Monday, August 27, 2012

Wants Trademark Rights to Sports Star Nickname

Dear Rich: I read your entry about sports stars and nicknames where you say that the sports star or team has the rights to the nickname. Here are my questions: 
(1) What if the nickname has already been bought and sold nationally and the artwork associated with the nickname is copy-written as well as having the nickname trademarked? (Common Law TM'd/© for some time before it caught on - Registered TM in process) 
 (2) I realize that the player most likely owns their likeness, but wouldn't the person who created a potential $-maker of a nickname for them and got the ball rolling on that side of things, be entitled to something? Thanks for checking out our previous entry, which was unusually popular. For that reason, we're happy to run through your questions in the hopes that it will churn up our metrics. (BTW, there's a difference between a copyrighter and a copy-writer. Check with Don Draper for more details. Also, there are some among us who do not believe trademark (or copyright) should be used as a verb.)
Question 1: Sorry, but we don't know what you mean by "bought and sold nationally." If the artwork is protected by copyright , then the owner of copyright can stop others from using it. But that doesn't mean the owner can use the artwork as a trademark. Imagine that you created artwork for the new Starbucks logo. You owned the copyright and wanted to use that on a line of coffee mugs. Starbucks would have little trouble stopping you. As for common-law copyright, that's not relevant to your discussion for reasons we don't have time to explain. "Common-law trademarks" (that is, unregistered trademarks) are subject to most of the same rules as registered marks and a sports star or team could most likely stop competing uses.
Question 2: There's no question that fans of sports stars love those nicknames, but ultimately anyone who commercially promotes a sports star's nickname is trading off the sports star's success. The nickname-exploiters didn't "get the ball rolling," they hopped on the ball for a ride. (Would the nickname have any value if the star hadn't become famous?) Trademarks reward commerce, not creativity and on that basis, the sports star (or the team or league, as the case may be) will most likely prevail in disputes.

2 comments:

James Lipson said...

thanks

Dr. Beta said...

I just wanted to follow-up with you quickly.

First off, you did not respond to my original question, so I did not know this response post was here. So in other words, the whole point of your writing this was lost in the abyss.

Second. I am very glad that I did not read your post. It is very discouraging to day the least. I am in no way as shady as you seem to be thinking I am.

So, for those of you who would like more wholesome and positive advice; Here's how it's done folks:

1. Have the idea
2. Get the copyrights and trademarks (if it is good enough - run it by lots of people 1st - This takes months to do and costs a few hundred dollars, so make sure your sports star is gonna be around for awhile.)
3. Make the product (Never use TM'd logos on anything you make.)
4. Get a cease and desist from the star's agent.
5. With said cease and desist get sports star's agent's contact info.
6. Hire a trademark attorney, (if you haven't done that already) call the agent.
7. Cut a deal that makes everyone money. (Including the sports team & the league they represent.)

Be reasonable & don't be shady. This process takes a ton of patience and time. If you are serious, to move through all of these steps takes at least 2 years. Probably more. There is no silver bullet and this is not McDonalds. Be prepared to wait and doubt yourself at every turn. (And hear a lot of nay-saying along the way!)

Dream big & Good luck.