Using the names of deceased celebrities as trade marks: Touching tribute or tantamount to theft?
Thursday 31st October 2019
Article written by: Paul Johns
What ability do commercial enterprises have to use the names of well-known, deceased individuals who are otherwise unconnected with that enterprise as brand names? Two recent examples have highlighted that, surprisingly to some, there are relatively few legal limits on this practice in New Zealand.
In this modern era of celebrity endorsements and social media influencers, consumers are quite used to all types of consumer goods or services being endorsed by personalities who may be famous for reasons entirely unrelated to the products being promoted. In New Zealand, false purported endorsements by living celebrities would generally be prohibited under the Fair Trading Act 1986. Section 13(e) of this Act provides specifically that “No person shall, in trade, in connection with the supply or possible supply of goods or services… make a false or misleading representation that goods or services have any sponsorship, approval [or] endorsement.” Section 9 of the Act provides a more general prohibition of conduct in trade that is likely to mislead or deceive. The common law tort of passing off also makes it unlawful to take advantage of a celebrity’s goodwill and reputation by misrepresentation. These laws have been used to block the unauthorised use of the images of celebrities as diverse as pop star Rihanna and former All Black captain Anton Oliver.
It is also open to celebrities to acquire exclusive rights to their own names by registering them as trade marks for specific goods and services. Kylie Minogue, Kylie Jenner, David Beckham, and Taylor Swift are among the well-known names on the New Zealand trade marks register. These registrations are often owned by corporate vehicles of the named individuals. Registration in New Zealand of a trade mark that is the name of a person who is either living, or who died within the previous 10 years, may require the consent of that person or their personal representative, pursuant to section 23 of the Trade Marks Act 2002.
The Trade Marks Act has no similar, specific restrictions in respect of the names of persons who died more than 10 years ago. However, that is not the end of the matter. The Trade Marks Act does prohibit the registration of marks which, if used, would be likely to deceive or cause confusion. As noted above, the Fair Trading Act would apply to the use of trade marks that might mislead or deceive. The issue then becomes whether consumers, confronted with the use of the name of a long-deceased celebrity, would be likely to conclude that some entity or person connected with that celebrity has endorsed or authorised the use of that name. Although it is recognised that dead people do not generally have legally enforceable rights relating to their reputation, for instance one cannot defame the dead, the Fair Trading Act and Trade Marks Act are concerned with the rights of consumers not to be deceived, rather than with the reputational rights of individuals living or dead. Whether consumers are likely to be deceived will depend on the precise factual circumstances of each case.
Example 1: Baron Pierre de Coubertin, founder of the modern Olympic movement
The High Court of New Zealand has recently upheld on appeal the decision of an Assistant Commissioner of Trade Marks that the name COUBERTIN can be registered as a trade mark in New Zealand over the objections of the International Olympic Committee (“the IOC”), famously founded in 1894 by Baron Pierre de Coubertin (Comite International Olympique v Tempting Brands Netherlands B.V.  NZHC 2476). Neither party had the backing of de Coubertin’s estate, although the applicant for registration claimed to have an agreement with an entity alleged to have been founded by his niece. The principle weakness identified in the IOC’s case was the lack of any evidence formally adduced that New Zealand consumers actually know enough about Pierre de Coubertin or his connection with the IOC to be confused as to the origin or connection of goods sold with that trade mark. It may be that had better evidence been available and adduced of knowledge in New Zealand of the Baron’s connection with the Olympic movement, the result may have differed.
The Court of Appeal stated that:
“Famous people, including dead ones, do not have a monopoly on the use of their name as a trade mark. It also cannot automatically be assumed that the public would regard a product bearing the name of a famous person as having an endorsement from that person or their estate.
However, where there is a strong connection between the product and the activity for which the person is famous, the Courts may more readily infer that the public might suppose such an endorsement.”
The Court noted that in this case there was no obvious connection between the goods to which the trade mark is intended to apply, and either Pierre de Coubertin or the IOC.
Example 2: George Nepia, All Black
The second example is the current reported promotion by a UK company of a rugby jersey referred to as “the Nepia” and said to be a reproduction of the jersey worn by “the iconic New Zealand fullback” George Nepia, on the All Blacks “Invincibles” rugby tour of the UK, France, and North America in 1924-1925. Nepia famously was the only player to take the field in all 32 matches played on tour. He passed away in 1986.
The manufacturer claims to have “carefully studied and reproduced” the original jersey. However, the replica bears the number 15 (which is worn by starting fullbacks under the modern player numbering system). In fact, George Nepia wore the number 1 throughout the Invincibles’ tour, as a different numbering system was used.
Both the Nepia family and New Zealand Rugby have objected to the use of George’s name. However, neither the family nor New Zealand rugby own a trade mark registration covering this name. Under New Zealand law, it would be necessary for them to show that the use of the name contravened the Fair Trading Act in order to prevent sales of this jersey. The manufacturer does not expressly claim any endorsement or authority from any third party. The question is whether ordinary consumers would expect a manufacturer to seek and have authority to use in this manner the name of a person famous nearly a century ago and who died over 30 years previously.
Certainly, the public seem to accept the use of names of people who were famous in earlier days. For instance, nobody appears to assume that Elon Musk’s electric car company has any approval from the estate or family of the famous inventor and electrical engineer, Nikola Tesla (1856-1943).
As matters stand, there are no absolute barriers in New Zealand to using or registering as a trade mark the name of a celebrity dead for at least 10 years without the permission of any representative of that celebrity. There is a risk however that such use might contravene the Fair Trading Act. This risk will increase the more recently the celebrity was alive and the more closely connected the relevant goods or services are to the career of the celebrity. There is also a risk that conduct of this kind, even if lawful, may generate negative publicity.
Families and other representatives of deceased, famous individuals can try to prevent the use of those individuals’ names by others by registering them as trade marks. However, registered trade marks must actually be used or they become vulnerable to removal from the register. Representatives who do not wish a name to be used at all in trade therefore face difficulties in enforcing their wishes.
Anyone intending to use the name of a well-known person, dead or alive, as a trade mark or brand should first seek legal advice. Individuals or their representatives concerned about any unauthorised use of personal names should also seek specialist advice as to their legal options.