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Trademarks Live On in Estates and Beneficiaries

There has been a marked increase in the number of live celebrities with unregistered trademarks demanding return of their names. It catches on that the UDRP is not an unfriendly forum, although panelists in some early cases were not sure. A three member Panel in Bruce Springsteen v. Jeff Burgar and Bruce Springsteen Club, D2000-1532 (WIPO January 25, 2001) denied the complaint over a strong dissent. But that decision was later repudiated by a member of the majority in Kevin Spacey v. Alberta Hot Rods, FA0205000114437 (Nat. Arb. Forum August 1, 2002) who stated that the Respondent in the earlier proceeding was given the “benefit of the doubt”; also Judy Larson v. Judy Larson Club, FA0101000096488 (Nat. Arb. Forum March 13, 2001) (the Majority opinion in Springsteen is “soundly rejected.”)

UDRP is also not an unfriendly forum for estates of dead celebrities as long as the issue is abusive registration of the disputed domain name. The dead live on through their estates and licensees [CMG Worldwide, Inc. v. Page, FA 95641 (Nat. Arb. Forum November 8, 2000) (<> and <>)] and estates and licensees have jurisdiction to contest the domain name even if the estate is unregistered as a trademark, Mrs. Fred Astaire v. Joseph Cote, FA0908001281710 (Nat. Arb. Forum October 12, 2009). Celebrities in life who would not have qualified for trademark protection cannot post-mortem be protected. Thus, present users of famous names such as Albert Einstein and Louis Brandeis for example have a heavy burden to prove that they have an exclusive right to them, Hebrew University v. Alberta Hot Rods, D2002-0616 (WIPO October 7, 2002) (<>); Brandeis University v., Inc. FA 0709001080127 (Nat. Arb. Forum November 9 2007) (<>). The estate of Marlon Brando was unsuccessful because the issues raised therein were beyond the scope of UDRP, The Estate of Marlon Brando v. WhisGuard c/o WhoisGuard Protected, FA0506000503817 (Nat. Arb. Forum August 29, 2005).

The Mrs. Fred Astaire case, however, demonstrates the rights of an estate or surviving family of a dead celebrity to keep control of his name. The Panel found that “Mrs. Fred Astaire … succeeded [to] all her late husband’s intellectual property rights upon his death in 1987” and has used the ASTAIRE mark in connection with “multiple ventures including the ‘Astaire Awards,’ an award ceremony honoring dancers and choreographers administered by the Theater Department Fund.” The disputed domain names <>, <> and <> are identical to one of the ventures and incorporate the trademark in its entirety. Their registrations do not support any right or legitimate interest under any of the three defenses, but are purely opportunistic. Two of the domain names resolve to websites that contain search engines and links promoting Complainant’s competitors in the dance industry via click-through links; <> is inactive. The sole purpose for the registrations is to benefit the Respondent from the Internet traffic at Complainant’s expense and to the confusion of Internet users looking for Complainant. These are grounds for finding registration and use in bad faith.

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