By Brenda J. Robinson, Esq.
After spending many years building their reputations as leaders and champions, and after investing a great deal of time and effort into making their mark in a particular sport, it follows that most athletes, fully aware of the hold that their reputation – indeed, their very name itself – has on the public, choose to pursue various commercial uses of their identities through the licensing of their names for use in product endorsements or other promotions. In many ways, an athlete’s identity, even more than a skill set, is his or her most valuable asset.
Like original creations or unique forms of expression, names are yet another form of intellectual property that can have commercial value. The concept of licensing a trademarked name for use in a commercial context thus prompts consideration of the question of when a name becomes famous, to whom does the name belong, along with a consideration of who has the right to actually control the commercial use of that name.
The Lanham Act, 15 U.S.C. § 1127, provides that a trademark is any word, name, symbol or device adopted and used by a manufacturer or merchant to identify his goods and distinguish them from those manufactured or sold by others. Since trademarks confer a distinctive identity on a product that allow it to be distinguished from its competitors, the owner of a trademark may prevent others from using the same or a similar mark in order to avoid creating a likelihood of confusion or deception among consumers. The doctrine of right of publicity protects against the commercial misappropriation of an individual’s name or nickname, likeness, or identity. This doctrine has been applied in instances of commercial exploitation and even symbolic representation. As a general matter, trademarks are regulated by federal law, while the right of publicity is governed by state law.
With respect to the appeal of an athlete and his or her personal brand, most vendors seek the most accomplished athletes as representatives of their goods because it is the reputation of that athlete that can significantly enhance the value of the product. For the time, money and effort that a manufacturer invests in establishing his mark, there is the doctrine of unfair competition, which allows a manufacturer to assert a claim of misappropriation when another user engages in trademark infringement. While the athlete is afforded certain trademark law protections, he or she enjoys even more expansive protection under the right of publicity, based on two distinct standards: for trademark protection, the mark in question must have been previously used in commerce to be protected, and generally speaking, proof of a likelihood of confusion is required in order to permit recovery. The right of publicity imposes no such requirements, and allows protection regardless of whether the individual’s identity was used in commerce, and provides for recovery even where no likelihood of confusion has been suggested. The athlete must establish an enforceable right in his or her identity and must establish that any alleged infringer has, without permission, used some aspect of his or her identity or persona, and that such use is likely to cause damage to the commercial value of that brand.
A review of the ways in which the courts have enforced the right of athletes to protect the economic interests they have in the licensing of their own trademarked names and identities raises one final question: why does the law allow celebrities to have trademark rights in a name in the first place?
As a preliminary matter, § 1052(e)(4) of the Lanham Act precludes registration of a mark that is primarily a personal name or surname, unless the name is used as a trademark and has acquired secondary meaning. In the case of a celebrity, a name is considered to have acquired secondary meaning if it has come to be thought of by the public as associated with the actual (famous) person to whom it refers. For example, in the case of domain names, celebrities have been permitted under the Uniform Domain Name Resolution Policy (UDRP) to maintain control over the name because they are said to have acquired common law trademark rights in it because it has become so distinctive as to be uniquely identified with that person.
An important distinction between trademark and right of publicity is that the scope of trademark rights is significantly narrower than the scope of publicity rights. Trademark rights only issue if the mark has been used in connection with the sale of merchandise or other services, whereas publicity rights need not have been embodied in any form in order for the owner to assert them against those who would exploit the right. In the case of an athlete or public figure, it is not a property interest per se in the trademark that is protected, but rather the association in the minds of the consuming public between the trademarked name and the particular individual. A publicity right, on the other hand, is based on a property rationale that would allow a celebrity to exercise a right, albeit limited, to exclude others from using his or her name without authorization even if there was no confusion on the part of the public regarding the athlete or celebrity’s association with a particular product.
In sum, the right of publicity represents a legitimate economic interest that an athlete holds in his or her name, image, likeness and overall brand. Many athletes generate a greater economic benefit from opportunities off the court than they do on the playing field. By recognizing a right of publicity for celebrity athletes while allowing for exceptions that encompass such things as First Amendment concerns, the courts have achieved a necessary balance between the right of the public to have access to an athlete’s public image and the right of the athlete to reap the benefits of his or her own hard work in achieving success and recognition while subsequently earning the respect of peers both on and off the field through his or her accomplishments.
Brenda J. Robinson is a partner in the intellectual property practice at Faegre Baker Daniels LLP. She focuses her practice on copyrights, trademarks and entertainment matters on behalf of clients in the music, film, television and sports industries.
