Super Bowl LI, Tina Fey and John Malkovich ads, and the Right of Publicity

When it comes to the Super Bowl, even the advertisements are watched with great anticipation and Super Bowl LI was no exception.  When your company is involved in licensing some of the advertisements in question, as Luminary Group was in the “Super Bowl Babies” spot, it tends to make one watch even more closely.  As a Right of Publicity specialist, I was especially intrigued by not one but two Super Bowl LI advertisements with strong Right of Publicity overtones.

The first spot with Right of Publicity implications was the talking yearbook Honda advertisement featuring Tina Fey, Steve Carell, Robert Redford, Amy Adams, Earvin “Magic” Johnson, Jimmy Kimmel, Missy Elliott, Viola Davis, and Stan Lee.  By showing an entire page of the yearbook photos of the not-yet-famous celebrities next to their classmates, approximately 60 other people appearing next to the talking yearbook images were identifiable.  I have no inside information about the making of the advertisement, so I will assume the spot was carefully vetted.  Maybe those other people were tracked down and permission was secured.  Maybe they used stock photography or models with hypothetical names and simply paid a minimal fee to recreate the yearbook pages instead of using the authentic pages.  In the Steve Carell segment, the person next to Carell even gets a speaking spot to which Carrell responds “that was a rhetorical question, Darryl!”  If nothing else, the Honda talking yearbook ad presents an interesting scenario for Right of Publicity analysis.

Here’s a link to the Honda advertisement:    Honda talking yearbook ad featuring Tina Fey, Steve Carell, Robert Redford, Magic Johnson, Missy Elliott, Viola Davis, Jimmy Kimmel, Stan Lee and Amy Adams

The second spot with Right of Publicity implications was the John Malkovich domain name advertisement for Squarespace.  In the advertisement, Malkovich is talking on his smartphone to a person who owns the domain name JohnMalkovich.com.  Malkovich says he needs the domain name because he is starting a men’s fashion line, but the person Malkovich is talking to is also named “John Malkovich.”  This prompts John Malkovich to say “yeah, you think when people contact JohnMalkovich.com they are actually looking for you?  Or maybe, maybe they’re looking for ME!”  Domain name analysis pertaining to famous individuals often depends on the nature of the use being made of the domain name.  If a person shares a name with a famous person of the same moniker, but is simply using that domain name in relation to the non-famous owner’s career, interests or life, for example, there may not be much the famous John Malkovich can do about it.  On the other hand, as so often is the case, if the content on the domain name is being used in a way that threads in the famous John Malkovich, then there could be an actionable domain name dispute.  The message of the John Malkovich ad is to register the domain name you want before someone else does.  That’s good advice, though it isn’t always the final word in instances where cybersquatting is taking place.

Here’s a link to the Squarespace advertisement:  Squarespace JohnMalkovich domain name ad

Donald Trump seeks $400,000 in cybersquatting case

Having been involved in some of the first high-value domain name recoveries and reported WIPO/NAF decisions, I find that domain name disputes often provide interesting micro-case studies.  The decisions–at least of the arbitration variety–often issue very quickly with no formal discovery, and provide brief reported decisions centering on a potentially valuable asset and the intellectual property interests implicated by that particular registration.  The latest domain name dispute making news involves four domains based on Donald Trump’s name, for which Trump is seeking $400,000 in damages ($100,000 per domain name).

The domain names in question include trumpmumbai.com and trumpindia.com.  These domains were registered by the current owner upon announcement by Donald Trump’s organization of plans to develop hotels  in locations such as Mumbai and Bangalore, India.

Domain name disputes sometimes hinge on the use being made of the domain name in question.  I do not know if any actual content was posted on these domain names, but the domains obviously feature Trump’s name combined with the location of pending business developments.  This triggers both trademark as well as Right of Publicity considerations.  But it also is important to consider who has registered the domain names and what his or her likely (if not expressed) intent was in doing so.

In the domain name recoveries and arbitrations I handle, I make a point of emphasizing if the current registrant appears to be a cybersquatter.  In some cases, it becomes apparent that the registrant was engaging in precisely the kind of activities that anti-cybersquatting regulations are designed to prevent.  The coverage on this story, as on this CNN link, is telling:  http://www.cnn.com/2013/03/31/us/new-york-trump-lawsuit

Here is the part I find the most revealing in the CNN story:  the registrant “…also holds nearly 200 other domain names, including barclayscapitallehman.com, goldmansachsgroup.com, milanvogue.com and hulufriend.com.”  In the following paragraph, it goes on that on the day Bank of America announced its merger with Merrill Lynch, the registrant secured bofaml.com and mlbofa.com.

We’ll likely never know the financial component to any resolution reached between the parties, but I expect Donald Trump will soon have four more domain names included in his portfolio.

As an aside, it seems to me that securing the most directly-related domain name iterations prior to announcing major business transactions should be part of the pre-announcement process.