Last week, the NCAA ruled that Johnny Manziel can keep damages his LLC is awarded in its trademark infringement lawsuit against the maker of t-shirts that contain the words “Keep Calm and Johnny Football.” This prompted a wave of commentary in the sports world about the ruling creating a loophole that allows college athletes to profit off of their names and likenesses. All a college athlete would need to do is find a wealthy booster willing to infringe upon the athlete’s intellectual property rights, sue the booster, and then quickly settle for a large amount of money.
Well, all of the college athletes out there can stop looking for those rich boosters (although, as the Miami case demonstrates, they may already be well acquainted). According to Andy Staples of SI.com, the NCAA told Texas A&M that the orchestrated scheme described above would be an NCAA violation. Despite the storm of recent criticism it has received, I’m sure the NCAA considered and addressed the booster loophole before deciding that Manziel could collect in his infringement lawsuit.
Although there is no get-rich-quick loophole, this shouldn’t deter college athletes from protecting their rights in slogans, nicknames, and catchphrases that play on their names or likenesses. And with all of the publicity surrounding Manziel’s lawsuit, I would expect more college athletes to follow Manziel’s lead and attempt to claim trademark rights in their nicknames. Cody Zeller is a perfect example. A quick internet search turned up a number of people online selling t-shirts that include Zeller’s nickname, “The Big Handsome,” along with his number 40. And a group of people, apparently unrelated to Zeller, have even filed a U.S. trademark application for the nickname.
But, a college athlete claiming trademark rights in a nickname or phrase is a somewhat tricky proposition. The biggest issue: in order to claim trademark rights in a phrase the phrase must be used “in commerce” by the person claiming rights in the phrase. This means that the phrase must be used on or in connection with a good that is shipped across state lines in furtherance of a sale. So, in order for a college athlete to claim trademark rights in a nickname or other phrase it must be used in connection with an item that is sold.
This presents a problem. NCAA rules explicitly prevent athletes from profiting off the use of their name or likeness. And this interplay between trademark law and NCAA rules is especially problematic when others seek to cash in on an athlete’s nickname, which is exactly what happened to Manziel (and is happening to Zeller).
So, how can a college athlete avoid violating NCAA rules to claim trademark rights in a nickname? By licensing rights in a nickname to someone else. Under U.S. law, qualifying “use” of a trademark may also be made by someone related to the owner, such as the owner’s licensee. Once a license agreement is in place, the licensee can then use the nickname on goods that are sold, or in connection with the promotion of an event. And, voila, the nickname has been used “in commerce” and the owner has trademark rights in the nickname. There is still a catch to this whole process. The trademark license has to be a free license. Otherwise, the license itself would be an NCAA violation.
Licensing the “Johnny Football” nickname to a third party is exactly what Manziel did. He licensed the trademark last year (presumably for free) and was then able to rely on the licensee’s use of the mark “in commerce” to gain trademark rights and as the basis for the recent filing of his federal trademark application. While it is not necessary to have a federally registered trademark to sue an infringer, it will make it easier for Manziel to prevail in future lawsuits.
It is unclear from the trademark application who Manziel licensed the Johnny Football nickname to, but it appears one of the entities may have been Texas A&M. Manziel’s application specifies that he is relying on Texas A&M’s use of “Johnny Football” in several videos posted to A&M Athletics’ YouTube channel to establish the requisite use in commerce.
As mentioned above, I anticipate other college athletes with marketable nicknames will follow Manziel’s lead and seek trademark protection for those nicknames. It will be interesting to see how the NCAA deals with this issue going forward. College athletes seeking trademark protection for their nicknames is likely not something the NCAA ever envisioned.