Wednesday, January 23, 2013

The Emergence of Personal Branding in Professional Sports

For years, athletic leagues, collegiate sports associations, and professional teams have dominated the savvy use of intellectual property procurement to solidify their ownership of not only the teams, leagues and associations themselves, but to also monopolize the ownership of the name and likeness of the players that earn these entities billions of dollars annually.  

This issue was brought to light in the legal world in the notable appellate battle between professional sports leagues and the fantasy leagues which profited off of the statistics, names, logos, and slogans associated with these various league's players and teams.  
The ruling in C.B.C. Distribution v. Major League Baseball, a case denied cert by the Supreme Court, leaving in place the final decision of the Eighth Circuit, held that the First Amendment interests in public information about baseball and baseball players outweighed the players’ state law right of publicity.
What was interesting about the ruling was those rights of publicity allegedly the property of the "players" was actually the property of MLB, thus the basis for the league, not a group of players, standing as the plaintiffs in the case.  
It may have been this ruling and the attention it received that began the trend of players taking control of their own name and likeness, a trend reflected in a significant amount of professional and collegiate athletes acting swiftly in personally protecting the nicknames assigned to them by teammates, fans, and the media. 
Just in the last year, we have had Jeremy Lin and his legal disputes over the ownership of the LINSANITY trademark.  Next it was No. 1 NBA Draft Pick Anthony Davis and his series of self-deprecating trademarks centered around his unusual UNIBROW trademark look.  
Heisman winner JOHNNY FOOTBALL made sure the NFL didn't get its hands on the famous moniker bestowed upon the young QB out of Texas, a trademark which could earn him as much as his rookie contract given its already ubiquitous presence in the media and its potential for endless forms of commercial use in the coming seasons. 
Just this week, further evidence came from the USPTO that players view the value of their own intellectual property as essential tools to further profit from their unique talents, especially given the sometimes short playing careers of professional athletes due to injuries, lack luster play, and sometimes an absence of opportunity. 
Seemingly just hours after confirming he was sure to be one of the feel good stories covered by the media from every angle imaginable during the two weeks leading up to the Superbowl, Colin Kapernick took steps to ensure that no one but himself would stand to benefit from his meteoric rise to national fame.  
As a late draft pick, his ability to profit from his personal branding efforts is yet another example of professional athletes taking back the profits normally taken by the leagues they play for, and a demonstration that athletes can play the branding game just as well as leagues and teams their personal brands result from. 
Here are the trademarks CK7 recently filed with the USPTO:
1. Colin Kaepernick: Clothing, namely, shirts, pants, jackets, footwear, hats and caps, jerseys
2. Kaepernick CK7: Clothing, namely, shirts, pants, jackets, footwear, hats and caps, jerseys
3. Kap7: Clothing, namely, shirts, pants, jackets, footwear, hats and caps, jerseys
4. Kap: Clothing, namely, shirts, pants, jackets, footwear, hats and caps, jerseys
5. Kaepernick7: Clothing, namely, shirts, pants, jackets, footwear, hats and caps, jerseys
6. Kaepernicking: Clothing, namely, shirts

Saturday, January 5, 2013

Essential ®eading: The Google Shortcut to Trademark Law

From the Yale Law School Information Society Project, Lisa Larrimore Ouellette has written a compelling companion article that highlights many of the important issues she recently discussed at a presentation delivered at Oxford University.

Click here to download the article

To provide our readers with a preview and overview of the truly important read for trademark practitioners and intellectual property law academics alike, we borrow from the abstract she has used to describe the thesis and contents of the 52 page paper, a paper sure to be receiving much justified attention in the coming months in the legal community and the IP law community in particular.

Borrowing from her abstract, her paper contends the following with respect to the value and utility of the Google Search Engine and its ability to function as a primary reliable source when seeking to determine the strength of a trademark and the likelihood that a particular trademark will be or is being confused with another trademark or several existing trademarks:

"The strength of a trademark — the extent to which consumers view the mark as identifying a particular source — is difficult to evaluate in practice. Assessments of “inherent distinctiveness” are highly subjective, survey evidence is expensive and unreliable, and other “commercial strength” factors such as advertising spending are poor proxies for consumer perceptions. Courts often fall back on heuristics and intuition rather than precise logical analysis.

But there is a simpler way to determine whether, when people look for a mark, they mean to find a certain product: Google. Google dominates the web search market by correctly predicting what people think of when they type a word or phrase, and Google results thus can increase the predictability and accuracy of the subjective tests in trademark law. Courts have generally given online search results little weight in offline trademark disputes. But the key factual questions in these cases depend on the wisdom of the crowds rather than expert judgment, making Google’s “algorithmic authority” highly probative.

Through a study of federal trademark cases and contemporaneous search results, I argue that Google can generally capture both prongs of the test for trademark strength: if a mark is strong — either inherently distinctive or commercially strong—then many top search results for that mark relate to the source it identifies. The extent of search overlap between two different marks can also be relevant for assessing the likelihood of confusion of those marks. In the cases where Google and the court disagree, I argue that Google more accurately reflects how consumers view a given mark."  (
Ouellette, Lisa Larrimore, The Google Shortcut to Trademark Law (January 3, 2013). Available at SSRN:

As the Internet and Internet searches become an increasingly ubiquitous part of our society and their use as evidence in trials and as part of the trademark examination process increases, it will be interesting to see how the thesis presented in this paper holds up and whether courts and administrative agencies are resistant to the role of internet searches increasing and as such reticent of these online tools being given too much recognition or probative value in determinations of trademark strength and likelihood of confusion with other trademarks.