Protecting your celebrity when image rights are insufficient

Taylor Swift, Katy Perry and Rihanna are leading the charge in finding innovative ways to use intellectual property, and trademark rights in particular, to compensate for the lack of an image right within the United Kingdom and Europe

Taylor Swift’s recent steps to bolster trademark protection in the United States around the release of her most recent album, 1989, raised eyebrows around the world, bringing the issue of personality rights and trademark protection for musicians to the top of the news agenda once again.

Swift’s album was the bestselling US album of 2014 and her approach to intellectual property may have been a significant factor in achieving this. Swift rescinded permission for her music to appear on streaming sites, such as Spotify, in an attempt to increase sales of the album. This appears to have paid off, with sales of over 4 million copies and 1.28 million copies in the first week alone.

Too short to file?

The filing of trademarks consisting of lyrics from the album, such as “sick beat” and “Party like it’s 1989”, was doubtless aimed at protecting the merchandising market, with the applications covering a broad range of goods – particularly ahead of Swift’s 1989 tour, which began in Japan this spring.

While song lyrics are generally protected by copyright, it is unlikely that copyright protection would subsist in very short elements (eg, ‘sick beat’) extracted from the song. For infringement to occur in the United Kingdom, a substantial part of the work would have had to have been copied. Thus, the case might be different for a more substantial lyric, such as “The answer my friend is blowing in the wind” (Bob Dylan, “Blowin’ in the Wind”).

There is an argument that such lyrics amount to a substantial part of the original work and thus copying them constitutes copyright infringement. However, it is extremely difficult to establish just where the line falls. Relying on copyright alone to protect lyrics is risky when you are considering smaller extracts and song titles used on merchandising. However, the recent decision of the European Court of Justice in Meltwater (Public Relations Consultants Association Ltd v The Newspaper Licensing Agency Limited ) concerned the application of copyright law to news headlines, which may be considered akin to song lyrics or titles. Significantly, the case recognised the right of a relatively short extract from a larger work to protection.

Perhaps this is a sign of things to come. The ability of young artists such as Swift to influence what people wear and how they behave has increased; as has the opportunity for exposure through a myriad of media channels, such as Facebook, Twitter and Instagram.

The trademark applications should give Swift an additional tool with which to combat those seeking to sell unauthorised merchandise and trade off her image.

Singer Katy Perry has taken the issue one step further by attempting to register the terms LEFT SHARK, RIGHT SHARK, DRUNK SHARK and BASKING SHARK in the United States. This follows her recent performance at the Super Bowl, where the unexpected star of the show was a seemingly drunk dancer dressed as a shark, now known as ‘left shark’.

Game-changing cases

Given the recent UK High Court case between Rihanna and Topshop (Fenty v Arcadia Group Brands Ltd (t/a Topshop) [2002] FSR 60), it is unsurprising that artists are seeking greater protection for themselves and their images. Rihanna succeeded in preventing the sale of t-shirts depicting her image as it was held that Topshop’s use of this amounted to passing off.

The crossover between image rights and passing off was previously recognised in the landmark case of Irvine v Talksport ([2002] 1 WLR 2355).

Key to the Rihanna case was the recognition that Rihanna had a business enterprise outside of the music industry which had entered into contracts with entities such as Topshop, River Island and Gucci for clothing, perfume and other fashion accessories. As a consequence of this, the public would be misled into believing that the products being sold by Topshop were officially endorsed merchandise. It is perhaps this key point that differentiates passing off from image rights, which are not specifically recognised in the United Kingdom.

The Rihanna case needs to be weighed up against previous rulings, such as the Elvis Presley trademark case ([1999] RPC 567 (Court of Appeal)), in which applications to register a number of marks incorporating the name of Elvis Presley were rejected following opposition by an enterprise that specialised in the sale of merchandise bearing the name and image of the iconic star. The UK Court of Appeal ruled that the name had ceased to be distinctive and no longer served the essential function of a trademark – that is, an indication of the origin of goods. The decision included the comment that there should be no “assumption that only a celebrity or his successors may ever market his own character”.

Other avenues

So while Rihanna may have succeeded, other artists may still find it difficult to control the use of their image on merchandise. More creative use of the trademark system may provide a solution, at least to a degree. However, relying on agreements and unregistered rights is not an entirely satisfactory way to exploit an image and protect the rights of those authorised to manufacture and sell official merchandise.

Traditionally, artists have registered their names and signatures as trademarks; Swift has gone on to cover lyrics. What other trademarks might be useful in a pop star’s bid to control his or her image and maximise income from merchandise?

Logos

The most obvious is the use of a distinctive logo. This was taken to the extreme by Prince, who once became the logo itself. While this seemed bizarre to most, it did provide a registrable mark capable of benefiting from a broad scope of protection.

Typeface

Other artists, such as AC/DC and Iron Maiden, have become synonymous with particular fonts. While protection for such fonts does not strictly fall within the domain of trademark law, they can benefit from copyright and/or registered design protection, and may now benefit from a broader scope of trademark protection following the recent decision of the General Court of the European Union in The Coca-Cola Company v OHIM ([T480-12]). Coca-Cola’s distinctive typeface was deemed to be sufficiently similar to create a link in the minds of consumers between a mark using a similar font, but non-similar words. This decision arguably opens up the way for those with a significant reputation to enjoy a broader scope of protection in their distinctive trademarks consisting of a stylised typeface.

Shape

An artist’s ability to broadcast to a huge worldwide audience allows for near-instant recognition of his or her product. Many artists produce perfume ranges and other toiletries where the bottle or packaging itself may be registrable as a trademark. Protecting the shape of a perfume bottle associated with the endorsement of a famous artist does not protect the artist’s image in itself, but protection of the bottle shape ensures that imitations can be more readily prevented or at least dealt with through enforcement.

It is not only the shape of the goods that can be protected in this manner. Other characteristics can also be considered for protection – as in the case of Christian Louboutin, who in 2012 succeeded in securing trademark protection in the United States for the signature red soles of his footwear range. Such registrations are generally achievable only where distinctive character has been acquired through use. However, few are better placed to achieve this in a short space of time than artists such as Swift and Perry, who already have huge global audiences.

Again, such protection does not give rise to an image right per se, but can constitute a useful strategy to take advantage of the fame and exposure of the fabulously famous to enhance IP protection for the products that they promote.

Registered designs

In Rihanna the photograph used to produce the offending articles was a copyrighted work, with the copyright being owned by a third party. However, what if Rihanna had registered designs for clothing depicting a number of her images? Being a true monopoly right, this may have been sufficient to prevent others from using similar images on clothing. There are clearly difficulties in trying to protect a variety of images and determining what might be considered not to create ‘a different overall impression’. However, Community designs and the ability to file low-cost multiple designs provide an inexpensive way to build up a variety of modes of protection over merchandise and increase the deterrent to those seeking to use a celebrity image to promote sales without authorisation.

The same can be said of the products and packaging used by artists and celebrities for their merchandise.

Conclusion

Swift has shown herself to be an adept businesswoman, using intellectual property to protect her interests and maximise her earning potential. There is scope, with careful forward planning and prioritisation of protectable intellectual property in the product design process, for other famous artists to create an IP portfolio to maximise their earnings and compensate for the lack of a specific image right within the United Kingdom and Europe.

The celebrity of a musician can be short lived and earning money from album sales is not enough for many. A comprehensive media strategy combined with a creative IP strategy can enable the stars of the internet era to create a lasting business empire.

Matt Sammon is a partner at Marks & Clerk  
[email protected]

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