Sunday, June 12, 2022 | 2 a.m.
Last month, Authentic Brands Group (ABG), the company that claims ownership of Elvis Presley’s intellectual property rights, told Las Vegas wedding chapels that by using Elvis’ name, image, and songs in connection with the performance of Elvis-themed weddings and in connection with websites and domain names advertising their services, the chapels have infringed upon Elvis’ rights of publicity, trademark rights and copyrights.
Broadly speaking, intellectual property rights (i.e., copyrights, patent rights, and trademark rights) protect a person’s investment of time, money, effort and thought made developing creative works such as songs, music, novels and inventions, as well as other intangible property, such as the goodwill developed in trademark through use of the mark in business, whereas rights of publicity protect the fame or notoriety a person acquires in their name, voice, signature, photograph and likeness.
All shook up
In its letters to wedding chapels, ABG claims they are infringing upon these rights through a variety of activities, including by:
• Using Elvis’ image as part of a logo or trademark;
• Using Elvis’ name as part of internet domain names for commercial websites;
• Using Elvis’ name on those websites and in the names of wedding packages to advertise and sell wedding-related goods and services; and
• Using Elvis’s songs in connection with the performance of wedding ceremonies.
ABG claims it has not authorized or consented to these uses and demands that the wedding chapels cease and desist from these activities. It threatens to sue them and seek money damages, attorneys’ fees and costs, and an injunction preventing them from continuing to operate their business in the manner they have done, in some cases, for decades. The chapels are understandably all shook up over ABG’s assertion of Elvis’ intellectual property rights after so many years of seeming inaction on ABG’s part.
Depending on the validity of the rights asserted by ABG and the specific allegedly infringing activities in each case, parties will often resolve their dispute by negotiating a license agreement where the alleged infringer agrees to pay the rights owner a license fee or a royalty for its continued use of the intellectual property at issue. Such agreements will often require the licensee to acknowledge the validity of the rights owner’s rights, disclaim all ownership in the rights at issue, and promise not to challenge the validity of the rights owner’s rights. These agreements may also grant the rights owner the ability to exercise “quality control” over precisely how the licensee uses the licensed intellectual property.
Crying in the chapel
The alternative for wedding chapels that are unwilling to negotiate a license and pay license fees to ABG is defending an expensive, bet-the-company lawsuit.
If, for example, ABG prevails on a trademark infringement claim, it could recover substantial money damages, including three times its actual damages, the alleged infringer’s profits, and its attorneys’ fees and costs. If an alleged infringer is found to have used a “counterfeit mark,” ABG could be awarded up to $2 million in statutory damages.
ABG may also be able to obtain a temporary, preliminary or permanent injunction preventing a chapel from continuing to use any marks that are confusingly similar to ABG’s federally registered trademarks
Potential defenses
The wedding chapels accused of infringement are not without substantial defenses to ABG’s claims.
First, it appears that ABG and its predecessors allowed numerous companies to offer Elvis-themed weddings and wedding services in Las Vegas for decades — seemingly without any license and seemingly without any enforcement of Elvis’ intellectual property rights by ABG. If this is true, ABG’s failure to enforce Elvis’ intellectual property rights may give rise to the defenses of acquiescence, laches, waiver, and/or estoppel—defenses that could prevent ABG from obtaining money damages or injunctive relief.
Second, the federal courts have recognized a First Amendment exception for parodies to the enforcement of intellectual property rights. Parodies are exaggerated imitations of style intended to have comedic effect. Here, the courts may find that the performance of a wedding by an Elvis impersonator constitutes a parody protected by the First Amendment.
Third, to the extent that ABG seeks to enforce Elvis’ rights of publicity, in Nevada, those rights are governed by statute. Nevada law exempts impersonators for liability for infringing rights of publicity. Also, if ABG was ever made aware of infringing activities occurring in Nevada, but failed to register its claim to Elvis’ rights of publicity with the state within six months of so learning, it will have waived Elvis’ rights of publicity in Nevada.
Don’t be cruel
It is only now that the Elvis-themed wedding industry has grown sufficiently large enough that ABG seeks to assert Elvis’ intellectual property rights and take a slice of the Elvis-themed wedding pie. ABG should consider that Elvis obtained much of his fame by performing in Las Vegas to the thousands of local, national and international visitors who came here to see him and who now return for an “Elvis” wedding.
Indeed, Elvis himself was married in Las Vegas — and is forever linked to the city. After his death, the wedding chapels continued to enhance his goodwill and reputation by performing Elvis-themed wedding services for legions of loyal fans. These businesses grew in number over the years, seemingly unchecked by ABG, and have served to keep Elvis’ memory — and intellectual property — alive and relevant.
For these businesses, Elvis never left the building. The same is true for generations of Elvis fans, including those who make the journey to Las Vegas seeking an Elvis-themed wedding.
To ABG, I have one thing to say: Don’t be cruel. Be kind to the local wedding industry. It employs hundreds, contributes positively to the tourism industry, and helps keep Elvis’ fame and legacy alive.
Jonathan Fountain is a partner at Howard & Howard Attorneys in Las Vegas. He represents parties in entertainment and intellectual property litigation throughout the United States.
