Making up names

Alison Stein Brittany Lamb [email protected] [email protected] Jenner & Block LLP Jenner & Block LLP

21 Jul 2017 , 1:45pm

Fashion and cosmetic companies using songs or movie titles for their products should check out the legality of doing so as the entertainment and makeup industries start to cosy up.

Earlier this year NARS Cosmetics released ten new shades of its best-selling Velvet Matte Lip Pencil. Notably, the names of the shades seemed to be paying homage to the iconic late musician, Prince, and the titles of his songs. There was a “vivid pink” called “Let’s Go Crazy,” a “pink beige” called “Gett Off,” a “deep lilac” called “Dirty Mind, and a “chestnut rose” called “Do Me Baby.” These shades joined the preexisting “shimmering true red” lip shade called “Pop Life,” and, of course, the “gothic purple” nail polish named “Purple Rain.”

Titles of Prince songs are not the only source of inspiration for NARS; the luxury cosmetics brand also sells “All About Eve” eyeshadow and “Funny Face” lipstick, paying homage to the classic lms of the same name. And NARS isn’t alone; Marc Jacobs Beauty, the eponymous line of the American fashion designer, sells “Gatsby,” “Daisy,” and “Baby Jane” nail polishes, “Miss Scarlet” lipstick, and “Raspberry Beret” and “Rebel Rebel” lip gloss, all paying homage to iconic movies, characters, or songs. And nearly all of celebrity manicurist Deborah Lippmann’s nail polish shades are named after titles of songs, including “Video Killed the Radio Star,” “Beauty School Dropout,” and “Whatever Lola Wants.” In addition to titles, cosmetic brands also pay tribute to celebrity names when naming makeup shades. Charlotte Tilbury sells lipsticks named after past and present celebrities, such as “So Marilyn,” “Hepburn Honey,” “Kidman’s Kiss,” and “Kim K.W.” Marc Jacobs Beauty similarly sells lipsticks called “Oh Miley,” “So Soa,” and, most recently, “Charlotte,” for the toddler Princess of Cambridge. And, again, many of Miley,” “So Soa,” and, most recently, “Charlotte,” for the toddler Princess of Cambridge. And, again, many of the forty-four shades of NARS Audacious Lipstick appear to recall silver screen icons: “Bette,” “Marlene,” “Audrey,” “Ingrid,” “Grace,” “Lana,” “Vivien”…

Francois Nars, the founder of the eponymous brand, once explained in an interview with Hunger magazine, “I wanted it to really click for women; I wanted them to remember the given product. It’s no longer just a tube of lipstick—it’s a movie or a character that you can identify with, a destination you travel to through products and colors. The names make the product ‘larger-than-life.’” Notwithstanding how common it has become for cosmetic brands and fashion designers to name their products after song or movie titles or celebrities, those companies may wish to investigate the legality of their makeup names. Makeup named after song or movie titles Though nothing in the text of the Copyright Act explicitly precludes the copyrightability of titles, it is widely acknowledged that titles are not copyrightable subject matter. The Copyright Ofce has justied the lack of protection available to titles by claiming that titles do not contain the requisite amount of creative expression required to obtain a copyright. Therefore, even the most fanciful titles—such as, “Everybody’s Got Something to Hide Except Me and My Monkey” or “Dr. Strangelove or: How I Learned to Stop Worrying and Love the Bomb”—are likely fair game for makeup titles under copyright law, at least. Trademark law may pose more of an obstacle for cosmetic companies that seek to pay homage to movie or song titles. Contrary to copyright law, trademark protection is available for titles of standalone works, but only upon a showing of secondary meaning—that is, that the consuming public associates the title with a single source. Moreover, in order for an owner of a trademarked title to claim infringement, that owner would need to show that there is a likelihood of confusion as to the source, sponsorship, or endorsement of the makeup product, and that a consumer might somehow suspect a relationship between the movie or song and the makeup brand. This analysis could go either way with respect to the titles of makeup shades. On the one hand, makeup and movies or songs exist in much different markets, and it is doubtful that consumers would believe that the Weather Girls were the source of the Deborah Lippmann nail polish called “It’s Raining Men,” or that Tom Ford’s “Casablanca” lipstick was produced in partnership with the lm. On the other hand, it is increasingly common for musical artists and lm studios to collaborate with cosmetic companies in the world of advertising, marketing, and branding. For example, the cosmetic company Urban Decay released a makeup line in collaboration with Pulp Fiction, and singers like Rihanna, Ariana Grande, and Lady Gaga have collaborated with MAC Cosmetics. Therefore, whether a title has acquired sufcient secondary meaning and whether the makeup product creates a likelihood of confusion is likely a fact-sensitive inquiry that would take into account factors including but not limited to the strength of the title’s name recognition, the likelihood that consumers would believe the source of the song or movie would be involved in the cosmetic industry, and whether the other shades in the same collection are entirely unrelated to the title in question.

Makeup named after celebrities A separate question is whether a cosmetic company risks liability in naming a makeup shade after a celebrity. The inquiry here focuses on right of publicity, a state-law claim that generally protects the right of individuals to control the commercial use of their identity. Since it is broader than trademark law in some ways (for example, the celebrity typically need not show a likelihood of confusion), this can be a particularly potent weapon for celebrities.

Though right of publicity varies by state, a celebrity taking issue with the use of her name on a makeup shade generally needs to show that the cosmetic company used her identity or persona without authorization, that she is identiable from the cosmetic company’s use, and that the use is likely to harm the commercial value of her identity or persona. Harm to the celebrity’s identity or persona does not pose much of a barrier since the celebrity is not required to show actual harm nor prot to the cosmetic company; this element is satised as long as there is some likelihood of harm, which should be fairly easy to demonstrate, given the current commodication of celebrities. Therefore, assuming the cosmetic company did not receive the celebrity’s permission, liability likely depends on the identiability of the celebrity from did not receive the celebrity’s permission, liability likely depends on the identiability of the celebrity from the cosmetic company’s use.

Identiability of a celebrity with respect to makeup shades is obviously a fact-sensitive inquiry. For example, it is likely straightforward that a lipstick called “Oh Miley” refers to singer and actress Miley Cyrus. However, if Marc Jacobs Beauty had not stated that its “Charlotte” shade is an homage to the new princess, “Charlotte” could be a reference to Charlotte’s Web or the character from Sex and the City—or perhaps Marc Jacobs simply likes the name. Similarly, by itself, a lipstick shade called “Grace” may not appear problematic, but when it is sold alongside shades called “Bette,” “Audrey,” and “Marlene,” it is a safe bet that “Grace” refers to the actress Grace Kelly. However, some states do not accord right of publicity protection to deceased celebrities, so a “Kidman’s Kiss” lipstick shade may be actionable, while a “So Marilyn” shade is permissible. In the end, given the breadth of protection available to celebrities under the right of publicity doctrine, cosmetic brands may want to seek a celebrity’s approval before naming a shade in her honor.

Cover bases Cosmetic companies can take some comfort in the fact that, to date, there has not been any notable litigation in this area. Nevertheless, this may change given the increasing collaboration between the entertainment industry and the makeup industry, as well as the inclination of many celebrities to develop and safeguard strong brands and to license their likenesses to cosmetic companies by choice. Therefore, it may be wise for cosmetic companies to cover their bases before paying tribute to their favorite music, movies, or celebrities through the names of makeup shades.