ESPN just published an interesting article that surveys a range of athletes seeking trademark registrations on catch phrases or other aspects of identity. It’s a valuable brand-building step and it has it’s place as a compliment to the Right of Publicity. What the article does not touch on, the elephant in the room, is the question of actual use. Sure, Robert Griffin can apply for “unbelievably believable” but show me the use in commerce. Some athletes obviously will satisfy the use component, but my guess is that the majority of these applications will fall into abandonment, or even fail to to reach registration.
John Devenanzio, known as “Johnny Bananas” from MTV’s Real World Key West and other MTV reality shows, has filed a lawsuit in response to the Johnny Bananas character in HBO’s Entourage. The lawsuit was filed in New York and names HBO, Time Warner, and the creator of Entourage as Defendants. In addition to monetary damages, the lawsuit seeks to stop distribution of Entourage episodes which include the Johnny Bananas character played by Kevin Dillon.
Devenanzio’s lawyer also represented Lindsay Lohan in Lohan’s lawsuit against E-Trade for its depiction of the milk-aholic baby referred to simply as “Lindsay.” That claim has reportedly settled. Here’s a link to my entry on that claim: http://rightofpublicity.com/lindsay-lohan-and-the-etrade-milkaholic-baby
The Hollywood Reporter write up on Devenanzio’s claim is well-written and thorough, though it does seem to reveal a certain disdain for Devenanzio’s claim. The claim is characterized as “remarkably vague,” and states that “it appears Devenanzio is not asserting any allegation of trademark infringement” but instead is claiming violation of “his publicity and privacy rights.” I’m not sure why that in itself is inherently vague.
I haven’t reviewed Devenanzio’s filings, or those of the Lindsay Lohan claim against E-Trade; however, alleging a trademark violation, or having Federally registered trademarks protecting a person’s namesake or some distinctive aspect of his or her identity, is not a prerequisite to filing a lawsuit when the claimant’s Right of Publicity has been commercially utilized. This point is a hallmark of Right of Publicity analysis. The Right of Publicity may share certain characteristics with trademark law, but they are not interchangeable. Each protects different interests, have their own elements and standards, and have distinct policy rationales.
The write up further states that success in the lawsuit “may depend on whether he can find anything in discovery that shows [Defendants] had Devenanzio in mind when they created the Johnny Bananas character.” This is not the standard Devenansio has to meet, though. For one thing, it may be impossible to find a “smoking gun” that demonstrates a clear link, or an intentional act, of naming the Entourage character after Devenanzio. If such evidence can be found, so much the better for Devenanzio’s claim and prospects for punitive damages.
But a successful Right of Publicity does not require proof of intent to infringe. What matters most is whether the claimant is identifiable from the portrayal. Identifiability will be measured by viewers of the show and their determination or impressions, not those of the show’s creators or producers.
It seems to me that Johnny Bananas is a fairly distinctive nickname. One does not have to be identifiable on the level of a Michael Jordan, or George Clooney, or President Obama, either. Instead, a viewer, or a potential jury as it were, can be presented information, context and imagery of Devenanzio’s Johnny Bananas and that of the Johnny Bananas in Entourage. This may take the form of “aided identification” (as opposed to “unaided identification”), but this does not invalidate a potential Right of Publicity claim. There might just be something to Devenanzio’s claim.
Here is a link to the Hollywood Reporter article: http://www.hollywoodreporter.com/thr-esq/mtv-star-sues-hbo-johnny-244446
Disney seeks to trademark SEAL Team 6, the elite special forces unit that tracked down Osama bin Laden
Just two days after President Obama announced that Osama bin Laden had been tracked down and killed in Pakistan, Disney applied for the trademark “SEAL Team 6” with the United States Trademark Office. See http://tess2.uspto.gov/bin/showfield?f=doc&state=4001:frbhm5.2.3 Disney isn’t the only one with a pending trademark on SEAL Team 6 though. See http://tess2.uspto.gov/bin/showfield?f=doc&state=4001:frbhm5.2.1 and http://tess2.uspto.gov/bin/showfield?f=doc&state=4001:frbhm5.2.2 which also are trademark applications by third parties for SEAL Team 6.
Disney is reportedly developing a production based on the story of the elite special forces team that tracked down and killed Osama bin Laden, so no doubt this was their objective in seeking to trademark this name. The article at the following link makes a good point that GI Joe was once a military reference before it became trademarked and turned into a TV and toy brand: http://eonline.mobi/answer_bitch_detail.ftl?id=b242656&last_page=4&paginate=0. Another article, from the Christian Science Monitor, reports that a behind-the-scenes resolution between Disney and the Navy may be a likely outcome of this trademark application. See http://www.csmonitor.com/Business/2011/0519/Who-owns-SEAL-Team-6
All of this raises an intriguing question: are there any right of publicity interests in the individual members of that SEAL Team 6? Interesting in part because those persons will likely remain unidentified for a host of reasons. What about the notion that certain aspects of the military are either the exclusive jurisdiction of the Federal government (like the Presidential seal), or essentially public domain (like the State of the Union address or judicial opinions)?
It will be interesting to see how the Examining Attorney assigned to Disney’s application handles this file.