiletries, following a successful challenge by Mr Sid Shaw, the owner of a souvenir shop, "Elvisly Yours".

The Diana application, made some 18 months ago, sought to register as trade marks 52 images of Diana, but the application was rejected by the Trade Marks Registry. The memorial fund had until 3 March 1999 to lodge an appeal, but failed to do so, and so the application is effectively dead. Had the application succeeded, it would probably have prevented not only unofficial commercial exploitation of 2-dimensional images of Diana, but 3-dimensional ones as well, such as dolls and figurines.

In the Elvis Presley case, Mr Shaw successfully argued through the courts that a famous personal name, when applied to goods, merely identified the goods with a particular subject matter i.e. the famous person in the public domain, and did not operate as a distinctive badge of origin. In the High Court, the judge, Mr Justice Laddie, proclaimed that the public did not care who made the goods, as long as it showed the subject matter (in this case, Elvis). He went on to criticise an earlier case in which it had been suggested that the public would always assume that products of famous personalities came from a genuine source. Mr Justice Laddie said that he did not believe that when someone bought a toy of a well known character they cared who made, sold or licensed it (although it might be possible to draw an inference of association, for example, by use of the word "official").

Elvis Presley Enterprises appealed, but the Court of Appeal has now confirmed the decision of the High Court. On appeal, Lord Justice Brown concluded that the case was of "obvious importance", stating that there should be "no assumption that only celebrities or their successors may ever market….their own character", adding that "[m]onopolies should not be so readily created". Good news for the likes of Mr Shaw, although this decision does not give carte-blanche to unofficial merchandisers to exploit celebrities' names. In the words of Lord Justice Brown, it does not "give a green light to extravagant claims based on any unauthorised use of the celebrity's name". It is worth remembering that Mr Shaw had been marketing Elvis memorabilia for 10 years before Elvis Presley Enterprises appeared in the UK. Also, that the trade mark application related only to soaps and toiletries, not goods that the public might readily assume had been endorsed by Elvis Presley Enterprises.

Some celebrities have succeeded in registering their likenesses as trade marks. These include Eric Cantona, Jacques Villeneuve and Damon Hill (the latter, his eyes). They were able to persuade the Registry that they were already commercially trading on the likenesses that they were seeking to register and that consumers would identify the registered trade mark as originating from them. It is perhaps worth remembering that these are all living celebrities and the Trade Marks Registry has yet to permit a deceased's likeness to be registered.

It would seem that whether a celebrity (or their estate) succeeds in a trade mark application to protect the celebrity's likeness will depend on a number of factors, including the fame of the individual, how quickly the applicant seeks to register the likeness, and, the nature of the goods or services over which registration is sought.

The more famous the celebrity, the more distinctive the mark is likely to be. However, the quicker others will exploit the celebrity's likeness themselves and thus render the image less likely to represent a "badge of origin" of the celebrity. If the celebrity has already become very famous and others have already been marketing goods bearing the his image, it will be difficult for the applicant to argue that this image indicates a badge of origin of him. For a trade mark to succeed in being registered it must be capable of being distinguishing from other marks already in the public domain, and must be distinctive as a matter of fact of the applicant's goods.

In light of the above, practical advice for celebrities seeking to register their likeness as a trade mark include:

– make the application as early as possible;
– build up and maintain the link between the trade mark and it's owner – educate the public as to the trade mark source, for example, clearly identify the trade mark owner on the product bearing the trade mark; and
– take steps to ensure that official merchandise is recognised by the public as being official.

Of course, aside from the issue of registered trade marks, careful branding of any products authorised by a celebrity will always be important, although merely labelling merchandise as "official" or "authorised" is probably of limited use. This certainly appears to be the case following a recent court case brought by the Spice Girls, in which they failed to convince the court that the failure by the publishers of a sticker collection to make it clear that the collection was not authorised by the Spice Girls, would necessarily mislead consumers into believing it was authorised.
It is clear from the Diana, Princess of Wales and Elvis Presley cases and others that celebrities (and their estates) will continue to find it difficult to exploit their fame by utilising the laws of intellectual property. This is particularly so when they seek to lay claim to a monopoly on their name or likeness.