Rohan Vasudevan, Solicitor and Clint Fillipou, Principal
Boxing legend turned Hollywood celebrity, Mike Tyson, is taking a swing at Australian streetwear clothing store Culture Kings over issues relating to appropriation of his name. Rather than using his fists and challenging the retail store in the boxing ring, Mike Tyson has been chewing his lawyers’ ears off and he has chosen to take this particular fight to court.
The former heavyweight champion of the world and baddest man on the planet filed proceedings in the NSW Federal Court earlier this month, alleging that Culture Kings is selling merchandise featuring Mike Tyson’s name and intellectual property without express consent, infringing on his rights. Mike Tyson (also known as ‘Iron Mike’ among a litany of other nicknames) alleges that Culture Kings is using his image, name and known aliases to sell clothing in an unauthorised manner, which amounts to misleading and deceptive conduct under the Australian Consumer Law (ACL). There are some very interesting facts pertaining to this matter and it will be very interesting to watch if the matter proceeds to full-blown litigation. We have mapped some of them out below.
Culture Kings sells a variety of street apparel bearing imagery, pop culture commentary and taglines relating to celebrities, and, in many instances, these items are sold under licence, such as images from television shows, music icons and other pop culture references. In the Tyson instance, clothing bearing his likeness and wording like ‘Iron Mike’ is being sold, apparently without a licence.
To be clear, Culture Kings does sell officially licenced products of third parties, including t-shirts. Part of Tyson’s claim is that, by selling some licenced products from third parties and unlicenced products depicting Tyson, Culture Kings customers may erroneously assume that all of the Tyson Culture Kings’ clothing is affiliated with or is official Mike Tyson merchandise. Mike Tyson does have his own popular official line of clothing, often featuring the boxer’s face and name, which is largely comparable to the unofficial products that Culture Kings is selling, thus arguably reducing the market for Tyson’s official merchandise. Tyson has applied for an injunction against Culture Kings and is seeking other damages, including being paid all profits made from Culture Kings’ sale of the unofficial merchandise.
What are Mike Tyson’s Claims?
Like many celebrities, Michael Gerald Tyson registered his known professional name (‘Mike Tyson’) as a trade mark in various countries many years ago to protect against any unauthorised commercial use of his fame. Mike Tyson also has various other trade marks including ‘Bite the Mic’, ‘Iron Mike Productions’, ‘HotBoxin’ and his famous face tattoo – all of which are associated with his public profile.
Culture Kings’ unofficial clothing line uses Tyson’s famous nicknames such as ‘Iron Mike’ and the ‘Dynamite Kid’ – which often feature on Mike Tyson’s official apparel. Some of the clothing in question also prominently features images of Mike Tyson in various boxing poses and includes an image of him holding money while wearing the heavyweight championship belt.
What about ‘passing off’?
It is also open to Tyson’s legal team to claim that Culture Kings’ conduct amounts to passing off. Given Mike Tyson’s notoriety, recognisability and fame, the use of Mike Tyson’s image, name and known aliases, like ‘Iron Mike’ and ‘Dynamite Kid’, may imply that the Culture Kings products were endorsed or licensed by Mike Tyson when this is not the case. Similar to misleading conduct or false representations actions under the ACL, actions under the tort of passing off are usually claimed simultaneously to misleading conduct claims.
From a legal standpoint, the tort of ‘passing off’ has two elements, which are (1) the defendant (Culture Kings) took a ‘free ride’ on the goodwill and reputation of the applicant (Mike Tyson), and (2) the defendant misrepresented that a commercial arrangement was in place where none was present. If there is no misrepresentation there is no passing off, even if a free ride has been taken.
The question with this matter is whether or not a misrepresentation took place and thus a passing off action is sustainable.
What about the use of a disclaimer?
To circumvent some of the legal issues that have arisen, Culture Kings may have used a disclaimer, stating that their product was in no way associated with that of Mike Tyson and that the use of ‘Iron Mike’ and other known names were in no way linked to the boxer. In the case of passing off, this would be largely effective to negate misrepresentation risks. However, it is a well-established rule of advertising in Australia that disclaimers cannot be used to cure what is otherwise a misleading message under the ACL. Simply, this is not how disclaimers are to be used and they do not ‘cure all’ in an ACL sense.
Tyson Fights Inside and Outside of the Ring.
Mike Tyson is no stranger to litigation and Culture Kings are not the first business to be sued by the celebrity.
In 2017, the boxing great sued the Boxing Hall of Fame (BHF) for using his image on t-shirts, clothing and other merchandise that were not endorsed or officially licenced. In the statement of claim against BHF, Tyson claimed that the use of his image and name without express permission is a breach of his rights (including his trade marks). As a result, Tyson said that BHF intentionally, wilfully and unfairly profited from selling merchandise with the boxer’s image and wanted compensation.
Another famous case indirectly involving Mike Tyson occurred in 2011. In this case, the tattoo artist who created Tyson’s famous face tattoo sued the movie studio Warner Brothers Entertainment for copyright infringement because they used the tattoo in the Hangover Part II movie. In the movie, a character wakes up after a night of drinking and notices a ‘Mike Tyson’ style tattoo inscribed on his face. Mike Tyson starred in the first Hangover movie but was not present in the sequel. The studio settled the lawsuit outside of court after the tattoo artist applied for an injunction to prevent the film’s release. However, if the action was not settled prior, the court may have played a role in the film’s release.
What happens next?
The outcome of the case will be interesting and may be settled out of court like Tyson’s other recent victories. We will keep you updated as this story progresses.
If you would like further information on misleading and deceptive conduct or passing off, or the effective use of disclaimers to avoid licensing or advertising risks, please contact one of our experts.