(Editor’s Note: What follows is an excerpt from the ABA book The Little Book of Basketball Law, written by Melissa Altman Linsky. Linsky is an adjunct law professor at Emory Law School and a sports and marketing law attorney in Atlanta. The chapter, which deals with “Professional Basketball Players and the Rights to their Names,” analyzes Kareem Abdul-Jabbar v. General Motors Corp., 85 F.3d 407 (9th Cir. 1996) and contrasts that with another case, Mine O’Mine, Inc. v. Calmese and True Fan Logo, Inc., 2011 WL 2728390 (D. Nev. 2011). Find out at the end of the article how you can obtain the book.)
Picture the following dramatization of a television commercial that ran during the 1993 NCAA basketball tournament:
OFF-SCREEN VOICE: “How ’bout some trivia?”
OFF-SCREEN VOICE PLAYS DURING THE CLIP: “In fact, it’s made that list three years in a row. And now you can get this Eighty-Eight special edition for just $18,995.”
PRINTED WORDS: “A Definite First Round Pick.”
ACCOMPANIED BY OFF-SCREEN VOICE: “It’s your money.”
PRINTED MESSAGE: “Demand Better, 88 by Oldsmobile.”
After this commercial aired, former UCLA Bruin and Los Angeles Laker Kareem Abdul-Jabbar filed a lawsuit against General Motors Corporation for violating his trademark and his right of publicity in the name Lew Alcindor—Abdul-Jabbar’s birth name—by using it without his permission.
Abdul-Jabbar contended that GM’s unauthorized use of his birth name (the Alcindor Mark) was likely to confuse consumers about his endorsement of the Olds 88, and thus use of that name violates the Lanham Act.[1]
To prevail in a trademark infringement suit under the Lanham Act, Abdul-Jabbar needed to prove he had:
(1) a legally protectable mark, including a name, symbol, or other “uniquely distinguishing characteristic” of celebrity identity (the Alcindor Mark in this case);
(2) its use by GM in interstate commerce (a national television commercial in this case); and
(3) a likelihood of confusion as to association or sponsorship with GM’s products or services.
GM argued that Abdul-Jabbar did not meet the first prong in that he did not have a legally protectable mark. GM claimed that: (1) Abdul-Jabbar lost his rights to the name Lew Alcindor when he abandoned it by legally changing his name and (2) in the alternative, GM’s use of the name Lew Alcindor was a nominative fair use that is not subject to the protection of the Lanham Act. The district court ruled both defenses applicable.
It would first help to understand what constitutes a trademark before discussing how it is abandoned.
A trademark is a source identifier. It tells you the source, sponsor, or affiliation of the product or service. A trademark does not stand on its own; it only receives protection for the goods or services with which it is used. For example, Spalding for basketballs, Nike for clothing. When you see those marks you, as the consumer, assume some qualities about those products.
Trademark abandonment means the mark is no longer associated with the owner. It falls into the public domain and is “fair game” for the public to use.
The Lanham Act provides two ways to abandon a mark:
(1) non-use with an intent not to resume use, with non-use for two consecutive years being prima facie evidence of abandonment, and (2) the course of conduct of the owner causes the mark to become generic.[2] A prima facie case of abandonment may be rebutted by showing valid reasons for non-use or lack of intent to abandon. Once a mark is abandoned, it may be used by another.
Abdul-Jabbar acknowledged that he had not used the name Lew Alcindor in more than ten years. In fact, he had taken on a new religion and registered his new name under the Illinois name recordation statute.
The U.S. District Court for the Central District of California found these actions proved that Abdul-Jabbar had in effect abandoned his birth name and “the right to protect that name, and the right to assert any other rights that flow from his having had that name at one time in the past.” Any religious reasons for doing so, the court said, were inapplicable.
The district court held that since Abdul-Jabbar had changed his name and was no longer using his birth name, he had abandoned the Alcindor Mark and had no legally protectable mark in GM’s ad.
On appeal, the 9th Circuit rejected GM’s abandonment defense. It found that the abandonment defense had never been applied to a “person’s name or identity” and declined to stretch federal law to encompass the defense with regard to the use of a person’s name.
“One’s birth name is an integral part of one’s identity; it is not bestowed for commercial purposes, nor is it ‘kept alive’ through commercial use. A proper name thus cannot be deemed ‘abandoned’ . . . it will always refer to the person who bore it.”
Thus, he has a legally protectable right in the Alcindor Mark.
But GM had more than one play drawn up. GM had also argued on the district court level, that even if Abdul-Jabbar still had rights in the name Lew Alcindor, GM only used the Alcindor Mark nominatively. Nominative use is trademark law’s version of the fair use defense. It applies where the mark is used merely to describe the good or service. In other words, the only way to refer to the product is to use its name.[3]
Courts in the 9th Circuit apply a three-part test to determine whether a trademark use qualifies for the nominative defense. Under this test from New Kids On The Block v. New America Pub., Inc., 971 F.2d 302 (9th Cir. 1992), for the nominative defense to apply:
(1) the product or service in question must be one not readily identifiable without use of the trademark; (2) only so much of the mark or marks may be used as is reasonably necessary to identify the product or service; and (3) the user must do nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder.
The district court found for GM on all three prongs as a matter of law.
With the first prong, the district court stated that Abdul-Jabbar’s name was not identifiable without actually using the Alcindor Mark. “One might refer to the ‘two-time world champions’or ‘the professional basketball team from Chicago,’ but it’s far simpler (and more likely to be understood) to refer to the Chicago Bulls. . . [I]ndeed, it would be impossible to refer to the NCAA record in question without referring to Lew Alcindor.”[4]
On the second prong, the district court noted that in New Kids, the newspapers satisfied this requirement because they only used the mark and not any distinctive logo to make the announcements intelligible to readers. “Similarly, in this case, defendants only used the name in the record book, nothing more. Accordingly, the district court found that defendants used what was reasonably necessary to identify plaintiff as the holder of the record.”
As to the third prong, the district court found that, like the newspaper polls in the New Kids case, nothing in “The Answer” to the trivia question on the commercial suggest sponsorship or endorsement by the plaintiff.
On appeal, the 9th Circuit agreed with the district court as to prongs 1 and 2 but concluded that there was a genuine issue of fact as to prong 3. Basically, the panel found that celebrity endorsements on TV are so common that a jury could find Abdul-Jabbar endorsed the Olds 88 by GM’s use of his name in its commercial.
Had GM limited itself to the “trivia” portion of its ad, GM could likely defend the reference to Lew Alcindor as a nominative fair use. But by using Alcindor’s record to make a claim for its car—like the basketball star, the Olds 88 won an “award” three years in a row, and like the star, the car is a “champ” and a “first round pick”—GM has arguably attempted to “appropriate the cachet of one product for another,” if not also to “capitalize on consumer confusion.”
Therefore, the 9th Circuit held whether GM was entitled to a fair use defense was a question of fact.
Once the 9th Circuit determined that Abdul-Jabbar had a legally protectable mark and no defenses applied, it looked to whether there was a likelihood of confusion as to Abdul-Jabbar’s association or sponsorship with the GM’s products or services.
The 9th Circuit considers the following “likelihood of confusion” factors in determining whether the unauthorized use of a celebrity’s name violates the Lanham Act: “(1) strength of the plaintiff’s mark; (2) relatedness of the goods; (3) similarity of the marks; (4) evidence of actual confusion; (5) marketing channels used; (6) likely degree of purchaser care; (7) defendant’s intent in selecting the mark.”
It noted that because a jury could reasonably conclude that most of the factors weighed in Abdul-Jabbar’s favor, a jury would need to decide whether a likelihood of confusion exists.[5] This was essentially what Abdul-Jabbar argued in his Appellate Brief. See 1994 WL 1606828, Abdul-Jabbar v. General Motors Corp., et.al., No. 94-55597, Sept. 21, 1994.
Let’s review. The district court found that Abdul-Jabbar had abandoned his birth name and lost his trademark rights in the Alcindor Mark. It alternatively determined that even if Abdul-Jabbar had rights in the Alcindor Mark, GM’s use was nominative.
On appeal, the 9th Circuit reversed, holding that a person cannot abandon trademark rights in his birth name—thus Abdul-Jabbar had protectable rights in the Alcindor Mark, that GM’s nominative use defense was also a question for a jury, and that a jury must balance the likelihood of confusion factors to determine trademark infringement.
Moving on, Abdul-Jabbar had also claimed that GM violated his rights of publicity in the Alcindor Mark.
In addition to trademark rights, an athlete has rights of publicity in his name and likeness.[6] The right of publicity generally refers to the right to control and profit from the commercial use of one’s identity. There is no federal right of publicity statute. It is solely recognized through state common law, state statute, or both. California recognizes both.
A right of publicity cause of action under California common law requires: “(1) the defendant’s use of plaintiff’s identity; (2) the appropriation of plaintiff’s name or likeness to defendant’s advantage, commercially or otherwise; (3) lack of consent; and (4) resulting injury.”[7]
California’s common law cause of action is complemented with a right of publicity statute. It provides in pertinent part: Any person who knowingly uses another’s name, voice, signature, photograph, or likeness, in any manner, on or in products, merchandise, or goods, or for purposes of advertising or selling, or soliciting purchases of, products, merchandise, goods or services, without such person’s prior consent . . . shall be liable for any damages sustained by the person . . . injured as a result thereof.[8]
The statute requires two more allegations than the common law cause of action. It requires that (1) the defendant knowingly used the other’s name or likeness, demonstrating an awareness or intent, and (2) there is a direct connection between use and a commercial purpose, meaning that if the name is not used commercially, the use would not fall under the statute. Under both causes of action, California does not require the plaintiff to show that the use of his or her name or picture suggests an endorsement or association with the product or service. Unlike trademarks, mere use is actionable, as opposed to use that causes consumer confusion in the endorsement or sponsorship. Abdul-Jabbar did not need to show that the use of his name was likely to confuse the public regarding his endorsement of the Olds 88 for his right of publicity claim to succeed.
Abdul-Jabbar therefore argued that GM violated his right of publicity under California common law and the statute when it used his birth name in its commercial for the Olds 88 without his consent. The district court found that GM was entitled to summary judgment on both rights of publicity causes of action. It ruled that because Abdul-Jabbar had abandoned the Lew Alcindor name, GM was not using the plaintiff’s name, since at the time of use, Lew Alcindor was no longer his name.
The 9th Circuit disagreed with the district court yet again. It gave two reasons why Abdul-Jabbar’s right of publicity claims could proceed under both California common law and the statute.
For one, since both causes of action omit the word “present” prior to the words “identity” and “name,” the “identity” or “name” could be a past moniker. It ruled that GM’s unauthorized use of Abdul-Jabbar’s birth name was actionable because at one time Lew Alcindor was his name, even though it wasn’t his then-current name. Second, a celebrity’s decision not to exploit his name commercially does not preclude the celebrity from enforcing his rights against its unauthorized use by others. Just because Abdul-Jabbar didn’t exploit his birth name, didn’t mean that GM could.
The 9th Circuit reversed the district court, holding that Abdul-Jabbar’s right of publicity claims could also proceed.
1. Abdul-Jabbar Appellate Brief, 1994 WL 16506828. See Lanham Act 15 USC § 1125 (a).
2. Lanham Act 15 USC § 1127 (1992).
3. Lanham Act 15 USC § 1115(b)(4).
4. GM Reply Brief, Kareem Abdul-Jabbar v. General Motors Corporation, 1994 WL 16506841 at 8 (C.A. 9) (Appellate Brief) No. 94-55597, Nov. 9, 1994, citing DC# CV- 93-02813-IH Central District of California (Los Angeles), Appellees’ Brief.
5. This was essentially what Abdul-Jabbar argued in his Appellate Brief. See 1994
WL 1606828, Abdul-Jabbar v. General Motors Corp., et.al., No. 94-55597, Sept. 21, 1994.
6. See Haelan Laboratories v. Topps Chewing Gum, 202 F.2d 866 (2d Cir. 1953).
7. Kareem Abdul-Jabbar v. General Motors Corporation, 85 F.3d 407, 413, 414
(9th Cir. 1996) quoting Eastwood v. Superior Court for Los Angeles County, 149 Cal.
App.3d 409, 198 Cal.Rptr. 342, 347 (1983).
8. Cal. Civil Code § 3344(a) (1971).
9. Mine o’Mine, Inc. v. True Fan Logo, Inc., 2010 WL 2068926 (Complaint).
Reprinted with permission from The Little Book of Basketball Law, available for purchase from: ambar.org/basketball. 2013© by the American Bar Association. All rights reserved. This information or any or portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association.
