What’s In A (Nick)name?
Earlier this month, cereal company Kellogg’s took action against Australian tennis player Thanasi Kokkinakis to stop him using his nickname ‘Special K’ commercially. The company wants to prevent the 21-year-old from using the term ‘Special K’ as part of a branding campaign that would include clothing and tennis wear.
“Special K is obviously an iconic cereal brand for Kellogg’s in Australia” a spokeswoman for the company’s Australian division told the Adelaide Advertiser. Justice Brigitte Markovic sent the case to a mediation conference in August and it will return to the federal court on 31 August.
Situations like this are becoming increasingly common place when it comes to the big money world of celebrity image rights. Virtually every celebrity on earth has various intellectual property rights attached to all aspects of their lives (including their names, likeness and relevant logos), the exact nature of which varies from country to country. For example, unlike in the US, the UK does not have a well-defined law to protect image or personality rights. Instead, celebrities are protected by a combination of IP solutions such as trademark infringement, data protection, copyright infringement and passing off. However, many argue that this provides inadequate protection for highly valuable celebrity images.
And, as in the case of Mr Special K (Thanasi Kokkinakis), the celebrity nickname is becoming an important part of your average celeb’s image rights arsenal.
Fans often create nicknames for particularly beloved athletes, musicians, and other celebrities. US sports stars in particular boast a variety of colourful monikers, from New York Yankees’ baseball infielder Alex Rodriguez, or “A-Rod”, Los Angeles Lakers’ point guard Earvin “Magic” Johnson, and professional golfer Eldrick Tont “Tiger” Woods. All of whom hold trademarks on their nicknames, which earn them millions annually.
And, on this side of the pond, the situation is no different. Earlier this year, the Irish professional mixed martial artist, Conor McGregor, filed for trademarks on his name and his nickname, “The Notorious”, as he starts to prepare for life away from the ring. The reigning UFC lightweight champion filed the trademark through his company McGregor Sports and Entertainment and it stated that he “intends to use the trademarks with products such as video games, aftershave, books, clothing, restaurants, barbershops and health clubs”.
And, in the world of football, Paul Gascoigne has procured trademark registrations for his nickname “Gazza”.
Moving away from the world of sport, a huge number of celebrities have trademarked their nicknames, and in many cases become better known as their alter egos – everyone from 50 Cent (Curtis Jackson), Pitbull (Armando Christian Pérez) and even the likes of Jenni “JWoww” Farley of Jersey Shore ‘fame’ have successfully filed applications and make money off their nicknames.
Sometimes even a celebrity’s fans have nicknames —Taylor Swift fans are commonly called “Swifties”, One Direction have “Directioners”, Katy Perry has “Katycats”, and “Selenators” are fans of Selena Gomez.
While there are no applications (yet) for Directioners or Selenators, Taylor Swift and Katy Perry have filed applications for Swifties and Katycats, across a myriad of different sectors, from concerts and gaming, to apps and educational services.
So, it’s clear to see that although celebrity nicknames often begin life as simple terms of endearment generated by fans for their own use, these monikers are quickly picked up by savvy celebs keen to own every aspect of their public image.
Celebrities arguably own the IP rights to their nicknames the moment it can be proven that their nicknames are synonymous with them and therefore likely to cause confusion (and loss of income) were anyone else to use them in connection with goods and/or services not endorsed by the celebrity.
IP lawyer Wayne Beynon is head of Intellectual Property and a Partner at Cardiff & London based law firm Capital Law www.capital-law.co.uk