Celebrity : A Right to Publicity, A Solution to Counterfeiting

    Celebrity : A Right to Publicity, A Solution to Counterfeiting

    When publicity rights come into play, it is not unusual for celebrities to begin filing protection for their Trademark rights as a solution to counterfeiting. From their names, their children’s names, song lyrics, catchphrases and even the prayer posture, the main benefit clearly gives them exclusive rights towards such a mark and a formal upper hand in any legal dispute. Of course, celebrities would want to benefit from their branding exclusivity and protect it before anybody would monetize their popularity by ensuring that they have control over as many parts of their persona as possible in the marketplace.

    Just like Beyoncé, who was named by Forbesas the Most Powerful Woman in Entertainment, pays the utmost priority when it comes to personal branding and the importance of Intellectual Property rights. In 2012, she filed Trademark protection for her daughter’s name, “Blue Ivy Carter”, only a few weeks after the baby’s birth to prevent unrelated third parties who tried to benefit from her daughter’s name.

    But the obstacle wasn’t really stopped there. Beyonce’s application was then opposed by Veronica Morales, a wedding planner who acquired her business Trademark registration known as “Blue Ivy Events” on the same year Beyoncé filed for hers. Morales filed a “notice of opposition” with the Trademark Trial and Appeal Board (TTAB), opposing the registration for “Blue Ivy Carter” because of an alleged likelihood of confusion with her registered Blue Ivy mark for special events planning services.

    Trademark may be revoked if it is unutilized

    Morales also claimed that Beyoncé and Jay-Z did not intend to use the name “Blue Ivy Carter” in commerce, but rather sought Trademark protection to avoid others from doing so. Registered Trademarks that are not utilized for commercial will frown upon and be outlawed under U.S Trademark Law which aims to protect marks solely for bona fide commercial use.

    Morales’s assertion also includes that Beyonce committed fraud by seeking for Trademark she never intended to use by highlighted a 2013 interview that Jay-Z gave to Vanity Fair, titled “Jay Z Has the Room” in which Jay-Z reportedly discussed his reasons for attempting to Trademark his daughter’s name, saying they did it merely so no one else could. 

    Although the statement could be a damaging evidence against Beyoncé. U.S. legal procedure held this evidence to be invalid which was considered “hearsay within hearsay”. To ensure it is valid, Morales’s lawyer probably needed to take testimony from Jay-Z, which would have likely been difficult to obtain.

    While the Beyoncé application covers 14 classes of goods and services, including the same Classes 35 and 41 as the Opposer’s registration, Beyoncé’s trademark lawyer appears to have drafted the Class 35 and 41 services descriptions sufficiently narrow to not overlap the service descriptions in the BLUE IVY registration.

    Hence, Morales’s arguments were rejected by TTAB and condemned for including extraneous documents in her brief to the Board, which violates TTAB rules. The Board also found that Morales had shown “no evidence suggesting the services are related in any manner that would give rise to the mistaken belief that they emanate from the same source,” and accused Morales of “throwing arguments against a wall, hoping something would stick.”

    One wonders if Morales would have opposed this mark if Beyoncé had been an ordinary business person. But regardless, Beyonce’s winning does not imply the celebrities’ privilege. This is where registering, reinforcing, and commercializing your Intellectual Property immediately becomes critically important. In this case, branding protection is important as a solution to counterfeiting. If third-party objects or opposes and challenges your mark, you can still win what is rightfully yours with proper and sufficient proof. If you require any assistance, let us know.

    This article is brought to you by Exy IP PTE. LTD.

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