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All in the name
Thoroughbred owners should understand both right of publicity and trademark law
by Jack A. Wheat
ONCE upon a time, the primar y source of income for professional athletes was the compensation paid by a team owner to the players, appearance fees, or the purse received for placing in individual sporting events. Today, that is not the case. Many athletes earn far more income from leveraging the commercial value of their name, the value attributable to the affinity toward athletes shown by their loyal fan bases. This marketing approach came into play at least as early as the midto late 1800s. The Internet search portal Wikipedia.org, in an article on baseball cards, notes that in that era, “baseball and photography were both gaining popularity. As a result, baseball clubs began to pose for group and individual pictures.” Soon thereafter, “trade cards featuring baseball players appeared. These were used by a variety of companies to promote their business, even if the products being advertised had no connection with baseball.” Early on, these baseball cards were inserted into cigarette packages as a premium item to help drive the sales of the cigarettes. If not earlier, at least by then the sports merchandising affinity products industry was born. Sports merchandising is a simple strategy. Driving that industry is the realization that sports fans wish to demonstrate loyalty to their favorite teams and athletes. These loyalties motivate customers to purchase merchandise bearing team names, logos, and colors and the name or likeness of favored athletes. Business evolution Since the early days of simple baseball trading cards, the sports merchandise industry has evolved to the point where it is hard to think of a product that is not available bearing a team name, logo, and colors or the name, likeness, or endorsement of a sports celebrity. There are readily available posters showing an athlete or team in action, souvenir jerseys, electronic games in which the armchair coach or player can even imagine he or she is the star athlete, and products such as Air Jordan athletic shoes named after National Basketball Association legend Michael Jordan. Assorted products not even directly relating to sports such as George Foreman cookbooks, grills, and griddles, and athlete product endorsements also are available. Long, well-settled principles of law protect professional athletes by giving them the right to control any commercial utilization of their names and likenesses. To lawfully obtain the right to benefit from utilizing an athlete’s name or likeness in association with a product, the producer or merchant needs to obtain permission from the athlete. Because of this legal protection, athletes are in the position to negotiate receipt of compensation in exchange for giving someone the right to benefit commercially from the athlete’s name and likeness. Although affinity merchandising in relation to professional athletes has become ubiquitous, the same
PROACTIVE APPROACH Thoroughbred owners who believe a market may exist for commercialization of a horse’s name should proactively identify product lines where there is intention to possibly commercialize a horse and subsequently apply for trademark of the name cannot be said for the Thoroughbred “athletes” of racing fame. Why not? Are the legal principles that human athletes leverage to commercialize their name and likeness any different from rights available to owners of Thoroughbred athletes? In the intellectual property law field, there are two areas of protection that come to play in association with control by athletes of the commercial utilization by others of the athlete’s name or likeness. One is commonly referred to as the right of publicity, the other is in the field of trademark law. Right of publicity Simply stated, the right of publicity is the legal right of an individual to prevent appropriation of their name or likeness for commercial benefit, unless permission is obtained to commercialize that person’s name or likeness. This legally recognized right of publicity evolved out of another field of law known as the right of privacy, which gives to individuals such protections as a right to be left alone and a right to remain in seclusion out of the public view if so desired. As such, the right of privacy, including the right of publicity, is a protection of individual personal rights. This right is thus very suitable to protect an athlete’s right to control and profit from merchandising of his or her name or likeness. However, because the law recognizes it only as an individual personal right, it is not realistic to assume the law would readily expand to apply the same principles to protect an owner’s right to control commercialization of the name or likeness of a Thoroughbred, not an individual with personally enforceable legal rights. Trademark law protection In addition to the right of publicity as a legal basis to control commercialization of his or her name or likeness, in many situations, athletes have the possibility of controlling commercialization of their name under trademark law in any product line where the name is not already in use. A trademark under United States law is defined as “any word, name, symbol, or device” that is used by a business to “identify and distinguish a product … from those manufactured or sold by others.” Just as a professional athlete is in the “business” of providing a product, namely sports entertainment, owners of Thoroughbreds are also in the business of providing sports entertainment services and do so using the horse’s name to identify the product. A problem with relying on trademark law for protection, however, is the scope of protection is perhaps not nearly as broad as the protection available in the right of publicity field. Whereas the right of publicity is available to allow an athlete to control any commercial utilization of his or her name or likeness, trademark law protection generally extends only to lines of business closely related to the line of business in which the trademark is being used by the owner. (There is one fairly new exception recognized in the law in that the owner of a very “famous” trademark can prevent use of the mark in any product market where the name is famous, even if the trademark owner itself is not selling products in that product market.) Consequently, a trademark owner runs the risk that someone could appropriate for use the same trademark name in a totally unrelated line of business. If so, unless the trademark is “famous,” there might be little, if anything, the trademark owner could do to prevent commercialization of the trademark name in the totally unrelated line of business. Name protection Thus, although owners using a
Thoroughbred’s name in association with the business of providing entertainment services might have protection of the name in closely related lines of business, the owner needs to be proactive if interested in controlling the commercialization of the name in less related lines of business. Fortunately, trademark law does provide a vehicle for expanding the field of protection of a trademark beyond the line of business in which the trademark is being used. An owner of trademark can proceed to protect a product name in any product line where a closely similar name is not already in use. If the owner is interested in commercializing the Thoroughbred name in other unrelated lines of business, that right can be preserved through pursuing trademark registrations through governmental trademark offices such as the United States Patent and Trademark Office. When applying for registration of a trademark, the applicant is, however, required to specify any lines of business in which commercialization of the name is intended. The strategy thus is very simple. If the owner of a Thoroughbred believes there may be a market for commercialization of the horse’s name, the owner needs to proactively identify the product lines in which there is an intention to commercialize the name and should proceed to apply for registration of the horse’s name as a trademark.
_______________________________________ Jack A. Wheat is group leader of the intellectual property and technology service group at Stites & Harbison in Louisville. _______________________________________
Photo by Z
THOROUGHBRED TIMES March 29, 2008
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