February 10th, 2014
Phoenix Coyotes’ team President and CEO Anthony Leblanc announced that the NHL franchise will change its name to the Arizona Coyotes for the following season. As per custom with a franchise name change, this task requires approval from the league and is usually accompanied with a heavy marketing blitz to get fans excited for the change and equipped with new jerseys and other team gear for the upcoming season. This was seen when the NBA team, Charlotte Bobcats, announced that it would be change its name back to the Charlotte Hornets for the 2014-2015 NBA season. The price to change the name from the Bobcats to the Hornets approximately cost the franchise $4 million, due to 250 major points throughout the arena needing to be rebranded. The financial cost of rebranding is usually the largest hurdle a team faces when changing its name.
However, for the Phoenix Coyotes’, there is one more obstacle it must get around before it can fully benefit from changing its name to the Arizona Coyotes. Tony Fioretto, a businessman located in Phoenix, has already registered the trade name “Arizona Coyotes” with the state. He has also sought to register the name with the United States Trademark and Patent Office, but so far has been denied. When filing a trademark with the USPTO, the first question asked is whether the applicant is currently using the trade name in commerce. If so, the USPTO will allow the applicant to file a 1A application once he specifies the goods and services the trademark is being used for. However, if the mark has yet to be used in commerce, the USPTO will allow the applicant to file a 1B intent to use application. Under this form, the applicant must show a “bona fide intent” to use the mark with its associated goods and services.
Fioretto, working through his Physical Fitness LLC, requested the federal trademark for “Arizona Coyotes” last September, claiming he wanted to use the name on merchandise and for sporting events. Such claim gives the impression that Fioretto properly filed for an intent to use application with the USPTO. However, another barrier an applicant must get around is whether the consumer will likely be confused with other goods and services that bear a similar trade name. It was under this basis that the USPTO rejected Fioretto’s application, giving him until June 30 to make the case that his use of the mark would not confuse consumers with existing Coyotes usage. In determining whether there is a likelihood of confusion, federal courts look at the following seven factors: (1) the strength of the mark allegedly being infringed; (2) the similarity between the infringed and infringing marks; (3) the similarity between the goods and services offered under the two marks; (4) the similarity of the sales methods used by the holders of the marks, such as their sales outlets and customer base; (5) the similarity between the holders advertising methods; (6) the intent of the alleged infringer to benefit off the infringed party’s established good will; and (7) the existence of actual confusion in the consuming public. Under these factors, it seems that Fioretti will have a tough time proving that no consumer confusion will result from the dual usage of “Coyotes” by him and the NHL squad.
Fioretti may emphasize that the NHL team has no claim to the use of “Arizona Coyotes” because they have yet to use the trade name in commerce, and have only made a public announcement of the name change for the 2014-2015 season. However, such defense may be trumped by the NHL team claiming that its use of “Arizona Coyotes” should be viewed as the legal equivalent of its use of “Phoenix Coyotes” because fans will associate both names with the team. This legal doctrine, known as “tacking”, allows a trademark holder to utilize its first use date of its earlier mark for a subsequent mark if consumers would generally regard both terms as being essentially the same. Under this assertion, the NHL team’s use of “Arizona Coyotes” will predate any registration date that Fioretti may claim, therefore disallowing him to use the term altogether.
This is not Fioretti’s first run-in with a Phoenix sporting club attempting to use a trade name that he has already registered. In 2013, Fioretti attempted to assert his right to use “Phoenix Open”. This resulted in a lawsuit initiated by the Thunderbirds, hosts of the Waste Management Phoenix Open golf tournament. As a result of this litigation, Fioretti dropped his state registration for “Phoenix Open”; additionally, the Thunderbirds filed for a federal trademark of the name, which trumps state registration claims. However, due to the likelihood of confusion that would inevitably result from Fioretti’s use of “Arizona Coyotes”, and the tacking doctrine that should allow the NHL team to assert that its name should be perceived as a continued use of its prior trade name, the Phoenix Coyotes will likely not have to take its dispute to court. When the puck drops for the upcoming season, expect Fioretti to have pulled his goalie blocking the team’s change, thus allowing the Coyotes to howl under the imprint of its new name.
December 18th, 2013
Last Month, SI.com reported that organizational efforts had begun to form a college athletes’ trade association. The trade association would essentially function as a players’ association for college athletes’, akin to similar counterparts found in professional sports, such as the National Basketball Association Players’ Association and the National Football League Players’ Association. Some of the functions and duties bestowed upon the trade association would include negotiating contracts on behalf of its college athlete members with television networks, video game companies, and other organizations that profit from college players’ property interests (i.e. their images, likenesses, and names). The trade association would also negotiate future benefits for college athletes, such as compensation in the form of long-term disability and pension benefits. Additionally, many other goals sought to be achieved by the trade association would mirror those of the National College Players’ Association, a California-based advocacy group for college athlete’s rights; this association recently gained national coverage with its #AllPlayersUnited campaign, which was supported by college football players from Georgia Tech and the University of Georgia writing “APU” on their wristbands and other visible garments.
Currently, all present and past Division I football and men’s basketball players would be eligible to join the trade association, with the future hope of membership expanding to all Division I athletes. As reported by Sports Illustrated, several national public relations firms have already submitted bids to create websites to be used by the association in order to recruit college athletes to join. Because Division I athletes are portrayed as student-athletes and not employees, the trade association would be classified as a non-profit trade association instead of a labor union. This is an important distinction because Section 6 of the Clayton Act declares all labor organizations exempt from antitrust laws; as a result, being classified as a non-profit trade association consisting of student-athletes and not employees allows the trade association to still raise antitrust litigation against the NCAA if need be.
However, while progress has been made towards the formation of the trade association, several hurdles still remain in its path. Most notably, on December 12, the NCAA filed court documents arguing that college athletes are not entitled to revenue from live broadcasts of their games. The NCAA’s argument is mainly rooted within the First Amendment; under the First Amendment, broadcast companies are generally allowed to televise live news events—i.e., political events, such as the President’s annual State of the Union address, or interviews—without compensating the people shown in the events. This reasoning is based on the notion that the general public has a right to know what is presently happening around them and broadcast companies should not be deterred from broadcasting news of general important public interest out of concern of possibly being sued for not compensating people in the broadcast. The NCAA argues that this rational also applies to coverage of live broadcasts of college games.
Several issues lie in this defense espoused by the NCAA. As Michael McCann, sports attorney and reporter for Sports Illustrated, points out, a logical counterpoint to be raised to this defense is why does the NCAA seek compensation from broadcast companies, such as ESPN and TNT, if these games are to be perceived as free news. Additionally, McCann points out that a scheduled live game is quite different from a spontaneous live news event, which is usually the subject of protection by the First Amendment. On top of these counterpoints, this NCAA defense also seems to contradict any exclusive right the NCAA has to the broadcasting of college games bestowed upon it through the Copyright Act of 1976. While the Copyright Act does not protect live performances that are not “scripted”, live games are seen as an exception to this rule because they are “fixed in a tangible medium”; as a result, live NCAA football and basketball games are given copyright protection due to the fact they are filmed and recorded. However, by the NCAA claiming that live sporting events are similar to live news events, and therefore players should not be compensated, they are essentially stating that the broadcasting of games is not subject to copyright protection. As a result, it naturally follows that members of the audience—in the stadium or at home—who seek to record games can do so without facing liability for infringing upon the NCAA’s exclusive right to choose who is allowed to broadcast its games. Consequently, any person could film a live game and potentially use it for personal benefit, without having to compensate the players or the NCAA for doing so.
To be sure, there are still many other legal factors that also come into play regarding this defense and whether or not the NCAA is effectively hurting its own ability to copyright collegiate games. For example, if a person is attempting to film these games solely for commercial benefit, the NCAA may still argue that it has a property interest in the games due to the amount of money it may have expended for the purpose of broadcasting the games. However, by utilizing this First Amendment defense to state that players should not be compensated, it also follows that NCAA should also not be compensated, nor have any right to sue those who attempt to film the games for their personal benefit. Because the First Amendment serves as an absolute protection for all people, directly and indirectly concerned, the NCAA would be wise to make sure this defense does not come back to haunt them in the end.
November 12th, 2013
The National Basketball Association has recently re-engaged in settlement talks with the former owners of the defunct American Basketball Association franchise known as the Spirits of St. Louis to end what many sources close to situation have dubbed “the greatest sports business deal of all time.” In 1974, brothers Ozzie and Daniel Silna purchased the ABA’s Carolina Cougars and quickly moved to the team to St. Louis, Missouri, then the largest city in the United States without a professional basketball team. In 1976, however, the ABA ceased to exist due its merger with NBA. Four out of the seven ABA teams—the Indiana Pacers, San Antonio Spurs, Denver Nuggets, Brooklyn Nets—merged with the NBA; however, due to the fact that the Spirits were not included, in order to effect completion, the NBA agreed to give the Silna brothers one-seventh of the national TV revenue generated annually by the four ABA team survivors. Approximately once a month, the NBA sends a check to the Silna Brothers containing revenue garnered from its national television contracts. In the 1980-81 season, the first year the Silnas were eligible to receive their check, they received $521,749; this past season before the 2013-14 tip-off, the brothers received a reported $19 million. In total, since the deal was reached in 1976, the NBA has paid the Silnas close to $300 million in TV royalties; recently, a judge ruled that the brother have rights to internet revenue as well. Pursuant to the language of the agreement, the Silna brothers are set to receive checks from the NBA as long as the league is in existence.
The NBA tried once before to settle its Sports Law case with Silnas, offering them a buyout of $5 million over eight years. The Silnas countered with a demand of $8 million over five years, which the league immediately rejected. Based upon the fact that the NBA currently has $7.4 billion in TV contracts with ABC/ESPN and TNT, rejecting the Silna’s offer is most likely one of, if not the, biggest business blunders made by the NBA since its existence. Based on the 2013-2014 NBA’s national television schedule, the San Antonio Spurs will play fifteen nationally-televised games; the Denver Nuggets will play thirteen; the Indiana Pacers will play ten; and the Brooklyn Nets will play the most out of the group with seventeen. Accordingly, the Silnas should look to cash in on another big payday from the NBA.
When approaching settlement talks, an important factor both parties should consider before accepting or demanding concessions is their bargaining power. In this situation, the Silnas have nothing, while the NBA and its teams have significant amounts of revenue, to lose. The NBA is known to broadcast its signature teams and also those expecting to make significant runs for the Championship in June. The Indiana Pacers so far are 8-0 on the season and have a budding superstar in Paul George; the Brooklyn Nets recently completed a highly-anticipated move from New Jersey and have made a series of off-season acquisitions that have fans feeling confident of multiple championships in the upcoming seasons; and the San Antonio Spurs are perennial powerhouses, winning four championships in the past fourteen years, and recently having a fifth snatched away from them by the Miami Heat in a 7-game championship series thriller. As a result, these teams should be expected to be broadcasted on national TV numerously for the upcoming seasons. The NBA will serve itself well by not balking at any settlement offers given by the Silnas brothers this time around.
October 15th, 2013
NCAA Men’s College Basketball season tips-off Sunday, November 3rd. This date also marks the beginning of what is sure to be a trying season for Maryland junior guard/forward, Dez Wells.
Dez Wells found himself on the current Maryland roster after being expelled from Xavier University in 2012 over sexual assault allegations; these allegations were later found unworthy for trial. In response to the public backlash received pursuant to his expulsion, especially from opposing team’s fans on away games who shout “No means no” whenever he shoots free throws, Wells filed a lawsuit for defamation against his former school and its president, Michael Graham, seeking an apology and monetary compensation for “personal suffering and reputational damage”. The lawsuit, filed in United States District Court in Cincinnati, alleges that Xavier rushed its internal judiciary process after a fellow student accused Wells of sexual assault. Local prosecutor, Joseph Deters, declined to indict Wells, as did a grand jury, and publicly called the school’s investigation “fundamentally unfair”
Xavier, on the other hand, has stood by its judicial process, despite it being called “rushed and flawed” by Wells’ lawyer, Peter R. Ginsburg. While Xavier has never expressly stated the specific reason for Wells’ expulsion, it relies on the fact that Wells was found responsible for violating the Student Code of Conduct by the Xavier University Conduct Board, and that this decision was upheld on appeal to assert that it properly conducted its judicial process.
Even though it is not uncommon for former college students to sue their former schools—for example, see Peter Yu v. Vassar College or Brian Harris v. Saint Joseph’s University—for a current college student-athlete to sue his former school three months before the season is set to begin is truly unprecedented. Lawsuits such as these are detrimental to the concept of a student-athlete. While Wells does have the support of Maryland coach, Mark Turgeon, he is on his own against a major university with this lawsuit. The outcome of this case likely has strong implications on the potential formation of a union or other future forms of representation for student-athletes. A national campaign, known as “APU” (“All Players United”), has already started to get the ball rolling regarding student-athlete representation. This national athletes’ rights campaign started about a month ago when 28 football players from Georgia, Georgia Tech, and Northwestern made national headlines by writing APU on their gear during televised games; this symbol of unity recently reached the University of Kansas football team this past weekend. The APU campaign was initiated by current athletes on the Players Council for the National College Players Association (NCPA), an advocacy group founded by former UCLA football player Ramogi Huma. Its main goals include concussion reform, benefits, and post-career medical coverage.
Additionally, with New York-based law firm, Winston & Strawn LLP, starting what it describes as the first college-focused division at a major law firm to represent players, coaches, schools, and conferences against what it describes as the “unbridled power and influence of “ NCAA, the outcome of Wells’ case has even more bearing on the future of athlete representation. While the focus may initially be on claiming a student-athletes right to the gross revenue the NCAA acquires every year, it is fathomable to envision Winston & Strawn extending its reach to make cases such as Wells’ less of an “I” and more of a “we” against overbearing establishments who presumably have unlimited power.
The facts and details surrounding Dez Wells’ case against Xavier is tough for any student to handle, let alone a student-athlete subject to hostile territory and media coverage on a weekly basis. However, with the advent of movements such as APU and the establishment of major law firms willing to defend, the times of student-athletes bending and subjecting themselves to the will of higher powers seems to be fading. Dez Wells will undoubtedly have a tough upcoming year, but his fight now will help future student-athletes not have to go through similar struggles alone.
September 16th, 2013
New York Yankees third baseman Alex Rodriguez (13) returns to the dugout during the ninth inning against the Boston Red Sox at Fenway Park. The Boston Red Sox won 5-1. Photo Credit: Greg M. Cooper-USA TODAY Sports
Alex Rodriguez’s appeal of his historic 211 game suspension—the longest non-lifetime ban in Major League Baseball history—is set to begin on September 30th. While Rodriguez is the only player out of the thirteen suspended to appeal, the chances of him winning his claim are thought to be quite strong based upon his allegations; Rodriguez’s team of lawyers plan to argue that his suspension was the result of an excessive abuse of power by Commissioner, Bud Selig, based upon the provisions of the Basic Agreement, the collective bargaining agreement that governs the relationship between the Commissioner and the players. Rodriguez will also receive backing from the Major League Baseball Players Association, the union established by the Basic Agreement to protect the interests of players against the league. Together, both sides will argue that the Commissioner exceeded his authority because: 1) this is Rodriguez’s first offense, which merits only a 50-game ban; and 2) MLB’s claim that Rodriguez was given a longer penalty because he interfered with the MLB’s investigation is invalid, because Milwaukee Brewers star Ryan Braun allegedly did the same but was only given a 65 game suspension.
While the MLBPA has expressed support towards Alex Rodriguez’s appeal, according to the New York Daily News and its sources, Rodriguez’s team is gaining the impression that the MLBPA will not adequately represent and defend him during his appeals process. This belief stems from recent comments made by Michael Weiner, head of the MLBPA. These recent comments have led Rodriguez to think that Weiner believes Rodriguez used banned performance enhancing drugs, a thought that goes against the defense Rodriguez plans to implement in his case. If Rodriguez’s loses his appeal and blames the MLBPA for inadequate defense, he could file a Sports Law suit against the league and allege a breach of duty of fair representation. However, according to both Robert Boland, a former prosecutor, criminal defense attorney, and sports agent who is now the academic chairman for New York University’s Tisch Center for Sports Management, and University of Illinois sports law professor, Michael Leroy, such lawsuits are difficult to pursue. First, Rodriguez would have to submit his case to the National Relations Labor Board to determine if his case alleged sufficient facts to pursue litigation. Second, if Rodriguez’s allegations are deemed sufficient and he is able to bring his suit to court, the standard he would have to meet to show the MLBPA improperly mishandled his case is extremely high.
Generally speaking, courts have taken a deferential approach when reviewing cases alleging a breach of duty of fair representation. Because of this, courts have held that a union has breached its duty only if it acts arbitrarily, in bad faith, or discriminatory nature. Neither negligence nor a mistake in judgment will support a claim that a union has acted in bad faith. Additionally, because a union is often required to represent a wide range of interests that may at times conflict, the deferential range of reasonableness allowed by courts is quite substantial.
Essentially, Rodriguez would have to claim the MLBPA was grossly negligent in their representation by not putting forth their best effort and acted with a discriminatory purpose by not defending him as diligently as it would other players on appeal. However, both Boland and Leroy have said they have not seen any evidence that would lead courts to believe that the MLBPA has handled Rodriguez’s case improperly. Therefore, it would be difficult for Rodriguez’s lawyers to muster up the sufficient evidence to support this allegation.
September 9th, 2013
On August 29, the NFL and more than 4,500 retired players agreed to a settlement in the ongoing Sports Law concussion lawsuits, in which the players claimed they suffered significant brain injuries resulting from their time on the field. Pursuant to the settlement agreement, the NFL will pay $765 million; this money includes: 1) $675 million to compensate the players, or their families for those players who have passed away, suffering from severe cognitive injuries; 2) $75 million for baseline medical exams used to check for brain injuries; and 3) $10 million for concussion and cognitive related research and education. Additionally, according to Peter King of Sports Illustrated, the total cost of settlement may reach upwards of $1 billion when factoring in the cost of attorney’s fees used to litigate these concussion lawsuits.
Specifically, when breaking down the money rewarded to the retirees, those who suffer from Alzheimer’s disease will be capped at $5 million, families of former players who were diagnosed with chronic traumatic encephalopathy (CTE) after death will be capped at $4 million, and those with dementia will be capped at $3 million. What is noticeably missing from this reward breakdown is compensation for those players who suffered from lesser forms of cognitive impairment, such as severe migraines for example—as aforementioned, the settlement only addresses those with “severe cognitive impairment”, meaning those that suffer from injuries not deemed “severe” will not be included in the $675 million dollar payment to be divvied out to the former players. As a result, new concussion litigation is being pursued by those plaintiffs exercising their right to opt out of the settlement and pursue their own remedy from the NFL. Three days after the settlement, former players Jimmy Williams, Rich Mauti, Jimmy Keyes, and Nolan Franz filed a new concussion lawsuit against the league in New Orleans federal court. In their complaint, they allege that they have experienced “headaches, dizziness, memory loss, depression, cognitive dysfunction, and medical bills because of concussions and other brain injuries, and will have future expenses which they and their wives will have to pay for and future problems that will require their wives’ care.”
This new lawsuit begs the question of will former players whose cognitive injuries are not deemed “serious” enough to be included in the recent settlement opt out and form a new class of plaintiffs to take on the NFL in a new concussion lawsuit? Lawyers involved in the initial settlement anticipate this new claim and any other future claim to be included in the settlement, bypassing any future litigation. However, the designation of a “serious” cognitive injury seems to render that ideology moot. Also, at what point will the scale begin to lean in the NFL’s favor and players will be found to have assumed the risk of playing in the NFL? As younger generations of players begin to take over the league, the likelihood of them knowing the potential perils of participating in this dangerous sport increases, and may increase eventually to the point where their knowledge of the consequences of playing in the league renders the NFL no longer liable for any injuries suffered.
In regards to the latter question, the settlement’s provision requiring damages to go to cognitive research and education may expedite the tipping of that balancing scale. As new information is gathered and shared, the NFL may alleviate any potential claims that retired players may have against it. Only time will tell if that becomes a result of the NFL’s settlement, or if the NFL opened the door to new litigation against itself by finding new dangers that may have resulted on the field that players could not have accounted for.
September 2nd, 2013
Recently, the NCAA concluded its investigation against Texas A&M University’s Heisman winning quarterback, Johnny Manziel, by reaching a settlement agreement with the university to suspend him for the first half of its first game of the season against Rice University. Manziel was accused of accepting payments for signing autographs at several locations, including in South Florida around the BCS title game. Additionally, ESPN had reported that a group of autograph dealers claimed that Manziel accepted payments to sign more than 4,000 items, including footballs and autographs, at a late January event in Connecticut.
The NCAA takes claims of student-athletes accepting impermissible benefits seriously—look at cases such as Terrelle Pryor, who was suspended for the first five games of his senior season and ordered to repay $2,500 for selling his 2008 Big Ten championship ring, 2009 Fiesta Bowl sportsmanship award, and his 2008 “Gold Pants” award for beating archrival Michigan, and Dez Bryant, an All-American wide receiver who was ruled ineligible his final season for lying to the NCAA when asked if he visited and worked out at Deion Sanders’ home. Compared to these punishments, it may seem Manziel got off rather easy, especially considering the belief among A&M fans that Manziel wouldn’t have played the full game anyway. What makes the Manziel case different is that not only did he assert his innocence early and often, he lawyered up quickly, ready to fight any claim against him. According to sports and entertainment lawyer and legal analyst for Sports Illustrated, Michael McCann, a potential claim that Manziel could have asserted against Texas A&M regarding an unwarranted punishment handed down by the NCAA is tortious interference with business expectations, which is a common cause of action in commercial litigation cases.
Tortious interference with business expectations occurs when false claims and accusations are made against a business or individual’s reputation in order to drive business away. Manziel, a potential NFL prospect with some question marks still left to answer—durability, size, questions about his ability to repeat his redshirt freshman Heisman season— could have alleged that an undeserved NCAA suspension harmed his chances to respond to the critics on the field, leading to a drop in draft value and affecting the money he would have received with his rookie contract. The elements to prove tortious interference typically include: 1) the existence of a contractual or beneficial business relationship between two parties; 2) knowledge of that relationship by a third party; 3) intent of the third party to induce a party to the relationship to breach the relationship; 4) lack of any privilege on the part of the third party to induce such a breach; 5) the contractual relationship is breached; and 6) damage to the party against whom the breach occurs. Damages for tortious interference include economic losses that can be proven with certainty and negative injunctive relief to prevent the wrongdoer from carrying out their interference.
In his case, Manziel could have alleged that the NCAA induced Texas A&M into breaching the mutual beneficial relationship between it and its star quarterback by forcing the university to suspend him, resulting in a drop in draft value, and resulting in economic damages. Manziel, however, would have had a tough task in proven the NCAA, as governing body of student-athletes, lacked the privilege to encourage Texas A&M’s suspension and also proving the economic damages he suffered with absolute certainty.
Fortunately, due to the settlement agreement reached, the answers to this potential lawsuit will never have to be answered, and Texas A&M can focus on repeating the success it had in its second year in the SEC.
August 23rd, 2013
The real Chubby Checker (Photo courtesy of Getty)
“Well you know what they say about big feet….”— A joke that never fails to make your buddy with a size 12 shoe feel uncomfortable, goes hand in hand with “Chubby Checker,” a smartphone application used to measure the size of a man’s genitals. The app, purports to convert a users shoe size, into a correlating penis size, and finishing the process by letting users select whether the size is “Sweet” or “Not so sweet.”
But what is “Not so sweet” about this App, is the current legal fall out that has ensued in response to the applications name; a “vulgar pun” as the Judge would put it. On August 15, 2013, the judge ruled that Ernest Evans aka Chubby Checker may move forward with his trademark suit against Hewlett Packard (HP) and Palm. Evans is a classic rock artist of the late 1950’s, becoming most famous after performing “The Twist” on American Bandstand. Although the rock star has written many songs in his career, none surpass the success of “The Twist,” which led to three of Evan’s other “Twist” favorites: “Twistin’ U.S.A.,” “Twist it Up,” and “Let’s Twist Again.”
However, it doesn’t look like Evans will be twisting very much anytime soon, as he and his lawyers will be too busy trying to settle this lawsuit. His complaint alleges “both direct and contributory liability for trademark infringement, dilution and use of Ernest Evans name and publicity rights.” Evans has accused Chubby Checker, the application, for damaging Evan’s reputation and of violating the “Chubby Checker” trademark by connecting the singer’s name and likeness to “obscene, sexual connotation and images.” Evans is seeking “injunctive relief to enjoin and restrain” the application, along with seeking an award of damages “equal to the diminished value of the Plaintiffs name, marks, brand and business.”
The App was in the market for 6 years before HP took it off their sale site in September of 2012. Because HP had constructive knowledge of the detailed application and put the application through an approval process, it therefore knew that it violated the trademark. I agree with the judge that HP should also be held responsible for allowing such an App to be sold in their marketplace, but is it likely that Evans will win his suit?
A trademark is a word, symbol, or phrase that is used to identify a particular seller’s product and distinguish it from another seller’s products. The goal behind trademark law is to make it easier for consumers to identify a product quickly and easily, and forces products to maintain their quality. In order for something to qualify as a trademark, the mark must be distinctive, which means the product must be (1) arbitrary or fanciful, (2) suggestive, (3) descriptive, or (4) generic. Since “Chubby Checker” has no logical relationship to the underlying product (Ernest Evan’s person), this trademark will likely fall under the distinctiveness of “arbitrary or fanciful.” However, even if Evans properly registered his trademark with the U.S. Patent and Trademark Office, it is possible that his trademark, over the years, could have been lost. A person may lose their trademark in several ways: abandonment, improper licensing or assignment, or the trademark becoming generic.
I believe HP’s lawyers may have an argument that Evan’s trademark has been lost, being that it could be possible that the creators of this App had no idea who Chubby Checker is. The App was meant to “check” the size of a man’s “chubby,” both words that may fall under the Fair Use defense. Additionally, I have in my lifetime heard the nickname “a chubby” to describe a guy’s genitals, so is it really fair to hold people responsible for a name that over time has changed its meaning? I guess we will find out.
August 23rd, 2013
Robin Thicke, Pharrell Williams, And Clifford Harris, Jr. (“T.I”) recently filed a claim seeking pre-emptive declaratory relief from Marvin Gaye’s ancestors and Bridgeport Music Inc. regarding their summer hit “Blurred Lines”. In their complaint, the three artists claim they did not commit copyright infringement because their single bears no resemblance to Marvin Gaye’s song “Got To Give It Up”, or to Funkadelic’s song “Sexy Ways”, which are owned by Bridgeport Music, Inc. The crux of the case rests upon whether Thicke, Pharrell, and T.I. could be held liable for copyright infringement if their song was influenced by the era that brought upon the defendant’s prior work, but did not actually sample or copy any of the prior work’s music.
Courts rely on a two-prong test to settle claims of copyright infringement: 1) copying of prior work; and 2) a substantial similarity to the prior work sufficient enough to show misappropriation of another person’s work. Copying can be shown either through direct or circumstantial evidence. To circumstantially prove evidence, courts rely on the alleged party’s access to the work and the similarity between the two. To show substantial similarity, courts look at if the work is extremely hard to distinguish from in the eyes of a reasonable person.
As a reasonable person who has shown “Got To Give It Up” and “Sexy Ways” to other reasonable people who have also heard “Blurred Lines” on the radio roughly 100 plus times this summer, do I believe these songs incorporate some of the same elements? Sure. However, if I were to hear these songs back-to-back-to-back, I would be able to easily distinguish the differences between the three. As the complaint states, “there are no similarities between plaintiffs’ composition and those the claimants allege they own, other than commonplace musical elements[.]” Trying to allege “Blurred Lines” infringed upon the prior two works is similar to saying the Red Hot Chili Peppers infringed upon the Eagles because they both have songs that incorporate similar guitar riffs, or that similar rap songs copyright one another because they use similar bass and drum elements. This case boils down to each individual’s ear; does “Blurred Lines” sound similar enough to “Got To Give It Up” and “Sexy Ways” to prove copyright infringement? I think not, but others may not hear it the same. The song title may not be the only thing “blurry” about this case.
July 11th, 2013
The fight seems to be on between two of the music industry’s biggest stars. Within the past month, Pharrell Williams filed a declaratory judgment lawsuit in the Southern District of New York against William Adams, better known as Will.i.am, seeking to have the Court rule that Pharrell’s “I Am OTHER” mark associated with his new business does not infringe upon Adams’ “I Am” and “Will.i.am” trademarks. The dispute really came to fruition back in December of 2012, when Adams’ attorney sent a cease and desist letter to Pharrell, demanding that Pharrell disassociate the “I Am OTHER” mark from his company. In fact, as Pharrell’s attorney Brad D. Rose of Pryor Cashman, LLP, points out, the mark “‘I am OTHER’ does not infringe, dilute or unfairly compete with Will.i.am or any of [Adams’] alleged ‘I Am’ trademarks, virtually all of which have been rejected by the [U.S. Patent and Trademark Office].”
Not only have the bulk of Adams’ trademark applications been rejected, but upon further research into the U.S. Patent and Trademark Office records, there are hundreds, if not thousands, of federally registered trademarks containing the phrase “I Am”; the same phrase Adams’ seeks to protect. Adams solely owns the “I Am” and “Will.i.am” marks in connection with clothing and entertainment production.
“In order to prevail on a trademark infringement claim, a plaintiff must establish that ‘(1) it has a valid mark that is entitled to protection under the Lanham Act; and that (2) the defendant used the mark, (3) in commerce, (4) ‘in connection with the sale . . . or advertising of goods or services,’ (5) without the plaintiff’s consent.’” Tiffany Inc. v. eBay, Inc., 576 F. Supp. 2d 463, 495 (S.D.N.Y. 2008). In addition, the Plaintiff must establish that the infringing mark being used by the Defendant creates a likelihood of confusion among the relevant consumers. When applying the above standard to the claims asserted by Adams, it is hard to imagine that a court would rule in favor of Adams.
Pharrell claims, as asserted in his response to the aforementioned cease and desist letter, that the “I Am OTHER” mark is distinguishable, both in look and sound, from Adams’ mark, and that the two competing marks have substantially different meanings. Whereas Adams’ mark is simply a play on his name, Pharrell’s “I Am OTHER” mark is a moniker aimed at promoting the individuality of people across the world. Pharrell also points out that due to his and Adams’ celebrity status, it is unlikely that the relevant consumer base will be confused as to which celebrity the I Am OTHER brand is associated.
Pharrell, rather than sitting back and waiting for Adams to file a trademark infringement action, went on the offensive and filed this declaratory judgment lawsuit in an attempt to resolve this matter in a timely fashion. If declaratory judgment is granted, Pharrell will be able to use the “I Am OTHER” moniker in association with his new brand without further obstacle from William “Will.i.am” Adams.