Recognized in Variety's 2022 Dealmakers Impact Report, Kristen Ruisi, a partner in Venable's Intellectual Property practice, has been working with our West Coast team on numerous deals in the entertainment space, including collaborations with A-list celebrities. Working from Venable's groundbreaking new office in Midtown Manhattan, Kristen discussed the increase in the number of celebrities creating their own brands, what brands can do to stop trademark infringement, and the challenges of protecting intellectual property in the virtual world.
Q: You've been working a lot lately with Venable's West Coast attorneys on various entertainment deals. What do these typically involve?
A: Many of the entertainment deals that I have been a part of include joint ventures, co-branding partnerships, collaborations, and licensing deals involving high-profile celebrities. In certain situations, I would be asked to provide guidance and handle the intellectual property (IP) matters, which may include trademark procurement and management, brand protection, licensing, and due diligence. For example, if the celebrity is going to license the right to use their name or likeness in connection with the sale of merchandise, I'll make sure all of the proper protections are valid. I also help with the trademark assignments, recording them in different jurisdictions to make sure the new company is represented as owning the IP. And, of course, if the client requests, I'll handle any enforcement work that arises in connection with these matters.
Q: There seems to be an uptick in the number of celebrities endorsing products. Are you noticing more of these types of deals?
A: We are used to seeing celebrities serving as spokespersons for major brands or endorsing a particular brand, but now, in addition to doing endorsement and sponsorship deals, a lot of celebrities are starting their own companies. We're seeing a lot of this in the alcoholic beverage industry, beauty products, perfume lines, and general merchandise. The cannabis industry is also very hot right now. I believe we are seeing a greater shift from endorsement and sponsorship deals to celebrities starting their own brand because they want to have an active role in every aspect of the business, and control over the quality of products and services that are associated with their name.
Q: What kind of IP issues tend to arise in these types of deals?
A: If a celebrity is entering into an endorsement or sponsorship deal with another brand, the agreement should be well drafted and stipulate all conditions of the endorsement or sponsorship. The trademarks and name and likeness rights should be clearly stated in the contract as well. When a celebrity starts their own company, may it be wholly owned by the celebrity, a joint venture, or a partnership; in most if not all cases, we want to make sure that the celebrity or their wholly owned company owns all of the IP. There are many benefits in maintaining ownership of the IP, including that they are not at risk of losing the right to their own name and associated trademarks if the deal fails. However, the nature and structure of each deal are handled on a case-by-case basis and may differ. We also want to make sure to procure the proper trademark registrations for the goods and/or services associated with the deal in all relevant jurisdictions.
Q: Is brand or trademark infringement a common thing involving celebrities?
A: Yes, particularly when you are dealing with well-known brands and celebrity brands. But how you deal with enforcement really depends on the client's budget and the nature of the infringement. For example, if it's a smaller client, the client or the law firm may monitor online marketplaces and social media platforms to flag any counterfeit listings and then submit requests to the platforms to have those listings removed. A more costly enforcement approach is to work with an outside vendor that uses software intended to protect brands from internet counterfeiting, fraud, piracy, and cybersquatting. The software searches all online marketplaces, websites, domain names, and social media platforms worldwide for infringements. We often work with these vendors to help our clients defend and enforce their IP rights.
Q: We're starting to see more businesses selling NFTs and conducting business in the metaverse and other online virtual worlds. How does this impact brand and trademark owners?
A: The introduction of NFTs led to a lot of questions from brand owners. First of all, the brand has to decide whether they want to create and sell NFTs. Even if the answer is no, the question is whether brands need to register trademarks for NFTs and related goods and services in order to stop third parties from using their IP in connection with NFTs. The same applies to the metaverse and other online virtual worlds. Even when clients are certain they are not going to be in the metaverse or conduct business in the virtual world, we still need to ensure that they can defend and enforce their intellectual property in that sphere.
Q: What are the major trends you're seeing in this line of work?
A: Technology is rapidly evolving and becoming more advanced, which has included things like artificial intelligence (AI). We already have the smart home, where robots are telling us that we're running low on milk, but I think we're going to start seeing advances that we can't even fathom right now. On the entertainment side, I believe we will see celebrities exploring more nontraditional business opportunities.
Our IP attorneys work with many high-profile individuals and brands to ensure their trademarks are protected. We encourage you to reach out to Kristen Ruisi in our Intellectual Property Group with any questions.