This week the Authentic Brands Group (ABG) completed the purchase of the iconic Elvis Presley and Muhammad Ali brand portfolios, adding to the Marilyn Monroe brand it already owns to create one of the most valuable celebrity portfolios. While celebrity brands can be very lucrative for their owners, trademark counsel should remain vigilant to their challenges of protection and enforcement; after all iconic brands are not merely trademarks.

ABG obtained the global rights to Elvis’ name and likeness as well as other assets including a library of photographs, artwork, album covers and movie posters; video and audio, including television appearances and music specials; and the rights to major Elvis-themed events such as Elvis Week. It is the first time that ABG has also acquired the rights to a living celebrity such as Ali. The deal includes the global rights to photographic images as well as movies and videos, his name and likeness and perhaps most important of all his trademark phrases: ‘Float Like a Butterfly, Sting Like a Bee’, ‘Thrilla in Manila’, and ‘Greatest of All Time’.

In an interview with Broadway World, Nick Woodhouse, president and chief marketing officer of ABG, boasted: “We have the sexiest woman of all time, now we have the undisputed Greatest of All Time and the King of Rock ‘n’ Roll.” Last year, earnings from Elvis’ estate reached an estimated $55 million, second only in posthumous worth to Michael Jackson. Elvis Presley Enterprises’ Licensing Division now has more than 200 licensees and it has been estimated that the licensing and merchandising rights to Presley’s image, name and likeness, is worth $32 million a year. Meanwhile 40 major brands have licensing rights to the Muhammad Ali brand. “We bought this partly because of who Ali was as a sportsman and partly because of who Ali is as a humanitarian,” said Woodhouse in an interview with ESPN.

WTR spoke to Dennis Prahl, a partner at Ladas & Parry, who advised that, from an IP perspective, the two most essential issues that ABG – and others seeking to purchase celebrity rights – should consider are quality and enforceability. “Just as in any branding situation, the new owners should ensure that the celebrity image is subject to strict quality control and that the use of the image is consistently aimed at a suitably high-end market and paced well over time.”

According to Prahl, it is also important to remember that a celebrity may or may not have an enforceable right of publicity in a given jurisdiction and that their names may or may not be subject to trademark protection. Prahl additionally recommends that brand owners consider the copyright held by third parties, such as photographers, as the brand may not own the most famous image of a particular celebrity. It is essential to audit what rights are available to the celebrity, what rights can be licensed and what can be enforced against third parties or for the benefit of licensees. “There are now many well-publicised decisions of celebrity estates who thought they had something to license where the courts determined otherwise,” says Prahl.

Identifying which celebrity trademarks have a high brand value is not an exact science, although iconic figures such as Monroe, Elvis and Ali are certain to maintain some worth for years to come as long as they are managed carefully. Prahl cautions that “succumbing to the easy money temptation to flood the market with trinkets and trivial endorsements will quickly exhaust the ability of a celebrity brand to maintain its effectiveness and cachet.”

While celebrity brands can be very lucrative for their owners, trademark counsel should remain vigilant to their challenges of protection and enforcement; after all iconic brands are not merely trademarks and can be far trickier to manage.

This blog was first published in World Trademark Review on 22 November 2013

Editorial Credit: meunierd / Shutterstock.com

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