Trademark law is quirky. Look no further than the attention
being given to recent filings to the USPTO by LeBron James and Ohio State
University. TACO TUESDAY and THE. These legal matters are receiving
But the subsequent news blurbs, articles, and media stories all seem to have
one important thing in common:
Nearly everyone is wrong about what is going on here.
At this point, I expect ESPN and Darren Rovell to fail
at describing the intricate
proceedings of trademark matters. That much is a given. It is everyone else
piling on these stories that is making me nervous. Accordingly, to address
these issues, and because the internet practically runs on top 10 lists, here
are 10 misconceptions about LeBron and Ohio State’s trademark filings.
Kawhi Leonard sues
Nike over the copyright to a logo
June 4, 2019
On June 3, 2019, Kawhi Leonard, a professional basketball
player currently with the Toronto Raptors, sued Nike over
the rights to a logo.
Leonard contends he personally created the logo and owns the copyright to it,
but that in 2017, without his knowledge or consent, Nike filed an application
to register the copyright to this logo. From
October 2011 through September 30, 2018, Leonard was a sponsored athlete under
the Nike® brand. According to the lawsuit, he signed a standard “Men’s Pro
Basketball Contract” with Nike to be a sponsored athlete. Throughout the duration
of this relationship, Leonard endorsed Nike products and Nike used Kawhi’s name
and image to promote its products.
This is why the purported rights to the “Leonard Logo” are
Leonard’s lawsuit seeks to resolve who owns the copyright
and possible trademark rights in a logo he claims to have designed himself. The
interesting twist is that even if Kawhi created the logo by himself – that fact
alone does not resolve the dispute.
Last night, the Los Angeles Rams and the New England
Patriots played Super Bowl LIII. It was one of the worst exhibitions of
professional football in a long time, and certainly the most boring Super Bowl
to date. Enough people will be writing about that game today, but I see it as
an opportunity to further discuss the NFL’s SUPER BOWL® trademark. And this is
The NFL is a known trademark bully. Someone should petition to cancel its SUPER BOWL® trademark registration. And I think I have found a way for this petition to be successful. The NFL fraudulently acquired the registration and it should be canceled.
Colin Kaepernick’s “Intent to Use” trademark filing explained
ESPN once again published another article about an athlete seeking to protect his trademark rights in the United States. I have written about this topic before. More than a few times – to be precise. I still maintain that these “athlete trademarks” are getting absurd. Colin Kaepernick, however, is a substantially different athlete in terms of branding and awareness and overall newsworthiness. Kaepernick’s company filed a series of new applications to register a particular mark on October 5, 2018 with the United States Patent and Trademark Office. This provides another good opportunity for an analysis of what trademarks are and how trademark registrations work.
More importantly, it allows for continued discussion on how “trademark” and “trademark registration” are entirely different things. Plus, another reminder of the fact that there is no such thing as a “trademark application.”
Football is back. College football season begins this week, with the NFL season opening with the traditional Thursday kickoff on September 6th, when the Philadelphia Eagles host the Atlanta Falcons. Every football season brings with it new rule changes and storylines. But this year brings a potential paradigm shift to how to the game is covered, discussed, and regulated. All because the Supreme Court struck down a 1992 law the prohibited most states from allowing sports betting.
I would be remiss in not emphatically stating here the following: sports betting is probably not legal in your state. Yes, the Supreme Court struck down the prior law, but this holding cannot be summarized as “SCOTUS legalized sports betting.” That would be dangerously inaccurate. Instead, the important takeaway from Murphy v. National Collegiate Athletic Association, 138 S. Ct. 1461 (U.S. May 14, 2018) is that the federal government cannot regulate gambling nationwide. This is an issue to be determined on a state-by-state basis. Tenth Amendment. States’ Rights. That kind of thing.
What does this mean for you, the typical football fan watching the game from the comforts of home or at a sports bar with friends?
Trademark law is a nuanced discipline. Word choice matters greatly. The use of a particular word, a certain combination of words, the exact construction of a phrase, and/or the precise arrangement of particular terms – each of these can affect the validity and enforceability of a trademark. It is important.
Last week, I was in the middle of a trademark infringement trial in federal court. Opposing counsel colloquially referred to official certificates of registration as “trademarks” and the underlying applications as “trademark applications.” Each time I had to stand up and object. For one simple, yet legally necessary reason:
There is no such thing as a “trademark application.”
Last night, the Philadelphia Eagles defeated the New England Patriots to win Super Bowl LII®. By this point, the Super Bowl is more than just a football game. It is a literal spectacle, above and beyond the athletic competition itself. Not only do viewers get exposed to the glitz and glamour of the biggest game of the season, but there is also an extra-long halftime special. Not to mention the heavily-discussed commercials. Often, marketing firms will hire celebrities to appear in these commercials to add a little extra pizzazz. Of course, these celebrities usually agree to appear in these advertisements beforehand, with full knowledge that their likeness is being used for commercial gain. This year’s Super Bowl went a step further.
Prince, Martin Luther King, Jr., and Kurt Cobain are some of the most iconic individuals in American history and pop culture. They were also fiercely protective of how their names and images were used when they were alive. Today, their respective estates or other third-parties control how their “publicity rights” and how their likenesses are marketed. Yet somehow each of these three were all featured in different ways during the Super Bowl telecast, often in direct contrast to how they would have presented themselves during their lifetimes. How is this legal? I will try to address this interesting cross-section of trademark, copyright, and publicity right issues here.
August 4, 2016
The 2016 Olympic Games® in Rio are set to officially open this Friday, August 5, 2016. Every four years, for a glorious 16 days, the world gathers in unison to watch athletes compete for the gold medal in a multitude of games in varying degrees of popularity. The world also gathers to sell you things. Lots and lots of goods and services will be offered through fancy advertising. Many of these ads will exploit the famous Olympic rings and pictures of the Games in association with certain products. “Official sponsor of the Olympic Games” being a key phrase.
Why is this? It is because the Olympic Games are serious business. Not surprisingly, the use of Olympic-themed trademarks is equally serious business. Even in the United States, these trademark rights supersede U.S. trademark law in many areas and are granted a “privileged status.” The International Olympic Committee (IOC) owns most of these trademarks and it is hyper-vigilant in its enforcement of the uses of these marks.
What constitutes an Olympic trademark? Why are they given special privileges? Let’s explore!
In January 2015, in Davis v. Electronic Arts Inc., the United States Court of Appeals for the Ninth Circuit held that the makers of the extremely popular Madden NFL video game series could not overcome former players’ claims for violation of publicity rights by claiming First Amendment protections. Electronic Arts Inc., the Defendant and the maker of the game, eventually appealed to the United States Supreme Court on grounds that they are essentially being penalized for making a game that is “too realistic” and life-like. An emboldened use of the “we are just too good at our jobs” defense, perhaps?
On Monday, March 21, 2016, without any further commentary, the Supreme Court denied EA Sports’ petition to hear the appeal. Procedurally, this is called a denial of certiorari, and it means that the Ninth Circuit’s verdict remains the final judicial determination on the issues presented. Colloquially speaking, and while maintaining the proper sports metaphors, this means the Supreme Court punted.
But what really is the issue here? Where do publicity rights end and the First Amendment begins? Why does EA Sports contend that it has no obligation to pay retired professional athletes for the use of their images and likeness rights?