Publications

By: Karin Binder

This year’s World Intellectual Property Day highlights the topic of “IP and sports.” Beyond the goods and services that are traditionally protected in this industry, such as athletic gear, coaching and sports competition services, it has become a standard strategy for athletes to protect their personal brand.

The issue of personal brand protection was put in the spotlight in 2021, when the National Collegiate Athletic Association (NCAA) lifted its ban on college athletes profiting from their Name, Image, and Likeness (NIL). This change emphasized a need for enforceable legal rights to not only protect a student-athlete’s personal characteristic but also provide a tool for commercialization.

Trademarks:
A personal brand may entail any characteristic that makes a person unique, including their name, image, voice, the way they talk and walk, common catchphrases, and their signature.

So how does an athlete protect their Name, Image, and Likeness? Many turn to trademark protection. Trademarks are granted for use in association with specific goods and services and grant their owner exclusive ownership on a federal basis. Trademark rights serve as an important instrument for commercialization and vest enforceable rights to their owners. Unauthorized uses can be pursued as trademark infringement.

By securing trademark rights in their NIL, athletes can then enter into agreements with third parties, for example apparel manufacturers, with respect to product endorsements and event appearances. In return, athletes receive compensation in the form of money, products and/or services.

For example:

• The Canadian Trademarks Office has granted a registration to Australian racing car driver Oscar Piastri for his hand signature, covering a long list of goods and services, including “endorsement to promote the sale of the goods and services of others.”
• The U.S. Trademarks Office granted a registration to the basketball star’s name ANGEL REESE for use in association with “basketballs.” Her application to register her nickname “Bayou Barbie” on the other hand received multiple objections based on Mattel’s earlier BARBIE registrations.

The issue of Name, Image, and Likeness extends beyond athletes and is of interest to public figures in general. The actor Matthew McConaughey, for example, has taken a very proactive approach to protecting his NIL – not only for the purpose of commercializing his personal brand but especially to protect his Name, Image and Likeness from misappropriation by artificial intelligence and in deepfakes. His company J.K. Livin Brands, Inc. has been granted various registrations including for motion marks that protect gestures of the actor as well as a sound mark for his famous catchphrase “Alright, Alright, Alright.”

Copyright:
With artificial intelligence and deepfakes becoming a concern for the public at large, the world is looking at solutions of how to protect an individual’s Name, Image, and Likeness from misappropriation by technology. The government of Denmark is attempting to address this issue by amending its Copyright law to cover a person’s likeness (facial features, body, and voice) allowing individuals greater control over their personal characteristics.

Take Away:
Athlete, influencers, actors, fashion designers, politicians as well as the public at large have an interest in protecting their personal characteristics and control how their Name, Image, and Likeness is being used and by whom. While the debate about the most effective legal framework is ongoing, or until a new form of personality right emerges, one may rely on a multi-layered approach consisting of the following:

• Trademark protection
• Copyright protection
• Stricter regulations perhaps in the form of permission-based access to artificial intelligence software
• Contract enforcement; and
• Common law rights

If you have any questions protecting intellectual property or trademarks, please contact the author, Karin Binder, or any member of our Intellectual Property group.