Who owns a family's history? Revlon scraps with Borgheses

Who owns a family's history? That's the intriguing question that prompted the following guest post from Katfriend and regular guest blogger Miri Frankel:

In reading a New York Times article about the ongoing legal battle between Borghese Inc., the global cosmetics brand, and members of the Borghese family, I was stumped by a claim that is considered a key piece of the dispute: Who owns the right to the Borghese family history?

The Borghese family is a prestigious Italian family whose lineage can be traced back hundreds of years. Borghese ancestors include prominent noblemen and royals, a pope, and Napoleon Bonaparte’s sister. In the 1950s, Princess Marcella Borghese partnered with Revlon to launch a cosmetics company bearing her name. By 1976, Revlon owned the company outright, having purchased Princess Marcella’s remaining interest from her. Revlon, in turn, sold the company in 1992 to its current owners. Among the IP included in the acquisition by Revlon were

“the words and phrases BORGHESE, MARCELLA BORGHESE, PRINCESS MARCELLA BORGHESE, and all … variations thereof, whether used as a personal name, trade name or trademark,”

as well as an exclusive licence to the Borghese family history and crest.

Princess Marcella’s heirs have since started their own companies in the beauty, cosmetics and pet products categories. In all but one instance (a pet line proposed to be called “Prince Lorenzo Borghese’s La Dolce Vita”) their brands have generally not used the Borghese name. [Merpel notes that Lorenzo Borghese is better known for his star turns in the U.S. television show The Bachelor and the UK television show Big Brother]. They have, however, made reference to their illustrious heritage – including their connection to Princess Marcella – in marketing materials and sales pitches. It is the use of the family name and history in sales and marketing efforts that caused Borghese Inc. to file a lawsuit against the Borghese clan. There are other claims at issue in the dispute, but the one I’d like to focus on is the claim regarding the use of the family history.

The parties were unable to reach a settlement, and the lawsuit is set to go to trial later this summer. The Borgheses acknowledge that the family name as a trade mark has been sold to the successors-in-interest to the company founded by Princess Marcella, but they dispute that the sale also included the rights to the family history. It struck me as odd that the initial agreement between Princess Marcella Borghese and Revlon purported to grant an exclusive licence to Revlon for the family history. It seems to me that a family history, to the extent there are even any underlying IP rights, would belong jointly to all members of the family. An individual family member should not be able to transfer the rights to a third party without the permission of other family members.

What IP rights could even exist in the family history? A version committed to paper or other medium can be protected by copyright. Could a family history be considered a trade mark, as well? Could it be protected in another manner?

Borghese Inc. could sustain a passing off claim if the Borghese family were intentionally deceiving consumers as to the existence of a connection between themselves and Borghese Inc. And if the Borgheses appended statements about their family lineage to their brands’ trade marks, they would likely discover, as did Giuseppe Cipriani and Joseph Abboud, that they are thus infringers of the trade mark rights of the party to which they had previously sold the rights, in this case Borghese Inc. However, merely explaining to consumers that, as brand owners and ambassadors, they have an expertise in Italian design because of their lineage doesn’t seem to rise to a level sufficient to cause consumer confusion, especially if they disclaim an association with Boghese Inc. What do readers think?