In reading a New York Times article about the ongoing legal battle between Borghese Inc., the global cosmetics brand, and members of the Borghese family, I was stumped by a claim that is considered a key piece of the dispute: Who owns the right to the Borghese family history?
The Borghese family is a prestigious Italian family whose lineage can be traced back hundreds of years. Borghese ancestors include prominent noblemen and royals, a pope, and Napoleon Bonaparte’s sister. In the 1950s, Princess Marcella Borghese partnered with Revlon to launch a cosmetics company bearing her name. By 1976, Revlon owned the company outright, having purchased Princess Marcella’s remaining interest from her. Revlon, in turn, sold the company in 1992 to its current owners. Among the IP included in the acquisition by Revlon were
“the words and phrases BORGHESE, MARCELLA BORGHESE, PRINCESS MARCELLA BORGHESE, and all … variations thereof, whether used as a personal name, trade name or trademark,”
as well as an exclusive licence to the Borghese family history and crest.Galleria Borghese here
[Merpel notes that Lorenzo Borghese is better known for his star turns in the U.S. television show The Bachelor and the UK television show Big Brother]. They have, however, made reference to their illustrious heritage – including their connection to Princess Marcella – in marketing materials and sales pitches. It is the use of the family name and history in sales and marketing efforts that caused Borghese Inc. to file a lawsuit against the Borghese clan. There are other claims at issue in the dispute, but the one I’d like to focus on is the claim regarding the use of the family history.
What IP rights could even exist in the family history? A version committed to paper or other medium can be protected by copyright. Could a family history be considered a trade mark, as well? Could it be protected in another manner?
Borghese Inc. could sustain a passing off claim if the Borghese family were intentionally deceiving consumers as to the existence of a connection between themselves and Borghese Inc. And if the Borgheses appended statements about their family lineage to their brands’ trade marks, they would likely discover, as did Giuseppe Cipriani and Joseph Abboud, that they are thus infringers of the trade mark rights of the party to which they had previously sold the rights, in this case Borghese Inc. However, merely explaining to consumers that, as brand owners and ambassadors, they have an expertise in Italian design because of their lineage doesn’t seem to rise to a level sufficient to cause consumer confusion, especially if they disclaim an association with Boghese Inc. What do readers think?
House of Borghese here