ARTICLE How to Win Big September 2016 Intellectual Property Magazine By Danny M. Awdeh; Patrick J. Rodgers While walking the streets in Beijing or Shanghai, U.S. consumers will likely do a double take upon encountering athletic shoes and athletic-shoe stores bearing trademarks closely resembling Michael Jordan’s name and “Jumpman” logo. These shoes and stores are not the iconic items we fondly associate with Michael Jordan and his epic career–long offered under the familiar Air Jordan brand. Rather, they are the unfortunate result of Jordan’s failure to register his name in Chinese characters and to take other measures to fully protect his commercial identity in China. Vulnerable to infringement, a local Chinese company seized an opportunity to adopt look-a-like branding, and has been freely exploiting that branding to the tune of hundreds of millions of dollars in sales. Jordan has failed in his many bids before the Chinese Trademark Office and court to obtain injunctive and other relief. This cautionary tale highlights the potentially significant pitfalls professional athletes face in protecting and commercialising their names and brands. Shaquille O’Neal, for example, recognised the value of his “Shaq” moniker, registering numerous “Shaq” marks in the U.S. When he discovered a company in Phoenix using the mark “Shaqtus,” O’Neal jumped to action, obtaining injunctive relief from the courts. Had Jordan registered his name in Chinese characters in China, his fate may have been far different. An athlete’s “brand” typically crosses the spectrum of trademark and right of publicity laws in the U.S. Trademark laws protect the player’s name, associated brands and logos, nicknames popularised by fans, and other distinctive source identifiers. The right of publicity (a state-specific law) generally protects the athlete’s name, likeness, and other identifying features. As discussed below, Athletes have been very successful exploiting both through sponsorships, endorsement, speaking opportunities, licensing agreements, and other commercial endeavors. Trademark Law Through the popularity of sports and explosion of social media, athletes are able to reach a global audience with relative ease. In recognition of the opportunities to commercialise their brands, athletes have become increasingly more active in harnessing intellectual property laws to their benefit, including registering their names, nicknames, and even popular phrases uttered in press conferences. Pat Riley, current president of the Miami Heat and former coach of Los Angeles Lakers, recognised branding opportunities in the heat of competition. When his Lakers team was on the verge of winning a third straight NBA title in the late 1980s, Riley obtained trademark protection for the term “Three- Peat” in various forms. Although the Lakers failed to complete their winning streak, Riley continues to own and exploit the “Three-Peat” mark, underscoring the value and longevity of trademarks. How to Win Big | Articles | Finnegan | Leading Intellectual … © 2021 Finnegan, Henderson, Farabow, Garrett & Dunner, LLP 1 Riley-esque pursuits of branding opportunities have become increasingly common. Superstar athletes, like Alex Rodriguez (baseball), Aaron Rodgers (NFL), Michael Jordan, and most recently Stephen Curry (basketball), have registered their names. Many athletes also protect their nicknames. Darrelle Revis (NFL) registered “Revis Island” in 2013; Draymond Green (basketball) registered “Money Green” in 2016; and Stephen Curry registered “Chef Curry” in 2016. Beyond nicknames, athletes even register press conference comments or individual catchphrases. Terrell Owens (NFL) registered “Getcha Popcorn Ready” in 2011; Anthony Davis (basketball) registered “Fear the Brow” in 2012; Bryce Harper (baseball) registered “That’s a Clown Question, Bro” in 2012; and Marshawn Lynch (NFL) registered “I’m Just Here So I Won’t Get Fined” in 2015. The end of an athlete’s career does not mark the end of their trademark lifecycle. Securing post- retirement trademark rights has supported lucrative business opportunities–a fact evident by basketball star Kobe Bryant’s recent activities. Beginning in July of 2015, towards the start of Kobe’s final season, he sought registration for “Friends Hang Sometimes Banners Hang Forever.” Since then, Kobe has applied for numerous trademarks, such as his nickname, “Black Mamba,” three iterations of a personal logo, and two phrases, “Mamba Out” and “dream epic.” Kobe’s application for “Mamba Out” was filed as recently as 8 June, in the midst of the 2016 NBA playoffs. Other famous athletes have enjoyed significant post-retirement branding success. For example, Don Shula (NFL) (“Shula’s Bar and Grill,” among others), John Elway (NFL) (“Elway’s”), and Arnold Palmer (golfer) (“Arnold Palmer”) all have successful restaurant ventures bearing their names. College athletes have likewise recognised the importance of trademarks even before their professional careers begin. For example, before being drafted by the Cleveland Browns as the 22nd overall pick of the 2014 NFL Draft, Jonny Manziel registered the trademark “Johnny Football.” Other college athletes followed suit. In 2015, Dallas Cowboys’ 2016 first-round pick, Ezekial Elliot, and 2016 fourth-round pick, Dak Prescott, both registered their names in various forms while still in college. The Tampa Bay Buccaneers’ 2015 first-overall pick, Jameis Winston, registered “Famous Jameis” in 2015, months before he left school. While some athletes may anticipate their future success and popularity, others might find themselves the subject of unexpected attention. For example, in 2012 Jeremy Lin enjoyed a meteoric rise in the basketball world. After coming off of the bench for the New York Knicks, Lin’s tremendous performances captivated the sports world, spurring what became known as “Linsanity.” Spotting an opportunity, “fans” all over the world began applying to register “Linsanity” and other variations of Lin’s name. Lin was able to stop others from registering his name in the US, but not before the release of various unauthorised “Linsanity” products, ranging from t-shirts to medical marijuana. Others have faced similar scenarios. In 2012, the term “Tebowing” went viral. As millions recreated Tim Tebow’s now famous pose, two “fans” sought registration over the term “Tebowing”. Tebow took notice, and action. He now owns trademark registrations for the term “Tebowing”. After Gabby Douglas, nicknamed the “Flying Squirrel,” won gold in the 2012 Summer Olympics, a college student applied to register “The Flying Squirrel” and began selling products bearing the mark. The applicant later abandoned the mark, presumably upon objection from Douglas. Right of Publicity The right of publicity works alongside trademark law as another method for athletes to protect themselves off-the-field. Athletes commonly take advantage of their right of publicity through highly lucrative endorsement deals, sponsorships, appearances, product extensions, and so on. These deals and opportunities are prevalent throughout sports: Stephen Curry (NBA) with Under Armour; Sidney Crosby (NHL) with Gatorade; Bryce Harper (MLB) with Under Armour; Marshawn Lynch (NFL) with Skittles; Tiger Woods (golf) with Upper Deck; and Andy Murray (tennis) with Head. College athletes, on the other hand, face a different (and more limited) landscape, including compliance with National Collegiate Athletic Association (NCAA) regulations required to preserve their collegiate eligibility. How to Win Big | Articles | Finnegan | Leading Intellectual … © 2021 Finnegan, Henderson, Farabow, Garrett & Dunner, LLP 2 In the 2015 case O’Bannon v NCAA,1 college athletes were denied the right to receive monetary payments because such compensation was found to undermine the purpose of the NCAA. However, the court ruled that NCAA-member schools could provide scholarships covering the full cost of attendance, ie, they are not limited to providing tuition costs only. Petitions for certiorari to the US Supreme Court have been filed. In another 2015 case, eight current and former college athletes filed a case in Tennessee federal district court alleging that broadcasters were profiting from the names, images, and likenesses of college athletes. The case was dismissed. College athletes will likely continue to pursue the right to commercially exploit their right of publicity. For now, however, they may be better served playing the long game by planning ahead for branding opportunities as they enter the professional arena. What’s Next? With record-breaking endorsement deals announced virtually every season, commercial opportunities for athletes abound. As we’ve seen from Jordan’s experience and the success of many athletes, planning for and capitalising on branding opportunities early can lead to longstanding commercial success beyond an athlete’s career. Endnotes 1 802 F.3d 1049 (9th Cir 2015). Related Practices Trademark Related Professionals Danny M. Awdeh Patrick J. Rodgers Partner Associate Washington, D.C. Washington, D.C. +1 202 408 4353 +1 202 408 4374 Email Email Originally printed in Intellectual Property Magazine in September 2016. This article is for informational purposes, is not intended to constitute legal advice, and may be considered advertising under applicable state laws. This article is only the opinion of the authors and is not attributable to Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, or the firm’s clients. How to Win Big | Articles | Finnegan | Leading Intellectual … © 2021 Finnegan, Henderson, Farabow, Garrett & Dunner, LLP 3 How to Win Big | Articles | Finnegan | Leading Intellectual … © 2021 Finnegan, Henderson, Farabow, Garrett & Dunner, LLP 4.