Trademarks in sports: an overview - Part 1 of 3Leonard Glickman, Jonathan Sherman
In this 3 part series Canadian entertainment and sports lawyer Len Glickman and his colleagues Michael Alvaro, Evan Eliason and Jonathan Sherman examine a number of sports-related trademark issues. In part 1 of this Trademarks in Sports trilogy, Len and Jonathan discuss trademark issues around individual athlete names, catch phrases, nicknames, mascots and controversial team names.
The intersection between trademark law and the sports industry creates a number of interesting and cutting edge issues. Social media turns overnight celebrities into #hashtags. Catch phrases such as 'Manny Being Manny,' 'Linsanity,' and 'Tebowing' go viral. Lukas Podolski of the Arsenal Gunners has recently become known for his catch phrase "Aha!" with a YouTube video featuring the catch phrase garnering over half a million views to date.
Professional sports is a multi-billion dollar empire and athletes are beginning to find ways to leverage and add value to their own personal brands. While the commercialization of sporting teams and athletes is ubiquitous, little attention is given to the intellectual property issues that constantly lurk in the background.
Intellectual property can be a company's most valuable asset. The brand value of multi-national corporations like Walmart, McDonalds or Starbucks is well-recognized; however, professional sports teams and leagues are some of the most valuable brands. Real Madrid ($3.3 billion USD) topped Forbes' list of most valuable sports franchises released July 15, 2013, followed by Manchester United ($3.17 billion USD), Barcelona ($2.6 billion USD) and the New York Yankees ($2.3 billion USD). To protect their core brands, these franchises file trademark applications for team names, logos, and even mascots. Individual athletes, such as Tiger Woods and Serena Williams, have developed their own brands thereby creating business and endorsement opportunities for themselves. To protect their brands and their future business ventures, professional athletes trademark their own names, nicknames and catch phrases.
Using trademarks to build brands
Trademark protection and registration in the United States is governed by The Lanham Act1. This federal statute provides protection from trademark infringement, dilution and false advertising. The Trade Marks Act 19942 and the Trade-marks Act3 provides similar protection for the owner of registered trademarks against infringements in the United Kingdom and Canada. The United States Patent and Trademark Office ("USPTO"), the UK Intellectual Property Office ("UKIPO"), the European Union Office for Harmonization in the Internal Market (Trade Marks and Designs) ("OHIM"), and the Canadian Intellectual Property Office ("CIPO") are all responsible for trademark registration in their respective territories and maintain an online, public database of trademark applications and registrations.4
In the United States, The Lanham Act prohibits the registration of any trademark that falsely implies a connection with a living individual unless the individual has consented to the registration of that mark.5 Celebrities and athletes have a statutory and/or common law right of publicity over their own name, likeness and identity for commercial purposes.6 Legislation offers protection to ensure that other individuals and corporations are unable to profit from another individual's personal brand.
Lebron James, the star forward for the Miami Heat, is widely considered to be one of the best basketball players in the world. With this status comes an extensive amount of brand recognition. To protect and leverage this brand, James has applied for and/or registered a number of trademarks. There have been several filings with the USPTO for the word mark 'Lebron,' originally all filed by Nike, Inc. in association with a number of categories of goods and services. Three applications matured to registration in International Classes 15, 25, and 28, and were subsequently assigned to LBJ Trademarks, LLC on April 2, 2013. In addition to building his brand with Nike, James has also established a non-profit corporation, that gives back to his hometown community by helping the Boys & Girls Clubs across Northeast Ohio. As part of this initiative, The Lebron James Family Foundation has applied for and registered a number of trademarks, including, 'The Lebron James Family Foundation,' 'I Promise,' and 'Wheels for Education.'
In order to protect their intellectual property, athletes have used different vehicles to hold their trademark portfolios. Lebron James has established a limited liability corporation for his profit-oriented endeavours and a non-profit corporation for his charitable work which is common among American sports stars. Tiger Woods uses a Swiss corporation, Tiger Woods Enterprises S.A. to hold his portfolio of marks. Others, like 2013 British open winner Phil Mickelson and soccer superstar David Beckham have registered their trademark portfolios in their own names instead of through a corporate entity. The choice of entity is largely driven by the jurisdiction in which the athlete resides and the athlete's tax planning objectives.
More and more athletes are registering their catch phrases as trademarks. While this practice is increasing, it is certainly not a new phenomenon. In 1989, then Los Angeles Lakers head coach, Pat Riley, trademarked the phrase 'THREE-PEAT' in reference to his team's third consecutive NBA title. A number of recent examples of catch phrases which athletes have applied for or registered as trademarks include:
- 'Linsanity' filed with the USPTO in 2012 by current Houston Rocket and former New York Knick Jeremy Lin, one week after his first career start in the NBA;
- 'Stomp You Out' & 'Stomp Them Out' filed with the USPTO in 2012 by former New York Giants defensive end Michael Strahan;
- 'Can't Wait' registered with the USPTO in 2012 by former New York Jets linebacker Bart Scott;
- 'LE0 MESS1' registered with OHIM in 2011 by FC Barcelona forward Lionel Messi;
- 'Revis Island' filed with the USPTO in 2010 by current Tampa Bay Buccaneer and former New York Jets cornerback Darelle Revis;
- 'Lovee' filed with the USPTO in 2009 by Venus and Serena Williams;
- 'CR7' registered with OHIM in 2009 by Real Madrid forward Cristiano Ronaldo;
- 'I Love Me Some Me' & 'Getcha Popcorn Ready' registered in 2009 and 2011, respectively, with the USPTO by former NFL wide receiver Terrell Owens;
- 'You Cannot Be Serious' registered with the USPTO in 2008 by former World No. 1 professional tennis player, John McEnroe;
- 'LIVESTRONG' registered with the UKIPO, the USPTO, OHIM, and CIPO by the Lance Armstrong Foundation, although registrations for the trademark are in the process of being assigned to the LIVESTRONG Foundation;
- 'Turn 2' registered with the USPTO in 1999 by New York Yankee shortstop Derek Jeter.
A couple of cases dealing with entertainment industry celebrities shed some light on the law around catch phrases. In John W. Carson and Johnny Carson Apparel, Inc. v Here's Johnny Portable Toilets, a US District Court recognized that the right of publicity should extend to include catch phrases as part of one's identity. In that case, Johnny Carson, the popular host of The Tonight Show, sued a portable toilet manufacturer for using the phrase 'Here's Johnny' in their marketing efforts. The phrase was used each night on the show to introduce Carson and he argued that the defendant's use of Here's Johnny Portable Toilets misappropriated Carson's personality. The case was dismissed, stating that there was no use of Carson's name or likeness and that the likelihood of confusion test had not been satisfied. The 6th Circuit agreed with respect to the likelihood of confusion but disagreed in part, entrenching the principle that the right of publicity extends to a celebrity's entire identity, including a catch phrase.7
Interestingly, the same catch phrase was subject to further judicial scrutiny in Canada in Carson v Reynolds.8 Carson opposed Reynolds' application to register the catch phrase as a trademark. As in the US, the court of first instance rejected Carson's claim, yet he succeeded on appeal, largely due to new evidence indicating that more than 50% of people identified Carson with the catch phrase 'Here's Johnny'.
More recently, in Paris Hilton v Hallmark Cards9, Paris Hilton sued Hallmark Cards for using her name, likeness and catch phrase 'That's Hot' in one of the company's birthday cards. While the case was ultimately settled, the 9th Circuit reaffirmed the principle that one's right of publicity over a catch phrase can be misappropriated.
Registering trademarks does not mean athletes will avoid becoming involved in lengthy legal battles in order to protect their intellectual property rights against infringers. Shaquille O'Neal, known more commonly as Shaq, has licensed his personal brand to companies like Reebok, Radio Shack and 24 Hour Fitness. When an Arizona company was selling "Shaqtus" t-shirts without O'Neal's consent, O'Neal was forced to commence legal proceedings. In a summary judgement ruling by the US District Court in Nevada, an injunction was issued prohibiting the company from using the Shaqtus mark or any other mark or domain name confusingly similar to any of the "Shaq" trademarks owned by O'Neal.10 Similarly, Vince Young sued three individuals for trademark infringement who filed applications for his initials (VY) and nickname (Invinceable) only a day after he won the US College National Championship as quarterback for the University of Texas.11 The case was settled in 2010 and Young subsequently applied for and registered the trademarks 'VY' and 'Invinceable' with the USPTO.
Rising NFL star Robert Griffin III, commonly known as 'RG3' filed an application to register the RG3 mark in Class 25 in January of 2012. Research Group Three, Inc., who filed an application for RG3 in Class 25 in January of 2013 but claimed first use in 1999, opposed Griffin's application in June of 2013. Research Group Three develops motorcycle suspension products and have sold a variety of products, including clothing, bearing the RG3 mark. The company argues that Griffin's "unrestricted use and registration of the RG3 mark is likely to cause reverse confusion...or to deceive the trade and purchasing public."12
While athletes quickly develop personal brands, sports franchises spend significant resources creating brand loyalty amongst their fans. Mascots are an important part of the in-game experience and for many teams are as identifiable as the star athletes on the playing surface. There have even been three team mascots – the San Diego Chicken (San Diego Padres), the Phillie Phanatic (Philadelphia Phillies) and Youppi (the Montreal Expos) – who have been inducted into the Baseball Hall of Fame. In 1999, the Sporting News named the San Diego Chicken one of the Top 100 Most Powerful People in Sport for the 20th Century. With the San Diego Chicken's stardom also came legal battles – proving that even mascots are not immune from trademark infringement suits. The owners of the 'Barney' character sued the creator of the San Diego Chicken for using a Barney look-alike to entertain audiences at games. The case was dismissed by the US District Court. The on-field fighting was a parody and there was no intention by the San Diego Chicken to confuse customers. The decision was affirmed on appeal by the 5th Circuit, confirming the right to use a copyrighted work for satiric or parodic purposes.13
Team names have been a source of controversy at the collegiate and professional level. In 2005, the National Collegiate Athletic Association (the "NCAA") released a policy guideline prohibiting teams from using native American imagery. The majority of schools responded accordingly: the Southeastern Oklahoma State Savages became the Savage Storm, the St. John's Redmen became the Red Storm, the Marquette Warriors became the Golden Eagles and the Stonehill College Chieftains became the Skyhawks. Further, the University of Iowa prohibited its teams from scheduling competitions hosted by schools using native American imagery. In keeping with this policy, Iowa refused to invite the University of North Dakota to a track meet in 2012 because of the school's Fighting Sioux mascot. Prior, the University of North Dakota had challenged the NCAA policy guidelines in court.14 After agreeing to a settlement in 2007, North Dakota failed to obtain the necessary consent from each Sioux tribe in the state. In the aftermath of the failed settlement, the state legislature voted to retain the Sioux name, before voters ultimately overruled the decision in a state referendum.
The NFL's Washington Redskins have one of the most controversial team names in professional sports. In 1992, a group of native Americans filed a petition to have the trademark cancelled on the basis the name was disparaging in contravention of the Lanham Act. The TTAB concurred and order the cancellation of the Redskins' trademark registration in 1999.15 The team appealed the decision and won on a technicality – the Doctrine of Laches.16 In effect, the court decided not to deal with the issue, finding rather that the group waited too long to file the lawsuit. The case lasted nearly 17 years, including appeals all the way to the Supreme Court. As a result of the decision on the basis of a technicality, another group of native Americans, aged 18-24, decided in 2006 to file a nearly identical claim.17 The hope for this group is that the court will decide the case on its merits and cancel the Redskins' registered trademark.
The case has widespread implications – not only for the Redskins, but for other sports franchises as well. If the Redskins, the 8th most valuable sports team as valued by Forbes in 2013 at $1.6 billion, are found to have a disparaging mark as a team name, the organization will have to decide if they want to continue using the cancelled mark or transition to another team name like the NCAA schools noted above. In addition, petitions will certainly be filed with the TTAB to cancel other similar team name registrations.
Opinions on this issue are aplenty. Two representatives of the US Congress recently contacted the Washington franchise and NFL commissioner Roger Goodell regarding the Redskins' team name. Goodell has chosen to publicly defend the Redskins name and claim that the name "from its origin represented a positive meaning distinct from any disparagement that could be viewed in some other context." Whether you agree or disagree with Goodell, it will be very interesting to see how this case plays out.
In summary, there are no shortage of sports related trademark issues. As sports industry brands grow in prominence, so do the underlying day to day branding and trademark issues that deal with individual and team names, catch phrases and nicknames, and disparaging marks.
In part 2 of this Trademarks in Sports trilogy, Len Glickman and Michael Alvaro discuss the challenges and opportunities of leveraging and protecting brands and trademarks on social media platforms. In part 3 Len and Evan Eliason examine efforts by the International Olympic Committee and FIFA to implement event specific trademark legislation to protect event marks and sponsors and discourage ambush marketing.
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- Tags: American Football | Baseball | Basketball | Europe | Event Management | Golf | Intellectual Property | Mascots | Tennis | Trade Mark | United States of America (USA)
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- #OnlinePitfalls – Effective management of sports intellectual property rights on social media platforms - Part 2 of 3
- Brand protection, trademarks, and the event that shall not be named: Event-specific legislation and the Olympic Games - Part 3 of 3
About the Author
Jonathan Sherman is a member of the 2013 summer student class at Cassels Brock.
Jonathan is a J.D. Candidate for 2014 at Osgoode Hall Law School. He graduated from McGill University with a Bachelor of Commerce and a Major in Accounting. Jonathan graduated on the Dean's Honour List at McGill and was the recipient of the Herbert E. Siblin Award for Excellence in Auditing and the PSB Boisjoli Scholarship for High Academic Standing.