Matthew McConaughey made news earlier this year when his legal team filed several trademark applications for certain phrases from his films, like the iconic “alright, alright, alright” and “just keep living right? I mean, what else are we going to do?” from his 1993 film “Dazed and Confused.”
McConaughey’s filings may have received the most media attention, but he is by no means alone. Other celebrities have followed suit, including musicians like Taylor Swift, who filed two trademark applications in April for sound bites of her voice saying, “Hey, it’s Taylor…”
What’s prompting this uptick in celebrity trademark applications covering various aspects of their personas? Even the dazed and confused can see that the rash of filings is prompted by concerns over AI, and that deepfakes have become particularly sophisticated and pervasive within the last year or so.
The tipping point for many was a hyper-realistic 15-second video featuring the likenesses of Tom Cruise and Brad Pitt brawling on a skyscraper rooftop that made the rounds on the internet in February. The video was (allegedly) AI-generated by a filmmaker from a simple text prompt, but what made it notable (besides the ease with which it was generated) was the fluidity and lighting of the sequence, which were strikingly in line with the quality one would expect of a high-budget studio action movie. One could argue it was simply proof of concept that AI could, in time, generate a full feature film. Actors certainly took notice and, no doubt, more than one legal team received a call that night.
Films are protected by copyright, and celebrity personas are protected by right of publicity laws. But AI-generated scenes are not lifted from movies, and short phrases are generally ineligible for copyright protection because they lack sufficient original authorship. Notably, publicity laws are patchwork at the state — not federal — level. To help fill these gaps, trademark law can step in.
Trademark law is designed to prevent consumer confusion. In most cases, it protects “source identifiers” for goods and services from confusingly similar uses. In a typical example, someone might seek to protect their company name (e.g. “Nike”) or product name (e.g., “Air Force I”) from unauthorized third-party uses with confusingly similar terms (e.g., “Nikey” or “Air Force II”). Trademark protection also extends to logos, designs, trade dress, sound, colors, motion — anything that functions as an identifier of source or indication of origin. Meaning, if a consumer can tell from whom something originates just by looking at it, that “something” can be protectable as a trademark. This is the guiding principle Mr. McConaughey, Ms. Swift, and other celebrities have seized upon in their new filings.
The road to protection is not without speed bumps: there are challenges to utilizing trademark law to protect identifiable aspects of one’s persona. First, trademarks do not exist in a vacuum. They must be used in commerce to identify the source of goods or services. So, what goods or services are at issue when Taylor Swift applies to register “Hey, it’s Taylor”? Her application identifies a wide variety of entertainment services, including “providing information in the field of music and entertainment.” The application has yet to be examined by the trademark office, so it remains to be seen whether this will pass muster. While it is possible that “Hey, it’s Taylor” could be used as a source identifier for these services (imagine the phrase being verbally recited at the beginning of a series of different commercials introducing a lineup of concerts for Taylor and others), other uses may not suffice. The specimen submitted with the application includes only one audio commercial where “Hey, it’s Taylor” is not recited as part of a “brand” intro but rather is spoken as part of a sentence that transitions seamlessly into a pitch to download her upcoming album on Spotify.
Along the same lines as a “use in commerce” refusal, the US Patent and Trademark Office may issue “failure to function” refusals, claiming that a phrase, as used, fails to function as a source identifier. Refusals of this sort can apply to words or designs which are primarily viewed as information or ornamentation and therefore not indicators of source. (Think “Drive Safely” on bumper stickers or “proudly made in the USA,” or “I love Virginia” on the front panel of a t-shirt.) That said, phrases strongly connected with their well-known applicants often fare better in avoiding such refusals. For example, in 2019, pop superstar Lizzo applied to register the phrase “100% That Bitch” for clothing. While the trademark office initially issued a failure to function refusal, Lizzo was ultimately able to overcome it on appeal by submitting evidence that consumers associated that exact phrase with Lizzo and her hit song “Truth Hurts.”
While this is great news for celebrities, what lessons can ordinary folks like us take away? First, take stock of your nontraditional assets — sounds, motion, color, product design, product packaging, etc. Are any of these items that consumers would immediately recognize and associate with you or your company? If so, consider trademark protection. Second, think about the opposite perspective: if you are the one using AI to generate content that features recognizable individuals or aspects associated with their personas, in addition to any traditional rights clearances you might normally obtain, consider what nontraditional or “sensory” IP might inadvertently be swept in without you realizing it — voices, catchphrases, iconic clothing items, and the like. Be mindful that legal risks from AI-generated content are quickly expanding beyond the IP arena, such as New York’s recent passage of a “synthetic performer” law which requires conspicuous disclosure of any AI-generated humans in advertisements that are not based upon real, living individuals. Third, and most importantly, if you’re ever unsure about any of the questions above, reach out to a trademark or advertising attorney for a gut check. We want to make sure you stay alright, alright, alright.
Coley Martin, a Faegre Drinker summer associate, contributed to this article.
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