The cat's pyjamas?

The cat's pyjamas?


Ben Scarfield considers whether the image rights in a real animal can be utilised and harnessed in trade marks systems around the world

The technological advances of the last few years have allowed us to share information at an ever-faster rate. Among these vital technological advances – enabling communication of news, cutting-edge medical research, and scientific advancement – there has been one other conspicuous change: the rise of the pet owner.

Never before have people been able to instantly share images of their beloved pets across the world, resulting in overnight celebrity status. Never before have people been able to take advantage of, and monetise, their animals to the scale and immediacy that is now possible. However, with these new methods of communication, owners are forced to come to terms with traditional intellectual property and trade mark law to exercise control over their business – a trade mark being any sign which is recognised as an indication of origin for goods and services.

Tribunals and courts are now starting to see the results of action taken by the shrewd pet owners in question, and the real legal challenges they present.

Celebrity feline

In late 2016, electronic music producer Joel Zimmerman, aka Deadmau5 (pronounced ‘dead mouse’), attempted to register the name of his pet cat as a trade mark in the US. Zimmerman is no stranger to trade mark disputes having previously locked horns with Disney over both parties’ affinity for large, iconic, mouse-shaped heads, albeit indicative of very different brands.

Deadmau5 is internationally recognised as an award-winning figure in the dance music scene of the last 15 years. He released albums through Universal Music Group before founding his own independent label, Mau5trap (‘mouse trap’). He has headlined festivals in the US and gained global recognition for his music. In doing this, he has, according to his US Patent and Trademark Office (USPTO) petition, ‘painstakingly curate[d] and develop[ed] an iconic, recognizable brand’.

However, in this case, Zimmerman’s own trade mark application for his cat’s name, ‘Prof Meowingtons’, has been halted by an earlier registered trade mark right. This is in the form of Meowingtons, a Florida-based retail store which sells cat-themed women’s bags and apparel. Emma Bassiri, who operates Meowingtons, owns an earlier trade mark registration for her brand which is blocking Zimmerman’s application, with the USPTO citing this registration as raising a likelihood of confusion.

Zimmerman has been forced to petition to cancel Bassiri’s earlier registration to keep his own application alive. Zimmerman claims that the earlier registration, registered in March 2015, is depriving him of his own rightful intellectual property, with Bassiri’s own registration claiming a ‘first use in commerce’ date of 1 April 2014. This is some time after Zimmerman’s own use of the mark. The US gives the best rights to ownership of a mark to first use, rather than first to register as in the EU.

This is where the case for a celebrity cat becomes interesting. The feline in question, Professor Meowingtons PhD, or ‘Meowingtons’ for short, was adopted by Zimmerman in 2010 from the Toronto Humane Society. Professor Meowingtons began to feature on Zimmerman’s social media channels, including the Deadmau5 Facebook page, which has, at the time of writing, some nine million likes. The popularity of his pet led Zimmerman to create Professor Meowingtons’ own social media outlets shortly thereafter, which have garnered some 95,000 followers on Facebook, as well as verified social media accounts on Instagram and Twitter.

Professor Meowingtons’ own reputation was growing among consumers of Deadmau5’s music, including via a range of third-party blogs. This arguably culminated in Professor Meowingtons’ greatest moment, featuring prominently as the album artwork for the Deadmau5 album >album title goes here<, which reached number six on the Billboard 200 and number one in the UK dance albums chart. However, although the album featured the eminent animal in question, it did not feature use of the mark Meowingtons itself.

Copycat case?

With the release of this record began the transition from mere housecat moniker to claimed recognition as a trade mark indicative of goods and services originating from Zimmerman. As early as 2011, Zimmerman began using the word Meowingtons as a trade mark, including a Meowingtons Hax stadium tour of the US in 2011, and the subsequent Meowingtons Hax 2011 Toronto tour. These tours resulted in DVDs of the live performance, which is also available through iTunes. With the success came the inevitable merchandising, with Zimmerman claiming use of both images of Professor Meowingtons and the word mark Meowingtons on promotional merchandise, including ‘novelty figurines, posters, artwork, keychains, magnets, bags, glasses, mugs, and cell phone and tablet accessories’, and perhaps most importantly for this case, ‘garments and accessories for men, women, and children’. According to Zimmerman’s petition to cancel Bassiri’s earlier registration, this was at least as early as August 2011, predating Bassiri’s own claimed use by almost three years.

Zimmerman even collaborated with Sol Republic, a US audio equipment manufacturer, who in 2012 designed and sold ‘limited edition high-end “Meowingtons” headphones – the first ever headphones designed specifically for cats’.

Zimmerman’s cancellation petition asserts that Bassiri was aware of Professor Meowington prior to filing her own trade mark application, being aware of Zimmerman’s various social media accounts. Zimmerman claims that her knowledge of both Professor Meowingtons, the merchandise, and the Meowingtons mark utilised by Zimmerman was the reason behind the brand choice – and that Bassiri chose the brand to trade off the goodwill associated with the famed feline’s name, ‘fraudulently procuring the subject [earlier] registration’.

Zimmerman’s cancellation petition even claims the trade mark equivalent of evidential gold dust – that there has been real-life confusion among consumers in the marketplace and that Bassiri’s goods have been linked to Zimmerman.

If this confusion can be proven, and the evidence provided stands up to the USPTO’s tests, Zimmerman has a case. The US traditionally places a far higher emphasis on the use made of an unregistered trade mark in commerce than the British and European practices do. However, the decision rests with the USPTO as to whether Bassiri did in fact take advantage of Professor Meowingtons’ name, and the consequent validity of the registration in question. Until then, Bassiri and Zimmerman’s game of cat and mouse will continue.

Animal brands

The rapid rise of Meowingtons, from a homeless cat to a recognised trade mark, raises an interesting case on the legal implications of famed felines, and other animals. Depictions of animals have been synonymous with brands for decades. Companies have used them as a distinctive and memorable signs on their goods and services to retain and encourage repeat custom. They are recognisable trade marks.

Animal-based brands are also no stranger to contentious legal proceedings. Puma’s leaping feline is the subject of a defining judgment by the European Court of Justice (SABEL v Puma (C-251/95)) against a similarly bounding cat when assessing trade mark similarity, and Lacoste’s crocodile, which came into conflict with a similar Asian crocodilian brand when expanding across Asia, show the importance of animals to a company’s overall image. After all, a leaping feline on a car bonnet is immediately indicative of a Jaguar car, while a leaping horse badge is associated with an altogether different brand.

Animated creations such as Tony the Tiger and Chester, the Cheeto’s cheetah, have been stalwarts in consumer knowledge for decades. But what about where the animals themselves are live, known, and marketed? Does Professor Meowingtons’ tale suggest that the image rights in a real animal can be utilised and harnessed in the trade marks systems around the world?

Professor Meowingtons is by no means the first, and not the last, animal to act as a trade mark. A trade mark is, after all, an indication of origin of goods and services. As early as the 1920s, Metro-Goldwyn-Mayer was known for its roaring lion production logo. Since 1957, ‘Leo the lion’ has been the lion in question – although Slats, Jackie, Telly, Coffee, Tanner, and George were Leo’s predecessors over the 33 previous years. In 1983, the second ‘Morris the Cat’, star of 9Lives branded cat food, was reportedly declared ‘the feline Burt Reynolds’ in Time magazine. Morris’ predecessor in fact starred opposite Reynolds in the 1973 film Shamus, and has been credited as assisting with various written guides to cat care.

And now in 2017, more feline social media stars are coming to the fore. ‘Lil Bub’ is a Facebook-based cat with several genetic mutations who has over two million followers, a documentary (Tribeca Film Festival’s Best Feature Film 2013), and multiple US trade mark registrations.

‘Grumpy Cat’, a four-year-old cat known on social media for her apparent permanent scorn for life as we know it, has nearly nine million followers. Grumpy Cat Limited is now the owner of trade mark registrations in the US, Australia, China, the EU, Japan, Korea, Mexico, New Zealand, the Philippines, Russia, Singapore, and Turkey. This provides the monopoly right to use the mark Grumpy Cat in relation to all manners of merchandise (including pet food), and a feature-length film is apparently planned.

Utilisation of animals as trade mark rights is nothing new, but advances in technology and information sharing allow the focus to be shifted away from a mere representation of an animal towards consumer recognition of the animal itself as an indication of origin. Where there is enough recognition, it now seems wise for the owner to obtain the relevant registered trade mark rights to exploit this intellectual property before a third party gets their paws on it.

Ben Scarfield is a European and UK trade mark attorney at Kilburn & Strode