Trademark Issues Revolving Around Celebrities
The modern world’s personal brands and influencers have made celebrities more protective of their own brands and everything associated with them. That is, celebrities have realized they can capitalize on their image and reputation through trademark protection to make a profit while exposing their image to the world. Celebrities can also use trademark protection to prevent others from exploiting their goodwill and reputation or gaining cheap fame.
When Celebrities’ Names Act as Well-Known Trademarks
It is not an exaggeration to say that celebrities act as well-known brands, attracting more consumers to purchase any products or services bound up with them. This explains why almost every company hires celebrities as brand ambassadors to increase sales and market share. These businesses are aware of celebrities’ power to influence consumers’ purchasing decisions, as consumers are more likely to recall and recognize brands associated with their idols.
Several celebrities, including Justin Bieber, Dua Lipa, Britney Spears, Celine Dion, Brad Pitt, Lady Gaga, Beyonce, Taylor Swift, and Kim Kardashian, to name a few, have registered their names as trademarks at least in the U.S. market.[1] Intriguingly, these celebrities claim trademark rights over their names not only for purposes associated with their main businesses, namely entertainment services, but also for items such as clothing, footwear, handbags, cosmetics, jewelry, souvenirs, and more.[2] This shows how intensely celebrities protect their names and brands, especially when many of them have gone into business by creating their own brands and selling a wide range of consumer goods.
Recently, the singer Kanye West changed his name to “Ye” from “Kanye.”[3] However, a quick search of the United States Patent and Trademark Office (“USPTO”) revealed that Kanye West had already filed several trademark applications for his new name “Ye” for numerous merchandise goods and services, apart from entertainment services, in early October, to extend his trademark rights as much as possible.[4] Also, Emma Raducanu, the winner of the 2021 U.S. Open Tennis Championship, already filed trademark applications in the U.K. for her full name and even separate parts “Emma” and “Raducanu” in September to secure her legitimate rights while eliminating any infringement risks. These filings were initiated right after Emma Raducanu and her attorneys were aware of some trademark squatters filing applications for “Emma Raducanu” trademark in the UK with the aim to trade on Emma’s reputation.[5]
But trademark issues even go beyond celebrities’ names. In other words, trademark protection has become a concern for celebrities even in other aspects of their personal lives, as discussed below.
When Celebrities Trademark Everything Except Their Names
It’s understandable that celebrities would want to control as many aspects of their personal lives as possible in the marketplace, even bizarre things. These luminaries seek trademark protection for everything related to them, including their children’s names, catchphrases, pets, song lyrics, and even their poses, to name a few.
Taylor Swift is an artist who is widely known for her aggressive moves in safeguarding her creative rights. She sought trademark protection not only for her album names but also song lyrics such as “look what you made me do,” “nice to meet you. where you been?” “this sick beat,” “cause we never go out of style,” and “party like it’s 1989.”[6] She tried to get all registered simply because she understands how bad it will be if any of her things are trademarked and under control of other people. This is due to a common trend that many trademark squatters and frauds always seize any legal loopholes to apply for celebrities’ marks with the ultimate goals to trade on those celebrities’ reputation. Aside from regular word marks as mentioned, Usain Bolt, the world’s greatest sprinter ever, has a trademark for a silhouette of himself in his “lightning bolt” pose.[7] This further shows that celebrities’ desire for exclusive trademark rights appears to be limitless.
Recent applications for the term “Borahae” as a trademark in Korea were filed by BTS in June 2021.[8] Borahae is a term coined by BTS member V (singer) during a fan meeting in 2016 which means, “I will trust and love you for a long time.”[9] Since then, “Borahae” has become a popular way for BTS and ARMY (BTS’ largest fandom) to show their love and support for one another. This move by BTS may show that anything related to celebrities should be protected to prevent wrongdoers from owning or even extorting them down the line.
Of course, consumers may be more familiar with celebrities’ trademarks or products bearing those marks than ordinary ones. This fact, however, does not mean that celebrities have any privilege in registering and using trademarks. More specifically, even though celebrities’ reputation undoubtedly reaches consumers much more than other people, they must still abide by trademark laws.
As a typical example, Taylor Swift was sued by the vintage apparel brand Lucky 13 over her “Lucky 13”-marked merchandise in 2014.[10] Swift’s lucky number is 13 and her Twitter handle is @taylorswift13.[11] Taylor Swift was accused of infringement and confusion by Lucky 13 after selling t-shirts with four-leaf clovers and the words “Lucky 13.”[12] Even though the case was eventually settled, one year later the fact remains that trademarks filed by celebrities, regardless of such celebrities’ reputation, would be refused or worse, sued if they infringed on third-party legitimate trademark rights.[13]
Who Wins When Both Sides Claim to be Celebrities?
A celebrity trademark issue can also arise if both sides claim to be celebrities. This is especially true when both sides of a trademark dispute have their own reputation and consumer target. As celebrities’ names may act as a brand, their names may serve as source indicators, which creates a knotty question regarding testing the likelihood of confusion among consumers in this context.
Consider a trademark dispute in the U.S. involving the name “Kylie” between Kylie Jenner who is an American media personality, socialite, model, and businesswoman and Kylie Ann Minogue who is a famous Australian pop star and actress. Sharing the same given name “Kylie,” these two celebrities were involved in a trademark dispute in the USPTO. In particular, Kylie Jenner filed an intent-to-use application for the mark KYLIE with the USPTO in April 2015.[14] On February 22, 2016, Kylie Ann Minogue’s KDB Pty Ltd. lodged an opposition against Jenner’s KYLIE mark, reasoning that the registration of the Jenner’s mark, if granted, will trigger a risk of consumer confusion and even tarnish Minogue’s trademark rights over the term “KYLIE”.[15] To reinforce her arguments, Minogue even supplemented a slew of evidence demonstrating her well-known standing.[16]
While the final settlement of the “Kylie” dispute has not been reached, as both parties might have agreed to enter into a peaceful trademark co-existence agreement, there are so many questions arising from this case, including how the trademark office or the court will take celebrities’ reputation into account when considering if their names may act as source identifiers, and how to ensure principles of protecting individual names as trademarks in the U.S when given names are somewhat limited, while there may be more and more soon-to-be stars who may want to use repeated names like “Kylie.”
While trademarks owned by celebrities and those owned by other applicants are equally treated and examined by the authorities like the USPTO, there are things that make trademark issues involving celebrities more noticeable to the public. Celebrities should take more cautious and prudent steps when trademarking anything to protect their image sustainably.
Footnotes
