The Celebrity Name Game and Intellectual Property
Jay-Z and Beyoncé are not only top level entertainers, but they are also savvy business people. Merely nineteen days after the birth of their first child, Blue Ivy Carter, they filed for trademark protection for her name in ten International Classes of goods and services which include the following (descriptions have been abbreviated):
International Class 003 for skin care and hair products
International Class 006 for key chains
International Class 009 for DVDs, CDs, audio and visual sound recordings, ring tones, cellphones, eyewear
International Class 10 for baby teething rings
International Class 012 for baby strollers
International Class 016 for books in the field of music, motion pictures, musical performers; photographs; posters
International Class 18 for bags, including diaper bags, handbags, luggage, leather bags and wallets
International Class 20 for baby bouncers, high chairs, playpens, changing tables, frames
International Class 21 for mugs, glassware, baby drinking cups
International Class 24 towels, baby bedding, flags, baby blankets
International Class 26 for hair accessories, including bows, barrettes, headbands
International Class 28 for playing cards, balls, baby activity toys, baby swings
International Class 35 for product merchandising, online retail stores, entertainment marketing services
International Class 41 for entertainment services, online gaming, dance events, live musical performances, fan clubs
As you can see, the range of goods covered ranges from all manner of baby products to a wide variety of entertainment. Besides providing fodder for celebrity news junkies across the world, there are plenty of intellectual property principles that can be gleaned from the story of little Baby Blue Ivy.
Can you prevent others from using a name?
When the story of the attempts to trademark little Blue Ivy’s name hit the entertainment shows, many commentators theorized that the parents were attempting to prevent others from “stealing” their daughter’s name for personal use. For many celebrities, and common folk for that matter, coming up with an unusual and novel name for children is a popular endeavor. There are basically two types of intellectual property protection that might apply in this situation: copyrights and trademarks. Let’s look at each.
Can a name be protected by copyright?
According to the Copyright Act, U.S.C. §102, “Copyright protection subsists, in accordance with this title, in original works of authorship fixed in any tangible medium of expression, now known or later developed, from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device. Works of authorship include the following categories:
(1) literary works; (2) musical works, including any accompanying words; (3) dramatic works, including any accompanying music; (4) pantomimes and choreographic works; (5) pictorial, graphic, and sculptural works; (6) motion pictures and other audiovisual works; (7) sound recordings; and (8) architectural works.
As you can see, names are not listed as being eligible for protection under Copyright Law. Circular 34 goes on to specifically exclude names, “Copyright law does not protect names, titles, or short phrases or expressions. Even if a name, title, or short phrase is novel or distinctive or lends itself to a play on words, it cannot be protected by copyright.” You can read the entire text of the Circular at http://www.copyright.gov/circs/circ34.pdf. Regardless of how creative and unique the name, it cannot be protected by copyright.
Can you trademark a name?
According to the United States Patent and Trademark Office, “a trademark is a word, phrase, symbol or design, or a combination of words, phrases, symbols or designs, that identifies and distinguishes the source of the goods of one party from those of others.” Unlike a copyright, a trademark can protect words or combinations words, like a name; however, trademarks can only protect use of a name as it is connected to goods and/or services. Anyone is free to name their child Blue Ivy Carter, but if trademark registration is awarded in any or all of the classes above, the trademark owner would be able to prevent others from using the name in connection to similar good and services.
Does this mean there are already goods and services with the name BLUE IVY CARTER?
No, not in connection with the present application. There are two types of trademark applications: use in commerce and intent-to-use. For the former, the owner must provide the U.S. Patent and Trademark Office an actual date in which the mark began use in commerce for the specific goods listed in the description as well as provide specimens showing the mark in use for that specific class of goods.
The second type of application is called an intent-to-use application, and this is the type of application filed in the scenario described here. To file an intent-to-use application, the owner must have an intention to use the mark in commerce in the near future: according to the 15 USC 1051 (b), “This means you have a bona fide intent to use the mark in commerce; that is, you have more than just an idea but are less than market ready (for example, having a business plan, creating samples products, or performing other initial business activities).” Upon filing for an intent-to-use application, the registrant must file a declaration stating his or her strong intention to use the mark in commerce. Once the application is allowed, the owner must then either file a Statement of Use showing use of the mark in commerce in connection with goods or services or file an Extension of Time. Thereafter, every six months, for a total of three years, the applicant must continue to file time extensions until they are ready to use the mark in commerce. After the three year period, that application will be considered abandoned. In effect, a business owner is buying themselves an at least three year window in which to use the mark.
Why else might Jay-Z and Beyoncé have filed for trademark protection?
Even if Jay-Z and Beyoncé never had any serious intention of selling goods under the trademark BLUE IVY CARTER, there may have been other motivations for their application for trademark protection. They may have been concerned that others may attempt to capitalize on their fame and notoriety. In fact, their fears may not have been unfounded, as records at the U.S. Patent and Trademark Office show multiple other similar filings in the days and weeks around Blue Ivy’s birthdate. By filing for trademark protection, they may have been able to prevent business owners and individuals from using the trademark BLUE IVY CARTER.
Can two businesses use the same mark?
At present, there are already two registered trademarks for BLUE IVY. A Massachusetts woman uses the trademark BLUE IVY in connection with her event planning services. It may be interesting to note that even though she has been using the mark since October of 2009, she did not take action to register the mark until February of 2012. A second registrant uses the same mark in connection with a retail store that sells clothing, jewelry, and giftware.
It is possible and even likely that two people will seek trademark protection for the same or very similar trademarks. According to the USPTO, one of the key elements that Examiners utilize in their determination as to whether or not a mark should be registered is the likelihood that the public will be confused at the similarity of the marks. In our scenario, it is possible that the current application may be rejected for the class or classes that have any overlap with the two registered marks, but they may be allowed to use the mark in connection with other goods and services. Sometimes, trademark owners use agreements to coexist without litigation. In an October 18, 2012 interview with the Boston Herald, one of the holders of registered trademarks for BLUE IVY was quoted as saying, “It’s like they caused me to create more opportunity for myself.”
It remains to be seen exactly what types of products the power couple may eventually market in connection with their baby’s name and what types of litigation may ensue in the process. As the celebrity watch groups are again buzzing with rumors of a second pregnancy for the couple, perhaps Jay-Z and Beyoncé should perform a basic search of the USPTO website before they come up with the next great baby name!