Wife of late NZ rugby legend loses control of hubby’s IP in trademark battle with his lawyer
22 August 2024
Nadene Lomu, wife of the late New Zealand professional Rugby Union player Jonah Lomu, lost a trademark case with the recent ruling of the Intellectual Property Office of New Zealand (IPONZ) favouring Christopher Darlow, Lomu’s lawyer and executor of his will.
Lomu died of kidney disease in November 2015. The rugby legend left the shares of his company, Stylez, to his sole director, Darlow.
In 1997, Lomu had his name, image and persona registered as trademarks under Stylez. The long-time member of New Zealand’s national rugby squad is said to be one of the greatest and most influential rugby players in the world. That same year, Stylez, with Lomu as director and shareholder, entered an exclusive licence to use the mark Jonah Lomu, including for television and film.
On January 4, 2016, two months after her husband died, Nadene made some changes to Stylez’s records by increasing her shareholdings. Upon discovering her actions, Darlow removed Nadene as a shareholder of Stylez.
In 2017, Nadene was named as a sub-licensee in an agreement which likewise sought to vary the original 1997 trademark that the athlete had registered. The variations included a modification to the “termination” clause.
Nadene then applied for the trademark registration of Jonah Lomu in classes 3, 5, 14 and 41 in 2021. Class 41 covers film and TV production.
Stylez sought to invalidate these trademark registrations, which were made in bad faith and therefore invalid, according to Darlow.
With the IPONZ ruling, Nadene Lomu loses the right to decide how her late husband’s intellectual property rights are used and who gets to use these.
In addition, the ruling also allowed UK production company Sylver Entertainment to proceed with a documentary film on the life of the rugby great. Darlow had approved the project.
Nadene has always been against the documentary or any movie about her husband, writing to the New Zealand Film Commission with a cease and desist letter in 2023. She claimed that the film, titled Lomu, infringed her trademark right. The documentary was stopped following this development. It was because of this cease and desist notice that Stylez brought the invalidation proceeding against Nadene.
Blake Carey | Senior Associate @ AJ Park, Wellington
According to Blake Carey, senior associate at AJ Park in Wellington, the context of the dispute revolves around Stylez’s plans to authorize the production of the documentary. He revealed there are no relevant personality or publicity rights and limited other legal options in New Zealand, by which Nadene or the Lomu estate may seek to prevent such a documentary film from being made.
“The assistant commissioner emphasized that the 1997 License Agreement provides Stylez the exclusive right to the Jonah Lomu mark in relation to television and film. No one else, including Mrs. Lomu, may use the Jonah Lomu mark in connection with these services without Stylez’s prior authorization,” said Carey.
“The assistant commissioner recorded that the related 2017 deed granted Mrs. Lomu a sublicense for certain uses of the Jonah Lomu trademark, including use of the name on her fan webpage. But these sublicenses did not include a right for Mrs. Lomu to veto any television or film production,” added Carey.
Furthermore, the assistant commissioner found that the 1195732 Jonah Lomu registration was contrary to law. At the time of its filing, Nadene could not have used the trademark without Stylez’s written approval.
According to Carey, a key takeaway from this case is that bad faith cases are frequently won on “breach of contract” grounds. Nadene Lomu was simply in breach of her contract with Stylez.
The importance of clear drafting comes into play here. The clearer the wording of the relevant contract, the easier it will be for the invalidity applicant to convince IPONZ that the trademark owner is in breach. Carey cited the two excerpts of the 1997 license as varied, as good examples of clear drafting: “The first excerpt clearly stated that, other than in connection with her fan page and accounts of her personal experiences, Mrs. Lomu could only use the Jonah Lomu mark ‘as Stylez approves in writing on a case by case basis if the circumstances justify it.’”
He continued: “The second excerpt explicitly stated that Mrs. Lomu ‘did not have a veto right’ over what Stylez could do with the Jonah Lomu marks. The excerpts were essentially a complete answer to Mrs. Lomu’s contention in her cease and desist letter that Stylez was misusing the Jonah Lomu mark.”
The case also shows the significance of “exclusive” licence arrangements. Nadene Lomu was mistaken about the effect of the 1997 licence, including its exclusive nature. “In our experience, many persons, including lawyers, do not fully appreciate the effect of an exclusive licence. Under a true exclusive licence, no one else, including the licensor, may use the IP,” explained Carey.
Another key takeaway is the importance of following the correct contractual process. “Although the judgment did not go into detail on this point, there is some reference to Mrs. Lomu attempting to terminate the 1997 varied licence but allegedly failing to comply with the procedural formalities in the contractual termination mechanism. If a contract specifies a method for terminating the contract,” stressed Carey, “then this method must be followed to the letter.”
Nadene Lomu has approximately until September 9, 2024, to appeal.
- Espie Angelica A. de Leon
