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03 September 2020
Marlon Brando was one of Hollywood’s greatest icons. Upon his death in 2004, his million dollar estate was turned over to Brando Enterprises Inc. to manage. But in December 2017, a local cosmetic company applied to register two marks respectively for “Marlon Brando” and the Chinese equivalent on goods “after-sun moisturizers, hair conditioners, hair mask, bathing lotion, etc.” in class 3 (the disputed marks) in China.
Brando Enterprises naturally opposed this move. In the end, China National Intellectual Property Administration (CNIPA) rules in favor of Marlon Brando by holding that:
According to Yang Mingming, Partner, Wanhuida Intellectual Property, in China, the name of a person is protected as a kind of personality right, which would no longer exist from the death of a natural person.
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“Notwithstanding this, a celebrity’s passing away would by no means result in the loss of property interests attached to the name of the deceased celebrity. As such, many trademark squatters may apply to register the celebrity’s name as a trademark to take a free ride of the fame of the name.”
He adds that in some countries, the property interests of a celebrity’s name may be protected via the right of publicity, which generally is defined as an individual's right to control and profit from the commercial use of his/her name, likeness and persona, and can be protectable in the certain period after the celebrity’s passing away.
“But in China, there is no law about the right of publicity, while the personality right would be deemed as lost with the death of the person,” he says. “As such, the malicious registration of a celebrity’s name as a trademark has not been viewed as infringement against the prior right or interest, but is prohibited from the perspective of protecting the public interest. If the deceased celebrity is in the fields such as politics, economy, culture, religion and nation, then this trademark registration may be determined to have “any other negative impact” provided in Article 10.1.8 of the Trademark Law. Like this case, the malicious registrations of “Bruce Lee” and “Michael Jackson” were deemed having “negative impact” as well.”
Yang adds, “Meanwhile, as the celebrity’s name can function as a quality assurance to a consumer, the malicious registration of a deceased celebrity in a specific industry or region may be viewed “deceptive” to the quality, reputation, craftsmanship and other characteristics of the goods or services designated by the trademark as provided in Article 10.1.7 of the Trademark Law. In the JOHN LENNON case, the CNIPA thought the consumers may associate the clothing products bearing the disputed mark “JOHN LENNON” with Mr. John Lennon, the famous artist, leader or co-leader of the British rock group the Beatles, and have misidentification about the quality and credibility of the goods.”
Furthermore, the newly released Civil Code of China (to be effective on 1 January 2021) incorporates provisions recognizing the value of a deceased nature person, inter alia the person with influence.
“From the perspective of trademark, registration of a deceased celebrity’s name without legitimate authorization may, on the one hand, do harm to the celebrity’s families mentally and assets to the property successor financially, and on the other hand, would bring detriments to the public as well as the social discipline,” says Yang.
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