The Birthing of Celebrity Brands: Lin-Tastic!
(as published in Inside Counsel)
Celebrities are a brand unto themselves. For years, performers from Frank Sinatra to Adele have trademarked their stage names and personas. More recently, some of the more savvy celebrities—think Paris Hilton—have trademarked their expressions. And some of the savviest have taken the trademark trend even further by adding their children to their brand portfolio.
The Celebrity “Role” in Trademark Law – Some Background
Trademark law can play an important role in protecting a celebrity's name and the commercial value associated with it. Two forms of protection are available: that associated with trademark registration and that associated with the use of the trademark, also known as common law trademark rights.
Common law protection is more precarious, as it is directly dependent on the extent of the use of the celebrity's name. For example, a pop singer could easily claim rights relating to the sale of musical instruments, films or music-oriented events, but could have more difficulty claiming the passing-off of his/her trademark with respect to clothing, accessories, and fragrances.
On the other hand, trademark registration has a two-fold significance for celebrities. First, trademark registration is a signal to licensees that the celebrity is open to the authorized assignment or license of his/her personality for merchandising purposes. Second, the celebrity obtains a means of defending against the unauthorized use of his/her name.
Celebrity Offspring Trademarks
Madonna‘s daughter, Lourdes, exemplifies the potential of celebrity offspring. The young teenager is the face of a new line of clothing called Material Girl, a collaboration between Madonna (her celebrity moniker) and Lourdes (her youthful sense of style).
In January 2012, Twitter feeds and tabloids alike were buzzing with the birth of Blue Ivy Carter, the daughter of hip-hop sensations Jay-Z and Beyoncé. The business impact was less interesting until, less than three weeks later, the famous parents filed a trademark application for BLUE IVY CARTER. BGK Trademark Holdings, LLC, owned and operated by Beyoncé Knowles, submitted the application for a wide range of products and services, from cosmetics and clothing to live musical performances and motion picture films. However, they were not first. Beginning four days after birth, other BLUE IVY applications were filed. (In a questionable move showing celebrity favoritism by the Trademark Office, these initial applications were taken out of turn and were rejected.)
Based on the wide array of goods and services recited in the application, Blue Ivy Carter could soon be at the center of a vast licensing empire. While licensing is indisputably an important part of a celebrity’s business, Jay-Z and Beyoncé’s strategy was probably also defensive after two prior filings. The couple could be trying to stop others from profiting off the name. By covering so many categories, they make it more difficult for anyone else to use—or profit from—their daughter’s name, but U.S. law requires that they have an intent to use the mark for all of the goods listed.
The Evolution of “Star Power”
It is obvious that branding is increasingly common. Traditionally, a star’s branding power was limited to the services for which he/she was famous. For example, Frank Sinatra obtained trademark protection based on his first performance as a singer in 1935, registering the mark FRANK SINATRA for, “entertainment services, namely, presentation of musical performances rendered by a singer.”
Flash 50 years forward, and the playing field has dramatically evolved. As just one example, in the mid-1980s, when Michael Jordan was making his mark as one of the best basketball players of all time, Nike, Inc. was marketing a line of footwear dubbed AIR JORDANS. Capitalizing on the strength of his name and brand, MICHAEL JORDAN was registered just a few years later for everything from restaurants to fragrances.
The value proposition associated with celebrity trademarks is clear: the use of the celebrity's name captures the public's attention, sparks curiosity, and creates consumer interest in the products and services. Undoubtedly, this formula is of great commercial value to manufacturers and distributors. The celebrity also wins in this equation by adding significant income to the fees and royalties received for his/her artistic or athletic prowess.
Primarily, celebrities seek trademark protection to protect their financial stake in any and all marketing connected to their name. In fact, if the name is properly protected, it can be a valuable asset to the celebrity and his/her heirs alike.
Beyond the financial considerations involved in trademarking a name, there are other factors to consider that are more defensive in nature. Celebrities wielding trademark registrations have additional weapons to control how their name is used, and they can use trademark law to prevent the dilution of their mark and the image associated with the mark alike.
The belief that trademarks are like real estate has resulted in a rush to the Trademark Office to file as soon as someone is hot. However, trademarks are based on association and goodwill, so prospectors are essentially wasting their money by purposefully going after a mark with a clear celebrity association.
On a basketball hot streak, Harvard/Knick’s Jeremy Lin has been the basis of many filings from LINSANITY to LINNING. We can expect, however, that whenever Jeremy is ready to look to his brand, he will be . . . Lin Control.