El Chapo, A Criminal: Can He Register His Name and Profit From It?

By Diana Muller

The world has recently been fascinated by the capture of one of the most wanted men in the world, Mexican drug lord Joaquin Guzman Loera, known as “El Chapo.” When El Chapo was finally arrested by the Mexican Marines in early January, the image of him wearing a filthy shirt went viral. The US media was also captivated by El Chapo’s secretive interview with the American actor Sean Penn, published in Rolling Stone magazine (at this interview, El Chapo wore a shirt that according to its California manufacturer became a “best seller” thereafter). Mr. Loera earned his nickname not because of his criminal exploits, but because of his diminutive size. The term “el chapo” is quite commonly used in Mexico to identify short people, who are also frequently called “chaparros.”

Intellectual property lawyers were intrigued by El Chapo’s interest in a bigger venture: producing a movie about his life. The notorious drug lord was not satisfied with the accumulation of power and money generated by his criminal activities. He wanted more, and during his most recent stint in prison he instructed his Mexican lawyers to protect his name. Did the Mexican authorities grant his wishes based on Mexican trademark law and practice? The answer is NO. The Mexican IP Office, known as the IMPI, denied registration of the following four applications: El Chapo Guzman; Joaquin El Chapo Guzman; El Chapito Guzman and Joaquin Archivaldo Guzman Loera El Chapo Guzman. The applications were filed by El Chapo’s daughter, Alejandrina Gisselle Guzman Salazar, and his wife, Emma Coronel Aispuro. The IMPI based its objections on the fact that such applications identify an international criminal, within the prohibitions article 4 of the Mexican Industrial Property Law, namely: “No patents, registrations or authorizations shall be granted nor shall publications in the Gazette be carried out for the legal figures or institutions regulated under this Law whose content or form is contrary to public order, to moral and decency, or that contravene any legal provision.”

The IMPI usually rejects registration when the mark of interest is related to the names of known criminals.

In addition, there were other obstacles to registration. The IMPI cited a prior Mexican trademark registration, No. 948388, for EL CHAPO in the name of another party (which is not unusual since, after all, the term “el chapo” is common in Mexico) as a basis for refusal. In addition, the application for El Chapo’s full name did not include any document proving his express consent to the application, as required by article 90 Section XII of the Mexican Industrial Property Law.

This raises the question: Has El Chapo Guzman obtained trademark registrations for his name in the United States? There is no record in the USPTO of any applications filed by him or his relatives, but it appears other parties have attempted to register trademarks associated with his persona. See below:

Serial No.: 77/017,330
Filed: October 10, 2006
Status: Abandoned October 3, 2007 because the applicant failed to respond or filed a late response to an Office Action.
Goods/Services: Pre-recorded CDs, video tapes, laser disks and DVDs featuring music and performance in International Class 9; and Entertainment, namely live music concerts in International Class 41
Owner: Raul Espinosa of 1134 Col. Las Puentes, San Nicolás, México 66460.

This was an attempt to capture the criminal’s name and the fact that he was the head of the “Sinaloa” cartel.

TM: CHAPO (translated to “shorty” in Spanish)
Serial Application No.: 86/718,543
Filed: August 7, 2015
Status: A non-final Office action has been sent (issued) on November 30, 2015 to the applicant.
Goods/Services: Apparel for dancers, namely, tee shirts, sweatshirts, pants, leggings, shorts and jackets; Athletic apparel, namely, shirts, pants, jackets, footwear, hats and caps, athletic uniforms; Athletic shirts; Baseball caps and hats; Bomber jackets in International Class 25.
Owner: Coco’s Trading LLC of 430 N. Maple Drive, #207; 510 W 6th Street, #215, Los Angeles, California 90014.

Reg. No.: 3,699,008
Reg. Date: October 20, 2009
Status: A Section 8 declaration has been accepted on August 8, 2015
Goods/Services: Series of pre-recorded CD’s and DVD’s featuring music and musical performances in International Class 9; and Entertainment, namely, live music concerts in International Class 41.
Owner: Ernesto Perez of 27865 Sand Canyon Road, Santa Clara, California 91387.

It is important to clarify one point: El Chapo’s attempt to obtain trademark protection of his name cannot be interpreted as an attempt to obtain “copyright” protection of his name, as some reports in the news have incorrectly stated. Copyright is a federal law of the United States that protects original works of authorship, which include literary, written, artistic, musical and other fixed media. Copyright does not apply to words, names, short phrases, slogans, or nicknames, which generally fall under the purview of trademark law. For example, Ted Klaudt, a former Republican member of the South Dakota House of Representatives, sent letters to the Associated Press and other members of the media, alleging that the use of his name in articles discussing his arrest on rape charges was a violation of “a common law copyright of a trade name or trademark.” Laura Malone, a lawyer at the Associated Press, correctly stated at the time that despite Mr. Klaudt’s assertions, the names of individuals cannot be protected under copyright law. Mr. Klaudt’s demands were found baseless.

Section 1052 of the United States Federal Trademark Law, known as the Lanham Act, deals with trademarks registrable on the Principal Register. In general terms, the Lanham Act does not prevent a criminal (whether convicted or not) from registering his name, portrait, or signature, provided he submits his written consent to the application (Section 1052(c) of the Lanham Act).

However, Section 1052(a) of the Lanham Act bars federal registration of trademarks that are comprised of “immoral, deceptive or scandalous matter.” Citing this provision, trademark applications have been denied because they were deemed offensive to a specific group of people. The standard of what constitutes “immoral” or “scandalous” matter must be determined by examining the goods or services specified in the application in the context of the marketplace. While this section was not intended to apply to individuals’ names, recent cases bring into question whether public opinion could force the USPTO to invoke Section 1052(a) as a way to prevent a criminal of El Chapo’s stature from registering a trademark in his name. It could certainly be the case if El Chapo was to file a trademark application for his name as applied to guns and weapons!

Public opinion may very well affect any effort to register El Chapo’s name as a trademark. In certain ways, this issue is analogous to the recent, controversial decision involving the football team the Washington Redskins. For many years a coalition of Native Americans had requested the cancellation of the team’s trademarks featuring the term Redskins, on the basis that it was a disparaging term. A federal judge ruled in the coalition’s favor in July 2015, and ordered the cancellation of the federally registered Redskins trademarks. This case raised many issues involving Section 1052 (a), including the meaning of the terms “offensive,” “disparagement,” “dishonor,” etc. One could expect that the same issues would arise in a case where a criminal, who had inflicted pain and death on a number of victims, attempted to obtain a trademark registration for his own name. While the constitutionality of Section 1052(a) has been questioned in lawsuits, anybody can use or continue to use his or her name without a trademark registration.

More importantly, even if El Chapo was to obtain a trademark registration for his name, would it be possible for him to capitalize on his crimes or would he be barred under the “Son of Sam” laws? Are the “Son of Sam” laws consistent with the First Amendment?

Regardless of whether or not he was able to own a trademark registration in his name, El Chapo may not be able to profit in the United States (from licensing his name for products or services, or selling the rights in his life story) due to the “Son of Sam” laws. The purpose of these laws is to specifically prevent criminals from profiting and taking advantage of the publicity generated by the crimes they committed. The name “Son of Sam” was given to the serial killer David Berkowitz. These laws, which are in force in more than 40 US states, instead divert such profits to the victims or the victims’ families. It should be noted that the first “Son of Sam” law was enacted in New York, and was criticized for potentially dis-incentivizing criminals from telling their stories. The New York law, enacted in 1977, was subsequently changed as result of the US Supreme Court decision in Simon & Schuster v. N.Y. Crime Victims Bd, 502 U.S. 105 (1991). The US Supreme Court declared a portion of the law unconstitutional under the First Amendment because it “singled out speech on a particular subject for a financial burden that it places on no other speech or income.” The laws now cover proceeds from convicted criminals related to the commission of a crime, and are not only limited to proceeds from a movie, book, a magazine article, or an interview. The manner in which the proceeds are distributed to the victims differs from state to state.

It could take a long time to extradite El Chapo to the United States. The US Justice Department may eventually succeed. If he is extradited, he will face a variety of criminal charges.

There is a caveat: if El Chapo was found not guilty due to insanity, the “Son of Sam” laws may not apply because they require a guilty conviction.

It will be quite interesting to see how future cases will determine whether criminals can obtain trademark registrations or other intellectual property rights in their names, and profit from their commercialization.

Originally published on Corsearch Trademarks + Brands blog