Uses of Athletes' Persona and Related Indicia Raise Many Intellectual-Property Issues

The court explained: 'Plaintiffs have produced evidence that the Web site first began describing itself as the 'official' or 'licensed' Mickey Mantle Web site at some point after March 7, 2001. ' Second, Defendants offered no evidence establishing when they created [a] Yahoo Store or when they began selling products on the Web site that were produced by other manufacturers. ' Third, Defendants offered no evidence regarding when they stopped referencing the Picture on every page of the Web site. Finally, Defendants' evidence that they began offering links to other Web sites in 1997 is insufficient for the Court to grant summary judgment on this claim.' The Estate of Mantle v. Rothgeb, 04 CV 4310(KMW)(HBP).

The defendants raised a laches defense arguing that some of the trademark-related claims were barred by the estate's unreasonable delay in pursuing them. The district court ruled that laches barred the trademark-related claims over the book, noting: 'It is undisputed that Plaintiff knew the contents of the Book more than six years before Plaintiff filed suit on June 8, 2004.' But the court allowed the estate's trademark-related claims over the Web sites to proceed. 'Defendants have established that Plaintiff was aware of the existence of the Web site no later than Feb. 7, 1998,' the court acknowledged. 'However, the Court agrees with [a federal magistrate's] Report's analysis and conclusion that 'it is not clear that the Web site included any of the allegedly infringing or diluting content [on Feb. 7, 1998] or that plaintiff's representatives viewed any of the allegedly infringing or diluting content when they visited the Web site.' ' Because there is a dispute of fact regarding the length of Plaintiff's delay in asserting its rights, the Court cannot hold as a matter of law that the doctrine of laches applies to Plaintiff's remaining trademark-related claims.'

The Agassi Case

In an unlicensed-use case, the U.S. District Court for the District of Nevada granted a preliminary injunction to bar the Target chain from the in-store and online sale of footwear bearing the name of tennis star Andre Aggasi without his permission. Agassi Enterprises Inc. (AEI) v. Target Corp., 2:07-cv-01252-RLH-GWF. The district court noted: 'Irreparable injury is presumed in intellectual property cases when the intellectual property owner establishes a likelihood of success on the merits. In trademark infringement actions [AEI had common-law trademarks in the 'Agassi' name], 'once the plaintiff establishes a likelihood of confusion, it is ordinarily presumed that the plaintiff will suffer irreparable harm.' ' The same principle [of irreparable harm] applies in rights of publicity and false endorsement cases.'

Nevada's right-of-publicity statute, N.R.S. Sec. 597.790.1, provides protection for 'the name, voice, signature, photograph or likeness of every person.' The district court found: 'Target violated AEI's right of publicity by making commercial use of the AGASSI name without obtaining the written consent of AEI.' On AEI's false-endorsement claim under the federal Lanham Act, the court emphasized: 'The level of recognition of the AGASSI name is high; Agassi's fame has some relationship to footwear; Target used a name identical to AGASSI in connection with the sale of the footwear at issue; the marketing channels of Agassi-endorsed products and Target products overlap; purchaser care is likely to be low given the low price of the product at issue; and Target could have selected from thousands of other names for the product.' The court also found that a likelihood of confusion justified injunctive relief on AEI's trademark-infringement claim.

The district court further noted that the balance of hardships favored issuing an injunction because '[a]lthough AEI can recover its actual damages and Target's profits generated from the sale of the AGASSI footwear, AEI has no monetary remedy for the damage to Andre Agassi's goodwill and reputation caused by Target's unauthorized use of the AGASSI name and mark.'

The 'Cool Papa' Bell Case

A suit that reached the summary-judgment stage yielded different results over unauthorized use of an athlete's indicia. Connie Brooks, the daughter of National Baseball Hall of Famer James 'Cool Papa' Bell ' a player, manager and coach in the 'Negro Leagues' from 1922 to 1950 ' alleged unauthorized use of her father's 'name, likeness, signature, intellectual property rights, and publicity rights' on collecting cards. The U.S. District Court for the Southern District of New York found that Brook's common-law right-of-publicity claim arose under Missouri law, where Bell resided when he died, but that the claim was barred by New York's one-year statute of limitations for right-of-publicity claims. Brooks v. The Topps Co. Inc., 06 CIV. 2359(DLC).

'The first publication of the most recent baseball card at issue in this case occurred on November 1, 2004. Brooks filed her lawsuit more than one year later, on March 27, 2006,' the district court explained. 'Brooks argues that the single publication rule should not apply in this case, because baseball cards that are distributed in sealed packages that do not identify the particular cards they contain are not 'true publications.' ' [But] Brooks does not contend that New York courts have ever found that a right of publicity claim accrues upon discovery.'

The district court also ruled against Brooks on her Lanham Act claims alleging false endorsement and false advertising. The court noted in part that based on the modest evidence Brooks presented, 'no reasonable juror could find that 'the public is moved in any degree to buy an article' displaying Bell's name or image based on the belief that it implies endorsement by his estate, Brooks, or by any unknown source.'

Conclusion

In both the Mantle and Brooks cases, the plaintiffs were hurt by the lapse of time before their claims were filed and by a lack of sufficient evidence. Andre Agassi's current fame seemed to have made it easier for him than for Papa Cool Bell's estate to establish false endorsement. And Agassi's company, AEI, faced no discovery-accrual issue. Target's pervasive retail presence made it likely that AEI would timely learn of the unauthorized use of the Agassi name. AEI sent a cease-and-desist letter to Target soon after becoming aware of the unauthorized footwear sales.

The value of athletes' personas and related indicia is a bedrock component of the sports industries. Merchandising and endorsement deals date back decades. But this tradition hasn't meant a smooth ride today. Disputes over athlete indicia are as common as those for entertainers. An examination of several court rulings from the past few weeks demonstrates common claims and defenses over licensed and unlicensed uses.

Baseball legend Mickey Mantle entered into an agreement in 1988, amended in 1989, for the use of his name, likeness, voice and biographical information in a Mantle documentary film and on related merchandise. Mantle died in 1995. In June 2004, his estate filed breach-of-contract and trademark-related claims against the licensee. The estate sued over the alleged failure to pay royalties, over creation of Mantle Web sites and over publication of the book 'Mickey Mantle: The American Dream Comes to Life.'

The U.S. District Court for the Southern District of New York found, among other things, that the estate failed to produce any evidence on its contract claims over royalties and over the book. But the district court decided that the amended agreement was ambiguous as to whether Web sites were authorized. The defendants argued the Web site contract claim nevertheless was time-barred. The court decided it wasn't, whether under New York's six-year statute of limitations or Texas' four-year limitations period for contract claims. (The amended agreement contained a Texas choice-of-law provision.)

The court explained: 'Plaintiffs have produced evidence that the Web site first began describing itself as the 'official' or 'licensed' Mickey Mantle Web site at some point after March 7, 2001. ' Second, Defendants offered no evidence establishing when they created [a] Yahoo Store or when they began selling products on the Web site that were produced by other manufacturers. ' Third, Defendants offered no evidence regarding when they stopped referencing the Picture on every page of the Web site. Finally, Defendants' evidence that they began offering links to other Web sites in 1997 is insufficient for the Court to grant summary judgment on this claim.' The Estate of Mantle v. Rothgeb, 04 CV 4310(KMW)(HBP).

The defendants raised a laches defense arguing that some of the trademark-related claims were barred by the estate's unreasonable delay in pursuing them. The district court ruled that laches barred the trademark-related claims over the book, noting: 'It is undisputed that Plaintiff knew the contents of the Book more than six years before Plaintiff filed suit on June 8, 2004.' But the court allowed the estate's trademark-related claims over the Web sites to proceed. 'Defendants have established that Plaintiff was aware of the existence of the Web site no later than Feb. 7, 1998,' the court acknowledged. 'However, the Court agrees with [a federal magistrate's] Report's analysis and conclusion that 'it is not clear that the Web site included any of the allegedly infringing or diluting content [on Feb. 7, 1998] or that plaintiff's representatives viewed any of the allegedly infringing or diluting content when they visited the Web site.' ' Because there is a dispute of fact regarding the length of Plaintiff's delay in asserting its rights, the Court cannot hold as a matter of law that the doctrine of laches applies to Plaintiff's remaining trademark-related claims.'

The Agassi Case

In an unlicensed-use case, the U.S. District Court for the District of Nevada granted a preliminary injunction to bar the Target chain from the in-store and online sale of footwear bearing the name of tennis star Andre Aggasi without his permission. Agassi Enterprises Inc. (AEI) v. Target Corp., 2:07-cv-01252-RLH-GWF. The district court noted: 'Irreparable injury is presumed in intellectual property cases when the intellectual property owner establishes a likelihood of success on the merits. In trademark infringement actions [AEI had common-law trademarks in the 'Agassi' name], 'once the plaintiff establishes a likelihood of confusion, it is ordinarily presumed that the plaintiff will suffer irreparable harm.' ' The same principle [of irreparable harm] applies in rights of publicity and false endorsement cases.'

Nevada's right-of-publicity statute, N.R.S. Sec. 597.790.1, provides protection for 'the name, voice, signature, photograph or likeness of every person.' The district court found: 'Target violated AEI's right of publicity by making commercial use of the AGASSI name without obtaining the written consent of AEI.' On AEI's false-endorsement claim under the federal Lanham Act, the court emphasized: 'The level of recognition of the AGASSI name is high; Agassi's fame has some relationship to footwear; Target used a name identical to AGASSI in connection with the sale of the footwear at issue; the marketing channels of Agassi-endorsed products and Target products overlap; purchaser care is likely to be low given the low price of the product at issue; and Target could have selected from thousands of other names for the product.' The court also found that a likelihood of confusion justified injunctive relief on AEI's trademark-infringement claim.

The district court further noted that the balance of hardships favored issuing an injunction because '[a]lthough AEI can recover its actual damages and Target's profits generated from the sale of the AGASSI footwear, AEI has no monetary remedy for the damage to Andre Agassi's goodwill and reputation caused by Target's unauthorized use of the AGASSI name and mark.'

The 'Cool Papa' Bell Case

A suit that reached the summary-judgment stage yielded different results over unauthorized use of an athlete's indicia. Connie Brooks, the daughter of National Baseball Hall of Famer James 'Cool Papa' Bell ' a player, manager and coach in the 'Negro Leagues' from 1922 to 1950 ' alleged unauthorized use of her father's 'name, likeness, signature, intellectual property rights, and publicity rights' on collecting cards. The U.S. District Court for the Southern District of New York found that Brook's common-law right-of-publicity claim arose under Missouri law, where Bell resided when he died, but that the claim was barred by New York's one-year statute of limitations for right-of-publicity claims. Brooks v. The Topps Co. Inc., 06 CIV. 2359(DLC).

'The first publication of the most recent baseball card at issue in this case occurred on November 1, 2004. Brooks filed her lawsuit more than one year later, on March 27, 2006,' the district court explained. 'Brooks argues that the single publication rule should not apply in this case, because baseball cards that are distributed in sealed packages that do not identify the particular cards they contain are not 'true publications.' ' [But] Brooks does not contend that New York courts have ever found that a right of publicity claim accrues upon discovery.'

The district court also ruled against Brooks on her Lanham Act claims alleging false endorsement and false advertising. The court noted in part that based on the modest evidence Brooks presented, 'no reasonable juror could find that 'the public is moved in any degree to buy an article' displaying Bell's name or image based on the belief that it implies endorsement by his estate, Brooks, or by any unknown source.'

Conclusion

In both the Mantle and Brooks cases, the plaintiffs were hurt by the lapse of time before their claims were filed and by a lack of sufficient evidence. Andre Agassi's current fame seemed to have made it easier for him than for Papa Cool Bell's estate to establish false endorsement. And Agassi's company, AEI, faced no discovery-accrual issue. Target's pervasive retail presence made it likely that AEI would timely learn of the unauthorized use of the Agassi name. AEI sent a cease-and-desist letter to Target soon after becoming aware of the unauthorized footwear sales.