Paparazzi Case Study

Expanding U.S. Trademark Protection for Celebrities Characters and Faces:

The Effect on the Paparazzi and Mainstream Media

By: Elsie Washington

Introduction

There is currently no comprehensive legal protection for celebrities‘ characters or faces

(i.e. a photo) under United States trademark law. Celebrities have relied on state privacy statutes and/or the federal cause of action of unfair competition, which derives from 15 U.S.C. § 1125(a), known as section 43(a) of the Lanham Act. They have also utilized the right of publicity as a basis for bringing a cause of action against persons or entities that have commercialized and financially benefited from use of their photo or character. Nevertheless, celebrities currently cannot register their

First, independent photographers, also known as paparazzi, take, print, distribute and sell photos of celebrities for their own monetary benefit. Second, the mainstream media also commercially benefits from these photos by purchasing them from the paparazzi and using them for their own economic growth as well as to compete with tabloids.

Lastly, celebrities do not directly benefit financially from the use of their photo in tabloids or in the mainstream media.

This paper examines the approaches courts have used to deny celebrity‘s protection of their photographs under the Lanham Act and the First Amendment liberties of the paparazzi and mainstream media. The paper attempts to formulate a better framework for balancing the

2

competing interests that arise in such situations. It then further articulates factors based on a celebrity‘s level of fame and the federal trademark law for courts to consider when determining whether the use of a celebrity‘s photograph should be protected and use of it is an infringement of their rights.

Part I gives a brief overview of the U.S. Trademark Law and the lack of success celebrities have had in bringing claims for trademark infringement. Part II of this

Part IV overviews various trademark laws outside of the U.S. pertaining to protection of celebrity photographs in an attempt to contrast the reasoning used to pass such laws versus the U.S. denying the same protection. The paper concludes with a summary of the recommended expansion of trademark protection and challenges the counterarguments.

I. U.S. Trademark Law

A. Trademark Protection and the Lanham Act

Trademarks are governed by both state and federal law. Originally, state common law provided the main source of protection for trademarks; however, in the late 1800s, the U.S.

Congress enacted the first federal trademark law. Since then, federal trademark law has

3

consistently expanded, taking over much of the ground initially covered by state common law.

The main federal statute is the Lanham Act, which was enacted in 1946 and most recently amended in 1996.1 Today, federal law provides the main, and by and large the most extensive, source of trademark protection, although state common law actions are still available. Most of the discussion in this paper focuses on federal law.

A trademark can be almost anything as long as it helps the consumer identify the