On Friday, October 5th, former San Francisco 49ers quarterback Colin Kaepernick’s company Inked Flash filed an application to trademark a black and white image of kaepernick’s face and afro. Kaepernick’s application identifies over 80 different goods and services he plans to use the mark on, everything from body wash and cell phone covers to self empowerment workshops. Although he is casting a wide net in an attempt to trademark his image, Kaepernick likely still faces an uphill battle before receiving a registration.
Trademark law has long recognized the right for celebrities to control their image under the theory of confusion of source. Under the Lanham Act no mark can be used that is likely to cause confusion as to the “origin, sponsorship, or approval” of another person. Typically, this has been used by many famous people and their estates to prevent others from using their image on products without proper licensing. A recent example is the ninth circuit’s decision in Hope Road upheld a jury decision against A.V.E.L.A. for using Bob Marley’s image on various t-shirts and merchandise without a proper license from Fifty-Six Hope Road Music, the entity owned by Bob Marley’s children to control the late musician’s assets, rights, and commercial interests. While it is fairly common for celebrities to use trademark law as a means to prevent others from using their image, it is rare for a celebrity to actively seek and receive a trademark to protect, control, and market their image.
There are typically two reasons for the rarity of celebrity image trademarks based on the purpose of trademark law: (1) to identify the source of a good and (2) that a mark must be distinctive so as to distinguish the person’s goods from others’. 15 U.S.C. § 1127. Many consumers find celebrities appealing and images of celebrities have their own innate value to a wide variety of consumers. For example, artists, new reporting agencies, and tabloids will take pictures, create paintings, or other artistic works using a celebrity’s image. Such works have a value simply for depicting a celebrity’s likeness and is protectable under copyright.
However, if a celebrity were to trademark their likeness, consumers are likely to have difficulty distinguishing the celebrity’s image as a source of goods from the celebrity’s image being used as part of a product itself similar to any other copyrighted work. Imagine seeing a t-shirt with nothing but a picture of Martin Luther King, Jr. on the front. Is this image meant to depict Mr. King or would it be identifying a brand of t-shirt? Most consumers would see the image as identify Mr. King as himself, not as a t-shirt brand, and thus the challenge for celebrity’s is that their image is already identifying to consumers on its own. When an image can no longer identify the source of a good to consumers nor can it be used to distinguish one person’s goods from the another’s similar goods legally depicting the same, image then the image can no longer be considered a trademark.
Despite the difficulties in registering the likeness of a celebrity, at least one celebrity athlete has managed to trademark something akin to a likeness of their image. In 2009, Olympic Runner Usain Bolt filed for a trademark of his famous “lightning bolt” pose. After nearly two years of amendments and responses, Bolt finally received a trademark for an image depicting his famous “lightning bolt” pose to be used with eyewear, clothing, and entertainment activities. (U.S. Registration No. 4069022). See specimens below.
However, there are a few important reasons for why Bolt’s application was successful. First, the trademark depiction is not particularly identifying of the famous runner. By using a generic silhouette to depict the pose Bolt’s famous image is removed from his trademark, thereby bringing focus solely to the pose as an identifying symbol. Second, Bolt filed his application and is currently registered under section 44 of the Lanham Act. A trademark based on section 44(e) is given because the Applicant has shown they hold and use a registered trademark in their home country. However, this does not always mean that the Applicant uses the mark in the U.S. and thus is often seen as a weaker form of trademark and less likely to hold up under scrutiny. While Bolt may not have as much difficulty showing difficulty of use, his prior foreign registration likely made his U.S. application a much easier process.
For Kaepernick, this means that he is going to have a very difficult battle ahead of him to register his mark. The biggest challenge Kaepernick will face is that he is attempting to trademark an image that is essentially a drawing of his face. Unlike Bolt, who used a generic silhouette to depict his pose, Kaepernick’s image so strongly resembles him that he likely must prove that his face and afro are not so famous that consumers might be confused between goods using his trademark and goods using a similar, legally copyrighted image. With Kaepernick’s widely publicized Nike campaign and social activist work I believe it is unlikely for Kaepernick to get his mark for all the goods he has listed, although does he makes an interesting case study on celebrities trying to trademark their image.
Daniel Neally is a 3L at ASU’s Sandra Day O’Connor College of Law whose studies focus on Privacy Law, Intellectual Property, and Business. In addition to his studies and work with LegalForce, Daniel does legal research for The Sedona Conference on eDiscovery and changes in Privacy Law. Despite all the work, Daniel still manages to find some time every week to enjoy gaming with his friends; whether that’s online over Xbox or across a table playing board games.