Issue #2

What's In A Name?

The Potential For Trouble, If It Isn't Not Yours To Use

By Alex Frishberg

Elections are hugely popular in Ukraine, but they are not always clean. One cute example involves political groups who seek out citizens with the same name as a popular candidate and put these 'straw men' on the ballot in order to confuse voters and siphon crucial votes away from the legitimate candidate. This has had dubious success as a political tactic, and its application as a commercial strategy invites legal jeopardy. Confusing voters may be fair game in some circles, but misleading consumers should have no place in marketing.

Branding a product - especially the process of finding a brand name that is both memorable and that will inspire consumers to buy and try - is difficult enough without creating unnecessary (and costly) litigation for the product's manufacturer. The appropriate use of names, photographs and other descriptive material in conjunction with a business or product requires a great deal of care to ensure that the material used is legally permissible, as well as commercially persuasive.

Using a well-known person's name in your brand can be a useful way to draw attention to the product, but one must be certain that you not only have permission to use the name, but permission for the way you intend to use it. Celebrities and other famous persons tend to be protective of their name - it's their brand, after all - and they are entitled to demand the right to approve every way the name is applied.

Using just a family name as a brand may be fine, or it may be deceptive and invite a lawsuit. If your client, Bohdan Bubka, wants to call his sausage factory "Bubka's Sausages," few would dispute his right to do so. But if he wants a logo depicting a pole vaulter using a sausage as a pole, the public might reasonably - though erroneously - be lead to believe that champion vaulter Serhiy Bubka is involved in the company.

That would spell trouble for your client, as the famous sportsman could sue. The Civil Code provides that a person's image or personal information belongs solely to him, and can be used only with his permission. The fact that the client's family name is Bubka isn't a defense, as the logo is misleading consumers to believe that the product is affiliated with the world-famous Bubka. In several precedents involving the use of similar names, celebrities sued and won.

One area where deception wouldn't be a factor is when the well-known personage whose name you want to use is long dead. Does your client want to name his online bookstore "TarasShevchenkoBooks.com"? If you think that will drive sales, go ahead.

It's even possible to make a derogatory reference, if you think that would be effective. When talented Ukrainian writer Oles Busina researched a book on the life of Taras Shevchenko and titled it "Vampire Shevchenko", the Ukrainian Writers Union filed a claim against him in court alleging that that the facts depicted were untrue. The court refused to hear the case, ruling that the writers union lacked legal standing to sue on behalf of the deceased Shevchenko.

A photo of a well-known politician, singer or actor has the same clout as their name, but again, generally only if they are alive. A while ago, a company used a picture of Vladimir I. Lenin in an advertisement for a washing machine. In another instance, a local government used Lenin's image to scold folks who hadn't paid their ZhEK bills.

While members of the Communist Party were rather upset to see the iconic Lenin used in capitalistic ways, Lenin is dead and doesn't care. The only liability might arise if the photographer or artist who created the picture was still living and hadn't given permission or been compensated.

Newspapers carry pictures - often unflattering ones - of politicians all the time. Photographs of public people are generally public domain, and the celebrity cannot keep them out of print when the person is photographed in real, everyday activities - even if embarrassing. One key is that the photo be genuine - not a Photoshop adaptation of a real photo. Hence, if your client makes frozen food, using a computer to alter a photo so that it shows a smiling Viktor Yushchenko, Yulia Tymoshenko and Viktor Yanukovych at a table eating Apex Frozen Pelmeni, your client may be subject to three rather nasty lawsuits, as the photo amounts to using the person's goodwill for commercial purposes.

It's even worse when the public believes that the person depicted would have some expertise about the product. Whereas the three political leaders may not know much about pelmeni, boxer Volodya Klitschko surely knows something about vitamins. As a result, the public might imply an endorsement of Klitschko's Extra-Strength Vitamins and purchase the product in reliance that it was of high quality, based on Mr. Klitschko's goodwill image.

The Civil Code provides that a person's image is his property and cannot be used without permission. This applies to the man on the street as well as the rich and famous. There are always exceptions - hence the need to seek specific legal advice for specific situations - but for the most part, let the following be your guide: "If something isn't yours, don't take it."