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.