Image rights / trade mark rights: Michael Jackson’s family threaten trade mark infringement proceedings against counterfeiters
Thursday August 6th 2009, by Piers Strickland
According to the Associated Press and as reported by the IPKat, the estate of Michael Jackson is planning to tackle those who are selling merchandise which is not authorised by Jackson’s estate (presumably by way of threatening trade mark infringement proceedings in the US and elsewhere).
In the UK, the main way in which a famous individual can control merchandise is to attempt to register their name and/or likeness as a registered trade mark.
However, there are a few hurdles which lie in the way of such trade mark applicants. First, the trade mark application in question must be able to designate trade origin. Some English judges have been sceptical whether customers really care whether merchandise (such as a t-shirt with Michael Jackson’s photograph on it) is authorised by the celebrity or not. As such, there is doubt as to whether such trade marks are acting to “designate trade origin”. This was one of the objections when the estate of Elvis Presley tried to register various ELVIS trade marks in the UK: Elvis Presley Enterprises Inc. v Sid Shaw Elvisly Yours [1999] RPC 567.
Secondly, some celebrities have had trouble convincing the relevant trade mark registries that their names are distinctive enough to merit trade mark protection. The band Linkin Park had trouble in this respect before the trade mark registry.
Alex Ferguson also had trouble registering his name as a trade mark in respect of goods which were mere “image carriers”. Again questions of distinctiveness, in terms of trade mark law, were at issue. Ferguson’s legal team made an intriguing argument that such a rejection amounted to a breach of Ferguson’s human rights, i.e. he had a human right to register his name as a trade mark. Unfortunately, in terms of providing clarity for trade mark law, this argument never made it to the European Court of Justice for due consideration.
CONCLUSION: Although trade mark registrations may be hard to obtain in certain respects for celebrities, that is not to say it is not worth trying. If celebrities wish to try and exploit and control merchandising, and to prevent unauthorised merchandising (i.e. by way of threatening trade mark infringement proceedings) then obtaining registered trade mark rights of some description is likely to be very important.
The trick is making the right trade mark applications and at the right time. The ELVIS case showed that if a celebrity or their estate delays, then the chance of the relevant trade mark being non-distinctive through dilution may increase. This may thwart crucial future trade mark applications.
