Right of Publicity an Actionable Claim
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OCTOBER 2018 DEVOTED TO LEADERS IN THE INTELLECTUAL PROPERTY AND ENTERTAINMENT COMMUNITY VOLUME 38 NUMBER 9 THE LicensingJournal Edited by Gregory J. Battersby and Charles W. Grimes SEPTEMBER 2018 The Licensing Journal A he could satisfy the elements of Right of Publicity an actionable claim. Likely the biggest issue is whether Federer Adam S. Baldridge and Nicole gave Nike consent in his contract Berkowitz to use his initials when Nike origi- nally developed the RF logo and applied for the trademark regis- In March of 2018, tennis great Federer’s Uncertain tration in 2008. Whether Nike’s Roger Federer ended his twenty- continued use of the RF logo after one-year relationship with Nike, Hope in Obtaining the expiration of its agreement and in June 2018, entered into the RF Logo from with Federer exceeds the scope of a $300 million deal with Uniqlo, Federer’s consent would depend a Japanese clothing company. Nike on the specific language in the Although Nike no longer has a agreement. See, e.g., Sharman v. clothing contract with Federer, From a legal perspective, it is C. Schmidt & Sons, Inc., 216 F. Nike still owns the trademark not clear why Federer is so opti- Supp. 401, 405-06 (E.D. Pa. 1963) registration in the iconic styl- mistic about recovering the RF (considering whether the use of ized RF logo in various registries trademark. Perhaps some provi- plaintiff’s photograph exceeded across the world in classes of use sion of his contract with Nike pro- the authorization of his release covering clothing and footwear. vided him the right to one day to use the photograph); Cepeda See U.S. Trademark Reg. No. receive these rights. Federer is one v. Swift & Co., 415 F.2d 1205, 3,838,371. During a press con- of the most famous athletes of 1207-08 (8th Cir. 1969) (finding ference at Wimbledon, Federer all time. He currently has won that the use of a baseball player’s suggested that he would one day more majors than any male tennis name and likeness in advertising gain the rights to the RF mark, player in the “Open Era,” and he materials affixed to meat products stating: is admired all over the world, not was within the scope of his agree- only for his excellence on the court ment with Wilson Sporting Goods The RF logo is with Nike at but also for his humble attitude Company). the moment, but it will come and family man persona off the Federer may explore arguments to me at some point. I hope court. See FP Staff, Federer Most related to trademark law, but such rather sooner than later, that Trusted, Respected After Mandela arguments are likely to also be Nike can be nice and helpful in the World, FirstPost (September unavailing. The law does permit in the process to bring it over 21, 2011), https://www.firstpost. the use of the name of a person— to me. It’s also something com/sports/federer-most-trusted- or for that matter, their initials—as that was very important for respected-after-mandela-in-the- a trademark when the name or me, for the fans really. Look, world-survey-88642.html. initials function as a source identi- it’s the process. But the good Short of a contractual provi- fier and have obtained secondary news is that it will come to sion, Federer may be attempting meaning. See Experience Hendrix, me at one point. They are my to look to his right of publicity LLC v. Electric Hendrix, LLC, 2008 initials. They are mine. The for the logo which includes his WL 3243896, at *4 (W.D. Wash. good thing is it’s not theirs initials. Jurisdictions within Aug. 7, 2008); Pirone v. MacMillan, forever. In a short period of the United States, however, are Inc., 894 F.2d 579, 583 (2d Cir. time, it will come to me. divided over whether foreign indi- 1990); see also Stephano Bros. v. viduals, like Roger Federer, can Stamatopoulos, 238 F. 89, 93-94 (2d Roger Federer, Press Conference claim a right of publicity in the Cir. 1916) (discussing the history (July 2, 2018), http://www. United States. Whether a person’s of trademarking names). “Marks wimbledon.com/en_GB/news/ initials are entitled to the same acquire secondary meaning when articles/2018-07-02/2018-07-02_ protection as one’s name may be ‘the name and the business have roger_federer_first_round.html. another issue as well as whether become synonymous in the mind OCTOBER 2018 The Licensing Journal 1 of the public, submerging the pri- for the RF logo, which meshes relationship with Nike may one day mary meaning of the term in favor together the two letters in a sty- persuade Nike to voluntarily trans- of its meaning as a word identi- listic font, to satisfy the modicum fer the rights to Federer, possibly fying that business.’” Experience of creativity required to be pro- for an additional fee. Whichever Hendrix, 2008 WL 3243896, at *4 tectable by copyright law, Feist route the RF logo takes, as Federer (quoting Abraham Zion Corp. v. Publ’ns, Inc. v. Rural Tel. Serv. Co., mentioned at Wimbledon, he does Lebow, 761 F.2d 93, 104 (2d Cir. 499 U.S. 340, 345 (1991), then not have a shoe deal and he could 1985)). Even harder for Federer is the issue will likely come down still work out a shoe deal with the fact that the RF mark achieved to who created what, whether the Nike. So maybe the Nike + Federer incontestable status in 2015, which work is a work for hire, and what relationship can live on…. means that the validity of the RF the parties’ agreement says on the mark can only be challenged “on issue. Adam S. Baldridge is Co-chair of the grounds that it is generic, it has Because right of publicity Baker Donelson Bearman Caldwell been abandoned, it is fraudulently rights, trademark rights, and copy- & Berkowitz, PC’s Intellectual used by the registrant, or it was right avenues to obtain rights in Property Group and Chair of its obtained fraudulently.” Id. at *5. the RF logo look challenging at Intellectual Property Litigation Finally, one additional inter- best for Federer, his hope may be Group. Nicole Berkowitz is an esting consideration is copyright attributable to one of two things: associate in the firm’s Memphis protection and ownership of the the contract provides that the RF office. This article was originally RF logo. If there exists a sufficient logo will one day be assigned to published in IAM Weekly on amount of minimal creativity Federer; or two, Federer’s lucrative August 8, 2018. Copyright © 2018 CCH Incorporated. All Rights Reserved. Reprinted from The Licensing Journal, October 2018, Volume 38, Number 9, pages 21–22, with permission from Wolters Kluwer, New York, NY, 1-800-638-8437, www.WoltersKluwerLR.com.