Trademarks and the non-authorized use of a person’s image

Dentons
Contact

Dentons

“Any publicity is  good publicity,” as the saying goes. According to popular  belief, any form of publicity from anyone helps increase the popularity of a movie, character or even the actors portraying such characters. However, there are also cases where the use of names or images is not considered good publicity.

For instance, the use of the image of Hollywood film stars – or the image of the characters portrayed by them  ̶ must be considered very carefully before making them  an element of a trademark.

The Chilean Industrial Property Law establishes the following grounds for the non-registrability of a trademark application:

Article 20 letter c) The following cannot be registered as trademarks:

The name, pseudonym or the portrayal of any natural person, except if such a person has provided his or her consent, or if such consent is provided by the person’s heirs if the person is dead. However, names of people with historical relevance can be registered after – at least – 50 years from his or her date of death, as long as it does not affect his or her honor.

Based on this ground, there have been interesting cases in Chile regarding the conflict of a trademark using the image or the name of a famous person. The most relevant recent case was “MIEL GIBSON”. This trademark was introduced to the market by Chilean entrepreneur Yohanna Agurto for distinguishing the honey jars she was selling. The jar label also included a picture of Mel Gibson’s character William Wallace, from the 1995 film “Braveheart”, along with the slogan “only for brave hearts”.

After spending a couple of months using the label on her jars, Mrs Agurto was contacted by Mr Gibson’s attorneys with a request to cease and desist with the non-authorized use of Mr Gibson’s image, or they would file charges against her. However, the letter only referred to the picture but not the name “Miel Gibson”, which is a word game using Mr Gibson’s name “Mel” and the translation into Spanish of the word honey, “Miel”.

The main allegation against Mrs Aburto was based on the lack of authorization to use or duplicate a film photograph, which belongs to the film studio that produced the movie.

This case was highly publicized because it went viral on Twitter and Instagram, where followers of the company shared hashtags after Mrs Aburto tweeted to Mr Gibson requesting his authorization to use the original labels for the honey. Although such a request was never replied to by the actor, the tweet was retweeted more than 3,000 times within a few days.

Finally “Miel Gibson” decided to avoid more legal issues and change the label to the cartoon of a bee designed to resemble the face paint of William Wallace. When unveiling the new label, the official Twitter account of the honey company tweeted “My heart is brave, but now is braver because I know we are a powerful beehive”.

It is important to note that in the majority of countries there is no ground of non-registrability protecting the owners of copyrights against third-party trademarks that are using their property to distinguish their goods or services. Moreover, since the trademark is “MIEL GIBSON” and not “MEL GIBSON”, the actor’s representatives would not be entitled to take action against such trademarks.

Although this case was easily solved, there have been other cases on the image of “celebrities” that have dealt with these situations in other ways. For example, the Chilean football player, currently a player of the Chilean National Football Team and the Italian Football Team Inter de Milan, Arturo Vidal had to file a cancellation action against the trademark registrations “REY ARTURO  ” and “KING ARTURO”. This trademark was filed by Chilean entrepreneur José Eugenio Martínez Silva who used it to distinguish an energetic drink, along with the reproduction of one of Mr Vidal’s tattoos. Said tattoo is considered as his personal brand, composed by his name’s capital letters “A” and “V”, intercrossed and with a crown, resembling his nickname “Rey Arturo” or “King Arturo”, and the same logo is used on his charity works and on his app “VIDAL APP”.

Originally filed by Asesorías Publicitarias Hueso Santo SpA to pay an homage to the soccer player, the trademarks “REY ARTURO” and “KING ARTURO” were originally granted by the Chilean Intellectual Property Court on 2016. Months after the granting, Mr Vidal filed the cancellation actions before the Chilean Trademark Office. The Office declared the cancellation of the trademark on 2017, and it was later ratified by the Intellectual Property Court on 2018, based on the above-cited article, arguing the following:

“It is a public and remarkable fact, due to the abundant evidence filed by the plaintiff  ̶  consisting of publications in printed media and on digital platforms, in advertisement commercials for goods that are identical or similar to the goods protected by the contested trademark   that the plaintiff, Mr Arturo Vidal, is a very skilled athlete with great talent in the sport of football, which has been shown by his high level of performance in the most demanding football leagues in the world, such as the Italian and the German leagues, and for the Chilean National Football Team. His qualities as a player have been known and highlighted by the main actors in this sport, both partners and rivals from the cited football leagues, football trainers and other experts, so effectively Mr Vidal is an artist of the much followed sport.

In this case, the plaintiff has proven that he has been known as or called by REY ARTURO since 2012, given that according to an article in La Nación Newspaper of April 23, 2014, the plaintiff was baptized with that name in Italy by the newspaper Tuttosport. In addition to this, the website elmercuriomediacenter.cl published the headline “Gatorade bets everything for Arturo Vidal”, where the plaintiff is called by his nickname “REY ARTURO”. In consequence, the nickname has been established, based on the plaintiff’s first name ARTURO and the word REY or KING, referencing the leadership qualities that he displays on the football field. In this way, the name REY ARTURO  directly refers to the professional athlete ARTURO ERASMO VIDAL PARDO, who currently plays in the German professional football league and is part of the Chilean National Football Team, and is highly popular and widely known in Chile and abroad.

In the opinion of this Office, and according to previous criteria, the concept of a pseudonym is not restricted to artists and performers of artistic, scientific and literary works, but it extends exclusively to other areas of culture and entertainment, including sports. Therefore, according to the previous arguments, given that the registered trademark  is identical to the plaintiff’s pseudonym and that the defendant lacks the plaintiff’s authorization, the claim based on article 20 letter c) of Law 19.039 must be accepted. This is particularly relevant considering that the trademark for which the cancellation is requested is registered to distinguish mineral water and soda and other non-alcoholic beverages, isotonic drinks, athletes’ drinks and beer, which are usually related with sports and whoever plays them”.

Considering these criteria, the applicants for new trademark applications, as well as entrepreneurs using a brand to distinguish their products and services on social media, should be aware of the risks that could arise regarding the use of the image, name, pseudonym or other characteristics of someone famous, which could even force them to rebrand their whole business. 

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

© Dentons | Attorney Advertising

Written by:

Dentons
Contact
more
less

Dentons on:

Reporters on Deadline

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:
*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
Custom Email Digest
- hide
- hide

This website uses cookies to improve user experience, track anonymous site usage, store authorization tokens and permit sharing on social media networks. By continuing to browse this website you accept the use of cookies. Click here to read more about how we use cookies.