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What’s in a Name – Planning Ahead

This post was prepared by David Kennedy, Ruth E. Fisher, and Chloe Clifford of Gibson Dunn.

When an entity starts thinking about using an individual’s name as a trademark or brand, there are many considerations that should enter into that decision.  This post reviews briefly some aspects of using a name as a trademark or brand, a topic covered in more depth in Fashion Law and Business:  Brands & Retailers, co-authored by Gibson Dunn partners Los F. Herzeca and Howard S. Hogan  (PLI 2013), but also notes that when considering use of an individual’s name as a trademark, it would be important to analyze and consider a different set of rights that may attach to the name and other characteristics of an individual, in particular those  rights commonly referred to as rights of publicity.

An individual’s name, if used simply to refer to that individual and her activities and not in connection with a product or service, cannot be trademarked.  See Franklin Mint Co. v. Manatt, Phelps & Phillips, LLP, 184 Cal. App. 4th 313 (2010) (Princess Diana’s name and likeness not a protectable trademark because used only to identify a person, not to identify goods or services); see also In re Lee Trevino Enterprises, Inc., 182 U.S.P.Q. 253 (1974).  In addition, there are limitations on trademarking a name that is simply a surname.  But an individual’s full name can be protected as a trademark if it acquires “secondary meaning” among the public.  Some of the most common examples of this can be found among consumer oriented companies, particularly in the fashion industry, which frequently use an individual’s name as a trademark or brand in connection with goods and services.  In other words, where the public comes to associate a name as affiliated with a particular source of goods or services, that name can be trademarked.

Especially where a line of goods is more valuable precisely because of the association with a protected mark (e.g., Ralph Lauren, or Tory Burch), a company producing or licensing the goods involved will take great pains to ensure that it owns that mark exclusively for use in conjunction with those products, even sometimes to the exclusion of the individual whose personal name is the basis for the mark.  See, e.g., Paul Frank Indus., Inc. v. Sunich, 502 F. Supp. 2d 1094 (C.D. Cal. 2007).  Because applicable U.S. federal law provides that a trademark application can be rejected if it relates to the name, portrait or signature of a specific living individual unless that person’s consent to the registration is obtained, in addition to meeting all other requirements to obtain a trademark (e.g., proof of secondary meaning) companies seeking to trademark a name will need to ensure that the applicable individual has granted a license and consented to the filing of a trademark registration for such name.

Licensing an individual’s name will create many issues and potential areas of negotiation for both the individual concerned as well as the company licensing that name.  For example, a company seeking to use an individual’s name as a trademark or brand should also obtain consent to file trademark applications under applicable state and foreign laws, to obtain maximum flexibility and protection for the trademark.  There are a number of difficult but frequently negotiated provisions in such circumstances.  The individual whose name is being licensed should think carefully about the loss of control over her name and whether to carve out some retained rights.  Commonly, for example, a licensor will retain the right to use the name for non-commercial or charitable purposes.  A licensor may also, less commonly, negotiate a right to continue to use the name (or a variation on the trademarked name) in circumstances unrelated to the licensed goods or services (e.g., where the license is for clothing, the licensor might retain the right to use the name, or a variation, on housewares).

But even sophisticated licensors and licensees may not adequately address the use of publicity rights – sometimes called “name and likeness rights” – which are different than the rights obtained under trademark law.  A licensee using an individual’s personal name as a trademark will generally seek to obtain name and likeness rights from that individual as well (frequently in an employment or consulting agreement).  A license of the rights of publicity would generally permit the holder of a trademarked name also to use the voice, signature, likeness or other  personal attributes of the individual whose personal name is the basis of the trademark.  But if it is important to secure rights of publicity (in addition to the right to file for and own a trademarked name) this is an area that requires careful thought and advance planning.  The primary protection for trademarks is found under federal law, although as noted above state law protection also exists.  In contrast, there are no federally created publicity rights, which instead are created (if they exist at all) under state law.

If parties are negotiating for the use of publicity rights, it is crucial to determine first what state’s law will apply to the determination of whether such rights exist.  This is not always an easy determination, as it may depend on factual issues such as the primary place of residence and whether such rights are held by the applicable individual (or have previously been conveyed or licensed in whole or in part).  If it is clear that a particular state’s laws will apply to the grant of rights, that will determine among other things the scope of the rights, whether the individual has a right to convey the publicity rights and how long (if at all) the right remains valid after the individual’s death.  If possible, an effective license will essentially attach the publicity rights to a particular state so that changes in circumstances do not unintentionally introduce uncertainty as to what state’s laws apply (e.g., if the subject individual changes her state of residence).  In certain states – notably California – it is also important to have protective structures in place to create clarity on what entity or individual will hold the rights on the death of the individual whose publicity rights are at issue.  If California law applies, unless the rights of publicity are effectively conveyed prior to death or under a valid testamentary instrument under California law, the rights will descend to specified statutory heirs (or in the absence of statutory heirs, terminate).  Although in this instance the heirs will take the rights under California law subject to any license granted by the individual whose name and likeness rights are at issue, any amendment or expansion of that license would potentially require negotiation with a number of heirs.

It is also important to note that although a licensee and licensor may agree on what state’s laws apply to a license (and therefore what rights of publicity exist and are licensed), another state’s laws may be deemed to apply where there is an alleged wrongful use of publicity rights.  Compare, e.g., Clark v. Celeb Publ’g, Inc., 530 F. Supp. 979 (S.D.N.Y. 1981) (New York court applies California law to right of publicity issues, because plaintiff is resident in California) and Negri v. Schering Corp., 333 F. Supp. 101 (S.D.N.Y. 1971) (New York court applies New York law to right of publicity claim, rather than Texas law, where plaintiff resides).  Licensors and licensees should therefore clarify which of them has the right to bring and defend actions related to licensed rights of publicity regardless of what law is alleged or found to apply in such an action.

If a company producing or licensing goods using a trademarked name derived from an individual also wants to have a license to use that individual’s publicity rights, it is important that the company and the applicable individual pay attention to the issues related to rights of publicity as well as to the scope of the applicable trademark license.  The individual holding such publicity rights and the licensee(s) should carefully consider how such publicity rights will be used, be sure there is a clear license in place to permit such uses, and include in that license protections to ensure that the publicity rights (and the license of such publicity rights) will be preserved and can be enforced, even in a change of circumstances and after the death of the individual concerned.

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