Last week, Nadene Lomu via Facebook brought to light her complaints about a potential documentary about her late husband, the famous All Black number 11, Jonah Lomu.
As her emotional Facebook post explains, it is almost ”eight years since our beloved Jonah devastatingly passed away”. During that time, Mrs Lomu has been active in filing trade marks to protect the Jonah Lomu name and the “authenticity of his legacy for our two sons, Brayley and Dhyreille”.
AJ Park litigation Principal, Thomas Huthwaite, was interviewed on the topic by NewstalkZB. Below, he expands on the potential issues that have been raised.
The documentary in question, entitled “Lomu”, was first announced by Dogwoof Sales in September 2022, as a co-production between Sylver Entertainment and New Zealand-based Tahi Productions, with support from the NZ Film Commission. It is to be directed by Gavin FitzGerald and Vea Mafile’o, and its expected release date is still listed as Q3 2023.
Lomu’s widow says that on Monday 25 September, she sent cease and desist letters to the producers and NZ Film Commissioner with the following concerns:
“I feel that a Jonah Lomu documentary, without my knowledge and consent is wrong and illegal.
I have attached to this post screenshots of the registered ownership Intellectual Property Trademark documents, which have been lodged, approved and registered with (IPONZ) Intellectual Property Office of New Zealand stating that all and anything to do with my deceased husband - Jonah Lomu’s name, likeness and image, including any film production and entertainment, must be approved and cleared through me as the owner of this IP.
This stops anyone from trying to exploit and make money off Jonah…”
Mrs Lomu says that she has no idea what direction the documentary is taking, and at this stage it is not clear what remedy she has asked for. For example, it is unclear whether she has asked for production to cease entirely, for a change in title, or for her to be involved to provide some form of direction, approval or collaboration.
So, what rights does the former All Black’s widow have?
Rights to prevent a story from being told?
It appears highly unlikely that Mrs Lomu could prevent an independent documentary from being produced or screened in New Zealand.
Jonah Lomu was a New Zealand rugby legend, international Hall of Famer, and public figure. When he made his debut in 1994, he was the youngest ever All Black. He went on to become regarded as one of the most influential players in the history of professional rugby. It is easy to see why he would be the subject of a sports documentary.
Any film production comprises many moving parts, and there are various ways in which a story – documentary or otherwise – might be written or presented. The primary form of intellectual property involved in production rights is copyright. Unless the film producers are drawing on copyright materials owned by Mrs Lomu or the Lomu company or estate, it is unclear how she would be able to prevent the production of an independent story about her late husband.
(For completeness, the Copyright Act 1994 also provides specific “fair dealing” defences for the purpose of criticism, review, and news reporting – to the extent those defences might arguably apply to the production.)
There are numerous examples of independent documentaries of this nature. Dogwoof Sales is certainly no stranger to such documentaries, with its slate including “Shane” (about late cricketer Shane Warne), “Citizen Ashe” and “McEnroe” (about the respective tennis players Arthur Ashe and John McEnroe), and “Schmeichel” (about professional football goalkeeper Peter Schmeichel).
Rights to likeness and image?
Unlike the United States (for example), New Zealand does not provide legal protection for ‘image’ or ‘personality rights’ as such. Assuming that footage and stills are obtained from the relevant copyright holders, it is unlikely that Lomu’s widow could prevent his ‘likeness’ or ‘image’ from being shown on screen.
Jonah Lomu is likely to have entered into various commercial arrangements with other entities regarding the use of his name or likeness in the past – including, for example, New Zealand Rugby, adidas, and other sporting and commercial partners. (I do recall with some nostalgia the 1990s Sony PlayStation videogame “Jonah Lomu Rugby”.) Whether or how those past commercial arrangements might come into play here, or have coloured Mrs Lomu’s expectations, is unclear.
Rights to prevent the use of a trade mark?
On the other hand, if Mrs Lomu wants to prevent the use of the name JONAH LOMU as a badge of origin, or in a manner that suggests authorisation or approval by the Lomu company or estate, then trade mark and consumer protection laws (i.e. the Fair Trading Act 1986) are likely to apply.
Mrs Lomu has registered a number of trade mark registrations, including for the name JONAH LOMU in class 41 covering a wide range of services relating to film and television production. This trade mark could arguably give some protection against the use of JONAH LOMU as a trade mark – for example, as the title of a production.
[The trade mark savvy may already have identified a technical trade mark argument regarding production as a ‘service’ vs. film as a ‘good’. We also understand that there may be an issue over a claim to true ‘ownership’ of the trade marks, with lawyer Chris Darlow recently quoted as saying that, as administrator of Lomu’s estate, he has been entrusted with ownership acting through Lomu’s companies Stylez Limited and Wesley Holdings Limited. This appears to call into question whether certain LOMU trade marks were filed with the necessary consents and production of probate or letters of administration.]
One of the issues with a named title such as “Lomu” is it may be taken by consumers to indicate origin – in other words, as having originated from Mrs Lomu, or as an authorised production by the Lomu company or estate. The same would apply to any merchandise generated from the documentary, which is likely to fall squarely into ‘trade mark’ territory.
This type of use is quite different to the use of the name “Jonah Lomu” in a merely fair and descriptive way – for example, to legitimately refer to the former rugby legend. If an independent documentary were presented in a way that did not indicate any authorisation or approval by Lomu, it would seem unlikely to fall foul of trade mark or consumer protection laws.
The difference between indicating original or approval vs. fair and descriptive use is where the contention is likely to lie.
For now, it has been reported elsewhere that Mrs Lomu and the production teams are in discussions. It may be in everyone’s best interests for a collaboration to be agreed.
Thomas Huthwaite and Penelope Catley are Principals in AJ Park’s Litigation & Dispute Resolution and Trade Mark teams respectively, helping clients to maintain and enforce their intellectual property rights and resolve disputes relating to those rights. For advice on the protection of your rights, please reach out to one of our specialists.