Can Trademarks Combat AI Misuse?

Taylor swift arrives at the 67th Annual GRAMMY Awards

Getty Images for The Recording Academy

In an attempt to combat the onslaught of unauthorized generative AI-created audiovisuals using images and voices, some celebrities are fighting back with novel intellectual property weapons, the latest being trademarks. As reported earlier this year, the United States Trademark Office has granted actor Matthew McConaughey trademark registrations embodying his image, voice, and well-known catchphrases such as “Alright, Alright, Alright.” More recently, Taylor Swift followed suit, filing for three trademark registrations covering her name, voice and likeness, potentially indicating an industry charge towards actionable enforcement against commercial exploitation of these technologies.

^{Celebrities Face Particular Challenges with AI Misuse}

As AI continues to become more accessible, celebrities are considering new legal strategies to protect their identites. McConaughey explains his thinking: “My team and I want to know that when my voice or likeness is ever used, it’s because I approved and signed off on it. We want to create a clear perimeter around ownership with consent and attribution the norm in an AI world.” His lawyer says: “In a world where we’re watching everybody scramble to figure out what to do about AI misuse, we have a tool now to stop someone in their tracks or take them to federal court.”

McConaughey and Swift, being popular celebrities, have no doubt witnessed the use of their images and voices in memes, deepfakes, and other user generated content since the advent of the internet. Swift, in particular, has faced instances of AI misuse, including by Meta’s AI chatbots and in pornographic images that have circulated on the internet. In the run-up to the 2024 U.S. presidential election, Donald Trump shared AI-generated images of the singer falsely suggesting that Swift had endorsed Trump. Generative AI capabilities now available on search engines, social media platforms, and AI platforms such as Midjourney or Sora 2, make the creation of such content easier, more polished, and more prevalent than ever before. A lot of it is just fans having fun. Nothing commercialized, nothing merchandised, nothing affecting the celebrities’ livelihoods in terms of acting roles revoked or concerts cancelled. But there have been intangible harms, such as the fake Swift chatbots and political endorsements. And what further unknown potential threats does AI pose? Understandably, actors, performers and musicians such as McConaughey and Swift have valid concerns about being harmed by, or replaced by, AI creations. As we all do on some level. But is trademarking ourselves the answer?

NIL Protections Already Exist

It is questionable, from an intellectual property law perspective, whether a trademark strategy provides meaningful protection against the harms it is intended to prevent. More likely, a trademark portfolio provides a harmless additive to the arsenal of rights these celebrities already have against unauthorized uses of their name, image or likeness, often referred to a “NIL.”

When we think of the unauthorized use of a celebrity’s name, image and likeness, or a digital replica of the person, there are several legal protections that already exist. Let’s break it down:

SAG Protections

Thanks to aggressive negotiations over the last couple of years, the Screen Actors Guild (SAG) Agreement now has prohibitions against the use of AI-generated digital replicas of SAG performers to replace them in acting or performance roles without their consent. This means the major studios cannot cast a digital replica of McConaughey, for example, to play a fictional part that McConaughey himself could play, unless he grants permission. The intention behind these new provisions of the SAG Agreement is to protect the SAG members’ livelihoods, not to necessarily create an intellectual property per se, in the members’ likenesses. The prohibitions around using digital replicas do not apply to biopics, for example, where a digital replica may be used to portray the actor as the actor, rather than in a fictional role. Traditionally, other actors have been used to portray real persons in biopics; now digital replicas could, theoretically, be used. However, neither scenario will put the person portrayed out of work.

Copyright Protections

The federal Copyright Act grants to authors the exclusive right to publicly display, publicly perform, copy, and distribute copies of any kind of work of authorship, such as videos, photographs, musical works, sound recordings and choreography, and to create derivative works thereof. This means no one can legally copy a Taylor Swift song or recording, or stream it, without her permission, and no one can copy Matthew McConaughey’s Just Keep Livin’ Foundation videos he owns without his. But just like in the SAG Agreement, certain exceptions exist. Fair use, for example, allows the copying of copyrighted works in certain cases, such as parody, to protect free speech.

Rights of Publicity Protections

Most, if not all, states have enacted laws that prohibit the use of a person’s name, voice, or likeness, for commercial purposes, without their permission. This prevents, for example, someone using McConaughey’s voice to sell cars, or Taylor Swift’s image as an endorsement for a fragrance line. Several states have expanded these laws to expressly cover the use of a digital replica of a person under certain circumstances. The right of publicity does not extend, however, to expressive works, such as biographies or fictional films, where a person’s name or likeness may be used in a factual, biographical or expressive way.

Lanham Act §43(a) Protections

The federal Lanham Act, which includes trademark provisions, also includes a prohibition against the use of any word, term, or symbol that is likely to cause confusion regarding the affiliation, connection, or approval of the goods or services of any person, as well as the misrepresentation of the nature or characteristics of goods or services. This law is highly flexible in its application, does not require a trademark or other registration, and is often used in cases involving claims of false association or false endorsement, such as the unauthorized use of an artist’s song in connection with a political campaign.

Privacy Protections

There are also laws against the use of a person’s likeness in sexual deepfakes or deepfakes which portray a person doing something they did not do, such as endorsing a candidate for office, or making offensive comments.

Trademarks Rights Are Traditionally Narrow

Trademark law and trademark registrations arguably prohibit none of the unauthorized actions noted above. What trademarks do is identify to consumers the source of goods and services that are branded with the trademark, meaning a set of golden arches identifies McDonald’s, or a Nike swoosh design denotes a particular brand of shoe. Also, trademark rights only arise upon use of the trademark in commerce; in other words, you can’t claim trademark rights in the abstract; your rights only arise when you brand your product or service with your trademark and sell it. Trademark registrations create a record of trademark rights, and are granted only after you provide proof to an examiner in the Trademark Office that you have used your trademark on goods or services in commerce.

Accordingly, trademark rights traditionally are narrow rights that cover only the trademark involved, and only the goods or services for which the mark is used or registered. This is why Delta Airlines co-exists with Delta Faucets. Unless and until the airline expands into waterworks, or vice versa, consumers will understand that the name Delta means different sources for different products and neither mark infringes the other. Trademark infringement is limited too; it targets third parties who use an existing trademark as a trademark, not those who may use a trademark in an expressive, or nominative way. In one well-known example, the use of the trademark BARBIE in the title of the song BARBIE GIRL, a musical critical commentary on Barbie dolls, was held not to constitute trademark infringement in a lawsuit brought by Mattel.

That said, the infringing use need not be an exact match; if a trademark owner can show that the use of mark that is confusingly similar to one’s trademark, and is used on goods or services that are sufficiently related to those in the registration, then infringement can be found. This is where the novel McConaughey/Swift trademark registrations may have some life.

The Trademarks McConaughey and Swift Claim

Let’s looks at the trademark registrations for goods or services McConaughey and Swift were able to secure.

McConaughey has the following, among others:

• Registration No. 8070191 is a registration for a soundmark for the words “ALRIGHT, ALRIGHT, ALRIGHT” for “Downloadable videos and audio/video recordings in the field of self-help, spirituality, and entertainment television, comedies, and dramas.” The specimen is a video; a screengrab looks like this: