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Executive Summaries Jun 1, 2021

Halston: The Man Who Sold His Name... and His Mark

A new miniseries premiered on the Netflix® platform this month, starring Ewan McGregor as fashion designer Roy Halston Frowick. It follows Halston's ascension in the New York fashion world from the 1960s until his death in 1990. Between his friendship with singer and actress Liza Minneli and his rivalry with his competitor Calvin Klein, another element will be of major importance in the protagonist’s life: trademark law.

As he begins his career with few financial resources, an investor approaches the designer to offer him a contract that seems, at first glance, advantageous. However, we learn later in the series that Halston, by signing this contract, agrees to give up his rights in the HALSTON trademark.

In the following years, Halston and his brand enjoyed great commercial success. The company then starts to market more and more diversified products, clothes, of course, but also perfumes, bags, glasses, and even carpets. Despite this success or perhaps because of it, Halston, the individual, sinks into a drug addiction and gradually loses his creative genius. At a certain point, the relationship between him and his co-contractors deteriorates to such an extent that he must withdraw from the company operating under the HALSTON brand.

It is at this point that the protagonist realises the extent of the consequences of the contract he has signed.

By assigning the HALSTON trademark, the man with the same name assigned his right to market any clothing, as well as any other related product, under his own name. It then becomes impossible for him to start a new business using his name.

History Repeats Itself

Fashion designer Joseph Abboud faced a similar situation about 10 years ago. Abboud's story, unlike Halston's, was litigated. In that case, the designer had assigned his rights in the JOSEPH ABBOUD trademark and then proceeded to sell clothing under the JAZ trademark. However, he used his name to promote the latter mark, describing it, for example, as "a new composition by designer Joseph Abboud".

At trial, the Court found that this use of the mark constituted a breach of the assignment agreement. However, this decision was reversed on appeal, and the matter was sent back to the trial court. In the end, the Court concluded that, since the contract did not state that it was not permitted, Abboud could use his name, but only under certain conditions. The use of the name had to be descriptive, part of a complete sentence and accompanied by a disclaimer to avoid confusion. In addition, the name had to appear in a smaller font and far away from the trademark.

Trademark assignment cases leading to devastating consequences for their initial owners are surprisingly very common and stirs reflection and caution. The same goes for copyright too.

Can One Plagiarise Himself?

The cases discussed above are reminiscent of the John Fogerty case. Fogerty was singer and guitarist in the legendary Creedance Clearwater Revival (CCR) band. Fogerty composed and wrote a song named “Run through the Jungle” which appeared on a CCR album in 1970 and in which the rights were lately acquired by the record company. Some 15 years later, Fogerty, now solo, released a hit named “The Old Man Down the Road”, of which the music score is essentially the same as the one he wrote for “Run through the Jungle” (this assessment is not a legal opinion, but rather the personal opinion of the classic rock fan who co-authored the present article).

Fogerty was then sued for copyright infringement of his own song. However, the Court found that there was no infringement. We note however that this was in the context of a jury trial, which is not possible in Canada for civil matters, and that Fogerty may have beneficiated from the jury’s sympathy. Notwithstanding the outcome of this case, the fact is that an author can be liable of the violation of his own copyright, if this right has been assigned.

Canadian Creators Are Not Exempt from Similar Scenarios

Although the Trademarks Act protects the right of an individual to use his own name as a trade name, this may not be done if such use is likely to have the effect of depreciating the value of the goodwill attached to a registered trademark. Moreover, this right does not extend to a company of which the individual is a shareholder. On the other side, the Copyright Act does not provide any exception allowing for an author to reproduce his own work, if he does not own the rights in it, not even for self-promotion purposes in his portfolio, for example.

It is therefore important to pay attention to the terms of the rights assignment agreement which may or may not allow the use of the name or the work in certain situations.

Lesson to be Drawn 

As the series from which originates this article ends with the dramatic mention that Halston died before regaining the rights to use his name, the following appears clearly: If you are about to conclude a transaction involving the assignment of a trademark or a copyright you care about, be sure to consult a trademark specialist!

For more information, contact our trademark team who will be pleased to assist you with your trademark and copyright needs in Canada, in the United States and globally.

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