Infringements in Disguise: are Halloween costume knock-offs fooling any one?
I was in a Halloween store recently, one of those pop-up shops that temporarily occupy otherwise abandoned retail space for a season, like fireworks stores around the Fourth of July. I was thinking about how costumes relate to my line of work, and how costumes of famous people are a prime manifestation of the Right of Publicity. It’s a commercial product, obviously, but furthermore the product is entirely premised on making someone look as much as possible like the celebrity in question. The objective of the product is to depict (and sell) the famous person’s image or likeness.
This dynamic, no doubt, is why there is quite a lot of licensing activity in the area of costumes, from superheroes like Batman and Spiderman, to movie franchises like Star Wars and Transformers, to Animal House, Avatar, Curious George, Friday the 13th, Chuggington, WWE, Lady Gaga, Justin Bieber, and on and on. Simply put, they sell. When the product is licensed, no problem and all is well.
But from my experience over the years, costumes based on famous people are not always licensed. As I’m perusing the Halloween store’s products, almost immediately I happen upon two men’s costume wigs, side-by-side, one entitled “Family Jewels” and the other designated “The Billionaire.” Here is the picture I saw on the “Family Jewels” product packaging and on the website of the company producing the product:
And here is the image I saw on “The Billionaire” product packaging and on a secondary retailer’s website:
This observation prompted me to check out the website of the company that produces these products. It is a leading costume retailer, authorized to produce and sell an impressive line licensed costumes, underscored by the fact that one of the main navigation tabs on the website is designated simply as “Licensed.” Their homepage loads with animated flash imagery of the KISS logo, images of the band, and the costume product line.
To find the “Family Jewels” wig though, I had to really search. It is there, in the mix of hundreds (if not thousands) of products, but not under “Licensed” and apparently not through any of the search key words one would expect (based on the various searches I attempted). On the product packaging itself, as well as the webpage entry for the “Family Jewels” product, I noticed that there is no use of Gene Simmons’ name, and the model wearing the wig does not resemble Gene Simmons (absent the effect of the wig itself which, after all, is meant to make a person look like Gene Simmons). When I scanned the product packaging in the retail store, I also saw no credit lines regarding the reality show, KISS, or Mr. Simmons.
This made me wonder: what would Gene Simmons do or say in response to a company that he had licensed which is simultaneously pushing a “Family Jewels” wig that, by every indication, is not licensed? (For purposes of this writing, I am assuming that the wigs are not licensed. To any of the parties directly involved in or affected by any of the products specified in this entry: correct me if I’m wrong and I will gladly set the record straight.)
Some will say, “Well, no reasonable person will think that this really IS Gene Simmons or Donald Trump pictured on the packaging.” This analysis confuses trademark standards with Right of Publicity analysis. The words “Family Jewels” by themselves are likely enforceable as a trademark, as the title of Simmons’ reality show, but I won’t get into trademark considerations here. For Right of Publicity purposes, there doesn’t have to be direct use of the person’s actual name or image. It’s really just a question of whether the person is identifiable.
I assume there is a written agreement governing the manner and terms by which the licensed KISS costumes can be produced by the licensee. In agreements I negotiate and draft for use of my Luminary Group clients, I typically protect against the scenario presented here (unlikely as it generally would be with a company that is securing a license from the personality in the first place). Through a well-drafted license agreement, a licensee would likely find themselves in quite a predicament by offering licensed goods on one hand, and on the other hand offering products that infringe the Licensor’s rights.
So let’s have some fun with this. In searching for the Gene Simmons and Donald Trump wigs, I found quite a few other examples. Who might “The Idol Judge” wig be identifying?
How about “The Promoter” wig?
Or the “Rocket Man” wig?
I’m guessing you got a 100% on that pop quiz (depending perhaps on your age or familiarity with certain public figures). One does not have to believe that this actually is Gene Simmons, Donald Trump, Simon Cowell, Don King or Elton John for a violation of the Right of Publicity to take place. For each person you correctly identified, you probably also identified a potential Right of Publicity claim.
Let me offer a few more observations which might help illuminate how one goes about assessing a potential Right of Publicity violation:
· The product names make quite an effort to avoid use of the actual person’s name, while still craftily seizing upon a designation that confirms the intended person. Family Jewels? Check. The Idol Judge? Got it. Rocket Man? The title to one of Elton John’s iconic songs—10-4. I’d be inclined to say that rather than protecting the company behind these products from liability, these cagey but ultimately unambiguous names indicate a conscious effort to sidestep liability (and avoid licensing fees), potentially proving that the infringement is taking place on a knowing and intentional basis.
· The KISS storefront on this company’s website does not include the “Family Jewels” wig in the product lineup. The KISS collection, all things being equal, would be the most intuitive place to put the “Family Jewels” product. Grouping of products on a website, search words, tags and identifiers don’t happen by accident. Usually, inclusion is the guiding principle in grouping products and assigning key words and tags, so that a potential customer who wants to look like Gene Simmons will have no trouble finding the “Family Jewels” option. Of course, exclusion of these identifiers and tag words in all likelihood would be intentional as well. It doesn’t happen accidentally that certain products are emphasized, searchable and readily found, whereas others are buried.
I can’t help but notice that finding these products online was quite challenging, but in the retail environment where the idea for this entry was first inspired, it was not difficult at all. The “Family Jewels” and “The Billionaire” wigs were prominently displayed on prime retail shelf space. Of course, that retail store will be gone in just a few days, and a brick and mortar retail store is much harder for a licensor, brand owner, famous personality, or representative to monitor than a readily accessible, searchable, and archived website.
Maybe this is one reason why my clients tend to consider me good at what I do. I pay attention. In any event, I look forward to class discussion in my upcoming Right of Publicity law school class on the issues presented in this entry. I hope it has been educational and informative!
Presidential bids, Donald Trump, and the Right of Publicity for public figures
With Donald Trump recently announcing that he would not run for President in 2012, I thought about a popular topic concerning the right of publicity of public figures and politicians. This topic (as well as this website) was recently discussed on a t-shirt website forum (http://www.t-shirtforums.com/general-t-shirt-selling-discussion/t153365.html#post913652) so I thought I’d elaborate somewhat on this topic.
Donald Trump is no stranger to the intellectual property rights surrounding his name, image, persona and identity. He has registered trademarks on various aspects of his identity, and enjoys a vibrant licensing program ranging from Trump’s Signature Collection of clothing (suits, ties, cuff links, eyewear http://www.trump.com/Merchandise/Signature_Collection.asp) to Trump steaks (http://www.trumpsteaks.com/). If Trump were to run for President (which I suppose he already has, to some degree), would he be forfeiting his right of publicity, and therefore his ability to prevent unauthorized, unlicensed products entering the marketplace?
In short, no. But it does get a bit more complicated for public officials to pursue unauthorized merchandise and advertising campaigns, even if they would have a legal right to do so. Through my work on behalf of many public figures, ranging from Princess Diana and Rosa Parks to Jackie Robinson and General Patton, as well as a couple of former U.S. Presidents, I know that a certain amount of such activity has been tolerated. President Obama seems to have responded to such activity more than any other President, perhaps also because he (or his family) has been used more than any other recent President. Here is a news item concerning a casino billboard campaign with a President Obama lookalike: http://southerngaming.com/?p=2562
Perhaps it is worth distinguishing between a person’s right of privacy and the right of publicity. We are all generally familiar with the idea that when a person runs for public office, he or she gives up a certain degree of an expectation of privacy. A corollary to this is the New York Times v. Sullivan “actual malice” standard for defamation of public figures. This case instructs that because the famous person sought out elected office and has better access and means to the press in order to combat any inaccurate or potentially defamatory information, the standard for committing defamation is necessarily higher than that for private citizens. Here’s a Wikipedia link to the New York Times v. Sullivan case: http://en.wikipedia.org/wiki/New_York_Times_Co._v._Sullivan
This “actual malice” standard for elected officials is part of the mechanism for ensuring broad First Amendment privileges, and encouraging differing views, discourse and criticism of our public officials. None of this means that those elected officials have simultaneously consented to becoming product lines or being featured in advertising campaigns for all manner of goods and services. It may be that such products or advertising campaigns have an element of parody, which conceivably could serve as a defense to a right of publicity claim. But most such products or advertising campaigns are simply an effort to sell more products or to promote a company’s goods or services. This, then, is likely nothing more than commercial speech. If the message is simply “buy our stuff” or “shop at our store,” and the inclusion of the public figure is nothing more than a scheme to attract attention, then the right of publicity can and generally will provide recourse for that public official.
In many instances, pursuing a company who engages in what might constitute a right of publicity infringement may become more of a public relations issue than a legal issue. Going after the company may give that company substantially more media attention, and may be portrayed in the press as that public figure trying to chase down infringers in order to make money. It’s a bit of a dilemma for those who find themselves in such a position.
I didn’t realize how much attention this topic has been given on this website until I looked back at prior entries:
Obama Got Osama: http://rightofpublicity.com/obama-got-osama-products-hit-marketplace-reports-usa-today-anyone-want-to-take-a-shot-at-that-right-of-publicity-analysis
First Lady Michelle Obama and PETA ads: http://rightofpublicity.com/peta-launches-new-ad-featuring-michelle-obama-without-first-ladys-permission
President Barack Obama bobbleheads: Intentionally unflattering? http://rightofpublicity.com/bobbleheads-intentionally-unflattering-or-a-symptom-of-the-product-category
The First Daughters: Sasha and Malia Ty beanie baby dolls: http://rightofpublicity.com/sasha-and-malia-dolls-now-its-not-just-the-president-being-infringed
President Obama merchandise continues: http://rightofpublicity.com/president-obama-merchandise-continues
President Obama infringements? http://rightofpublicity.com/president-obama-infringements