The other morning, I woke up to a notification that (British model, singer, and actress) Cara Delevingne had followed me on Instagram. After congratulating myself on how hip I was to recognize the name of a (currently) famous person, and contemplating Cara and I’s eventual life together, I then realized from the actual Instagram handle that it was not THE Cara Delevingne now following my amazing Instagram life but someone (for whatever bizarre reason) merely posing as her.
My disappointment got me thinking about the legal challenges faced by famous persons and celebrities in protecting their names from use by others in this social media age. If you are a celebrity (or quasi-celebrity) these days, what can you do to prevent others from posing as you on social media?
Celebrity Name as Trademark Infringement
Under very exacting circumstances, celebrities (and even us normal folk) are able to assert trademark rights in their first or family names, and possibly both (“Ralph Lauren”, anyone?). A personal name can be a trademark if it is used in commerce and the consuming public associates the name with specific products or services sold (think “McDonald’s” for hamburgers, or “Boeing” for airplanes).
However, registration of personal names, at least at the Federal level, can be quite challenging, as explained in a previous post I wrote about Beyonce and Jay-Z’s failed attempts to register the names of their children. For a variety of policy and practical reasons, the United States Patent and Trademark Office (USPTO) carefully scrutinizes applications for personal name trademarks and many fail at the examination stage.
(Note: Based upon my basic search of the USPTO’s Trademark Electronic Search System, it does not appear that Ms. Delevigne has registered or has attempted to register her name as a trademark).
Assuming for the sake of argument that Ms. Delevingne or other celebrity managed to register her name successfully with the USPTO, might she be able to pursue this Instagram imposter for infringement? Under The Lanham Act (15 U.S.C. §1051 et seq.), trademark infringement of a registered mark involves the use of any reproduction, counterfeit, copy, or colorable imitation in order to sell or advertise goods or services that is “likely to cause confusion” or mistake, or to deceive (15 U.S.C. §1114(1)).
In addition to an injunction against the offending user to stop them from the unauthorized use, a mark owner who proves all of the elements of trademark infringement can recover profits received by the defendant as a result of their use of the trademark, any actual damages suffered by the mark owner, as well as court costs involved (15 U.S.C. §1117(a)). In certain exceptional cases, the court may also award attorney’s fees to the trademark owner.
But what if the celebrity has not yet registered her name as a trademark with the USPTO (or has had her application rejected)? Fortunately, the Lanham Act affords even owners of unregistered marks a claim under the “likelihood of confusion” standard described above.
In other words, Federal law prohibits someone else from using even an unregistered trademark in a way that is likely to deceive or cause confusion about the nature or origin of a product or service (15 U.S.C. §1125(a)(1)). However, in order to bring a claim for infringement, the celebrity would still have to prove that the defendant used the mark “in commerce” to designate particular goods or services (as being connected with the celebrity), that such use was unauthorized, and that the unauthorized use caused confusion or is likely to cause confusion amongst the consuming public.
While a strong case could be made for likelihood of confusion based upon the identical personal name used, to bring a viable trademark infringement claim in this matter Ms. Delevingne would have to show her earlier use of the name in interstate commerce (for example: sale of handbags, aluminum siding, reverse mortgages, etc.), and that the offending use was intended to sell or advertise goods or services not authorized by her. As the fake Ms. Delevingne’s account was removed before I could check it out, it is unclear to me whether or not the account was posing as the British model-actress in order to actually hawk merchandise or services, or was just a bot intended to pump up Follower numbers.
Trademark Dilution of Famous Names
Assuming a celebrity can meet their very exacting standards, Federal law in the form of the Trademark Dilution Act (and the more recent Trademark Dilution Revision Act) might afford another option against a social media masquerader.
Unlike with trademark infringement, which requires the trademark owner demonstrate at least a likelihood of confusion between the senior and junior uses, trademark dilution theory offers the owner of a famous trademark a means of controlling its use regardless of whether likelihood of confusion actually exists.
To bring a claim for trademark dilution, the trademark owner must allege that (1) their mark is famous and distinctive; (2) the defendant is using the mark in commerce; (3) the defendant’s use began after the mark became famous; and (4) the defendant’s use of the mark is likely to cause dilution by either blurring (i.e., usage that waters down of the uniqueness of the brand) or tarnishment (i.e., usage which somehow brings the mark into a negative light).
The biggest hurdle in a dilution claim is usually demonstrating that the mark is sufficiently famous to fall within the Acts’ protections. Recent decisions in trademark dilution cases highlight that the mark owner must be prepared to show that their mark is essentially a “household” name before they can pursue a claim.
The real Cara Delevingne would have to be able to prove that her name is not only commonly known to the public (which, my recognition of her notwithstanding, is not a given), but also that her household-level name was used in commerce and in a way likely to cause the name to be blurred or tarnished. Again, because I wasn’t able to view fake Cara’s Insta-profile, it is hard to say if the real Cara could meet this standard–even if she was able to demonstrate the appropriate level of fame.
The State and Federal Option: Unfair Competition
Federal (and many States’) unfair competition laws allow a celebrity to object to the use of her name and/or likeness in a commercial context if the use is likely to confuse consumers in the intended market that the celebrity is endorsing the good or service promoted by the offending user (15 U.S.C. §1125(a)).
To bring an unfair competition at the Federal level under The Lanham Act, a trademark owner must be able to prove: (1) a false or misleading statement of fact; (2) that is being used in a commercial advertisement or promotion; (3) that deceives or is likely to deceive consumers in a material way; (4) in interstate commerce; and (5) has caused or is likely to cause competitive or commercial injury to the mark owner.
From these elements, we can see that unless fake Cara Delevingne’s actual name happens to be “Cara Delevingne” (or something very, very close), the real Cara could probably prove that the usage was false or, at the very least, misleading. However, as with trademark infringement and trademark dilution, the real Cara might have an uphill climb given the absence of proof that fake Cara was utilizing the name both in a commercial manner and inter-State. Moreover, it is unlikely that, say, a movie studio or record label would decide they were going to work with fake Cara instead of the actual Cara because of these Instagram activities and, as a result, it would be difficult to say to what degree the real Cara’s commercial interests are really affected.
You’ve Got to Fight, For Your Right…of Publicity
A relatively new addition to this body of law, the right of publicity (also known in some jurisdictions like Arizona as “appropriation”) is the only one of the legal protections here not based on a specific Federal law. Currently, the right of publicity is recognized in over half of our United States, either by actual statute or common law (i.e., an established history of court decisions which have formed such law).
Commonly viewed by legal scholars as a subset of the right to privacy, the right of publicity is the right to control the commercial value of one’s name, likeness, voice, signature, or other personal identifying traits that are unique to oneself. In other words, the right of publicity protects the commercial value of one’s fame and is intended to prevent others from stealing or appropriating that value for their own gain.
For celebrities, publicity theory affords them the right to control the commercial use of her name and/or likeness. This includes objecting to unauthorized use of the celebrity’s name or likeness, even if no confusion exists with the use among the consuming public.
In this case, right of publicity might be the real Cara Delevingne’s strongest cause of action against fake Cara’s usage of her name, depending on which State she decided to bring such a claim in. Not only is the fake Cara using the exact personal name of the real Cara, but the real Cara could argue that the fake Cara was misappropriating the value associated with the name, posing as her on Instagram in order to boost her Instagram “followers”, with the intent of ultimately being able to monetize this or perhaps divert curious users to some affiliated commercial site and, by extension, extract the commercial value inherent in the name.
Ben Bhandhusavee is the Managing Attorney for BhandLaw, PLLC, a Phoenix business and technology law firm working with start-up companies, creative intellectual property, Internet and digital media matters, and complex corporate M&A and technology transactions. Ben can be reached at (602) 222-5542 or by e-mail at firstname.lastname@example.org