By Diana Muller
The media has been busy reporting the capture of Mexican drug lord Joaquin Archivaldo Guzman Loera, known as El Chapo, until recently one of the most wanted men in the world. After his daring prison escape through a tunnel using a customized motorcycle, El Chapo Guzman was finally arrested by the Mexican marines in early January.
The world was also captivated by El Chapo’s secretive interview with the American actor Sean Penn. Even the shirt that El Chapo wore during this interview became a best seller; its California manufacturer said it became “the most wanted shirt” worn by “the most wanted man.”
Interestingly enough, Guzman earned his nickname not because of his criminal exploits but because of his diminutive size. The term “el chapo” means “shorty,” and it is used quite commonly in Mexico to identify short people.
In addition to multiple drug trafficking and homicide charges in Mexico, El Chapo faces charges of drug trafficking and murder in several U.S. states and jurisdictions. American authorities have said they are working with their Mexican counterparts to get him extradited to the United States. Mexican President Enrique Peña Nieto said that his government is working with the judicial branch and has given the U.S. attorney general’s office a directive to speed up the process of extraditing the highly dangerous criminal as soon as possible.
Intellectual property lawyers are 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 Institute of Industrial Property, known as the IMPI, denied registration of separate applications for the following four marks: 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.
IMPI based its denials on the fact that such applications identify an international criminal within the prohibitions of Article 4 of the Mexican Industrial Property Law, which says:
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.
There were other obstacles to registration as well. IMPI cited a prior Mexican trademark registration No. 948388 for “El Chapo” in the name of another party 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 is not the first time that a legal system hasbarred a notorious criminal from registering his trademark to profit. A similar situation arose in Colombia a few years ago when the government denied the request of family members to register a trademark for the name — alongside the fingerprint and signature — Pablo Escobar, the deceased head of the Medellin drug cartel.
For families looking to protect or profit from the name of an infamous relative, there are concerns about freedom of expression, the desire for publicity, and registering a mark that offends morality.
The Colombian authorities said granting registration would “offend the morality of Colombian society” and that the proposed mark would undermine public order, especially in light of the purpose of the services it was intended to protect.2
For instance, a service mark application for the name “Pablo Escobar” as applied to education services would not be viewed as morally correct in Colombia. However, despite the rejection of the trademark application in Colombia, branded clothing was sold in Mexico, Austria, Puerto Rico, Guatemala, and the United States depicting “Escobar Henao” and “Pablo Escobar Gaviria” trademarks.
Surprisingly, these marks were registered internationally — including with the U.S. Patent and Trademark Office.
This raises a question: Has El Chapo Guzman obtained trademark registrations for his name in the United States? There is no record at the PTO of any applications by him or his relatives, but the following applications/registrations show other parties may have attempted to reference his persona:
TM: EL CHAPO DE SINALOA
Serial No: 77/017,330
Filed: Oct. 10, 2006
Status: Abandoned October 3, 2007
Goods/Services: Pre-recorded CDs, video tapes, laser disks and DVDs featuring music and performance.
Applicant Raul Espinosa of 1134 Col. Las Puentes, San Nicolás, México 66460.
TM: EL CHAPO
Serial No: 86/718,543
Filed: Aug. 7, 2015
Goods/Services: Apparel for dancers; Athletic apparel; Athletic shirts; Baseball caps and hats; Bomber jackets.
Applicant: Coco’s Trading LLC of 430 N. Maple Drive, #207; 510 W 6th Street, #215, Los Angeles, California 90014.
TM: EL CHAPO
Reg. No: 3,699,008
Reg. Date: Oct. 20, 2009; renewed Aug. 8, 2015
Goods/Services: Series of pre-recorded CDs and DVDs featuring music and musical performances.
Applicant: Ernesto Perez of 27865 Sand Canyon Road, Santa Clara, California 91387
TM: EL CHAPO
Filing Date: Feb. 5, 2016
Serial No 86899111
Goods/Services: Graphic T-shirts
Applicant: Jose William Ruiz-Leal of 906 West Locust Street, York, Pennsylvania 17401.
TM: EL CHAPO
Filing Date: Jan. 27, 2016
Serial No 86888589
Goods/Services: Entertainment in the nature of an ongoing TV miniseries in the field of crime related drama; entertainment services in the nature of development, creation, production, distribution, and post-production of motion pictures, TV shows, multimedia entertainment content.
Applicant: Fuego HD, LLC 9560 Queens Blvd. #105, Rego Park, New York 11374.
These applications for the “El Chapo” mark show how people are trying to capitalize on the media sensation surrounding the escape and recapture of the nefarious drug lord. This obsession with infamous criminals is not limited to foreign criminals. Instead, it is also demonstrated by Americans’ fascination with quasi-romantic criminal figures such as John Dillinger, Pretty Boy Floyd, Baby Face Nelson and Al Capone.
El Chapo Guzman’s predicament can perhaps be best analogized to Dillinger (also known as Public Enemy No. 1). Dillinger’s last remaining heir owns Dillinger LLC, which manages Dillinger’s estate and owns multiple trademark registrations for the name “John Dillinger” and even one for “Public Enemy No. 1.”3
Although the issues of morality and offensiveness were paramount in the decisions regarding trademark registration of the names Pablo Escobar and El Chapo in Colombia and Mexico, the PTO had no problem registering the trademark “John Dillinger” for guns.
This disparity between the treatment of trademarks will potentially only be heightened due to the recent decision by the U.S. Court of Appeals for the Federal Circuit in In re Tam, 808 F.3d 1321 (Fed. Cir. 2015). The decision focuses on an individual’s constitutional right to free expression.
Section 2 of the U.S. trademark law known as the Lanham Act deals with trademark registration on the principal register. In general terms, the Lanham Act does not prevent someone accused or convicted of criminal activity from registering his name, portrait or signature, provided he submits his written consent to the application. Section 2(c) of the Lanham Act, 15 U.S.C.A. § 1052(a).
Before the In re Tam decision, Section 2(a) barred the PTO from registering “immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.” Citing this provision, trademark applications have been denied on the basis that they were offensive to a specific group of people.
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 have raised the question of whether public opinion could force the PTO to invoke Section 2(a) to prevent a criminal of El Chapo’s stature from registering a trademark in his name.
Since El Chapo’s interview with Sean Penn and recapture, the Federal Circuit, sitting en banc, ruled that Section 2(a) unconstitutionally infringes free speech.
In re Tam involved the PTO’s refusal to register the mark “The Slants” — used as the name for an “Asian-American dance-rock band” — because the term was disparaging to people of Asian descent.
A Federal Circuit panel affirmed the PTO’s refusal based on precedent that held that the refusal of a registration does not bar speech because it does not stop the applicant from using the mark. On rehearing en banc, the majority applied an “unconstitutional condition” analysis and held that a federal trademark registration is an important federal benefit that cannot be denied based on the mark’s expressive content.
The majority ruled that the “content based regulation” could not be justified on the grounds that trademarks are commercial speech. The court decided that the bar against registration did not seek to regulate the commercial function of the mark but was instead “viewpoint based” regulation. On April 20, 2016, the PTO filed a petition for a writ of certiorari from the Supreme Court concerning this decision.
The significance of In re Tam is only heightened because of its impact on the controversial decision involving the football team the Washington Redskins and their six U.S. trademark registrations for marks including the term “Redskins,” which the PTO canceled on the basis that it was “disparaging” to American Indians.
A district court ruling, Pro-Football Inc. v. Blackhorse, 115 U.S.P.Q.2d 1524 (E.D. Va. 2015), upholding the PTO’s decision to cancel the marks, is presently on appeal to the 4th U.S. Circuit Court of Appeals. The 4th Circuit will likely abstain from ruling on this case pending the disposition of the In re Tam in the Supreme Court.
The In re Tam Federal Circuit decision is also noteworthy because it calls into question other parts of Section 2(a), which bar registration of “scandalous” and “immoral” trademarks. Although the court did not rule that these other aspects of the statute are unconstitutional, it made it clear that it was open to future challenges to these provisions.
Thus, the In re Tam decision may inadvertently enable El Chapo to register his name, despite its potential to offend a specific group of people, such as his victims’ families. If the Supreme Court upholds the Federal Circuit decision, it could eliminate this potential obstacle for El Chapo and all criminals attempting to register their names as a trademark in the United States.
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 news reports have incorrectly stated. Copyright is a federal law of the United States that protects original works of authorship, such as literary, artistic and musical works. It does not apply to words, names, short phrases, slogans or nicknames, which generally fall under 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 Klaudt’s assertions, the names of individuals cannot be protected under copyright law.4 Klaudt’s demands were obviously baseless.
Regardless of whether he will be able to trademark 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 “Son of Sam” laws. The purpose of these laws is to prevent criminals from profiting and taking advantage of the publicity generated by their crimes.
The name “Son of Sam” was given to serial killer David Berkowitz. These laws, in effect in more than 40 states, divert such profits to the victims or their 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 original New York “Son of Sam” law, enacted in 1977, was repealed as a result of the U.S. Supreme Court decision in Simon & Shuster v. New York Crime Victims Board, 502 U.S. 105 (1991).
In that ruling, the Supreme Court decided that the law was 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 New York Legislature promptly passed a replacement law in 1992, also known as the “Son of Sam” law, which allowed for First Amendment protections in compliance with the Supreme Court decision. The manner in which the proceeds are distributed to the victims differs from state to state.
Some form of the “Son of Sam” laws would presumably apply if El Chapo is extradited to the United States. However, there is a caveat: If El Chapo is found not guilty due to insanity, the “Son of Sam” laws may not apply because many states require a guilty conviction.
It will be quite interesting to see whether future cases will permit criminals to obtain trademark registrations or other intellectual property rights in their names and profit from their commercialization. In the meantime, it seems El Chapo may get his wish of having a film about him produced that would rival Netflix’s hit Pablo Escobar show “Narcos.” According to published reports, actor-producer Kate del Castillo plans to proceed with a proposed biopic about the Mexican drug lord, despite having been warned against doing so by the Mexican government.5
NOTES
1 Jaqueline Hurtado & Michael Martinez, ‘El Chapo’ shirts: ‘We cannot keep them in stock,’ designer says, CNN (Jan. 14, 2016, 5:55 AM), http://www.cnn.com/2016/01/13/us/el-chapo-shirts/.
2 John van der Luit-Drummond, Fame and infamy: the trademark challenges, World Trademark Rev. (Oct. 7, 2013), http://www.worldtrademarkreview.com/Blog/detail.aspx?g=99750002-2534-48d7-b3e5- ccee5afea7ce.
3 Paul B. Oberhauser, Dillinger Sues Pour House on Lincoln for Trademark Infringement of Public Enemy, iplaw.org: Ind. Intell. Prop. L. News (June 26, 2012), http://www.iniplaw.org/2012/06/dillinger-sues-pour-house-on-l.html.
4 Chet Brokaw, Rapist, former lawmaker Ted Klaudt claims name copyright, Rapid City J. (Dec. 15, 2009), http://rapidcityjournal.com/news/article_03881cae-e9a3-11de-848e-001cc4c002e0.html.
5 Ben Child, El Chapo biopic to go ahead despite Mexican government warning, The Guardian(Mar. 24, 2016), http://www.theguardian.com/film/2016/mar/24/el-chapo-biopic-mexican-government-kate-del-castillo