South Africa: Kim Kardashian West's Trade Mark Woes And The Love-Hate Relationship Between Celebrities And IP

Last Updated: 26 September 2017
Article by Gaelyn Scott

Most Read Contributor in South Africa, August 2018

The worlds of celebrity and IP intersect with surprising frequency. On the one hand, celebrities such as sportsmen and entertainers can use IP to make themselves even wealthier. On the other hand, celebrities, especially those in fields such as music and film, need to be very aware of the IP rights of others. It's probably also true to say that the fame and wealth that celebrities enjoy can make them targets for some pretty dodgy IP claims. While the link with celebrity generates a lot of publicity for IP, there is the risk that it can trivialise this highly important field of law.

We have discussed celebrity IP on many occasions, for example: 

  • we've looked at how astute or well-advised celebrities like Roger Federer and Cristiano Ronaldo use IP to create licensing opportunities and additional revenue streams that supplement their already substantial incomes: Federer registering his stylised RF logo, Ronaldo registering his CR7 logo, and Taylor Swift registering lyrics from her songs as trade marks, such as This Sick Beat.
  • we've reported on how various members of the US first family are using trade mark law and the extraordinary recognition that the Trump name now has to further enhance their earning potential. 
  • we've looked at celebrities fighting amongst themselves over IP: Kylie Minogue and Kylie Jenner had a well-publicised spat over rights to the name (and valuable trade mark) Kylie, and the artist known as will.i.am opposed the trade mark i am OTHER (linked to Pharrell Williams).
  • we've looked at celebrities taking on major corporations: Pelé sued Sony for the unauthorised use of his image; Johan Cruyff sued a publishing company for the unauthorised use of certain photographs (making law in the process); Rihanna successfully sued Top Shop for the unauthorised use of her image on T-shirts, advancing the law of passing-off in the process; and Beyoncé sued a retailer for calling itself Feyoncé.
  • we've reported on how recording artists have fallen foul of copyright law: Robin Thicke and Pharrell Williams were sued for infringement for their song Blurred Lines (the action was brought by the estate of Marvin Gaye and based on Gaye's song Got to Give It Up), Ed Sheeran was sued for infringement for his song Photograph, Elton John was accused of infringing copyright with his song Nikita, and Sam Smith was accused of infringement with his song Stay With Me.

It seems almost impossible to have a discussion about celebrities without mention of the Kardashians. So, let's move on to Kim Kardashian West. Kim is being sued for trade mark infringement and, more unusually, she is also being sued for patent infringement.

Let's start with trade marks. The claim involves Kim's recently launched makeup brand KKW. A New York-based cosmetic artist by the name Kirsten Kjaer Weis (so also KKW) is suing for trade mark infringement. The action has been filed against Kim's company, which is called Kimsaprincess, Inc (my earlier remarks about trivialising IP probably apply here). Weis, who claims that she has been known as KKW for many years, sees Kim as something of a "Kimmy Come Lately", saying that Kim only started using the initials KKW in 2014 when she married Kanye West.

Notwithstanding this, the US trade mark registrations that Weiss is relying on are for KW, a brand she has apparently been using since 2010 for organic beauty products. Weis claims that Kim's use of KKW is likely to cause confusion among the public and, therefore, there's trade mark infringement. Kim's company has filed trade mark applications for KKW and other trade marks incorporating KKW in the US and elsewhere in class 3 in relation to cosmetics. We'll let the court sort this one out! 

On to patents. Patent infringement cases generally involve serious-sounding pharmaceutical or tech companies, but the defendant in this case is Kimsaprincess, Inc. It turns out that a man called Hooshmand Harooni filed a patent in 2013 for what's described as an "integrated lighting accessory and case for a mobile phone device". Harooni seems to have licensed this technology to a company called Snaplight, and it is this company that's suing Kim's company for patent infringement and damages of USD100-million. 

The claim relates to Kim's promotion on social media of the so-called LuMee illuminated phone case whenever she takes selfies (which, I understand, is frequently). Snaplight claims that it's difficult to compete in the selfie case market when Kim Kardashian West has 165-million social media followers. Whether this case falls into the category of celebrities becoming targets because of their wealth remains to be seen. Kim's people certainly seem to think so, describing this claim as "another attempted shakedown".

We'll no doubt be writing on the link between celebrities and IP for years to come. 

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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