Celebrities Face Particular Challenges with AI Misuse

As AI continues to become more accessible, celebrities are considering new legal strategies to protect their identities. 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 said, “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, faced instances of AI misuse, including by Meta’s AI chatbots and in pornographic images that 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.

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. T

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 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 sound mark 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:

• Another registration covers the same “ALRIGHT, ALRIGHT, ALRIGHT” mark but for “Entertainment services, namely, personal appearances by a celebrity and entertainment services, namely, acting services in live performances and personal appearances by a celebrity.”
• Serial No: 99745648 is a pending application to register a mark consisting of a black-and-white image of McConaughey, covering “Production of films; Television show production; Personal appearances by an actor as a spokesperson for entertainment and education purposes.” The mark looks like this:

• Registration No: 7995858 is a registration for a soundmark consisting of a McConaughey saying "JUST KEEP LIVIN', RIGHT?" followed by a pause, "I MEAN" followed by another pause, and ending with "WHAT ELSE ARE WE GONNA DO?" covering “Downloadable videos and audio/video recordings in the field of self-help, spirituality, and entertainment television, comedies, and dramas.” The sound is captured in a video, a screengrab of which looks like this:

• Another covers the same soundmark but for “Entertainment services, namely, personal appearances by a celebrity and entertainment services, namely, acting services in live performances and personal appearances by a celebrity.”

Swift has filed three trademark applications:

• Serial No. 99784979 is an application to register a soundmark consisting of her voice saying is “Hey, it’s Taylor,” covering, among other things, “Providing information in the field of music and entertainment.”
• Serial No. 99784980 is an application to register a soundmark consisting of her voice saying “Hey, it’s Taylor Swift,” covering, among other things, “Providing information in the field of music and entertainment.”
• Serial No. 99784977 is an application for a design consisting of “a photograph of Taylor Swift holding a pink guitar, with a black strap and wearing a multi-colored iridescent bodysuit with silver boots. She is standing on a pink stage in front of a multi-colored microphone with purple lights in the background.” The services covered are: Entertainment services, namely, providing non-downloadable prerecorded music via a website.”

What Do Trademarks Do That the Other Rights Don’t Do?

Arguably, these trademarks registrations do very little. Certainly, if someone decides to recreate Matthew McConaughey’s voice saying “ALRIGHT, ALRIGHT, ALRIGHT” and use it to sell self-help or spirituality services, that would seem to infringe his trademark, since the mark matches the one covered by the registration, the services are the same as those covered by the registration, and the use is a trademark use.

A trademark infringement claim under the Trademark Act would be a powerful weapon in this situation, potentially entitling McConaughey to an injunction, destruction of all infringing items, the defendant’s profits, and possibly attorneys’ fees and punitive damages.

This use would also be in violation of McConaughey’s right of publicity, and would violate his right under Lanham Act §43(a). It would also violate, in my opinion, his copyright in the voice recording he used for this trademark application or that he may have used elsewhere in his own videos.

As such, the trademark registration supplements the other claims. So why not have them available? There doesn’t seem to be any downside to having them and they may be helpful.

Why Not?

To use a different example, let’s say someone tried to use an AI-generated video replicating McConaughey’s performance in The Lincoln Lawyer as a trademark for legal services. Whether a trademark claim based on one of McConaughey’s registrations would be successful against this is less certain.

In this scenario, the trademark doesn’t match any of the registrations, and the services do not match those covered by any of the registrations. Still, McConaughey may have an argument that the use of the video is confusingly similar to one of the motion marks in his portfolio due to his presence in it and due to the use of his voice, and that legal services are not so far removed from self-help services as to be non-infringing.

In this way, the trademark registrations allow for some creative legal arguments that may lead to serious remedies. Again, in this example, McConaughey would also have a right of publicity claim and a Lanham Act claim, but if the trademark claim fits, why not assert it?

The same kind of arguments could be made in the case of the Taylor Swift deepfake, particularly if it is monetized, i.e., used in commerce. If Swift’s voice and face is used, even if it looks and sounds different than the image and the words in the registrations, mightn’t there be consumer confusion that Swift is in the deepfake? The right jury or judge could be convinced. By these examples, one can see how a trademark claim could supplement actions against AI misuse.

Conclusion

As the law struggles to evolve as rapidly as these technologies emerge, it is still yet to be known how these claims, if asserted, would play out. For public figures who rely heavily on the economic value of their persona, legally sound protections are becoming increasingly necessary. Swift and McConaughey’s creative push towards trademarks, if successful, may indicate that when it comes to AI misuse, celebrities will no longer just “Shake It Off.”