“We did our market research and we noticed that Apple, one of the best-known companies in the world, never thought about registering its founder’s [name]. So, we decided to do it ourselves.” This is what Vincenzo and Giacomo Barbato said recently, reflecting on their five year legal battle with the world’s largest tech company. Thanks to the Naples, Italy-based brothers, the Steve Jobs name is no longer merely the name of the late co-founder of Apple; it is the moniker associated with a budding fashion brand, one that is perfectly legal, at least, for now.
In a headline-garnering decision, the European Union Trademark Office (“EUTM”) held - in May 2014 - that the “Steve Jobs” trademark registration that brothers Vincenzo and Giacomo Barbato were awarded, after filing an application in July 2012, is, in fact, valid, despite Apple’s arguments to the contrary.
The mark at issue: A logo consisting of the letter “J” topped by an Apple-style leaf with a semi-circular cut-out on one side. (Note: What was not at issue: The trademark registration that extends to the “Steve Jobs,” for which the Barbatos filed an application in March 2013 and received a registration for in September 2013; interestingly, Apple appears to have never opposed that trademark application for registration).
The Naples-based Barbatos have been battling Cupertino, California-based Apple since the tech giant first attacked their trademark in May 2012, arguing that the “Steve Jobs” trademark asserted in the their application should not be granted registration with the EUTM, as it gave rise to a “likelihood of confusion, unfair advantage/detriment to distinctiveness or repute [of an] earlier non-registered trademark.”
Ahead of formally registering the Barbatos’ mark in June 2014, the EUTM sided with the brothers, rejecting Apple’s opposition “in its entirety.”
The End? Maybe Not
As for whether this is the end-all be-all ruling when it comes to the Steve Jobs trademark, there is a chance that there is litigation in the Barbatos’ future by way of the estate of Steve Jobs, which very well may file suit based on the fact that Italy grants rights to an individual (or his estate in a post-mortem instance) in connection with the use of his name and likeness.
Not too long ago, we saw Argentinean football player-turned-manager Diego Maradona filed suit against Dolce & Gabbana, alleging that the famous Italian design house exploited his likeness by recreating his S.S.C. Napoli football club jersey, complete with his name and number, and including it in the couture collection.
And before that, the recently-revamped Fiorucci was embroiled in a lengthy legal battle over the name of its founder. That case made its way through the European Union Intellectual Property Office and court systems before landing in front of the Court of Justice - the highest court in the European Union - which was tasked with determining whether under Italian law, Fiorucci’s former owner, Japanese jeans group Edwin, could prevent Mr. Fiorucci, a famous figure, from using his name in a commercial capacity.
In its decision, the court was sure to note that under Italian law, the so-called "right to a name" protects famous individuals from having their names used without their express consent. Since Mr. Fiorucci had established his name as having significance in the business world, any use of that name requires his permission, the court concluded.
And as our friends over at IPKat noted in 2015, such name/image rights extend to the deceased; "the Court of First Instance of Milan dealt with these issues," according to IPKat, "in an intriguing case concerning unauthorised use of evocative elements of Audrey Hepburn's image in an advertisement."
In its decision in January 2015, the Court of First Instance of Milan ruled in favor of Audrey Hepburn’s estate in a dispute against Italian company Caleffi. The Court found that the actress's image rights deserved protection against unfair use of a number of elements bearing an evocative value which allowed the public to relate to her directly and unequivocally. This is because such elements have become indissolubly connected to her image given their peculiarity and notwithstanding the fact that neither the image nor other features of Audrey Hepburn had been reproduced in the advertisement.
Chances are, while this it the end of one battle for the Barbatos, it just might be the beginning of another.