With today’s news that NCAA student athletes are permitted to profit off of their Name, Image and Likeness (“NIL”), we have entered into a brave new world for collegiate athletes. Many athletes who will look to capitalize on these new rights are young, and perhaps inexperienced in business, but very aware of their unique position to create, develop and monetize their own personal brand through a variety of social media and Internet platforms they are already intimately familiar with. With this personal brand comes the necessity of protection, or else, the risk of loss of value.
Athletes that are developing and using their own personal brand should take care to seek protection for that brand through registration with the United States Patent and Trademark Office (USPTO). Seeking and obtaining a trademark registration for the athlete’s personal brand will only help to further strengthen his or her brand, creating greater value as a brand partner for any prospective sponsorship opportunity (or for their own goods, if they intend to sell merchandise). Seeking a USPTO trademark registration is the absolute best way to obtain the necessary protection. Athletes can seek to protect their names, including popular nicknames, any slogans or taglines that they use, and their image or likeness (including logos).
Some great examples of the foregoing, from professional athletes, include:
- “Danny Dimes” – Daniel Jones (QB, New York Giants)
- TB12 – Tom Brady (QB, Tampa Bay Buccaneers)
- RG – Rashan Gary (LB, Green Bay Packers)
- “Greek Freak” – Giannis Antetokoumpo (Milwaukee Bucks)
- “The Process” – Joel Embiid (Philadelphia 76ers)
The trademark application process is not straightforward and a failure to navigate it successfully (and efficiently) can be catastrophic. Athletes should hire an experienced trademark attorney to assist them in clearing their proposed NIL trademarks and prosecuting those marks through to registration with the USPTO (and, potentially, internationally).
If you are a collegiate athlete looking to capitalize on and monetize your newly allowed NIL rights, contact Burger Legal today. We are committed to building and protecting your brand with you.
Intellectual Property•
on February 22nd, 2021•
In my last post, I wrote about common law trademark rights and the limitations on such rights. If you are using your mark in commerce as a source identifier for goods or services, you do have trademark rights in the mark, but those rights are limited. How can you expand those rights nationally? Easy! Register your mark with the United States Patent and Trademark Office. Registration has a number of benefits:
- A registered mark is given national protection. Your mark has “constructive” nation-wide use as of your application date, even if you are not selling goods or services nation-wide.
- The USPTO will not register marks (after yours, assuming it is the first to be registered) that are confusingly similar to yours in the same/similar category of goods/services- in effect, the USPTO continuously offers some protection to you for your mark, on your behalf.
- A registered mark allows the owner to place the ® symbol next to the mark wherever used, giving any potential infringers notice that the mark is registered with the USPTO.
- Allows you to sue an infringer in federal court and to obtain money damages (i.e, not just the ability to stop the infringement from happening), including the infringer’s profits, damages, costs, and, depending on the circumstances, treble damages (3x multiplier of damages) and attorney’s fees.
- Federal trademark law is generally fairly well decided, whereas common law trademark rights are based in state law and therefore involve less predictable outcomes in litigation.
- A mark registered with the USPTO can serve as the basis for a foreign trademark application.
- If your mark is registered, you can also register it with the U.S. Customs and Border Protection to stop importers from importing goods with a potentially infringing mark.
These are just a few of the biggest benefits of federal trademark registration. In any event, it is a good idea to perform a clearance search and register your trademark as soon as possible if registration is feasible. The cost to do so vastly outweighs the potential costs down the road if you elect not to.
A number of clients ask about whether they have to register their trademark with the United States Patent and Trademark Office in order for their mark to have rights and be protected. Well the answer, in short, is no, you do not have to register your mark for protection, but it is a good idea.
You obtain common law trademark rights in your trademark as soon as you begin using your mark in association with selling your goods or services in commerce. So, if you label your keg, menu, tap handle, etc. with your brewery name (and actually sell your beer under these methods with the name), bada bing bada boom, you have common law trademark rights in your mark! That is great… but what do these common law rights protect, exactly? More specifically, how are these rights limited?
The biggest limitation to common law trademark rights is geographic. If you have an unregistered mark, your rights are confined to the geographic area where actual use of the mark has been established (so, where you sell your beer). This means that if you only sell your beer in North and South Carolina, and have not registered your mark with the USPTO, someone else could start selling beer in Oregon under the same name in good faith (meaning, they honestly did not know about your brewery- a much more common theme these days as the number of small craft breweries rises by the day across the country). Even though they started using the name after you, their common law trademark rights in their geographic area (where they are selling, not just where they are located) will supersede your rights in that area.
The potential for this geographic limitation to harm your potential expansion plans is apparent. If the same or similarly named brewery (it does not have to be a verbatim identically named brewery- just “confusingly similar”) decides to start shipping and selling their beer nationally (outside of North and South Carolina, where you can stop them from doing so), they can stop you from expanding outside of your geographic area. At this point, you are stuck. Your business cannot grow in a physical, geographic sense outside of North Carolina.
On top of the above, registering a mark with the USPTO is considered “constructive national use” of a mark, meaning that if the other brewery in Oregon files for their mark’s registration before you, they may obtain national rights to their mark that are stronger than your rights. They won’t be able to stop you from using your mark in North and South Carolina where you were already selling it before them, but they can stop you from expanding and from registering your mark.
At this point, the situation is rife with the potential for expensive litigation (fact finding for extent of actual use and argument over use can be extremely complicated and expensive). How could this be avoided? By simply undertaking the expense of a trademark clearance search early on in the use of your mark and registering your mark with the USPTO (thereby obtaining national rights, along with some additional rights).
I’ll summarize some of the additional rights federal USPTO registration can grant to a mark owner in my next blog post.
So you’ve decided on your brewery’s name, logo, and the names and logos for some of your beers, completed all of the research and completed the trademark registration process. Congratulations! You may be feeling a (false) sense of security right now, since clearly if your mark is registered with the US Patent and Trademark Office, you must be good to go until it’s time to renew the registration, right? Do not fall into this trap.
One of the most important policies your brewery (and any business holding trademark rights) must have is that of regularly monitoring for and documenting of unauthorized use of your trademarks and, once unauthorized use is detected, taking the steps to enforce and protect your trademark rights.
To monitor for use of your trademark (or confusingly similar trademarks), it is simply a matter of regularly searching the USPTO database, the USPTO Official Gazette and, generally, the world wide web (i.e., “Google it”). Craft brewers should also consider searching beer review apps and websites such as Untappd, Beer Advocate, and Beer Buddy, which may make it easier to locate potentially conflicting marks within the brewing arena. If you happen to find a use of your mark, or a confusingly similar mark, you should then document as much as you can about the unauthorized use. When it began (as best you can tell), location, the name of the person or company that is making the unauthorized use, date of discovery, the type of goods or products it’s being used in conjunction with, etc. Many companies can hire either an attorney or a number of other paid service providers to handle all of the above.
If you happen across an unauthorized use of your trademark (or, again, something confusingly similar), it’s time to take action. This can range from a simple educational letter to full blown litigation. Normally, it’s best to start somewhat light handed, with an educational letter, and ramp up toward litigation if the desired result does not occur. An educational letter simply notifies the infringer of their actions, and educates them about trademark law, complete with a congenial request that they cease the infringement. If this method does not achieve the desired result, a “cease and desist” letter is usually the next step, demanding the infringer stop all manners of infringement and threatening a lawsuit if they do not. The final (and, generally, most expensive) method of enforcement is full blown litigation, suing the infringer in court. There are some other similar avenues (such as administrative actions with the USPTO to oppose another trademark’s application if it’s confusingly similar to your own) to consider as well.
Failure to adequately monitor for infringement and enforce your trademark rights may result in a loss of trademark protection for your own trademark. Make sure to have an effective policy in place and to adhere to that policy strictly.
Trademarks are one of the single most important legal issues your brewery might ever deal with. Ideally, you should register for a trademark for your brewery’s name, logo, each individually named beer you create, and each beer’s unique logo. But before you go forward with registering any of these, you should have an attorney conduct a full search for any prior existing names or logos that might be similar or identical to your proposed mark. There are a number of different places to look and an experienced trademark attorney will be able to find anything similar (regardless of whether the prior existing mark is registered with the USPTO).
The craft beer industry is growing, countrywide and especially in North Carolina, so new beer names and logos are being created every day. Therefore, your new imperial stout’s might require a little extra creativity. Additionally, although beer, wine and spirits (liquor) are three separate classes of marks with the USPTO, the USPTO considers these “related products” and so a wine or liquor with a substantially similar name to your proposed beer name may be found to cause confusion (and therefore, be the basis for a lawsuit).
If you plan to create a new beer soon, and already have the name for your new beer, make sure to have a trademark search done immediately. If the name is available, the law allows you the register for the mark without even having used the mark in commerce (stating that you have an intent to use the mark). With the expanding craft beer industry, expedience in researching, and subsequently registering your trademark will serve two major purposes: (1) researching ahead of time will help you to avoid being sued for infringing on a similar trademark (i.e., will save you a lot of time, suffering, and most importantly, money) and (2) registering ahead of time will ensure adequate protection of your beer name and logo from trademark infringement by another craft brewer (ensuring you the ability to be compensated if someone else steals your mark).
A number of “inventions” are protected by patents, filed with the United States Patent and Trademark Office. Could you obtain a patent for your fantastic milk stout craft beer recipe? You could certainly be issued a trademark for the label placed on your beer bottle. But would you want to patent the recipe for your various types of craft beer (assuming you could)? The answer is probably not. If you were able to get a patent, that patent becomes instantly available to the public– anyone can see the entire recipe, for free (and you will have a heck of a time trying to protect the patent)! So, then, how can you protect your secret recipe for your most popular brew?
The best way to protect your brewery’s secret is by having a policy in place, which all of your employees are aware of, and through contractual agreements with your employees. But, what is a trade secret? A trade secret is any confidential business information which provides a business a competitive edge. You should start planning to protect your beer recipes and other secret beer making processes (if any are special and unique) as soon as you start the business. Create policy manuals for making sure there are no “leaks” to outside parties and so all of your employees know exactly how to handle your company’s trade secrets. Have confidentiality and non-disclosure agreements, including non-competition provisions prepared for all employees to sign. The key is to show that you tried to protect your trade secrets, in the event you ever have to litigate to protect your trade secret, and there are a number of different ways in which you can try to protect your trade secrets.
Whether you’re just starting your brewery, or have been open for some time, it is important to insure your trade secrets are adequately protected. Coca-Cola has protected its recipe for its signature soda using these methods for decades! Confidentiality and non-compete agreements have specific requirements and must be drafted carefully. Consult your attorney to have an adequate agreement prepared to protect your brewery’s secret beer recipes!
Your business just started to take off and you are ready to start making decisions for a financially successful long-term brand. These decisions might encompass a variety of marketing strategies: logos, advertisements, and taglines (slogans). It may be possible to trademark the graphics and slogans you choose to use to market your business and doing so, once the graphics or slogans are first used in commerce (i.e., you actually use the content to be trademarked in your sales), it is smart to go ahead and file an application for the trademark(s). Doing so will protect you and your business from potential infringement by other individuals or businesses and maintain your business reputation from attack.
However, many entrepreneurs and small businesses do not think to engage an attorney to perform a trademark search prior to making any branding decisions. Any attorney should perform a trademark search for existing registered marks before filing an application for a new trademark. Doing so will make certain that money is not spent attempting to register a conflicting mark and help to insulate the client from potential trademark infringement claims. Similarly, branding decisions are not cheap. Production of graphics, logos, advertisements and slogans is a costly endeavor for any small business. Furthermore, if the graphic, logo, advertisement or slogan commissioned is similar enough to an already existing trademark to cause confusion, the small business might be liable for trademark infringement.
Make sure to engage an attorney to perform a trademark search and assessment before making any branding decisions and moving forward with any advertising campaigns you or your business may be contemplating. Doing so may save you and your business a substantial amount of money (and headache) in the long run.
So you’ve had an idea for a unique and innovative iPhone/Android App. Before you starting writing code or creating graphics, logos, and the App’s name, make sure to take the time to understand how to protect your idea and its implementation from being stolen or used by someone else for commercial gain.
Here are some things to consider before you starting creating your App and selling it on the App Store or other Internet merchant:
Before Creating Your App
If you hire any developers to write code or create graphics, the very first thing you should do when hiring a developer is making certain they sign a non-disclosure agreement. This agreement will provide you with an avenue to seek compensation from the developer if they use or sell the created work or idea. Also, of some import, make sure that the developer signs an agreement which states that you, not the developer, are the owner of any created work and associated intellectual property, not merely a licensee.
Copyright
A number of pieces of your App, and its general business nature, may be possible to copyright. Generally speaking, any original work of authorship fixed in a tangible medium of expression automatically has copyright protection. This includes graphics, video, and text. To hold the copyright does not require registration of the copyright. However, registration of the copyright, before infringement by another party occurs, will allow you the opportunity to seek attorney’s fees and punitive damages from the infringer, and will give you a presumption of a valid copyright.
Trademarks
The name, logo, look and feel of your App and App-related business can be trademarked, protecting it from infringement by other businesses or individuals looking to capitalize on your business’ identity. This will enable you to seek damages (and injunction, forcing the person to stop using their similar logo/look/feel/name) from the infringing party. Make sure the name and logos you select for your App are not confusingly similar to another App already in the marketplace.
Patents
You can also apply for a patent for your App. This will effectively give you a monopoly over the business area in which your App operates, for a set number of years, and allow you to file suit against infringers. The problem is that patents are very expensive and difficult to obtain. Also, if you use any open source code in the creation of the code for your App, it may help to decrease the cost of development of your App, but may also eliminate your ability to obtain a patent and any sale of your App may violate the open source license you agreed to when you used the open source code.
Trade Secrets
Trade secrets are a separate method to protect your intellectual property rights, based solely in contracts law. If your App source code can be sufficiently protected, such that it cannot be reverse engineered or otherwise discovered, you may be able to protect it through contract law. Any employee, developer, third party, or merchant would be required to have a license in order to do anything with the source code, which would include non-disclosure language. This type of protection requires a company-wide policy and strategy and strict adherence to the policy so that public disclosure of the trade secret is not made.
If you take the time to think through the above ideas and work with your attorney to plan an appropriate strategy, your App roll-out will go smoothly and all of your intellectual property will be well-taken care of.
In 1991, Desmond Howard backed up to his own 7 yard line, caught a punt, split two defenders and raced 93 yards down the sideline past Ohio State’s defenders into the end zone, effectively putting the game out of reach. Then, he struck one of the most famous poses in all of college football: the Heisman (which foreshadowed his receipt of the trophy mere weeks later). In this iconic moment, could Howard have known that Brian Maske, a freelance photographer for the Muskegon Chronicle, would snap a picture of Howard in the Heisman pose? Furthermore, could Howard have known he could never use the photo for his own purposes without Maske’s permission?
Two decades later, Howard is facing a lawsuit for copyright infringement by Maske due to Howard’s use of the photo on his own website, www.desmondhoward.com. He certainly could not have foreseen this at the time the picture was snapped. What amounts to a money-grab attempt by Maske (let’s be honest, would he really be suing Howard for using the picture if it weren’t for Howard’s many lucrative years in the NFL or public status on ESPN’s College GameDay?) acts as an small scale depiction of the exploitation of student athletes everywhere by the NCAA, EA Sports, and colleges and universities across the country.
From a legal standpoint, the O’Bannon vs. NCAA case is almost the more simple of the two. The NCAA licensed student-athlete likenesses to EA Sports to use in video games, which EA Sports and the NCAA both have significantly profited from. The student-athletes receive no payment (other than typical athletic scholarships and associated room/board compensation). The simple two part question in the NCAA case is: (a) did the student-athletes consent to the use of their likeness for commercial purposes?; and (b) is the “compensation” paid to student-athletes for their likenesses “fair” relative to the vast amounts made by EA Sports and the NCAA from the video games? The first question is based in law; the second, based in public policy. The more complex issue with the NCAA case appears in the event that the courts rule in favor of O’Bannon and the other plaintiffs. The order allowing players to make money will violate a number of NCAA rules (which will need to be changed), and will pose greater issues when it comes to how much to pay each player (given that only football and basketball tend to be money makers at universities, and even then only fifteen to twenty large universities even make an overall profit through their athletic teams).
The more interesting question (at least, to me) is in the Howard vs. Maske case. Clearly, Howard has a right to his likeness (or publicity). When Maske captured and produced the photo, he did so for journalistic non-commercial purposes (which is covered under the First Amendment to the US Constitution). Such a use of another person’s likeness is considered an “exception” or “defense” to a right of publicity claim. Maske also holds a valid copyright to the photograph. Assuming Howard did not give some passive consent to Maske (by virtue of the fact that Howard was voluntarily playing in a football game where he had to have known his picture would be taken), which property right is controlling? This is a much more interesting question, from a legal standpoint.
The right of publicity (or the right to one’s likeness) is a state law-based property right of a person to control the commercial use of his or her identity. The right is recognized in nearly every state, either in statutory or common law form. Copyright law is a federal law that protects “original works of authorship fixed in any tangible medium of expression.” (17 USCS Sec. 102(a)). The two intersect when the copyrighted work depicts another person’s personal attributes.
In Howard’s case, the copyright holder, Maske, is suing Howard for copyright infringement. Howard is claiming that he can’t possibly be committing copyright infringement when the copyrighted work in question is an image of his likeness and involves his right of publicity. If Maske were exploiting the photo for commercial purposes (other than by suing Howard for Howard’s use of the photo), Howard would have a claim for misappropriation of his right of publicity. Typically, in case law to date on the subject, the plaintiff is the person depicted, and the defendant the person holding a copyright to the photo (or the person licensed by such person to use the photo). Normally, “commercial purposes” would go beyond merely selling or licensing the photo (which would be a valid use). Exploiting a copyrighted photo for commercial purposes really means, according to the courts, using the photo for endorsements or advertisements; in effect, making it appear as though the person pictured in the photo is endorsing a particular product.
In sum, Maske’s copyright claim against Howard (for using the photograph without permission or a license on Howard’s website, which is a use in commerce of the copyright, will likely succeed. Maske has a right to sell and license the photograph which he has a copyright for. Howard’s right of publicity does not hold over Maske’s copyright (except and until Maske uses the copyright to endorse or promote another product). Howard likely won’t like this conclusion, especially since he is the subject of the photo, but it is the likely outcome according to the law.
