The IP of Trademarks for Persons | The IP of Everything Podcast - Episode 32

Aaron:

Welcome everyone to the IP of Everything podcast, where we seek out and discuss the intellectual property issues contained in everything around us, from the obvious to the obscure. This month's episode is the IP of Trademarks for Persons. In this episode, we will be discussing how someone may obtain trademark protection for their individual aspects. It should be very interesting episode. Thank you for joining us.

Aaron:

Welcome to the IP of Everything podcast. I'm Aaron Johnson, and with me as always is my co-host, Jennifer Van Kirk. Both of us are intellectual property attorneys and partners at the law firm of Womble Bond Dickinson. 

Hi, Jennifer.

Jennifer:

Hey Aaron, happy to be here. This should be an interesting episode.

Aaron:

Definitely. And as is our podcast tradition, we usually start off these episodes by asking a personal connection to the topic. Because for this episode we'll be talking about obtaining trademark protection for individual aspects of a person or yourself, Jennifer, do you have any connection, any personal trademarks?

Jennifer:

I don't and I was… I've been kind of noodling this over. Like, if I were to try to trademark some aspect of myself, what would it be? Would it be some sort of funny slogan like, you know, The Trademark Geek or something like “Mother Knows Best”, which is like an ongoing joke in my household. My kids are always like, “You told me that would happen”, I'm like, “Well, mother knows best”, but of course a lot of people already use that. So, I'm not sure. I don't know that I have one yet, but those may be a couple of contenders. How about you?

Aaron:

Well, you know, I would agree. I don't think I really have one that stands out. As we'll discuss in this episode, this is something that really applies to celebrities and others that may have well-known brands. And so, for common folk like me, it might not be as applicable. But because my name, Aaron Johnson, is so common, it's definitely come across a few times when people have mistaken me for somebody else. 

One time an Aaron Johnson won a contest I'd entered, but it was a different Aaron Johnson. This was when I was a kid. It was very disappointing for seven-year-old me. 

Jennifer:

Yeah.

Aaron:

And so, I can see how wanting to protect yourself could be part of it, and because we're also talking about non-traditional trademark protection here, something that always popped into my mind is that the local coffee shop near me doesn't know my name, but they do know I apparently I wear flip-flops whenever I come in there because it's early in the morning (I'm not quite ready yet). So they know me as “Mocha and Flip-Flops”. That's just kind of, you know, they refer to me as that. It's a non-traditional aspect of me, but I guess it's identifiable enough that they you know, it could be protectable pretend, perhaps, or you know, maybe look at the filing something for that.

Jennifer:

I like that. See, mine would be “Green Tea and Birkenstocks”, but I think but then you'd have somebody else's trademark. It would be very complicated. But I feel your pain because my maiden name was Jennifer Anderson, and there were so many Jennifer Andersons. In fact, in my law school class, there were two of us, two Jennifer Andersons, so the very first day of law school, I got called on. We both got called on in every single class because the professors thought it was so funny. It was traumatizing, but… but we live to tell the tale. But I do like that - “Mocha and Flip-Flops”.

Aaron:

Sure. It actually also reminds me, I don't know if you're familiar with the… I think it's a famous (maybe not so famous), ESPN commercial involving people with the name Michael Jordan who are not actually Michael Jordan. The gist of it is they show up like at rental car counters, they show up at restaurant reservations, and the company is always super pumped. They're ready for Michael Jordan to come in, and then some old dude walks in, and there's that's the whole the whole episode, a whole advertisement, is their looks of disappointment as they realize who the actual Michael Jordan is. 

Jennifer:

That's pretty funny. Yeah.

Aaron:

So maybe this is more common than we think.

So going back to the topic, you know, I think in this episode we're going to be touching on something of a new phenomenon that has been discussed in a number of articles in connection with a handful of celebrities, where they are filing trademark applications that claim trademark rights in certain aspects of their individual persona and their personal identity. Most recently, I think, most of the articles have been about Matthew McConaughey because he filed applications for a wide range of things, including video clips of himself and sound clips of him saying some of his more recognizable catchphrases, such as, “All right, all right, all right”. 

So, before we kind of cross the road into this cool new world of trademark applications for your personal identity, I think it's helpful if we go back and talk about what we might call kind of the standard protection for individuals, or what is usually used now. So, Jennifer, currently, how are the IP rights of individuals usually protected?

Jennifer:

So currently, the most common way to protect an individual's right in their likeness and other individual aspects is through the right of publicity. There's no federal law protecting the right of publicity, which makes it a state law concept. So, when you're trying to clear something for, say, a national campaign, you really have to look at the state law with the most restrictive rights, so it can be kind of tricky.

But in general, the right of publicity gives people the exclusive legal right to control and to profit from their name, image, likeness, voice, signature, and any recognizable aspects of their personal identity as used in advertising, endorsements, and merchandise. This is what prevents companies from using an individual's photograph or name or really anything about them that could be identifiable as them in a commercial without their approval.

And a classic case illustrating this is the White v. Samsung case. It's the robot Vanna White case, for those of you who've heard of it before. In that case, Samsung created a commercial that used a robot that had a blonde wig and a ball gown, and who was standing on a Wheel of Fortune type set, so it's pretty clearly a reference to Vanna White. 

The commercial did not use Vanna White's name or her photograph, but again, it was pretty clearly targeted at her based on the context. The Ninth Circuit held that this was an actionable violation of her right of publicity, recognizing that using clues to evoke a celebrity's identity still violates that right, even if you're not using their exact name or their exact photograph.

Aaron:

Right. And so, this famous case really illustrates that the right of publicity, as it currently exists, is really aimed at commercial use and that it can still be very broad. It's not restricted to a photograph, it's not restricted to a name, but really, like you mentioned, Jennifer, any aspect of somebody's personality or persona, even here, I guess a wig and a gown that are recognizable enough as the person.

Jennifer:

Yeah, I think there's even one case where there was a pitcher, he was shown from reverse, like from behind, so you couldn't see his face or anything, but his stance, I guess, was so unique to him that the court said that that was recognizable as identifying that particular player.

Aaron:

So this can be very broad, but this is separate from trademark law. And in addition to this law, this right of publicity, individuals also have frequently filed trademark applications for their names, correct?

Jennifer:

That's right. Yes. So, an individual, say author, will file a trademark registration for their name to protect different materials that they sell under their name. For example, if they, if they're a self-help author and then they have a line of products that are based on, you know, workbooks and planners and calendars and that type of thing. If it's sold under their name, then they'll obtain a trademark in their name, and this has been going on far longer than, you know, the right of publicity has even been in the news. Some of the very first trademark registrations involve individual names, since those were used, you know, even as a name of stores and other companies such as Walt Disney, Macy, and Ford. You know, those were all originally surnames.

Aaron:

Right. And I think we can all think of, I mean, dozens, if not hundreds, of company names that might be entirely or partially named after their founders. But, I think one of the important distinctions here as opposed to kind of what we'll get into further on in this podcast is that here those trademarks are really being used as the brand name for particular goods or services. 

You know, and so the Ford trademark at its core is for the sale of cars, trucks, some maybe some related products under the Ford brand. It's not really about protecting Henry Ford itself. At this point, its connection to Henry Ford, the individual. It’s, you know, more about company lore and history than any kind of actual trademark rights or attempts to protect things that Henry Ford or his descendants might find valuable.

Jennifer:

That's right, and there have been issues that arise when an individual names their company after themselves and then that company gains trademark rights in the individual's name for certain goods or services and then the individual sells the company because they sell with the company the rights to use their name. 

This occurred recently in connection with Jack Nicholas, the famous golfer turned golf course designer. He created a company, Nicholas Company, to handle his golf course design business. Then that company owned a number of rights in the Nicholas name and connection with golf services. He sold the company to a group of outside investors who then claimed all rights in the Jack Nicholas name for those services. When Jack Nicholas, the individual, when he tried to offer his own services for a different company, a dispute arose whether he could offer those services under his own name.

Aaron:

Right. And so, this is again, you know, he's filed a trademark for his name, but as you mentioned, this is really for the business, right? This is not about protecting him. It's about protecting his golf course design business, and then of course disputes kind of arise when he sells all the rights in that name because the name really wasn't protecting him, it was protecting his business. Then there's also I think we've heard a lot in the media about celebrities filing trademark applications for the names of their children, particularly if their children have unique or very recognizable names. 

I think a few years ago Jay-Z and Beyonce were all in the news because they filed, you know, many, many classes in the trademark application trying to protect Blue Ivy and other similar names for products. But as you mentioned, Jennifer, using those names as trademarks and filing for protection for those trademarks is not really new or out of the ordinary. While it may be unusual to file an application for a young kid's name or someone who's not actively using their name for their business, it's still based on standard trademark laws. Using a name for goods. 

But so Jennifer, what issues arise then if we kind of go beyond that, if we try to use something other than a name as a trademark? Could individuals file trademark applications for other parts of their personality?

Jennifer:

Well, the answer is sometimes that works, but not in the way that people imagine. So, someone can't file a trademark application for, you know, a human being as a whole, like a product. So, instead they would need to file an application for part of their personal identity that they consider a source identifier. It's something that tells consumers that this comes from or is approved by this particular person.

Aaron:

I think that's an important distinction that trademark law is about consumer confusion - who or what is a source of the goods or services. It's not a general nobody can use this or this is “all me” type of law.

Jennifer:

That's right. Trademark law only protects words, slogans, designs, and more relevant today, you know, non-traditional marks like you mentioned, like sound marks, motion marks, but it only protects those things when they function as a brand signal and as again, an identifier of origin, or source identifier is another way to say it.

Aaron:

Right, because for trademark law, particularly in the United States, while you can file for a trademark application, you're not going to get that registration without showing use of the mark in commerce. Particularly, if the trademark is non-traditional, evidence that that trademark functions as a trademark, in other words, that consumers recognize it as identifying a source.

So, if a celebrity files a trademark application for their child's name in connection with a wide variety of goods, they're not actually going to get that registration for that name unless they are using the name as a brand for those goods. And so, this requirement that the trademark be in use on the goods or services in the application would by itself make trademark protection out of the reach for most individuals.

Jennifer:

You know, that's right. While a celebrity might have the resources to offer products or services for sale using their child's name, maybe as a way to try to, you know, protect that name. and maybe those goods might even have a market, but a normal person likely doesn't have, you know, the time or money for that kind of exercise.

Aaron:

Right, and as we were talking earlier, I would not be able to file an Aaron Johnson application or, you were saying, a Jennifer Anderson application to stop others. That's just, that's not, conceivably, that's nothing ordinary people can do. 

All right, well thanks Jennifer. I think this is now a good background for where things are now generally. The right of publicity protects the commercial use of someone's photograph, name, or likeness without their permission, and then trademark law can also be used to protect any indicator of source for products or services, which generally usually is a name or other word. 

So, what is what Matthew McConaughey doing different? How does this go beyond what normal IP protection is?

Jennifer:

While what we've discussed has been generally effective in the past, we are in a new cultural moment. AI tools can not only clone voices, but they can make an absolutely realistic-looking video of people. They can generate performances by celebrities, and they can easily mold and mix different properties together. That's pushing people who are worried about their personal brands and their reputations, you know, often celebrities, toward other methods of protection.

Aaron:

That's absolutely right. You know, I think trademark and publicity claims hit limits fast when we move from ads to expressive works. 

A famous example is the case of ETW Corp v. Gyra Publishing, which involved a painting of a famous Tiger Woods scene. In that case, Tiger Woods' licensing entity sued over art prints that were depicting Woods' master's victory. The Sixth Circuit held that this expressive artwork with significant creative elements was protected and was not a violation of Woods' rights because it was a creative work that was not using his rights or his likeness in a commercial sense. These claims, therefore, don't automatically win just because a celebrity is depicted. 

I think this becomes huge in the AI context. While the ETW Corp case involved a hand-painted painting, which by its nature can only be done in a limited time, we know that AI works can create hundreds, if not thousands of works much, much quicker. If someone uses an AI generated depiction in a way that looks like commentary, satire, or art, the analysis shifts. So, the current rights, the current trademark rights or rights of publicity don't give I guess enough protection right now to celebrities who are worried about this content.

Jennifer:

That's right. So, I think that these tools that people are looking at, putting in place like what Matthew McConaughey seems to be doing here, you know. It's going to be most effective in a situation where there's a commercial aspect to it, there's some sort of commercial impersonation, either an endorsement, a product ad, that type of thing, and rather than stopping all internet use, you know, all fan use or that type of thing, things that are non-commercial.

Aaron:

Right, and now let's go back to the example we talked about earlier, Matthew McConaughey.

Jennifer:

Yeah, now this is a really interesting strategy. So McConaughey obtained US trademark registrations tied to his persona. So, it's video clips and audio clips, including a sound mark for his “all right, all right, all right”, which I wish I could say with that great draw, but you know what I'm talking about. And then some short videos like clips of him on a porch and seated in front of a Christmas tree.

Aaron:

And the stated goal, again, from these media articles is to create, what they call, the perimeter around it so that when his voice or likeness is used, it's because he approved it. So, I guess in the converse, so he can stop others from doing it when he doesn't approve. I think they feel this is important, especially in an AI world where it's very easy for anyone to simulate him or create video of a simulation of him.

Jennifer:

Yeah, and I think that's the strategy oftentimes, you know, we'll take with clients as well is you just want to put as many tools in the toolbox as you have, or that you can. You don't know with each infringement situation what's going to work best. So, you want to have as many different options that you can pull out of that toolbox as possible. That seems to be what he's doing here is just to provide as many different options as possible so if he does have somebody who's trying to use his name or his voice in some sort of AI generated content, he can point to this as a way to stop them. 

And there you know several different ways that this applies. The first are sound marks which can give a celebrity a clearer argument that a specific vocal performance functions like a branding, like a jingle, but it's a catchphrase in a particular delivery. Again, like “all right, all right, all right”. Motion marks, which are short distinctive clips, can potentially be framed as source identifiers for entertainment services or licensed content. Like I always like to think of you know Steamboat Willie at the beginning of the Disney films, right? That little clip is a trademark, so if a celebrity is using a clip of themselves in a similar kind of way, then that could be a trademark, I think, as well. And then, you know, most importantly, getting these trademarks to provide a federal enforcement pathway that can be simpler than trying to, you know, figure out what state's right of publicity law might apply and that type of thing.

Aaron:

Yeah, that's a great point. You know, I think that like you mentioned, this just gives another tool to use. Although we should also be careful that we can't assume this is a silver bullet and we'll stop any sort of AI production that involves these, either slogans or movements. 

Trademark litigation would still require proving a likelihood of confusion and the other statutory elements, and plus, there are plenty of defenses as well: nominative fair use, First Amendment concerns, and the general limit that trademark doesn't stop all depictions, only use as a source identifier. 

And so, this this new approach by McConaughey, and I guess probably his legal counsel, is creative, but it's also, I think, to some extent a test case strategy - seeing how for how far courts will extend trademark concepts to AI and AI persona misuse. This is something where, given that McConaughey has a lot of resources, maybe it is good that he is testing this out because I think we've all run across elements in the media that might be faking somebody's persona versus AI or fake speech, where individuals might not have the resources to protect, but here he's really kind of pushing the boundaries of trademark law to see whether it can stop things that the right of publicity or standard trademarks might not be able to protect.

Jennifer:

Yeah, that's right. It's not happening in a vacuum. You know, reporting also points to broader celebrity concern about AI misuse, including public warnings from other actors about unauthorized like misuse. And then there's, you know, another thing too is the fact that I imagine that well, I don't know for sure, but I would imagine another tact that they're taking here is to obtain copyright registrations for those clips as well and for other clips of his. Because that's one thing that I'm seeing a good amount with clients, is where you have AI generated, you know, basically slop, but it pulls things from everywhere. So, we had a client's CEO's image get pulled off their website and plunked into a video about some completely random topic. It didn't have anything to do with them or with him, and I think he was identified as a woman so it like was clearly completely and truly slop. But because the client owned the copyright in the photo that was used they're able to get it taken down, so again it's just a matter of having a lot of different tools in the tool kit.

Aaron:

And so, Jennifer, what do you think are some examples, I guess, of AI where maybe Matthew McConaughey might want to use some of these? You know, because I think as we as you mentioned in the Vanna White case, clearly the right of publicity could be used for commercials. But you know, there might be other aspects where somebody creates an AI video, like you said, that might not even be related to him, but maybe using some of these I guess, you know, these slogans or these movements that you might want to stop, like you mentioned with the CEO.

Jennifer:

Yeah, I could see people like this coming up a lot, maybe with social media? Especially with maybe smaller companies, maybe not as sophisticated, put together, you know, it's 'cause it's so easy now, right? To pull clips and to put, get something together and then post it. So, you know, I could see that happening in a good amount on social media. You know, we see a lot of clients who get in trouble with social media, either because they make something themselves or their ad agency makes something and people just don't look at it closely enough to realize that it's, you know, they use somebody else's meme and then changed it, or what have you. So, I could see, you know, that being a situation where this, or that being a context, where this comes up a lot.

Aaron:

Absolutely. 

Well, you know, Jennifer, I think the key aspect is what you mentioned before, is that there's lots of different tools, and depending on how the IP is used, some of these tools may be more valuable than others, and so, for comprehensive protection, it'll be best to have all these tools at your disposal.  

This has been a very interesting conversation and based on this, if somebody comes into your office, somebody calls you up and says they want to protect their persona, they're concerned about somebody using something about their likeness, what would you say to them?

Jennifer:

Yeah, I think some things that they would consider might be things like what field are they in? So, what products and services are they using their persona with? You know, how they're using their persona? Do they, for example, use their face on any of their products or their face in their advertising? Because maybe if so, there's a specific image that's used, you know, the most that they want to file a trademark application for, as well as getting that copyright application that we talked about.

And then too is if there's, you know, if there's a company slogan or jingle or something, maybe you get a recording of them saying it, especially if that's something that happens in advertising. You know, that kind of thing. I think it really comes down to how they're using it and how they think people might try to misuse their identity.

Aaron:

Right. And then I guess also just the, I guess what they're concerned about, and if there is even a, you know, if it's even worthwhile to jump through these hoops and to have that protected.

Jennifer:

That's right, I think it's a pretty small universe of people who probably really have to worry about these issues, but a larger universe of people who do use their names as traditional trademarks and who may want a trademark registration.

Aaron:

Great, that sounds like very helpful advice. Well, thank you everybody for joining us on this episode of the IP of Everything. Please join us next time for next month's episode, which will be the IP of Furniture.