Brands: Merchandising and the Elvis Presley case.

In a legal battle last year a London trader triumphed over the Elvis Presley estate when the Court was asked to determine if anyone had the right to use Elvis Presley's name and signature on certain products in the UK. The case has attracted considerable attention both from the popular press and legal commentators. The Court's judgment is an interesting one in a number of respects and is of particular importance to those involved in merchandising activities.

The parties

The plaintiff was Elvis Presley Enterprises Inc. of Elvis Presley Boulevard, Memphis, Tennessee ("EPEI"). It was not disputed that EPEI was the legal successor to the Elvis Presley estate and was entitled to carry on Elvis Presley's merchandising activities. The defendant was Mr Sid Shaw, who had run a London based business selling Elvis Presley memorabilia since 1979 under the name "Elvisly Yours". Over the years, EPEI and Mr Shaw had been involved in a number of legal disputes, both in the US and the UK, concerning rights to the Elvis Presley name.

The marks

This dispute was an appeal to the High Court by Mr Shaw against a Trade Marks Registry decision to allow EPEI to register various ELVIS PRESLEY trade marks, which Mr Shaw had opposed. There were three marks in question: simple word marks for ELVIS and ELVIS PRESLEY and also a signature mark for ELVIS PRESLEY in a script claimed to be the handwriting of the man himself. All marks were applied for by EPEI in Class 3 for toiletries and cosmetics under the Trade Marks Act 1938. There was little or no evidence of use in this class adduced by EPEI. By contrast Mr Shaw had traded extensively in Class 3 Elvis Presley merchandise and already had his own registrations for the mark ELVISLY YOURS, including in Class 3, which EPEI did not seek to challenge.

The decision

The appeal was heard by Mr Justice Laddie who found for Mr Shaw on the basis that none of the marks applied for by EPEI was distinctive. Also, he found that even if the marks were distinctive, he would probably have allowed Mr Shaw's opposition, based on conflict with Mr Shaw's existing ELVISLY YOURS registration in Class 3.

The Judge began by making it clear that EPEI could not (trade marks aside) own the words "Elvis" and "Elvis Presley". As he said, "there is nothing akin to copyright in a name". In a memorable line he continued:

"Even if Elvis Presley was still alive, he would not be entitled to stop a fan from naming his son, his dog or goldfish, his car or his house "Elvis" or "Elvis Presley"..."

Similarly, outside the protection of copyright Elvis Presley did not own his appearance. It followed that EPEI could not have greater rights than Elvis Presley himself.

The Judge then considered each application in turn, beginning with the ELVIS word mark. This was an application under Section 9 of the 1938 Act, requiring distinctiveness to be shown. Under Section 9, "distinctive" is defined as meaning "adapted in relation to the goods in respect of which a trade mark is registered or proposed to be registered to distinguish goods". In determining whether a trade mark is "adapted to distinguish", the following may be taken into account:

• the extent to which the trade mark is inherently adapted to distinguish; and
• the extent to which, by reason of use or any other circumstances, the trade mark is in fact adapted to distinguish.

The Judge rejected the approach of the Registrar who had decided that the marks applied for were distinctive, partly on the basis of Registry guidelines concerning applications in Class 3. The Registrar had stated that feminine first names were generally regarded as non-distinctive for Class 3 goods, but that no such similar objection was taken to masculine first names. The Judge said that any policy guidelines should apply equally to masculine names, but that in any event guidelines should provide a starting point only. Each mark must be examined on its own merits, taking into account the goods or services for which it had been applied and all the circumstances.

The Judge then considered the arguments of both parties' counsel. For Mr Shaw, it was argued that the fame of Elvis Presley made the mark less rather than more inherently distinctive. Also, it was clear that there was little or no evidence of use of the mark in Class 3 adduced by EPEI and no other special circumstances under Section 9.

For EPEI, it was argued that had Elvis Presley still been alive and made the application himself, he would be entitled to a registration. Also, it was argued that the Judge should consider the position had the applications been made before Elvis Presley became famous.

EPEI's arguments were rejected on the grounds that the date of application is the crucial date on which registration requirements must be met and that the position at other points in time is of no relevance. In particular, the Judge referred to the case of TARZAN Trade Mark [1970] RPC 450. In that case TARZAN, which had once been a distinctive word, had, by the time it was applied for as a trade mark, become a household name following the success of the TARZAN books and films. If the mark had been applied for at the time of its creation, no doubt registration could have been achieved. In fact a registration for TARZAN in respect of films has since been achieved under the 1994 Act.

The Judge concluded, by analogy, that ELVIS as a trade mark had very low inherent distinctiveness. Members of the public would purchase ELVIS merchandise because it bore the name and likeness of Elvis Presley and not because it came from a particular source. Also, others were likely to want to use the name in connection with their own goods without any improper motive.

It was argued for EPEI that times have changed since the TARZAN case and that there was a general public awareness of character merchandising, as had been recognised by the Court in the case of Mirage Studios v Counter-Feat Clothing [1991 FSR 145] ("The Ninja Turtles" case). In that case the Court had said "in general, the public expect to buy what they think they are getting, namely the genuine article", implying that the "genuine article" must emanate from the plaintiff, being the successor to Elvis Presley's merchandising activities. EPEI's counsel tried unsuccessfully to persuade the Court that this principle applied here. The Judge rejected this argument. In his view the public was indifferent as to the source of a product bearing the image of a famous person or a fictional character. He accepted that an inference of association with a particular trader could be drawn as a result of "the peculiarities of the way goods are marketed or advertised", for example in some (but not necessarily all) cases where products bear the word "official". Although such an inference was drawn in the Ninja Turtles case, it was not an inference necessarily to be drawn in all cases. In particular, here, use of the word "Elvis" on EPEI's product did not indicate trade origin.

Having decided that the mark ELVIS was not inherently distinctive, the Judge went on the consider whether the mark was in fact distinctive as a result of use or "other circumstances" under Section 9. EPEI had filed a single brief statutory declaration which contained no evidence of sales of Class 3 product in the UK and in fact the Judge decided that the evidence filed actually undermined EPEI's case because there was no use of ELVIS or ELVIS PRESLEY in a trade mark sense.

The Judge also rejected the suggestion that the fame of Elvis Presley was a circumstance which was relevant to the issue of distinctiveness. In fact the opposite applied:
"Elvis Presley's fame leads away from distinctiveness in the trade mark sense."

Exactly the same approach was taken to the ELVIS PRESLEY word mark, which was also denied registration.

The signature mark

Signatures as trade marks are expressly referred to in Section 9 of the Trade Marks Act 1938, and it has been generally assumed that all signatures are registrable (unless they are quite obviously not distinctive, for example, if they take the form of plain capital letters or perfect copperplate script) . However, in this case the Judge made it clear that while signatures are prima facie distinctive, they are not necessarily so.

The Judge admitted that initially he was considering allowing the signature mark, subject to a disclaimer in order to clarify that the mark protected the script only. However, in the event, he decided that the signature (which appeared in simple cursive script) was not in a highly stylised form and was therefore not distinctive. As with the other two applications, there was no evidence of use on Class 3 goods in the UK and no other circumstances relevant to distinctiveness. Again, the Judge found that even if the signature mark were registrable, the similarity between it and ELVISLY YOURS (which was often represented in a script form), would be likely to give rise to deception and confusion.

This aspect of the case caused some concern as it had been the practice for signatures to be registered as a matter of course. However, the case may be limited to its strange facts: a recent decision concerning the validity of a signature mark has distinguished the Elvis Presley case. In Healing Herbs Limited v Bach Flower Remedies Limited a signature mark for the word BACH was allowed to remain on the register subject to a disclaimer of the word BACH itself which was found to be invalid. The Court found that in contrast to the Elvis Presley case, the signature mark was in a stylised form, had been used extensively by the trade mark owner and was recognised by customers as a distinguishing feature.

The future for merchandising

Although this case concerned trade mark applications made under the 1938 Act, the Court's approach will no doubt be of relevance to the issue of distinctiveness under the 1994 Act also. At first sight, this decision has significant negative implications for the merchandising industry which is of course based on the exploitation of names and likenesses of famous personalities as well as fictional characters.

Following the outcome of this case, it may well be said that if the public and the Courts do not care whether a product is "genuine" product or not, many lucrative merchandising contracts would be worthless. However, the facts of the "ELVIS" case were unusual: the personality concerned was one of the most famous in the world and had been deceased for some time. Further, EPEI had no existing trade mark registrations in the relevant class in this country and no history of trading in the goods in the UK. On the other hand,

Mr Shaw had traded in the goods in the UK and had his own registrations for ELVISLY YOURS. In the case of modern day character merchandising, for example goods sold under the names of sports stars or cartoon characters, it is unlikely that third parties would have already traded in products bearing the person or character. However, with the passage of time it may become more attractive for third parties to produce goods featuring highly successful personalities or characters, and unless registered trade marks are in place (or other intellectual property rights, such as copyright can be relied on) those personalities or the creators of fictional characters may be faced with a similar problem to that faced by EPEI in this case.

The case is under appeal which is expected to be heard in November of this year.

Princess Diana marks

The issue of personality marks is of course highly topical following Princess Diana's death and the efforts of her estate and memorial fund to register trade marks for the purposes of merchandising. The Trade Marks Registry has very recently announced its objection to the registration of photographs of Princess Diana as trade marks. This will not come as a great surprise to many trade mark lawyers. Although it is possible for photographs to be registered as trade marks in certain circumstances, registration of photographs of the Princess (which have not to date been used as trade marks) would have resulted in a very powerful monopoly over the use of her image for commercial purposes. Clearly the Registry was not comfortable with this and quoted, in support of its decision, the Elvis Presley case.

It is understood that the memorial fund is making further representations to the Registry in an effort to overcome its objections.

Cameron McKenna represented one of the parties in each of the Elvis Presley and Bach Flower Remedies cases.