It is not uncommon for celebrities to have to defend themselves against the commercial exploitation of their (good) name by third parties. At times, a lot of sweat and effort has gone into establishing a lucrative advertising value for one’s own name. This makes it all the more irksome when third parties attempt to snatch the fruits of this hard work. However, the (judicial) defence against such attacks on one’s own name is not always successful for prominent persons, as the following examples show.
Only recently, the Federal Court of Justice (BGH) ruled in a case in which rock singer Tina Turner had sued. She took action against the producer of a show in which a singer who looks very much like Tina Turner presents the rock star’s hits. The staging of such a “tribute show” itself is legally permissible and was not challenged by Tina Turner. Rather, she was displeased by the advertising posters for the show, on which the performing doppelganger and the words “SIMPLY THE BEST – The tina turner Story” could be seen – which the rock icon recognised as an infringement of her likeness and name rights.
After Tina Turner had been successful in the first instance, the BGH ruled in favour of the defendant producer (judgement of 24.02.2022, I ZR 2/21). The design of the advertising posters with the image of the (performing) doppelganger and the name of the impersonated star was in principle covered by artistic freedom. As long as the inaccurate impression, that the celebrity original supported the show or was even involved in it, was not created, artistic freedom outweighed the general personality rights of the original. Tina Turner, who certainly also wanted to put obstacles in the way of the competition for the Tina Turner musical she had released, will have to be content with the show being advertised with her name.
Not only in the area of general personal rights, but especially in trademark law, there is a struggle over the use of celebrity names. Last year, the well-known German rapper Shindy defended himself (also unsuccessfully in the result) against the registration of a word mark “Shindy” for tobacco and smoking products. The trademark had been applied for in 2018 by the music manager Arafat Abou-Chaker, who is known from the tabloid press. The “real” Shindy opposed the trade mark application, relying on his right to the stage name “Shindy” as well as on an earlier word mark “Shindy”. However, this trade mark was not registered for smokers’ articles, but merely for sound media, printed matter, clothing or entertainment services.
The latter was the rapper’s undoing – the Federal Patent Court rejected the artist’s opposition (resolution of 09.11.2021, 26 W (pat) 29/20). The court did not want to recognise a likelihood of confusion under trade mark law, especially since the rapper’s earlier rights to the “Shindy” trade mark only covered goods and services that were absolutely dissimilar to tobacco products. The Senate also did not want to let the argument count that consumers of German rap music often also consume tobacco products in bars typical of the scene (one need only think of the triumphant advance of shisha bars, for example). Ultimately, the court did not want to find that the rapper’s trade mark “Shindy” had the special protection of a well-known trade mark, which could have overcome the lack of similarity of goods and services. A possible reputation in the market segment “rap music” does not automatically lead to a nationwide reputation for entertainment services.
The decision may seem “unfair” at first glance, but it is consistent in terms of trademark law. However, Shindy still has another arrow in his quiver. The trade mark register shows that the musician has filed an application for annulment on the grounds of bad faith in the trade mark application. It remains to be seen whether the rapper can convince the Trademark Office or the Federal Patent Court that the trademark application by Abou-Chaker was filed in bad faith to his detriment. In any case, proving bad faith in a trade mark application is tedious and certainly not a foregone conclusion: even in the case of very well-known (trade mark) names, something that the Brazilian football player Neymar also experienced. Neymar had to dribble his way through the European courts for several years to have a bad faith application for his name as a trademark for clothing goods cancelled. The trademark had been registered by a private individual in December 2012. In the cancellation proceedings, the individual claimed that he had applied for the trade mark because of its beautiful sound. At the time of the trade mark application, the footballer Neymar was not yet known in Europe, which is why he could not have acted in bad faith when applying for the trade mark. In fact, Neymar had only moved from Brazil to FC Barcelona in 2013. Nevertheless, the European Court upheld the cancellation of the trade mark in 2019 because Neymar was able to prove that he was already known in Europe as an up-and-coming and talented footballer before his transfer to FC Barcelona (judgment of 15.09.2019, T-795/17). In determining the bad faith of the trade mark applicant, it no doubt also helped, that the trade mark applicant had applied for the trade mark “IKER CASILLAS” – the name of another well-known footballer – at the same time.
It remains to be noted that celebrities cannot always prevent the use of their own name and that a fight for the rights to a name can be strenuous. Trademark rights are of help here and should then, if possible, include such goods and services for which the name could be used.