Here at IP Whiteboard, we learnt the power of a celebrity name when one of our posts got roughly 20 times more hits than we expected (and crashed the site in the process). Why? While we like to think the combination of on-trend pop culture knowledge and cutting edge legal analysis really drew readers in, ultimately it was the celebrity name attached to the article (5SOS!) that boosted the numbers.
It came to light last week that Kardashian juniors Kendall and Kylie have (through corporate vehicles) filed applications in the US to register a number of trade marks, including their first names and the phrase “Kendall and Kylie” (in joint names) as trade marks. Kylie’s application is for “Kylie Jenner” in relation to a line of tote bags, and “Kylie” in relation to “entertainment in the nature of providing information by means of a global computer network in the fields of entertainment, fashion and pop culture” (broad, we know). Not to be outdone, Kendall is apparently keen to protect her name for use regarding “hair accessories, clothing, beauty products and more”.
Shakespeare they ain’t, but the Kardashians have got us thinking – what, or more specifically how much, is in a name? And how far should you be able to go to monetise it?
Celebrity names are powerful and valuable. A celebrity endorsement can significantly spike product sales, and merchandise branded with images or names of celebrities takes something like a fragrance from a consumable to a collector’s item. Even the names of celebrities who have passed away are valuable to their estate.
The top 5 celebrities in the 2014 Forbes Celebrity 100 (based on fame and earnings) were:
- Dr Dre
- Oprah Winfrey
- Ellen DeGeneres
So how much is a celebrity endorsement worth? Quite a lot – Beyonce apparently has a US$50 million deal with Pepsi, Usain Bolt earns $19 million annually from endorsements and sponsorships and Brad Pitt earned $6.7 million to become the face of Chanel No.5. It’s getting Klearer and Klearer why Kendall and Kylie would want to protect their money-making monikers.
Publicity rights in the US
In general terms, publicity or personality rights are the right of an individual (especially a public figure) to control the unauthorized commercial exploitation of the individual’s name, image or likeness. Publicity rights are recognised in a number of states in the United States, either as by reason of statute or common law or both. However, the First Amendment in some circumstances will prevent publicity rights claims where the celebrity’s name, likeness or persona has been used in an expressive work (such as a book or movie). Interestingly, Kendall and Kylie are on the verge of releasing a video game containing both of their likenesses – we wonder if this will affect their applications.
What protection is available in Australia?
While Australia does not recognise “personality rights”, celebrities may achieve protection of their brand through other means.
Trade mark registrations
It is quite common for celebrities to register their names or other means of identification as trade marks for many and varied goods and services. Have a look at AU TM 777586 by way of example!
However, simply securing a trade mark registration won’t permit a celebrity to restrain every use of the same or a similar name in relation to the relevant goods or services. For example, a registered trade mark is not infringed by a person who uses his or her own name in relation to goods or services in good faith. There may also be a question as to whether the use of a celebrity’s name in relation to particular goods or services is “use as a trade mark”.
The tort of passing off
The tort of passing off occurs where there has been a misrepresentation. The claimant first needs to be able to establish a brand or reputation, and that there is goodwill in that brand or reputation (given the profile of the Kardashians, we think Kendall and Kylie would comfortably satisfy this test). Next, the claimant needs to prove that there has been a misrepresentation (the “passing off”) which has, or is likely to, lead the public to associate particular goods or services with the claimant. Finally, there needs to have been damage (actual or threatened) to the claimant’s goodwill as a result of that “passing off”. Similarly, a claimant may argue that a misrepresentation of association amounts to misleading and deceptive conduct in breach of the Australian Consumer Law (which does not require proof of damage).
A good example of this played out in the media in 2013, when Rihanna got very upset about Topshop using her image without approval on a t-shirt in 2013. Rihanna successfully sued the fashion retailer for the tort of passing off, and was awarded damages plus legal costs (yet to be assessed). The Court of Appeal of England and Wales subsequently dismissed an appeal against the decision.
Koming full circle
We’re unsure whether Kendall and Kylie will be successful in this instance.
Kylie’s application in particular is very broad – given “Kylie” is not an uncommon name, granting a trade mark registration for it for the purpose of “entertainment in the nature of providing information” could arguably result in a lot of confusion with other celebrities who share the same name. Some commentators have suggested that this confusion could be overcome by the use of different fonts to indicate association, for example:
Click here to view the image
Kylie Jenner’s trademark application
Click here to view the image
Kylie Minogue’s album artwork, “Fever” 2007
While this argument might work in relation to branding associated with any tote bags, we’re unsure how it might apply in relation to “entertainment in the nature of providing information”.
Ultimately, the decision is in the hands of the USPTO- whether the Kardashians are successful, or whether this is simply more publicity for the family who do it better than anyone else, only time will tell.