Could Bolt’s Portrait be Used in Trademark?

By Albert Chen

The fastest man Usain Bolt continued his legend in London Olympics by claiming 3 gold medals, accompany with his record, Bolt’s celebration gesture also impresses the spectators. But in recent, a company from China’s Liaoning Province (the “Liaoning Company”) applied sprinter’s celebration gesture as his trademark.

The trademark applied by Liaoning Company is the combination of a black sportsman in yellow jersey and Bolt’s iconic victory gesture on the left half, and the Chinese character of “Real Hero” on the right side (the “Real Hero trademark”). There are three classes have been applied this time, among which the application in Class 43 has been rejected for others’ first registration, the application in Class 25 was approved and that in Class 28 is facing the opposition from Bolt’s team.

This news reminds me of another similar case several years ago: the biggest Chinese fast food chains “Zhen Kong Fu” is using a trademark with Chinese character of its name and image of a Bruce Lee like man. The trademark began to be used from 2004 and then granted the trademark registration from 2007. But the trademark was accused by the Bruce Lee’s daughter of portrait infringement, yet the restaurant replied that the image used is an art image, not the portrait of Bruce Lee.

Is “Real Hero trademark” infringing Bolt’s portrait right? With reference to the “Zhen Gong Fu” trademark dispute, my opinions are as below:

I. Is Bolt portrait used in “Real Hero trademark”?

To judge the infringement, the question of whether Bolt’s portrait has been used in the trademark shall be first answered. On this question, we may find some clues from “Zhen Gong Fu” holder’s replies: the artistic image of an individual could be his/her portrait?

1. The definition of portrait and its exclusions

No legal definitions on portrait could be found in the current laws, yet by the general understanding and the theoretical explanation, the portrait is the reproduction of one’s appearance, and could link the image with a certain subject. Noticeable, there’s a special situation in portrait protection, namely the conflict and differentiation between one’s portrait and the role image. The role image refers to the character played in the artistic works and has been widely spread. Although some roles may be quite similar to the actors or actresses themselves, yet unless highly resembling each other (like the actor or actress playing his or herself), the role image could not be the portrait of one’s self in general.

This theory could also explain why “Zhen Kung Fu” dispute ceases with no specific settlement. The role image used in “Zhen Kung Fu” trademark is the character in Bruce Lee’s file “Game of Dead”, especially the iconic yellow jumpsuit like clothing. Also this highlights the artistic image could only separate from one’s portrait when the role is well known among the public and different in looking or easy to be judged by the third party. Otherwise, the similar role image will necessarily lead to the confusion or the association between the character and the individual him/herself.

2. Role image in “Real Hero trademark”?

Back to “Real Hero trademark”, the black sportsman looks quite like Bolt (see the illustration), not only the color of the jersey, but also the eyebrow gesture, despite you could see a different left hand position. Considering the role image theory, in my opinion, “Real Hero trademark” faces a high risk in the infringement decision for the following reasons:

A. The picture of Bolt is shot in the game site, and then he is acting no one else also he has not acted anyone else before. Therefore, the picture shall be the portrait of Bolt, instead of his role image.

B. Although the different position of the left hand, such difference could not separate the two roles in the picture and in the image, and moreover, they share almost the same figure, clothing, gesture and even eyebrow. Therefore, the difference in part will not influence the association between the portrait and the role.

C. The artistic image could also be one of the carrier of one’s portrait for any methods could reproduce one’s manner or appearance could be the carrier of the portrait.

II. The perspective of “Real Hero trademark” application

Currently, “Real Hero trademark” is in its opposition phrase, the applicant Liaoning Company is preparing its respond to the infringement accusation. Basing on the above analysis, there are high chances of “Real Hero trademark” to be deemed reproducing the portrait of Bolt, and therefore “Real Hero trademark” is probable to be refused in Class 28. Also in the mean time, Bolt would apply for the cancellation of the registered mark in Class 25.

For the result of the trademark combat, as believed by me, could be fairly judge by the Trademark Review and Adjudication Board or the court. Yet as to the role image used in the “Zhen Kung Fu” Trademark, I would like to remind: no using of big name’s portrait, even free-riding could be exempted from legal liability, and in addition to the individual’s portrait, that may also confront the risk of copyright infringement. Therefore, the perspective of “Real Hero” and “Zhen Kong Fu” is not as good as they perceived.

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Could Bolt’s Portrait be Used in Trademark?

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