Pattishall IP Blog

July 25, 2012

Who owns a trademark? Jeremy Lin wins Linsanity, as Anthony Davis fights for his unibrow.

Filed under: Licensing, Right of Publicity, TM Registration — Tags: , , , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 10:38 am

By Paul A. Borovay, Summer Associate

THREE-PEAT is a well-known term that refers to a sports team’s third consecutive championship.[1] Byron Scott, an ex-Los Angeles Laker, coined the term after his team won its second consecutive NBA championship in 1988.[2] Unfortunately, Scott could not profit from licensing the term to apparel companies, advertising agencies, or sports teams. Why? Scott did not try to establish rights in the term THREE-PEAT, either through registration or use. Scott likely did not see the value in trademark licensing at the time, but his coach, Pat Riley, saw an opportunity and obtained a trademark registration for the term in November 1988. Even though Scott coined the term “Three-peat,” Riley is the one that has been earning royalties from use of the trademark.

The arena of sports provides a ripe field for coining catchphrases such as “three-peat,” as well as terms that incorporate the names and likenesses of the superstar athletes themselves. Understanding who owns a trademark that incorporates the name or likeness of one of these individuals requires understanding the basics of two distinct bodies of law: trademark and the right of publicity.

Celebrities can obtain trademark rights for catchphrases associated with them by using the marks in commerce in connection with a specific good or service. Celebrities can also obtain state registrations for their marks, or simply own common law rights without a registration after using the marks in commerce. Filing for a registration with the United States Patent and Trademark Office (USPTO) is important and will often trump later applications, except for a few exceptions that are discussed later in this article.

Under the protections afforded through state right of publicity statutes, a celebrity is protected against commercial loss caused when someone appropriates their name or likeness. The celebrity does not have to have used the catchphrase in commerce, nor would the celebrity have to use the catchphrase in the future, as the right of publicity protects celebrities’ entire persona from commercial exploitation. For example, Michael Jordan would have a right of publicity claim against a car wash company that used his photograph to promote its business. While the photograph may not be protected under trademark law, the right of publicity prohibits any unauthorized commercial exploitation of a person’s name or likeness.

Two recent trademarks surrounding basketball players Jeremy Lin and Anthony Davis illustrate the delicate balance between trademark law, the right of publicity, and the person who coins the catchphrase’s rights to his or her creation. (more…)

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