By Diana Muller
Since the American Tobacco Company put baseball players on promotional cards in the 1920s, third parties have been appropriating the names and likenesses of professional athletes for a profit. Fortunately for these professional athletes, there are several avenues by which they can control the use of their likeness under U.S. law, including through the Federal Trademark Act, commonly known as the Lanham Act. While the Lanham Act governs the federal registration of trademarks, athletes can also seek protection against the misuse of their names or likenesses under the Lanham Act without obtaining a federal trademark registration, and through individual state right of publicity statutes. Cases such as Davis v. Electronic Arts have held that professional and amateur athletes may have causes of action against parties that misuse their names and likenesses under the legal theory of false endorsement under both the Lanham Act and individual state right of publicity statutes.
On the other hand, if athletes do seek federal trademark protection, they must register with the USPTO (United States Patent and Trademark Office). Once secured, a federal trademark registration can be maintained indefinitely as long as the mark is in use directly or through an authorized party (a licensee). Federal registration provides constructive notice of exclusive ownership in the trademark or service mark.
In regard to athletes or other sports figures, such as coaches, it is necessary now more than ever to encourage the protection of their names, nicknames, slogans or catch phrases for a variety of services, and products. For instance, take Michael Jordan. One of his earliest trademark registrations from 1988 covered “promoting the goods and/or services of others through the issuance of product endorsements,” and he has continued to register his name on a variety of products and services over the past few years to maintain his brand’s strength. As another example, Shaquille O’Neal (publicly dubbed “The Big Cactus” and “The Big Shaqtus” while playing for the Phoenix Suns) invoked the Lanham Act in a lawsuit against an online clothing and collectible store called “Shaqtus Orange Clothing Co.” In addition to the unauthorized use of “Shaqtus” in the company’s name, the store also sold items with an animated cactus resembling O’Neal, both in the cactus’s facial features and in its uniform. O’Neal’s complaint asserted trademark infringement, unfair competition, trademark dilution, cybersquatting, and violation of his publicity rights. In deciding this case in favor of O’Neal, the District Court upheld his trademark infringement and unfair competition claims, and subsequently enjoined the store’s use of the “Shaqtus” mark. (O’Neal’s company, Mine O’ Mine, currently owns a number of registered trademarks in connection with the “Shaq” name, such as “SODA SHAQ” Reg. No. 4720764, “SHAQ ATTACK” Reg. No. 4388336, “SHAQ FU” Reg. No. 4717948, and “SHAQNOSIS” Reg. No. 4765042.)
The trademark registrations of athletes’ brands can be partly attributed to the fact that the average lifespan of sport figures’ athletic performance is short. Therefore, their desire to increase their earnings beyond their sport career is evident in the continuing rise of the number of athletes seeking federal trademark protection. Moreover, many professional athletes have turned to trademark and other laws to protect the use of their name and likeness in recognizing how social media can drastically affect their earning potential. Their interest in social media has many ramifications, such as a higher exposure on and off the field, as well as the commercialization of their products on their social media platforms. Tim Tebow, for one, has recognized this value by filing trademark applications for his name for use on goods ranging from sporting goods to clothing to school supplies. Despite harsh criticism over his less-than-iconic athletic performance, Tebow turned to social media to amass a popular online following, thus allowing Tebow to maintain his success as a pop-culture icon. Similar to Tebow, NFL player Chad Johnson or Chad “Ochocinco” (as he was known from 2008-2012) also used social media to turn his name into a branding empire, even after the worst statistical season of his rookie career. Social media has allowed athletes to extend their popularity far beyond their performance on the field, and has added a new element of fan interaction that could never have been achieved without such usage. In an attempt to defend themselves against account impersonators, some individuals have turned to litigation. For example, Tony La Russa, the former Manager of the St. Louis Cardinals, sued Twitter in 2009 for allowing unidentified impersonators to create a fake account in La Russa’s name. Although the case was settled prior to judicial review, La Russa’s suit raises interesting questions as to whether the right of publicity, which is recognized by nineteen state statutes and twenty-eight states under common law, can serve as a foundation for legal recourse against celebrity impersonators.
Since the dismissal of La Russa’s case, individual states such as California, New York, Texas, Washington, Mississippi, Florida, and Hawaii have passed statutes that recognize a cause of action for online impersonation. Additionally, these types of cases raise interesting constitutional issues, as the First Amendment of the United States Constitution protects parody and other forms of free speech.
Another issue that has also become more prominent in the last decade involves so-called “morals clauses” in endorsement contracts. While these clauses likely would not be an issue for the clean-cut Tim Tebow, several athletes, including Tiger Woods and Lance Armstrong, have lost millions of dollars after their endorsement deals were invalidated due to their off-the-field indiscretions. Given the consequences that may ensue from bad social media behavior, whether the result of account hacking or poor judgment, it is critical for professional athletes to obtain counsel in negotiating and reviewing any endorsement contracts that they reach with sponsors. Although the outcome is currently unclear, it is certain that the law will be affected by new and ever-changing forms of social media.
Trademark dilution claims are common in the Internet realm given the relative ease of posting content online. Because there are very few restrictions in terms of an initial post, and because of how quickly information can be distributed (especially when something goes “viral”), third parties have a great ability to use athletes’ names and likenesses in ways that could weaken brand recognition, such as tarnishing the athletes’ reputations through fake social media accounts.
While social media websites seem more willing to respect their users’ intellectual property rights against infringers, complaints regarding unauthorized use will always be strengthened when federal trademark registration exists. Furthermore, it is unlikely that social media platforms will be able to detect and remove disparaging content or fake accounts sua sponte. Therefore, it is crucial for athletes and sports figures, together with their agents and IP lawyers, to establish strategies very early in their careers for the protection and registration of their brands on a worldwide basis. It is also as important to undertake a vigilance and monitoring policy in regard to the Internet and social media platforms to control the use of their names and images, especially against impersonators and infringers. These policies can help reduce costly litigation, especially those involving claims of trademark dilution. More importantly, these policies can help avoid damage to the reputation of an athlete or sports figure.
For further information, please contact Diana Muller, who advises on sports trademarks and image rights. Sarah Segal, a legal intern at GRR, also contributed to this article.