Apple's Not Playing Around With Steve Jobs Action Figure
A Hong Kong-based company called In Icons is ready to begin selling a 12-inch-tall Steve Jobs action figure. Apple, however, wants to prevent that, and it's threatened to take legal action. Much depends on who owns the publicity rights to the late Steve Jobs' image -- Apple or his estate. Even if Apple gets its way in court, enforcing a sales ban on the dolls could be tricky.
01/06/12 5:00 AM PT
Apple has threatened to sue the maker of a Steve Jobs action figure if it starts selling the doll next month as planned.
The Hong Kong-based maker of the figure, In Icons, has reportedly been told in a letter from Apple's lawyers that the company would pursue legal action to stop the sale of the 12-inch likeness of its cofounder, who died last year of cancer at age 56.
Apple did not respond to our request for comment on this story, but according to UK newspaper The Telegraph, In Icon was warned in the letter that any toy that resembles the technology company's logo, person's name, appearance or likeness of its products is a criminal offense.
Another Chinese company, M.I.C. Gadget, tried to market a similar doll last year before Jobs' death. It pulled the item from the market after Apple played the lawsuit card on them. But this time, it looks like the maker of this Steve Jobs doll isn't going to roll over in the face of Apple's litigation rattling.
Sticking By His Figure
In an interview with ABC news, In Icon's Tandy Cheung declared that the company had already started production and does not intend to stop.
His lawyers, he added, told him that he was on safe ground legally as long as he did not include the likeness of any Apple products with the figure. In publicity photos, the Jobs doll is shown holding a miniature iPhone, but that's not part of the package that In Icon is selling for US$99.99, plus shipping charges.
Cheung's attorneys may be right, but the case, should it end up before a judge, would be far from clear-cut.
This is not a run-of-the-mill trademark case, according to J. Mark Bledsoe, intellectual property practice partner with Bradley Arant Boult Cummings. "Last I checked, Apple has not registered any trademarks protecting the use of 'Steve Jobs' or his iconic profile and image, as, for example, Nike has done with Lebron James," he told MacNewsWorld.
For that reason, he continued, it might make more sense for Jobs' estate, rather than Apple, to lower the legal hammer on In Icon.
"This is a case best brought by the estate of Steve Jobs to enforce the right of publicity," he opined.
Who Holds What?
A number of states, including California, have laws to prevent the commercial exploitation of a person's identity, signature, voice or image without their consent. When a person dies, the publicity right becomes part of their estate -- if they didn't assign those rights to someone else before they died.
"A right of publicity is a property right that can be freely transferred to any person or entity," John A. Cullis, an intellectual property and technology partner at Neal, Gerber & Eisenberg told MacNewsWorld.
"The operative question here is who actually holds the right of publicity for Steve Jobs' likeness and image at this point?" he explained. "Did Steve Jobs transfer his right of publicity to Apple or is it something held by his estate? If Apple actually holds a right, then it has a strong case for going after this entity in many different states."
Rights aside, even if a case was won against In Icon, enforcing the decision could be problematic. States with publicity rights laws like California's may accept a decision in favor of Apple and bar the sale of the Jobs doll in their jurisdictions, but what about the states without such laws?
"It would be difficult enforcing in states that don't recognize a post mortem right of publicity, because you're going into a state trying to seek relief from which you wouldn't be entitled to from the outset," Cullis said.
The situation gets even stickier on the international level.
"Different countries, just like different states here in the U.S., have differing opinions on whether a person is entitled to the right of publicity and whether and for how long after death those rights are enforceable," Bledsoe explained.
China has such a right for its citizens, but that doesn't mean the right would be extended to a moribund Jobs.
"Without an international treaty in place to ensure enforcement of the right of publicity, the Jobs estate may have to fight an expensive battle on multiple fronts to control the global distribution of this doll," Bledsoe said.