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The King and I

 

Elvis is a powerful brand, maybe the most powerful. In the battle to exploit it, one man has travelled the world and questioned the limits of trade mark protection. 

James Nurton tells Sid Shaw’s story.

If you’re looking for celebrities, London’s Baker Street would be a good place to start. On one side of the road is the famous Madame Tussauds waxworks, the country’s biggest tourist attraction, and home to models of thousands of politicians, monarchs, sports stars, artists, entertainers and criminals. On the other side is number 221B, the residence of Sherlock Holmes, probably the world’s most famous detective.

Now there is a new face in the neighbourhood. The King is in town. Next to the Sherlock Holmes museum, the greatest rock and roll star of all time has just moved in to number 233. Elvis the Pelvis, the Memphis Flash, is here.

With a kind permission of MIP www.mipnetwork.com


Inside number 233, the walls are covered with posters, magazines, tee-shirts and jackets; glass cabinets hold Elvis souvenirs including jewellery, sunglasses and rare first editions; metal stands display postcards, photos and books. The shop’s music system plays a non-stop medley of Elvis records (dues fully paid up to the Performing Rights Society). The King is everywhere. 

In the middle of this rock and roll shrine stands Sid Shaw, owner of the Elvisly Yours merchandising company, and now a celebrity in his own right. Twenty years of selling Elvis merchandise have brought him to his new shop on Baker Street. But it has been a rocky road. Shaw has spent the past 15 years fighting Elvis Presley Enterprises (EPE) in the US and UK for the right to market the King. He has been robbed at gunpoint, accused of being a pervert and pursued by bailiffs. He has been to court six times, and spent thousands of dollars on lawyers’ fees. And he has now done more than anyone else to shape the law on personality rights in the UK. 

The King in a spin 

It has been a long and bitter battle between Shaw and the Elvis Estate, whom the Londoner repeatedly and frustratedly calls “these people”. The latest Elvis bust-up came just two months ago. Peter Schaufuss, a prestigious choreographer and dancer, had devised a ballet called ‘The King’, chronicling Elvis’s life. Following a run in Denmark, it was due to be performed in Edinburgh in April, complete with music from 40 famous Presley hits. At the last minute, the Elvis Presley Estate refused permission to use more than half the songs, as well as the image of Elvis himself, and the performances were cancelled. Gary Hovey of the Elvis Presley Estate claimed: “We saw a poster in February, and it was unacceptable. Later we found out the ballet was the story of Presley’s professional life. This was unacceptable.” The ballet then transferred to London’s Sadler’s Wells theatre. In two weeks, it was re-written to exclude the offending songs, and transformed into a fictional story about a British Elvis impersonator. The revised version played to London audiences for a week at the end of April, including a house-full of Elvis impersonators on the first night, and is now touring around Europe. 

The ballet is the latest skirmish over the intellectual property rights to Elvis. The Estate claim they are upholding the rights to Elvis’s name, image and music, and protecting his reputation as the legitimate heirs to his rights. Shaw, who worked with Schaufuss to provide merchandising for ‘The King’, accuses them of being megalomaniacs, clamping down on anyone who wants to pay tribute to Presley, without even negotiating a reasonable royalty. It is an argument that has a long history. 

Birth of a business 

Selling Elvis was not Shaw’s first career. After leaving university, he worked as a teacher at Northolt High School in London. Shaw taught economics and sociology to 18-year olds, as well as working with younger maladjusted children. But he had as many problems with authority as some of his students, and fell out with his headteacher. (“She was like Mrs Thatcher,” he says.) The final straw was when he was criticized for encouraging the kids to redecorate the shabby classroom. 

Shaw quit, and sold his house to start the Elvisly Yours business. The first product was a life-size statue of Elvis, and the business soared from there. One of seven children, and from a family of east London market traders (not, he emphasises “barrow boys”), Shaw claims “I’ve always survived on my wits.” He rapidly became an entrepreneur, building a merchandising business around Elvis, and at the same time becoming a master of generating publicity for himself. In 1984, he even stood for election to parliament, representing the Elvisly Yours party. He polled just 24 votes. (Always interested in politics, Shaw was until recently a stalwart of the Labour Party, but left earlier this year. He campaigned for the rebel Labour member Ken Livingstone to be elected London mayor.) 


Sid Shaw (far right) with the Elvis statue, outside Buckingham palace

Shaw’s business soon led him to open a shop in Shoreditch, east London. In 1978, he applied to register Elvisly Yours, his trading name, as a trade mark in the UK. The Elvis Estate field an opposition to the mark, but dropped it, and the application was granted in 1979. The previous year Shaw had failed to obtain a registration for the Elvis name. 

The obvious area for growth was the US. But the market there was already more mature. Following Elvis’s death in 1977, Colonel Parker had negotiated a five-year deal with a company called Factus granting them the worldwide rights to sell Elvis merchandise for five years, but this was coming to an end (and Factus was in any case going bust). In 1982, Shaw travelled to Memphis, to see what memorabilia was available. 

He was to be disappointed. On arriving in Graceland, he claims all he found were “junk souvenirs”. So he started exporting his merchandise to the States. His biggest customer was Graceland itself: between 1982 and 1992, he shipped four tonnes of souvenirs to Memphis. “Everyone was happy,” he says. “I was happy. The customers were happy and the estate were happy. But the lawyers weren’t making any money.

Then, in 1991, things changed. 

Meetings and trials

 It all began with a meeting in 1982. Shaw was summoned to see the licensing manager for EPE at his office in Memphis: “I was led to a couch and he sat on a collapsible chair about 30 feet away. Before the meeting had started, he fell off.” The Estate said they would allow Elvisly Yours to continue selling Presley souvenirs in the US, but demanded a royalty of $50,000 per item. Given Elvisly Yours’s range of 300 products at the time, this would lead to a bill of $15 million. And it had to be backdated four years. 

The deal would have put Shaw out of business in no time, and he had no hesitation in rejecting it. He claims he has always been prepared to pay a reasonable royalty to the Elvis Estate, but such an offer was never available: “I’ve never said I would never deal with these people. But their idea of a deal was getting lots of money and I was getting fed up. 

So Shaw decided to take the battle to them, and took out a full-page advertisement in the New York Times for his first day Elvis covers. “I wanted to make their lawyers choke on their corn flakes,” he says. The ad certainly provoked a reaction, and Shaw was summoned to a showdown meeting in New York on March 26 1985. He was faced with a panel of three lawyers who interrogated him: “It was like the Spanish inquisition,” he says. The meeting was going nowhere, when a fourth lawyer was called in and presented Shaw with a writ. As far as he was concerned, it was an ambush. 

When Shaw refused to cave in, the Estate took him to court to curtail his sales in the US. “They put up a good defence,” he says. At the hearing, he was called to the stand as a hostile witness, and asked questions such as: “Is it true you want to re-name Parliament Graceland” and: “Do you deny you associate with the Monster Raving Loony Party? 

Then came the crunch: lawyers produced a pair of panties and started waving them in the courtroom. The suggestion was that, by marketing Elvis underwear, Shaw was demeaning the image of the King. But he claims: “I got the idea from the Beatles, who had marketed underwear very successfully. It was all part of the Elvis act.” In the courtroom, he characteristically put it more crudely: he told the lawyers not to get their “knickers in a twist”. The clerk then asked him how to spell “knickers”. The joke was lost on the judge, and did Shaw’s case no favours. In addition, Colonel Parker had signed an affidavit saying Shaw was a pervert for selling Elvis panties. Unsurprisingly, Shaw lost the case. It was only years later, in 1999, that a contract from 1956 in which Parker had licensed the rights to make Elvis underwear was discovered. 

Two more trials, culminating in 1991, proved the end of Elvisly Yours in the US. Sid Shaw was cut out of the estimated $70 million US market for Elvis souvenirs. He admits: “I had one of the most powerful injunctions in American history granted against me. I became the only person in America not allowed to sell Elvis souvenirs.” Elvis Presley Enterprises, which is run in part by Priscilla Presley, continues to do business in the US and holds numerous US rights to Elvis Presley, including four US trade marks: Elvis, Elvis Presley, Elvis Presley’s Memphis and Elvis Presley’s Heartbreak Hotel. It also sells merchandise over the official Elvis website, www.elvis-presley.com. The nine-year US litigation experience had meant 26 trips to Memphis for Shaw, and cost him “several thousand” dollars. It would have been a lot more if he had not had the foresight to negotiate a discounted $100 an hour rate with his attorneys. He had to fly to Memphis every time there was a new deposition in the case, often to be told that there was a hold-up due to illness: “I even hid once in Memphis but they still found me.” Shaw maintains to this day that he was hard done by by American justice, saying he “lost on the golf course, not the court room”. He is also suspicious about the mysterious disappearance of his accountant and financial records, which were never found, in the run-up to the trial. 

But he never lost his sense of humour. His response to defeat in America was to manufacture a tee-shirt proclaiming “I am not licensed by Graceland. The following are also not licensed by Graceland: Margaret Thatcher, George Bush, Col Gadaffi, Mrs Gadaffi. 

The fight goes on 

Despite the decisive US defeat, Shaw had not lost his appetite for litigation. When, in 1991, EPE filed UK trade mark applications in class 3 for Elvis, Elvis Presley and the Elvis signature, Shaw opposed them in the Trade Marks Registry. Representing himself, after a five year fight he lost as the examiner ruled that the marks were capable of distinguishing, even though they were proper names. 

But Shaw, a relentless publicist, had attracted attention. He may have lost in court, but he was determined to win over the man in the street. He faxed out 1,000 press releases, which implied that he had in fact won the case. The spin was severe, but the Elvis Estate did nothing to counteract it. The BBC followed up the case. And trade mark practitioners began to discuss the legal aspects. Some suggested to him that he would have a chance if he took the case to court. 

A trade mark attorney, Penny Nicholls of Young & Co, had helped Shaw with his application for Elvisly Yours. But she was not interested in pursuing the case, and did not want publicity. So Shaw approached McKenna & Co lawyer Richard Mallows, whom he had already worked with before. He claims: “Of all the lawyers I’ve ever come across, Mallows was the best: down to earth, and he told it how it was.” Mallows was interested in taking up the case, but for Shaw the fees were exorbitant. So, drawing on his “wits” which had taken him this far, he struck a deal: if McKennas handled the case pro bono, he would ensure they were mentioned in all the publicity he would obtain. They agreed, and solicitor Stephen Whybrow (now a Cameron McKenna partner) took up the case. The team was joined by barrister Richard Mead, who declined to waive his fee. “Some cases are worth fighting for nothing. Cameron McKenna have done very well out of this,” says Shaw. 

The case was heard before Judge Hugh Laddie in 1997, one of the UK’s specialist IP judges. Laddie considered the three marks one-by-one, ruling first that “there is very little inherent distinctiveness in the mark “ELVIS”. He also found that there was no evidence of use of the marks in the UK, as the only item presented to the court in class 3 was a bottle of aftershave, which had a $1 price tag. Of several other items presented to the court, Laddie found that there was nothing to suggest that any of them had been sold in the UK. Finally, Laddie denied EPE’s claim that Elvis’s fame demonstrates inherent distinctiveness, saying: “It does not help to identify the goods with a particular proprietor, as required by the Act. It only helps to identify the goods with a particular subject matter, namely Elvis Presley. In other words Elvis Presley’s fame leads away from distinctiveness in the trade mark sense. 

Having despatched the Elvis application, the judge proceeded to send the other two applications the same way. He found that the signature mark was not distinctive, and that many traders might want legitimately to use the Elvis names in a cursive script. (Shaw claimed additionally that the signature presented by EPE was a forgery, taken from Elvis’s disputed will: “They had a whole book of Elvis Presley licensing. Nowhere in that book is there a signature like the one they submitted.” The judge decided it was not necessary for him to consider the signature’s authenticity.) 

Having lost the case, says Shaw: “You’d have thought Graceland would take some sort of deal.” Instead, they fought on - fruitlessly, as it turned out. The Appeal Court affirmed Laddie’s ruling in early 1998. “I knew I’d won the day before the judgment,” says Shaw. “The usher came and told me the judges would like to see Mr Presley in court the next day.” Shaw obliged, and turned up with Elvis imitator Leyton Summers. “I knew a picture of me would not get much coverage, but we hid Elvis in the court and I walked out with him. The pictures went all over the world. 

Attracting trouble 

Shaw seems to be a man who attracts controversy, and his brushes with the law have not been restricted to Elvis Presley trade marks. One particularly nasty incident in the early 1990s involved an obscure middle-ranking Russian official - named Vladimir Putin. “According to Russian TV, I am Putin’s best friend,” he says. 


Sid Shaw (left) with Vladimir Putin (and Elvis) at the opening of his Russian store

That is a long way from the truth. Following the success of Elvisly Yours, Shaw was looking to expand overseas, and Russia was a prime market. Shaw and a Russian partner set up a supermarket, one of the first western-style stores in the newly liberalized country, and shipped over $250,000 worth of material. Putin, the deputy mayor of St Petersburg, was to be present at the opening ceremony. During the night, Shaw was awoken at 1.30 am by men pointing guns to his head. The next day, his shop was surrounded by policemen. All the stock was gone, and no-one was giving him any answers. Shaw lost everything in Russia. “But,” he says, “I was lucky. I got away with my life.” That, though, was not his worst experience in business. “I survived the Graceland mafia and the Russian mafia. But the Hackney mafia are the worst mafia of all,” says the man who felt his own council were trying to close down his business. Hackney was the London borough where the original Elvisly Yours business, in Shoreditch, was based. In 1993, Shaw was served with a liability order which allowed the council to close him down. (there is no chapter 11 bankruptcy in the UK as there is in the US). The council pursued him resolutely, and in 1996 (when he was back doing business in Hackney) bailiffs demanded £48,000 ($72,000) in local business rates to cover what they claimed was several years of non-payment. 

Where will it end? 

Since 1998, Shaw has managed to stay out of court. He has concentrated on building up the Elvisly Yours business in the UK and overseas. Earlier this year, the Elvisly Yours credit card was launched in the UK in association with the Bank of Scotland, and Shaw is confident that “a number of lawyers and even judges have one”. He says that EPE had turned down the opportunity to launch an Elvis card; however, they are now advertising one on the web. 

Shaw also acts as a free information provider on everything about Elvis trivia for the media and the general public. “I phone you, because you’re quicker than the Internet” one journalist told him. He says, if he had to, he would fight the battles all over again: “I’ve always been a fighter. It’s like playing chess. Even when you only have the queen left, you’re still in the game. I’d like to think I’ve inspired other Elvis fans to take on these people.” The Elvisly Yours business has 300 lines and a brisk turnover, demonstrating how lucrative a successful licensing business can be. Shaw is now looking for untapped licensing opportunities: in particular, he is seeking a clothing maker to produce a range of 50s clothing, and believes there are plenty of other lucrative areas that could be exploited. But he would draw the line at some items: toilet seats and toilet paper, for a start. 

The global market for memorabilia of the King certainly shows no signs of slacking. “The appeal of Elvis never dates,” says Shaw. “The fan base has changed from working-class people to a whole new breed of fans - such as academics and students - and he has now become a cult figure. The big thing was his charisma. Everyone who ever met him spoke of his charisma. “ He says his favourite Elvis tracks date from the 1970s - “he had a richer, stronger voice then” - and he plays Elvis on the car stereo as he travels down the motorway to work each day. 

And, one final project: Shaw has been advised by US lawyers that he might want to pursue an anti-trust case against the EPE in the US. He claims that if Bill Gates can be sued for having a monopoly, then so can the body that exclusively controls and restricts the $70 million Elvis merchandising market in the US: “I hope there is a lawyer out there in America who can represent me in an anti-trust. It would be worth it for the publicity alone.” Any budding anti-trust lawyers looking to make their name might want to pop in to 233 Baker Street next time they’re visiting London. 

Elvisly Yours memorabilia 

The top-selling item in Sid Shaw’s new shop on London’s Baker Street is the Elvis sunglasses, available in gold or silver for £8.95 ($13.16). As well as books, postcards and posters, souvenirs available include: 
Elvis 20th Anniversary bone china plate (limited edition of 3,000) 
Limited edition Elvis stamps 
Elvis large soap dish 
Elvis toiletries set 
Elvis fridge magnets (four varieties) 
Elvis guitar necklace 
1,000 piece Elvis jigsaw 
A variety of Elvis satin jackets and tee-shirts 
Case of Elvis champagne 

Can Elvis be protected around the world? 

Australia 
In a number of cases, personalities have succeeded in stopping commercial exploitation of their names and images using the Trade Practices Act, 1974 and the law of passing off. 

The actor Paul Hogan stopped unauthorized use of his Crocodile Dundee character by Pacific Dunlop; and the Olympic swimmer Kieren Perkins stopped Telstra using his photograph in its advertising. Contrary to UK practice in the Elvis case, the Trade Marks Act 1996 would in principle allow the protection of names and signatures. 

France
Section 9 of the French Civil Code grants protection to individuals’ privacy, and this may extend to people’s images. For example, a photograph taken without consent may be a violation of section 9. 

Germany 
Names and pictures can be protected as trade marks, subject to the usual requirements of trade mark law, such as commercial use. Under section 22 of the Kunsturhebergesetz, an individual is entitled to exclusive use of pictures taken of him.

Italy
Privacy is considered a fundamental right. In addition, article 98 of the Italian Copyright Law (1941) says that the image of an individual cannot be shown, reproduced or sold without his consent. This consent is not required if the reproduction is justified by the individual’s fame.

Japan
Trade mark law does not allow unauthorized use of an individual’s name or identity as a trade mark, but apart from this does not provide strong statutory protection for personalities. There is also a constitutional right to privacy, which protects against the unauthorized disclosure of personal information in most circumstances.

United States
There is a category of intellectual property, the right of publicity, which is recognized in about 25 states. It is an automatic right available to everyone and can protect any characteristics which can identify an individual, such as names; catchphrases (Johnny Carson has enforced his publicity rights in the slogan “Here’s Johnny”); photographs; and voices. Potential remedies include an injunction, damages and attorneys’ fees.


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