Dear Rich: Nolo’s Patent, Copyright & Trademark Blog

My nephew has come up with a new nickname for the NBA player Jonas Jerebko from Sweden ("The Swedish Eagle"). He and his buddy have come to games with a self designed t-shirt that sports an eagle-like bird with a ball in the talons and the jersey number of the player, player's name on the back like a jersey and the player's country flag, as well as cardboard wings and have generated a little publicity for themselves and their concept. Pictures of them have been on a couple of websites, a newspaper, jumbotron at the arena and television coverage of the game. Jerebko also has signed the cardboard wings with his name and an "aka The Swedish Eagle." They are in the process of obtaining a trademark so they can sell t-shirts or other marketing kitsch. No one has the title yet. Can they print the shirts before getting trademark for "The Swedish Eagle" concept? Do they need Jerebko's permission? NBA permission? Can they use the shirts without his name? Do my nephew and friend need a partnership or can they register under both names? The Dear Rich Staff isn't very good at forecasting the future, but one thing we can predict with some certainty is that as soon as the NBA is aware of your nephew's sale of merchandise with the player's name and number, they'll get their lawyers to fire off a letter demanding that he halt the activity. We could be wrong -- and they may prefer to wait and see if it goes away itself. But if we were in your nephew's position, we wouldn't file that trademark application. As nice as the imagery and nickname may be, people are buying the merchandise because of its association with the player -- the use of his name and number cinches the association. The NBA, along with the various teams, controls the rights to exploit the player for merchandising purposes. So, he's stepping on those rights and the NBA usually doesn't like it. 

Dear Rich: Recently several small shops here in New Orleans, Louisiana have received cease and desist letters from the NFL regarding either the Fleur de Lis symbol or the Who Dat slogan and the Saints. This has been put on merchandise for years by local merchants and never been challenged before. Because we win now all of a sudden people are breaking the law? Do you know anything about this? Is it copyright infringement or trademark issue and which is it the Gold and Black Fleur de Lis or the words Who Dat? Can you explain this to me? I think with all that this city has gone through the NFL should be ashamed. The Dear Rich Staff is not sure whether NFL Enterprises LLC can feel shame. They're a limited liability corporation, not a person. Oh. wait a second, the Supreme Court reported this week that corporations are people, so maybe we're wrong. 

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.) 

Dear Rich: I make and sell cornhole boards. Recently I was contacted by an organization that oversee's trademarks for the NFL, MLB and more and was told to no longer sell our boards with their logos on them because it was trademark infringement. We were using decals, not painting their name or logo on them. I thought if you purchased a licensed item, in this case a vinyl decal, it was legal to use it on a resale item. Does this fall under the first sale doctrine? We state we are not affliated with the NFL, MLB and such. What if the logo was custom made to look slightly different? If you buy authorized team decals and resell them, you're not going to run into a problem. That's permitted under the first sale doctrine (copyright) and shouldn't violate trademark rights. But if you buy team decals, put them on products  (like cornhole boards), and then sell those products, you will have a problem. 

Dear Rich: I have written a children's book that I want to publish. Central to the story is the main character's use of professional sports team names. Will it first be necessary for me to seek permission from the leagues (MLB, NBA, NFL, NHL)? The short and long answer is, 'No,' permission is not required for mentioning sports franchises in a work of fiction. Permission may be required if the name (or logo) of a sports franchise is used in the title or on the cover of the book. (The Dear Rich Staff is unsure of whether you'd prevail in a dispute over book illustrations that use team names and logo imagery so it's probably best to avoid that, as well.) As noted in previous posts, the two difficult-to-predict factors that matter are whether the league learns of your use and whether they consider it worth litigating over .

Dear Rich: My husband has made, but not sold, plaques for our nieces and nephews of their favorite sports team (i.e. Yankees, Giants, Red Sox) as gifts. He carves the logo into wood and then paints them. He has been told by our family and friends, he should make them and sell them at craft fairs. Is this legal? The short answer is that no, it's not legal. The MLB controls all rights to commercially exploit its team names and logos and will hassle those who infringe those rights ... even if it's someone selling MLB fabric tissue box covers on eBay. Of course, in order to get into trouble, somebody would have to find out about your husband's work and complain.  For one-of-a-kind (not mass-produced) work like this, we expect your husband's efforts will be below the MLB's radar (just stay off eBay). 

Dear Rich: I'm trying to get a trademark for a nickname. The nickname has been seen in newspaper articles and media referring to different individuals who accomplished similar feats throughout the years -- imagine it is a nickname like "Home Run King" (although this is not the nickname). I have done an unprofessional trademark search and it seems that nobody has claimed it as a trademark. My friend is the original record holder of the feats referred to by the nickname. Although others have been called by this nickname over the years, and they have come close, nobody has broken the records earned by my friend to achieve the nickname. Now my friend wants to start selling pictures and memorabilia and he wants the nickname to be only related to his name. (My friend has already got the domain name. What class should my friend file in when seeking a trademark. He may be selling lots of things with his autograph: sports equipment, clothing, and my friend also wants to protect his nickname for writing books and making movies. My friend can only afford to start with one class at the moment. Which one would give the most protection? By the way, is LegalZoom a decent company to use? The short answer to your first question is that you should pick the goods or services that you believe will be most lucrative (and for which you wish to preclude competitive use). It all comes down to how you are currently making money, and the ways in which you have a bona fide intent to make it in the future. For example, if your friend is currently entertaining at sports memorabilia shows then perhaps you should seek a registration for entertainment services. If you're selling a lot of t-shirts, then that's the way to go. As for books and movies, you cannot obtain a trademark for the single title of a work, so you would not be able to obtain a registration for those goods unless your friend is writing a series of books. 

Dear Rich: I developed a new sporting event and would like to find out how I can go about getting it patented or copyrighted? I have read about other types of inventions but not about the development of a new sport. The short answer to your question is that you may be able to patent your new sport but you will have a hard time claiming a copyright. Patents have been issued for new games, (ping-pong poker, anyone?) for variations on existing games (arena football anyone?), and even for competitive techniques within sports (ready to improve your putting?). (You can read more about these sorts of patents in this article.) Under a recent patent ruling a process or method (such as a sport with rules), may qualify for a patent if it affects some hardware -- that is, it is tied to a particular machine, object, or apparatus, or it transforms an object into a different state or thing. In short, as long as your 'invention' includes a physical element such as a football, hockey stick or some other object or hardware, you probably satisfy this requirement. As for copyright, you cannot copyright a system or method (although you can copyright expressions of that game -- for example, a Wii version of the sport, a book about it, or demonstration videos). Of course, the Dear Rich staff notes that your biggest challenge may not be getting the patent, it could be gathering the resources to stop others from playing it without paying you. 

Dear Rich: I have a question. I am starting a fan club for a local racer under his parents' request, and this kid is going to make it big. We have already been invited to NASCAR, but that will be at least 3 years away. His family and I want to protect any merchandise from being pirated and his name being used without his permission. We want exclusive rights to produce any merchandise with his name, car, logo, or anything associated with him. What do we do to make sure that he reaps all the profits and not someone just looking to strike it rich off of his fame? I'm so glad you asked. The short answer to your question is that there's no short answer. The local racer -- assuming he's over 18 -- controls all rights to his own publicity or merchandise under legal principles known as the "right of publicity." (If the racer is not over 18, the parents and the racer can sign over these rights, but the Dear Rich staff recommends a new agreement be made once the racer reaches the age of majority.)  So, it's up to him to decide who has the right to use his image and name, and it's up to him to pursue the bad people who use those rights without permission.

Once he enters the world of NASCAR, he will probably be required to assign (give up) most of those rights to NASCAR and his sponsor. NASCAR drivers make money in three ways: they get a percentage of prize money, a percentage of merchandise sales, and earn money from personal endorsements. It's all part of the modern racing world. (BTW, here's a blog where you can learn a lot of fascinating stuff about the business of NASCAR.)  There's an upside to these deals as well, since the team sponsor or NASCAR will be out there purusing the bad guys (which can be very expensive and time-consuming). Also, keep in mind that should this racer become a superstar, he will be able to set the terms of the deals and choose his sponsors.

Got a question for Dear Rich? Send it to dearrichquestion@gmail dot com, and make sure it has the header: "Question."

Dear Rich: I have a question. Is it true that our church can't show sporting events like football games on our big screen TV? I'm so glad you asked. Rather than give you a lot of legal backstory about non-musical works and copyright legislation (you can read about that stuff in this Slate article), the bottom line is that you'll likely run afoul of the law if your church uses a TV screen larger than 55 inches. If you do "Drive 55" you'll need a public performance license. Of course, if your flock doesn't mind mixing with infidels, you can move services down the street to a tavern with the appropriate licenses. Or you could just wear your fan gear to church and schedule services an hour later. I wish I had time to go into the relationship between contact sports and salvation -- remember the first time an NFL player kneeled in prayer in the end zone? -- but let's save that discussion for our Sunday blog. P.S. Click here for information on how to measure your TV screen size.

Dear Rich: I have a question. How do I get a patent on a golf club? I'm so glad you asked, because coincidentally I was just reading about a design patent for a one-fingered golf glove. As you may know, there are two types of patents associated with golf products: design patents which give the inventor rights over design; and utility patents which gives the inventor rights over the functioning invention. You can learn how to get both by reviewing the patent information at Nolo. Or if you're just interested in golf patents, check out Dave Dawsey's Golf Patents website. Dave (the "Golf Lawyer with a Grip on the Industry") tees off daily with fresh IP golf news.

And, if you've already decided to go ahead with applying for a patent for your club, you might find Nolo's Patent Pending Now! software useful for filing that all-important provisional patent application, or PPA.