A question of the legality of reusing proper names in fiction.

[JerH]

@acsenray

But this has nothing to do with trademark law. It’s a right of privacy issue – specifically misappropriation/right of publicity. He would have to prove that your use of the name “Andrew Lloyd Webber” is an appropriation of his identity. Sometimes it’s easy; sometimes it’s not so easy (for example, what if your name is also Andrew Lloyd Webber?). So whether or not Webber holds a valid registered trademark in his name is irrelevant to this issue.

True, but the trademark would likely still come into play - in all likelihood, ALW’s name is trademarked for musical purposes, so the kazoos would be covered by it.

Now, hold on there. Not so fast. There’s no reason why the title The Andrew Lloyd Webber Story is automatically a misappropriation of the composer’s identity. He would have to show that you used the name in order to get consumers to believe the book had something to do with him.

True enough - but unless my name was also Andrew Lloyd Weber and/or I put a big sticker on the front saying “not Andrew Lloyd Weber the composer - this is about a different guy”, then he’d have a pretty good case against me.

[Peter_Morris]

@acsenray

Ah, but that’s only after Apple Computers went into the music business.

AIUI, on the information in the link, the first lawsuit was just over the use of the name. Apple computers had to pay damages, and this was before they had got involved with music.

[Acsenray]

@JerH

True, but the trademark would likely still come into play - in all likelihood, ALW’s name is trademarked for musical purposes, so the kazoos would be covered by it.

Okay, this is getting complicated, because we’re dealing with several levels of hypothesizing.

So far as I can tell, Andrew Lloyd Webber currently has no valid registered U.S. trademark on his name. There’s an abandoned registration on “Andrew Lloyd Webber” for “musical sound recordings; video discs featuring entertainment programming; and cinematographic films featuring entertainment”; “lyrics and music printed in sheet or book form; posters, postcards, graphic art prints, photographs and printed show programmes”; and “entertainment services in the nature of stage shows and musicals.” And there’s an abandoned registration for “The Music of Andrew Lloyd Webber” for the same subject matter.

Let’s pretend that these registrations are live.

A basic issue is that in general you cannot hold trademark rights in a subject area that you aren’t in. So unless Webber is licensing his name to musical instrument manufacturers, he cannot enforce trademark rights against a kazoo maker (there’s no such thing as “musical purposes”).

It’s going to come down to a question of likelihood of confusion regarding the soruce of goods or services. Webber doesn’t have a slam-dunk case here, because the defendant will argue – well, Webber’s not in the kazoo business, so there’s no confusion. Webber’s going to have to come back to the misappropriation question – you’re implying that I’m endorsing your kazoos when actually I have nothing to do with them.

The basic difference here is that trademark infringement is a claim you generally make against a competitor – someone who’s in the same business as you are. Misappropriation claims can be made against anyone who’s using your name, likeness, or identity.

True enough - but unless my name was also Andrew Lloyd Weber and/or I put a big sticker on the front saying “not Andrew Lloyd Weber the composer - this is about a different guy”, then he’d have a pretty good case against me.

He’ll have a good case because of the right of publicity/misappropriation issue, not because of the trademark issue. He’ll probabaly allege trademark infringement, but that argument is going to be far more complicated and harder to prove. Whereas, the misappropriation argument is going to be much more clear.

AIUI, on the information in the link, the first lawsuit was just over the use of the name. Apple computers had to pay damages, and this was before they had got involved with music.

In both previous cases, there was a settlement, so the true state of the law is not made clear. Basically, in each case, Apple Records insisted that Apple Computers stay out of the music business and that would be the only claim really supported by trademark law. If each of these cases had made it to a legal conclusion, the judge or jury would have said “look, so long as Apple Computers is not in the music business, there’s no problem.” Here, the parties just worked it out for themselves with cash and with promises on the part of Apple Computers. Each time, Apple Records believed that Apple Computers had changed its position and moved into music, so the issue got re-ignited.

[JerH]

OK, keep in mind that my trademark knowledge is mostly gleamed from talking about his job over drinks with a trademark attorney friend, and may thus be wrong; in the ALR case, even if Mr. Webber doesn’t in fact hold a trademark on the name for musical instruments, I (if my name were also Andrew Lloyd Webber) would not be granted a trademark for that name for musical instruments because the two areas are close enough that the same name in both areas would cause confusion. In all likelihood, his trademark on the name for musicals would come up when he sued me, even if (I acknowledge) it does not grant him the right to that name for the specific market I’m in.

[Acsenray]

@JerH

I (if my name were also Andrew Lloyd Webber) would not be granted a trademark for that name for musical instruments because the two areas are close enough that the same name in both areas would cause confusion.

It’s likely that this would be the case if the action arose from a trademark application. The issues would be slightly different in a trademark infringement case – presumably the kazoo manufacturer is already producing kazoos and that’s what Webber is objecting to.

However, I’ll stand by my previous statement that in this case, the misappropriation argument is going to be much easier than the trademark infringement argument.

There would also be the question of whether WEbber can actually claim such trademark rights. Perhaps the reason he abandoned the registration is because he was not going to be able to show that he’s using his name as a trademark after all.

And, as is actually the case, if there is no trademark registration, then there’s no trademark issue at all. It’s purely a misappropriation claim.

[Gfactor]

An obscure aside: You can’t trademark a name if it is primarily merely a surname.

[Gfactor]

@acsenray

Now, hold on there. Not so fast. There’s no reason why the title The Andrew Lloyd Webber Story is automatically a misappropriation of the composer’s identity. He would have to show that you used the name in order to get consumers to believe the book had something to do with him.

Stumbled upon this while doing some legal research:

In Parks v. LaFace Records, 76 F. Supp. 2d 775 (E.D. Mich. 1999), Rosa Parks sued the Defendants to prevent the use of her name as the title of a rap song written, performed, marketed and distributed by the Defendants. Ms. Parks objected to the use of her name due to the content of the song. The United States District Court for the Eastern District of Michigan held that “because the title ‘Rosa Parks’ is not ‘wholly unrelated’ to Defendants’ song, and because the title is the name of an expressive work and not a disguised commercial for a product” the right of publicity did not exist. Id. at 782. The Second Circuit reversed and remanded holding that there was a genuine issue of material fact regarding the question of whether the title to the song “Rosa Parks” is or is not “wholly unrelated” to the content of the song. The song does include the line “move to the back of the bus” but the Plaintiff argued that that line did not relate to Rosa Parks’ experience as a civil rights icon but rather to Outkast’s position that “Outkast” was superior to competitive music groups and that other groups should “take a back seat” to Outkast. Interestingly, the Court of Appeals also held that there was a genuine issue of fact whether Rosa Parks had a claim for unfair competition under the federal Lanham Act, 15 U.S.C. §1125(a), stating that: “Rosa Parks clearly has a property interest in her name akin to that of a person holding a trademark” and said that the only difference between a right of publicity claim and a claim for unfair competition, which the Court also referred to here as “false advertising,” is that a right of publicity claim does not require any evidence that a consumer is likely to be confused (i.e., any evidence that the public would believe that Rosa Parks had endorsed “Outkast’s” song).

http://www.internetlegal.com/articles/Rights%20of%20Privacy-Film-TV.htm