Lynch Provides a 'Beast Mode' Seminar on Use of Trademarks

® WWW.SPORTSBUSINESSJOURNAL.COM APRIL 27, 2015

FROM THE FIELD OF INTELLECTUAL PROPERTY Lynch provides a ‘Beast Mode’ seminar on use of trademarks

ust before the 2015 JSuper Bowl, Se- attle Seahawks running back Marshawn Lynch famously responded to 25 separate questions that he was only attend- ing the event’s annual HOWARD HOGAN Media Day “so I won’t get fined.” Although the display made interna- tional headlines, it was not apparent at the time how much the episode would illustrate the use of trademarks in professional sports. There is no question ALEXANDER MOONEY that the protection of sports trademarks is big business. For example, one court called it GETTY IMAGES “indisputable” that the NBA logo, with its Marshawn Lynch made news for what he said at Super Bowl Media Day, but it was his apparel “distinctive depiction of a silhouetted bas- that nearly got him in trouble with the league. ketball player,” is a strong mark in light of its decades of use, its wide promotion, and inent logo of his clothing line Beast Mode, stadium and television audience,” the the billions of dollars in sales of licensed which was not an official NFL sponsor. player is “prohibited from wearing, dis- NBA merchandise. Courts have frequently To maximize the value of their sponsor- playing, or orally promoting equipment, recognized that the uniforms worn by pro- ship deals, sports leagues often limit the apparel, or other items that carry com- fessional athletes and their cheerleaders brands that players are permitted to wear mercial names or logos/identifications of can themselves function as a trademark, before and during game day. Sponsors companies.” Similarly, sports organiza- allowing courts to enjoin their imitation, typically ask for reassurances that their tions increasingly ask the cities that host whether in knockoff merchandise or as brands will be the only ones seen in media their events to establish “clean zones,” in satirized in adult films. coverage, because they do not want to pay which unsanctioned brands are prohib- What makes Lynch’s case interest- if their competitors can simply cut side ited from advertising or selling products ing is that his meticulous effort to avoid deals with other participants that allow that compete with their sponsors. “get[ting] fined” actually came close to them to free ride on the exposure at a frac- Lynch escaped a fine for violating this getting him fined, not because of what he tion of the cost. rule only because his hat was manufac- said, but because of what he wore. Lynch For example, NFL Rule 5, Section 4, Ar- tured by an NFL licensee. Other profes- appeared before hundreds of clicking ticle 6 states that “throughout the period sional athletes have not been as lucky. cameras in a hat embossed with the prom- on game-day that a player is visible to the For example, former Chicago Bears line- backer Brian Urlacher was fined $100,000 services come from one specific source. In that Bulls or Yankees fans bought goods in 2007 for wearing a hat on Super Bowl Lynch’s case, his application announces erroneously believing them to have been Media Day that bore the logo of one of an “intent to use” the phrase to sell sport- marketed by Riley. That registration his personal sponsors. Urlacher, in fact, ing goods like shirts and hats. lapsed in 2012, likely because Riley ob- removed the hat shortly after cameras Lynch is not the first athlete to trade- tained a separate registration for “Three- started rolling, and most fans watching at mark a famous phrase. For example, for- peat” in 2011 when his Miami Heat seemed home likely never saw it. But with the ad- mer Los Angeles Lakers coach Pat Riley primed to make use of the phrase. vent of camera phones and social media, famously registered Professional athletes often register once passing moments can be captured trademarks for their charitable and busi- and reposted ad infinitum. ness endeavors, such as former Yankee Importantly, the First Amend- Derek Jeter’s “Turn 2” trademark ment does not protect a play- for his charitable foundation er’s choice to wear particular and Denver Bronco John brands. Sports leagues are pri- Elway’s “Elway’s” mark vate organizations, and a First for his restaurants. Former Amendment claim can only be Chicago Bulls star Michael asserted against someone acting Jordan has registered at least under the color of governmental 15 trademarks that incorporate authority. Moreover, advertising a his famous name. particular brand is a form of “commercial Importantly, trademark law will not speech,” which does not receive as much allow Lynch a complete monopoly on protection as core political speech. The the phrase “I’m Just Here So I Won’t Get federal trademark statute, the Lanham Fined.” Trademark law does not reach the Act, expressly prohibits the use of a trade- use of a term in common, everyday speech mark in ways that are likely to cause con- and does not prevent others from copying sumer confusion. the phrase in the way that copyright law Ironically, some trademark owners may protects more substantial creative works actually benefit from rigorous enforce- such as books. So fans, detractors and par- ment of these brand enforcement rules, odists can continue to repeat the phrase when a fine itself attracts significant as long as it is not used in ways that are publicity. Last year, San Francisco 49ers likely to cause consumers confusion. quarterback Colin Kaepernick was fined For now, a PTO examining attorney Lynch has applied to register his phrase, for wearing headphones with the signa- which is on T-shirts on his brand’s website. will evaluate Lynch’s application and ture “B” logo of Beats headphones. The decide whether it is sufficient. A decision incident received so much free media ex- is expected by midyear. To maintain the posure that Beats’ co-founder was quoted the trademark “Three-Peat” after his team registration, though, Lynch will need to as saying, “I can’t believe I’m this lucky.” won its second consecutive championship demonstrate that he can actually use the Lynch may similarly benefit from his in 1988. Although Riley’s Lakers did not phrase to sell merchandise. n run-in with the NFL’s logo policy. In Feb- ultimately win a third championship in Howard Hogan (hhogan@gibsondunn. ruary, Lynch filed an application with the 1989, press reports have indicated that he com) is a partner with Gibson Dunn’s intel- U.S. Patent and Trademark Office to reg- later benefited widely from the registra- lectual property and fashion, retail and ister the phrase “I’m Just Here So I Won’t tion when the Chicago Bulls and the New consumer products practices in Washing- Get Fined” as a trademark. The Lanham York Yankees each won three consecutive ton, D.C. Alexander Mooney (amooney@ Act allows companies and individuals to championships. But it is unclear how gibsondunn.com) is an associate with register phrases and other indicators that much, if anything, those teams paid to Gibson Dunn’s litigation department in communicate to consumers that goods or license the rights, since it seems unlikely Washington, D.C.