Ah, the Kardashians and Jenners. We’re saturated with them. They have celebrity. They’re all over reality TV and the tabloids. Kylie and Kendell Jenner and Kim Kardashian have hundreds of millions of followers across social media. Pretty much everything they do, even if mundane, gets coverage.
They also have burgeoning careers as fashionistas, either selling or planning to sell clothing, cosmetics and accessories.
And they’re serial intellectual property and publicity rights infringers. Per The Hollywood Reporter, it’s happened no fewer than 15 times since 2011. Here are some examples:
(1) In 2015, Kylie Jenner started filing trademark registration applications in the U.S. for the brand/mark “Kylie,” for her activities as “a celebrity actress and model,” as well as for her fashion and accessories businesses.
But, beginning in 2006, Kylie Minogue, the Australian-based music superstar, known worldwide simply as “Kylie,” had obtained several “Kylie” trademark registrations in the U.S. and elsewhere for many of the same goods and services for which Kylie Jenner sought registration.
Ms. Minogue opposed Kylie Jenner’s registration applications, referring to her in her opposition and the press as a “secondary reality television personality” prone to “photographic exhibitionism and controversial posts.”
Ms. Minogue has had 10 years of trademark priority. She rightly claimed that allowing Jenner’s applications to proceed would create what’s called in trademark parlance a “likelihood of confusion” as to where “Kylie”-branded goods and services come from, as well as damage Kylie Minogue’s branding of her goods and services. So the U.S. Trademark Office threw out Jenner’s applications.
(2) Earlier this year, Kylie and Kendal Jenner infringed copyrights and rights of publicity by appropriating iconic photos and images of rock stars (such as Notorious BIG, Tupac Shakur, Ozzy Osbourne, Led Zeppelin and Jim Morrison), putting them on T-shirts, superimposing Kylie’s and Kendal’s respective faces over those of the rock stars, and selling them for $125 each.
What they didn’t do was obtain the necessary permissions – from the copyright owners of those pictures and images, and from the rock stars or their estates for their rights of publicity – to use those pictures and images on those t-shirts. (Generally, a public figure owns the rights to their name, face and likeness.)
Again, backlash and legal consequences ensued. Biggie’s mother called their use of his image “disrespectful, disgusting, and exploitation at its worst!!!,” while Sharon Osbourne suggested that Kylie and Kendall “haven’t earned the right to put (their) face with musical icons. Stick to what you know…lip gloss.” Multiple other celebrities also excoriated the Jenners.
Their publicist (not them) offered apologies on social media. The shirts were pulled from sale. But it was too little, too late. By the time the shirts were pulled, they had also received cease-and-desist letters from some of the rights owners, seeking monetary damages and other relief for the sisters’ multiple infringements of very valuable copyright and publicity rights. Those damages can easily add up to multiple millions of dollars.
(3) In July of this year, Kimsaprincess Inc. (perfect name, no?), supposedly owned by sisters Kim Kardashian and Kylie Jenner, was sued in U.S. Federal Court, for what could also be multi-millions of dollars, for intentional trademark infringement, and unfair competition. Kardashian and Jenner had started a cosmetics line under the brand/trademark “KKW.”
Unfortunately, another makeup company, owned by a famous makeup artist, has been producing and selling high-end cosmetics under the brand “KW” in the U.S. since 2010, and holds four U.S. trademark registrations for them.
That artist claimed that the “KKW” marks are so similar to hers, that they will cause and have already caused that “likelihood of confusion” as to the source of the lower-end “KKW” cosmetics.
(4) Last month, Kimsaprincess Inc. was sued for patent infringement by Snaplight LLC, seeking $100 million in lost profits over a LuMee phone case Kim endorses. Per the complaint, in 2013, a man named Hooshmand Harooni patented an “integrated lighting accessory and case for a mobile phone device” to assist in capturing the ideal selfie. He licensed the innovation to Snaplight, which claims its profits have suffered because of Kardashian’s promotion of the similar, infringing product.
The Kardashians’ and Jenners’ continuing infringement problems shouldn’t happen. They’re easily and inexpensively preventable through the following measures:
-Copyright attaches upon creation of a creative work. To avoid copyright infringement, one need find who owns the creative materials (photos, drawings, book or lyric segments, recordings, graphics, TV, movie or other content) they want to use. Someone almost always does. There might be copyright notice on it, identifying the owner. A copyright search, which isn’t expensive, can be run and analyzed by an experienced copyright/IP lawyer, to find the owner.
-Trademark attaches upon use. To avoid trademark infringement, one need find out if someone owns the desired brand/mark, or has senior rights to us it, in connection with the same or similar goods or services. A “full” trademark search (also not expensive), run and analyzed by an experienced IP/trademark lawyer, can accomplish this.
-Patent attaches upon its granting. To avoid patent infringement, a proper patent search should be run and analyzed by an experienced patent lawyer.
-To avoid infringing a celebrity’s or other public figure’s rights of publicity, one need identify their representatives or if deceased, their estate.
Once identified, the respective rights owner should be contacted, to inquire if they’ll grant permission for the desired use of the rights. There’s no obligation to grant permission. If permission isn’t granted, the work, brand, patent or publicity rights can’t be used, without likely infringing them.
-To avoid public backlash, be truthful and contrite. “I didn’t know it was infringement” or “I did nothing wrong” doesn’t cut it (especially if done repeatedly).
In the “KKW/KW” situation, the Jenners’ publicist said they did nothing wrong, being quoted as saying “there is no merit to this lawsuit. Before launching, Kim received approval for KKW, KKW Beauty and KKW Fragrance (the three trademarks Kimsaprincess applied to register) from the U.S. Trademark Office.”
Not according to the U.S. Trademark Office. Nothing about the three trademark registration applications had been approved by it. In fact, in addition to the lawsuit, the artist filed an opposition proceeding in the Trademark Office, to stop registration of all three “KKW” marks.
You’re probably asking yourself, “How can these people be that stupid? Don’t they have grown-ups helping them?”
Well, I don’t think it’s stupidity.
I think the Kardashians’/Jenners’ repeatedly infringe IP and other rights for the publicity it generates. Their various TV series and other antics show that it’s more important for them to constantly be in the public eye and news, than it is to avoid huge lawsuits. The former’s the fuel for the “famous for being famous” engine.
I’ve been an entertainment lawyer for over 30 years. I’ve represented and been around actors, rock stars and other celebrities my entire career. An old saying in entertainment is “there’s no such thing as bad publicity.
The Jenners and Kardashians have built empires on this premise. The more outrageous and narcissistic the drama and behavior, the better. People talk about it. The press covers it. It trends.
But they’re running a huge risk financially. The monetary damages one can obtain for intentional infringement are much greater than for innocent infringement. They can include plaintiff’s attorneys’ fees for defendant’s especially egregious conduct. Their repeated, intentional infringements would not go unnoticed.
I’m advised that none of infringement lawsuits against the Kardashians/Jenners has gone to trial. If even one does, and they lose, the damages against them could be in the tens, if not hundreds of millions of dollars.
The takeaway? Don’t use other people’s rights if you can’t obtain permission — unless your idea of “Keeping Up with the Kardashians” is to also repeatedly be sued for millions, vilified, and have your intelligence (or lack of it) questioned.
Paul Menes is the Co-Head of the Entertainment & Media practice group at ADLI Law Group, a Los Angeles-based litigation firm. He can be reached at (213) 623-6546 or email@example.com.