Tuesday, December 1, 2009

Exploiting a Sports Award Trademark

Dear Rich: I am the owner of a trademark of a once prestigious sports award. Can I have sports related products manufactured of the past recipients. Most have passed away and some are still living. I live in New York. Should I be concerned about "right to publicity"? Yes, you should be concerned about the right of publicity unless you have written permission or a license. (BTW, we think the "right to publicity" is for people like Kim Kardashian.) 
Owning an award doesn't grant an automatic license.  As for your trademark ownership, we would need more information before responding, but assuming it's a registered trademark like this one, it seems like your rights are limited to promoting the award, not the individuals who receive it. If that were not the case, then anyone could provide awards to sports stars and then make money off their names and personnas. Perhaps a listing of the names of all winners may be excused, or perhaps a t-shirt listing all of the winners in a category or for a time period would not violate a sports star's right of publicity but in general, we believe sports stars will object and will likely prevail in these types of claims. Keep in mind that one of the landmark cases establishing the right of publicity took place in New York and involved a baseball player.