When Trademarks Overlap With Other IP Rights: conference report 9

After another ample and delicious lunch, the assembled registrants reconvened for the final stretch of Day Two of INTA's European winter conference, the topic being "Trademarks and the Right of Publicity", moderated by Kenneth Wilton (Seyfarth Shaw JJP).

First up was Anne Lauber-Rönsberg (Technical University of Dresden), who gave a presentation on the development of publicity rights under US and German law with special reference to the towering personality of Marlene Dietrich.  Anne accounted for the legal evolution of the right, which appears to have been triggered as a response to the then-novel technology of photography. So far, some 19 US states have enacted statutes to protect the right of personality, while another 28 have recognised its protection under provisions of their general law. In Germany there is a general personality right, which makes no specific distinction between rights of privacy and rights of publicity.  In contrast, neither France nor Poland provide for a right of publicity even though they have substantial protection for rights of personality.

Anne then ran through a number of features relating to the right of publicity including heritability, alienability, duration, facility to license to others and whether they are enforceable in rem or in personam. In terms of the registration of celebrity images under trade mark law, trade marks don't protect an entire personality per se, but only in relation to such features as appear in the trade mark registration. Accordingly it could not be argued that Tiger Woods constituted a "walking, talking trade mark".  A further problem is that the attachment of an image of a celebrity to goods as a trade mark might be seen as been descriptive rather than indicating a connection in the course of trade -- depending on whether the use of celebrity images was customary in the sector concerned. Likewise, such use might be regarded as ornamental and therefore not as serving the function of a trade mark.

Leonardo da Vinci:
any residual rights ...?

Once a trade mark is secured, the right in it might be detached from its holder. Thus the celebrity concerned can assign or otherwise dispose of rights to his or her own persona. In Germany there is a continuing discussion as to whether celebrity trade marks should obey trade mark rules or (non-alienable) publicity rules. As for term of protection, a trade mark can extend for ever, but rights of personality normally expire between 10 and 100 years after a person's death. This raises questions as to whether historical persons are part of the public domain and thus open to use by all, or whether some residual personality rights might be able to prevent this.  In conclusion, Anne agreed with this Kat's contention that trade marks are not necessarily "intellectual" property; much the same can be said for the right of publicity too.

Mark Owen (Taylor Wessing LLP) then spoke on publicity rights in the United Kingdom -- and Guernsey.  The UK has no publicity right as such, he began. However, the passing-off action has been important in protecting the celebrity's commercial value. Mark reviewed the early character merchandising cases involving Kojak, Abba and the Wombles (left), as well as the recent Betty Boop litigation [noted on the IPKat here and here]. It now seems that the mere appearance of a celebrity's image on goods now appears to create the implication that he or she has endorsed them, according to the Rihanna case [noted by the IPKat here].

Guernsey has its own statutory registration scheme for protecting image rights [discussed by the IPKat here, here and here].  This right is "a quirk, rather than anything you have to worry about", said Mark, adding that it might come in handy if you want to show a real IP presence on Guernsey for tax purposes.

Tara Aaron (Aaron Sanders PLLC) then addressed the unique position of the United States, reviewing some fun cases involving Manuel Noriega [Katpost here] and Lindsay Lohan [Katpost here].  Tara outlined the areas of overlap between trade mark rights and publicity rights, as well as the differences. The fact that trade mark infringement requires some sort of confusion while infringement of publicity rights does not is a feature that gives the latter an advantage over the former, as well as the need for trade marks to be distinctive (lots of people are famous by name but not everyone is famous by face). Under s 1052 of the Lanham Act, trade marks for a person's name, portrait or signature can't be registered by third parties without their written consent -- a relevant consideration in the Blue Ivy case [Katpost by guest Kat Tara here].

Mario Soerensen Garcia (Soerensen Garcia Advogados Associados) took over, giving a beautifully Brazilian account of overlap. No Venn diagrams here: rather, "when the moon overlaps the sun, then you can see the stars". There then followed a marvellous soliloquy about stars and celebrities, which twinkle in the sky even though they have been dead for ages. There was lots of creativity in trade marks, Mario said, adding that a patent or trade mark certificate is much like a promissory note, where there exists a paper right that still has to be executed in the real world.  He treated the audience to a refreshingly irreverent world view, leaving his audience to decide which shade of black and white they were in their dull monochrome lives, unless they opted for Mario's colourful world. Occasionally pausing to breathe, Mario seasoned his oration with references to privacy, publicity, trade marks, Jacuzzi baths, fake wrestlers' names, and, well, that's it ...