Celebrity Rights: Body Movements And Signature Poses As Trade Marks

By Vikrant Rana, Sandhya Parimala and Vidyul Dayal

A celebrity acquires stardom or the status of a public figure through their talent and is identified by their name and other personal characteristics such as signature poses, talking styles, voices, etc., which can be categorized as a type of property.[1] With the advent of technology and media, the value attached to the use of a celebrity’s photograph, characteristics, mannerisms, etc., is very high, giving a commercial value to the personality traits of celebrities.[2]

Celebrity rights include advertising rights, personality rights, privacy rights, reproduction rights and merchandising rights among others. Though there are no particular statutes for protection of celebrity rights, they are commonly protected under the trade mark and copyright laws.

Recently, the famous Indian actor, Amitabh Bachchan was granted an interim order by the Hon’ble Delhi High Court that prohibited the defendants from infringing the personality and publicity rights of Mr. Bachchan. The Hon’ble Court passed an ad-interim ex-parte order of injunction to restrain third parties from using his name, voice, face and other personality traits, without his consent. It was also held that the same would cause irreparable loss to his reputation.[3]

In the same way, signature poses and signature moves of celebrities, which are identified and associated solely with them, may also be afforded protection. For example, one cannot think of iconic body movements without immediately recalling Michael Jackson’s ‘moonwalk’. Another iconic movement is Cristiano Ronaldo’s goal celebration movement called ‘siuuu’, which means a resounding ‘Yes!’ in Spanish. Similarly, Kylian Mbappe’s ‘tucked arms’ pose is a celebration that has been seen countless times from the French superstar. On the other hand, the Korean finger hearts, although popularized by the K-pop band BTS, reflect the Korean culture in general, and are now used by celebrities and bands all over the world.

Closer to home, the iconic pose of arms stretched wide open is immediately associated with the superstar Shahrukh Khan. Most of the times, signature poses of celebrities become an identifiable feature, and the celebrities are entitled to protect such iconic signature poses through the right to publicity. However, as these poses act as an identifiable source of a celebrity’s personality, the question that arises, is ‘Can these poses be protected under the Trade Marks law?’[4]

Protecting Signature Poses under the Trade Marks Law

Generally, body postures/ movements are common to all people, and are not protected as trade marks. However, if these poses are used for branding purposes (for example, if the celebrity starts their own brand, whereby they use the signature poses on their products), and if the same have acquired distinctiveness, and are only associated with a particular celebrity, they may qualify as trade marks.

Protection of a celebrity’s personality including their poses/ movements as trade marks provides them with a means to defend the same from unauthorized use.[5]

Internationally, publicity rights are protected through many conventions such as TRIPS, WIPO Performances and Phonograms Treaty, 1996 (WPPT), Protection of Performers, Producers of Phonograms and Broadcasting Organizations, 1961 (Rome Convention), etc.[6]

Signatures poses may be registered as device marks and a signature move may be registered as a motion mark. For example, the famous and world renowned athlete, Usain Bolt has applied for/ registered his “lightning pose/ Bolting” i.e., in various countries including the United States of America (USA). In USA, Usain Bolt has applied for the aforesaid trade mark with respect to the following goods/ services :[7]

Class 09: Entertainment; sporting and cultural activities

Class 14: Eyewear and accessories, namely, eyeglasses, sunglasses, eyewear cases, eyewear frames, and chains and cords for eyewear

Class 18: Leather and imitations of leather, bags and other cases not adapted to the product they are intended to contain and small articles of leather, purses, pocket wallets, key cases; carrying bags, travelling bags, sport bags, sacks, carry-all bags, knapsacks, school bags, waist bags, toilet bags, trunks and traveling cases; umbrellas, parasols and walking sticks

Class 25: Games and plaything; gymnastic and sporting articles not included in other classes

Class 28: Clocks and watches; jewelry, namely, necklaces, bracelets, earrings, jewelry pins, rings, anklets, cufflinks, tie pins, pendants

Class 41: Clothing, footwear, headwear

Class 43: Restaurant; restaurant and bar services, including restaurant carryout services; bar and restaurant services with a sports theme; bar and restaurant services displaying sports merchandise; bar and restaurant services featuring multiple bar and lounge areas, dining areas, a mezzanine, VIP areas, hi-tech booth seating, and a retail shop carrying exclusive track and field products and memorabilia; restaurant services featuring entertainment, live music and sports; restaurant services, including sit-down service of food and take-out restaurant services; restaurant services, namely, providing of food and beverages for consumption on and off the premises; restaurant, bar and catering services; providing a web site featuring information and menus for restaurants, bars and cafes; on-line ordering services in the fields of restaurant take-out and delivery; sports bar services; restaurant services featuring a loyalty recognition program

EUIPO

A trade mark under the EU law, can consist of words, designs, colours, shape of goods, packaging of goods or sounds.[8]

After the amendment of Regulation (EU) 2015/2424, the requirement of “graphical representation” as a pre-requisite for a mark to be considered as a trade mark has been removed.[9] Thus, the main requirements for a trade mark to be registered in the EUIPO are that, the same should be distinctive, should not be descriptive of the goods or services applied for, and should only be associated with the proprietor of the trade mark.

Signature poses can easily be represented graphically (even though the same is not an essential requirement anymore). Thus, the signature poses of celebrities can be protected as trade marks in the EUIPO, if they simply satisfy the condition of being distinctive, which may be achieved by long usage, promotions and/or well-known status. Many celebrities have protected their signature poses in the EUIPO. For example, the pose of the famous Turkish chef Nusret Gökçe (Salt Bae) sprinkling salt in a suave manner is registered as a trade mark by D Et Ve Et Urunleri Gida Pazarlama Ticaret Anonim Sirketi. Further, Usain Bolt has also registered his “lightning pose/ Bolting” in the EUIPO. Details of the same are given below:

USA

Personality rights in the United States are usually understood as a mixture of publicity rights as well as the right to privacy.[10] Even though there is no specific statute for legal protection of celebrities’ personality under the US Law, the celebrities usually rely on the state privacy statues or on the law of unfair competition as derived from 15 U.S.C. § 1125(a) (known as Section 43(a) of the Lanham Act).[11]

Section 43(a) of the Lanham Act defines the term “trade mark” as any word, name, symbol, or device, or any combination thereof— (1) used by a person, or (2) which a person has a bona fide intention to use in commerce and applies to register on the principal register established by this chapter, to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown.[12] Therefore, according to the aforesaid definition, signature poses can be registered as trade marks if they are capable of identifying and distinguishing the products thereunder. Now, as highlighted hereinabove, body postures are common to all people, and cannot be said to be inherently capable of distinguishing goods/services in commerce. However, over time, with the use of a particular signature pose, it acquires distinctiveness and becomes capable of identifying and distinguishing the products thereunder.

For example, a former tennis player from Sweden, Niclas Kroon popularized the “Vicht” salute meaning “for sure”, as a form of celebration after matches.[13] Some of the signature poses registered in the US are as under:

On the other hand, some body poses become so ubiquitous over time, with their extensive and common use that even if registered, they would not entail much protection. For example, Kiss frontman Gene Simmons, had filed Application No. 87482739 in 2017 for the devil’s horn hand gesture or in Class 41 for “Entertainment, namely, live performances by a musical artist; personal appearances by a musical artist” claiming use since November 14, 1974, based on a photograph of Gene Simmons flashing the hand gesture alongside Foo Fighters’ Dave Grohl. However, the said application was withdrawn after facing criticism from the music industry, where this gesture is used very commonly by artists generally.

India

The Indian judiciary has recognized and protected the rights of celebrities to exclusively commercialize their persona and characteristics through various case laws. The Delhi High Court has held that the right of publicity may subsist in an individual’s personality like his name, personality trait, signature, voice, etc. and can be acquired by virtue of his association with an event, sport, movie, etc.[14] In the case of Shivaji Rao Gaikwad v. Varsha Productions[15] , the actor Rajinikanth had sought an injunction restraining the respondents from using his name/ image/ caricature/ style of delivering dialogues in their forthcoming project/film titled “Main Hoon Rajinikanth” amounting to infringement of his personality rights by such unauthorized use. The court while granting the interim injunction held that “the right to commercially use or exploit one’s own name, vests with the person who has worked to create the fame and can lawfully restrict any other third party from exploiting that fame for commercial purposes.”

It is imperative to establish that the person claiming to be a ‘celebrity’ owns an enforceable right in his identity or persona, and the alleged unauthorized use should immediately induce a recollection of the concerned celebrity.[16] However, in cases of celebrities like Shah Rukh Khan, who are widely and popularly recognized, a simple comparison of the alleged unauthorized use and the identifying features, such as his above-referenced iconic pose of arms stretched wide open may itself be sufficient to create a strong inference of identifiability. It is pertinent to note that Usain Bolt has also filed an application for his pose in India in Classes 18, 25 and 28, which is pending registration. The details of the said application are provided below:

Therefore, in view of the discussion hereinabove, there is a lot of scope for signature poses, which have acquired distinctiveness owing to their exclusive association with a particular celebrity, to be registered as trade marks, to be protected and to be exploited commercially. Recently, Shah Rukh Khan, who has been associated with Hyundai for 25 years, struck his iconic pose of arms stretched wide open at the promotional event of Auto Expo 2023, where he unveiled the Hyundai Ioniq 5 electric SUV.[17] Thus, he employed the popularity and reputation in his said signature pose to promote Hyundai’s Ioniq 5 electric SUV, thereby giving his pose, a commercial value.

The jurisprudence in respect of celebrity rights is actively developing and celebrities are utilizing their signature poses commercially. However, in order to protect the distinctive signature poses, which have been nurtured by celebrities and have acquired immense reputation over time, it is recommended that the same may be registered for protection of their trade marks/ celebrity rights subsisting thereunder.

Registration of Signature Moves

Another aspect that emerges from the above discussion, is that signature poses are mostly registered as device marks. On the other hand, the registration of signature ‘moves’ as trade marks is still pretty much uncharted. Just as a signature pose may be distinctive to celebrities, similarly, a signature move may also become distinctive and associated exclusively with a particular celebrity. For example, Indian actor Rajinikanth has a distinct way of flipping his sunglasses from elbow level, which rolls a few times before it sits perfectly on his face. In such a scenario, such a signature move, may be registered as a motion mark. However, as highlighted in the previous article concerning motion marks in India[18] , since the Indian law lacks a provision for acceptance of video files for motion marks, the same acts as a hindrance for an accurate representation of the mark and thus, discourages such applications. In view thereof, there is an undeniable need to re-examine the laws and rules pertaining to non-conventional trade marks and harmonize them with the global standards so that they become more applicant-friendly. Thus, motion marks may also be registered in India and signature moves may be protected, once the process for the said registration is streamlined. It is pertinent to note that in the UKIPO–INTA Brand Protection Strategies Conference, 2023, which was recently held in New Delhi on February 24, 2023, Shri Karan Thapar, Deputy Secretary, DPIIT did mention that India is actively looking into the further development of the present system of registrations for non-conventional trade marks including olfactory trade marks, etc.

Challenges in respect of registering Body Movements as Trademarks

1. Establishing the distinctiveness of the body pose/movement: Usually, body parts are excluded from being registered as trade marks due to their generic character. Not all body poses which come naturally to a person such as the posture of sitting in a chair or drinking water, would be eligible for registration as the same are natural to all human beings. Thus, it is also difficult to establish that a particular pose or look is very peculiar and is only associated with one person. Thus, if a signature pose is to be registered as a trade mark, it should be described very accurately in order to prevent any possibility of confusion and to show distinctiveness.[19]

2. Ability to be represented graphically: A signature pose may be easily represented graphically as it is. However, if a celebrity is interested to register their signature moves rather than poses, they may register the same as motion marks. In India, a motion mark can only be represented through a series of sequential images showing the movement, or change of position. However, at times, the pictorial representation may not exactly portray the movement for which the Applicant seeks registration.[20] As suggested in the previous article concerning motion marks in India, to overcome this issue, India may adopt a system similar to those of other jurisdictions such as the EU, wherein the requirement of graphical representation has been removed and even video files of the motion marks are accepted, which would enable the examiner as well other third parties to exactly understand the motion of the trade mark for which registration is sought and raise objections/ allow oppositions accordingly.[21] Further, the allowance of filing a video of the pose/ move would also help in clearly showing the exact shape of the pose as some times the image view of the pose may not be clear.

3. Difficulty in enforcement: In certain cases, it may not be possible to establish the precise movement/ posture from the description provided alongwith the representation or from the device of the mark, and therefore, determining the distinctiveness of the mark and citation of the same in an office action would become difficult. Further, it may also be difficult to identify a similar signature move when it is advertised in the Trade Marks Journal for enforcement actions. In this regard, it is pertinent to note that in the EUIPO, a URL of the video depicting the motion of a mark is published in the Journal so that the same can easily be viewed and the precise movement can be ascertained. For example, Lucart SPA has applied for a motion mark of TUTTO PANNOCARTA USA[22] in the EUIPO, which has been published in the Journal alongwith the URL (https://euipo.europa.eu/copla/image/UB2V7J5SX5HSOT2UA6C4K4UFFQ4TLIWUAOPIFCW6ZRSQVE63LAF6SUCHDR6SV26GT4C4UMHIA52HO)[23], which directs to the video of the motion mark applied for.

In the same way, to overcome the said difficulty of accurate accessibility of a signature move advertised the Trade Marks Journal in India, the Trade Marks Registry may consider to adopt the practice followed in the EUIPO of providing a URL of the signature move applied.

CONCLUSION

Celebrity rights are generally protected through publicity rights, wherein no one else can commercialize the celebrity’s name/ pose without their permission. However, if the celebrities intend to commercialize their names, poses, etc., which can be used on their brands, then they may seek protection under the Trade Marks law.

This article was first published in The Lex Witness Magazine.

[1]Michael Madow, Private Ownership of Public Image: Popular Culture and Publicity Rights, 81 CAL. LAW. REV. 125, 128 (1993) [hereinafter Madow, Private Ownership]
[2]Garima Budhiraja, Publicity Rights of Celebrities: An Analysis under the Intellectual Property Regime
[3]Amitabh Bachchan vs. Rajat Nagi and Ors. on November 25, 2022, https://ssrana.in/articles/delhi-high-court-amitabh-bachchan-personality-rights/
[4]https://spicyip.com/2022/03/trademarking-signature-poses-looks-a-progressive-protection-of-individuality.html
[5]Celebrity rights: Protection under IP Laws, Tabrez Ahmad and Satya Ranjan Swain, Journal of Intellectual Property Rights Vol 16, January 2011, pp7-16
[6]Supra
[7]U.S. Application No.: 97552042 (the same is pending at present)
[8]https://euipo.europa.eu/ohimportal/en/what-can-be-an-eu-trade-mark#:~:text=To%20be%20eligible%20for%20registration,not%20describe%20what%20you%20sell.&text=Consumers%20should%20be%20able%20to,as%20an%20indication%20of%20origin
[9]Regulation (EU) 2015/2424 of The European Parliament and the of The Council, available at: https://eur-lex.europa.eu/legal-content/EN/TXT/PDF/?uri=CELEX:32015R2424&from=EN; Article 7(1)(c), Regulation (EU) 2017/1001 OF THE EUROPEAN PARLIAMENT AND OF THE COUNCIL OF JUNE 14, 2017 available at: https://eur-lex.europa.eu/legal-content/EN/TXT/PDF/?uri=CELEX:32017R1001&rid=3
[10]Protecting Image Rights In The Face Of Digitalization: A United States and European Analysis, Alix C. Heugas, first published on July 26, 2021
[11]Elsie Washington, Expanding U.S. Trademark Protection for Celebrities Characters and Faces:
The Effect on the Paparazzi and Mainstream Media, available at: http://www.kentlaw.edu/perritt/courses/seminar/Elsie%20Washington%20Ent%20Law%20Final.pdf
[12]https://www.uspto.gov/sites/default/files/trademarks/law/Trademark_Statutes.pdf
[13]https://dbpedia.org/page/Niclas_Kroon
[14]https://www.forbes.com/sites/legalentertainment/2017/06/21/breaking-gene-simmons-abandons-hand-gesture-trademark-application/?sh=302456f5faac
[15]ICC Development (International) Ltd. v. Arvee Enterprises, 2003 (26) PTC 245 (Del)
[16]Shivaji Rao Gaikwad v. Varsha Productions 2015 (62) PTC 351 (Madras)
[17]Titan Industries Ltd. v. M/s. Ramkumar Jewellers, 2012 (50) PTC 486 (Del)
[18]https://www.moneycontrol.com/news/trends/shah-rukh-khan-with-signature-pose-unveils-hyundai-ioniq-5-at-auto-expo-2023-9855001.html
[19]https://ssrana.in/articles/importance-and-challenges-of-protecting-a-motion-mark/
[20]https://www.ipandlegalfilings.com/possibilities-and-complexities-involved-in-trademarking-signature-looks-and-poses/
[21]Adv. Ms. Mugdha Palsule & Adv. Ms. Nikita Lkhani, India: Conventionalisation of Non-Conventional Trade Marks, E-Journal of Academic Innvivation and Research in Intellectual Property Assets (E-JAIRIPA), Vo. 1 (01), Dec 2020, pp.67-84, available at: https://cnlu.ac.in/wp-content/uploads/2022/08/5-Adv-Mughda-Palsule-and-Adv-Nikita-Lakhani.pdf last accessed on January 08, 2023
[22]https://ssrana.in/articles/importance-and-challenges-of-protecting-a-motion-mark/#:~:text=A%20motion%20trade%20mark%20also,marks%20to%20represent%20their%20works
[23]Application No. 018804962