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Common Law Rights of Celebrities to their Names

Ordinarily, personal names are not registrable for trademark because they are not sources of goods or services but celebrities can own common law rights to their names in that their names convey distinctive signifiers. In an early decision that was later repudiated a celebrity’s complaint for transfer of a domain name identical to his personal name was denied. Bruce Springsteen v. Jeff Burgar and Bruce Springsteen Club, D2000-1532 (WIPO January 25, 2001) (over a strong dissent). A consensus was beginning to form at that time in favor of recognizing common law rights of performers. The majority in Springsteen grudgingly followed this view: “In the view of this Panel, it is by no means clear from the UDRP that it was intended to protect proper names of this nature.” However, the Springsteen decision was subsequently repudiated in Kevin Spacey v. Alberta Hot Rods, FA0205000114437 (Nat. Arb. Forum August 1, 2002) in which one of the panelists also sat on the Springsteen Panel. He noted that Respondent in the earlier proceeding had been given the “benefit of the doubt.” In Judy Larson v. Judy Larson Club, FA0101000096488 (Nat. Arb. Forum March 13, 2001), the Panel noted that the Springsteen decision is “soundly rejected.”

The consensus favors granting common law rights for celebrities to their names, but not to people famous for merely having a famous name. Birgit Rausing, AB Tetra Pak v. Darren Morgan, D2008-0212 (WIPO April 5, 2008); Vanisha Mittal v., D2010-0810 (WIPO) (“Celebrity status, on its own, does not provide a complainant with rights in a trademark or service mark, which is the bottom line requirement for a complainant to satisfy paragraph 4(a)(i) of the Policy”). Two good recent illustrations are Shonda Rhimes and Shondaland, Inc. v. Windsor Lambiotte LLC., D2011-1601 (WIPO November 8, 2011) in which the corporation’s rights were recognized but rejected the individual Complainant’s proof of any right to her name, although she has solid credentials; and Ndamukong Suh v. Monikder Privacy Services Registrant 3515812, Tim Evans Registrant 3670858, Athlete Web Design, D2011-1371 (WIPO November 18, 2011), a professional athlete.

Although the Panel in Shonda Rhimes recognized the consensus, the problem lies in the absence of proof that the individual’s name is a source indicator for goods and services: “the Complaint is signed only by Complainant’s counsel; no information is provided that would indicate that any of the information is based on his personal knowledge.” Proof is drawn from Wikipedia (s.v. “Shonda Rhimes” and “Grey’s Anatomy”) and Internet Movie Database (s.v. “Shonda Rhimes”) websites. The Panel noted:

As an initial matter, Complainants’ use of sources such as Wikipedia to establish rights in a mark is problematic at best. Wikipedia, according to the disclaimers that appear on the site, is a collaborative effort that permits “anyone with an Internet connection to alter its content.”

The disclaimer goes on:

Please be advised that nothing found here has necessarily been reviewed by people with the expertise required to provide you with complete, accurate or reliable information.

WIPO Overview 2.0, Question 1.7 requires showing a mark has become a distinctive identifier for a party or its goods and services, such as by evidence of length of use, amount of sales, nature and extent of advertising, consumer surveys, and media recognition of mark. The greater his or her fame or renown the easier to satisfy the burden of proof. Concomitantly, the lower the fame or renown the higher the proof requirement. The Panel in Fox News Network, L.L.C. v. C&D International Ltd. and Whois Privacy Protection Service, D2004-0108 (WIPO July 22, 2004) () (“As the degree of fame decreases from clearly identifiable celebrities with worldwide renown, to nationwide renown or to less well known authors, actors or businessmen with limited renown in a specific field, the burden of proof on the Complainant increases and the need for clear and convincing evidence becomes paramount.”)

In a court of law (at least under U.S. civil practice), attorneys should not be signing affidavits in support of a client when proof can only be certified by a person with personal knowledge of the facts. UDRP makes similar demands. Only the complainant would have personal knowledge and only she could have provided the information about her reputation in the marketplace to establish her common law rights. In Shonda Rhimes that proof was not presented; but in Ndamukong Suh.

Mr. Levine is the author of a treatise on trademarks, domain names, and cybersquatting, Domain Name Arbitration, A Practical Guide to Asserting and Defending Claims of Cybersquatting under the Uniform Domain Name Dispute Resolution Policy. (2015, 558 pages). Learn more about the book at Legal Corner Press. Available from Amazon and Barnes & Noble.  Ongoing Supplement here

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