Branding a Name

March 2, 2012 News

When you think of New York City icons, who pops to mind? Donald Trump. Fran Lebowitz. Jerry Seinfeld. Woody Allen. A whole list of creative, business, and media stars are associated with the city.

New York being the legal capital of the world, you can bet that all of these celebrities are heavily invested in protecting their brands. Whether in the form of vigilant copyright enforcement or careful attention to brand identity, IP matters to these folks. This week, we offer two case studies in emerging New York icons trying to do the same: the Naked Cowboy and Jeremy Lin. Probably the first and last time those men will ever be in the same sentence.

We’ll start with Jeremy Lin. And no, I won’t be making any Lin puns. ESPN has done quite enough of that already. If you’re not a sports fan, here’s his basic biography: The son of Taiwanese immigrants, Lin graduated from Harvard and dreamed of professional basketball. He was cut from two other NBA teams before getting the chance to join the Knicks. In early February, he emerged from obscurity to worldwide fame, reinvigorating the spirit of a team that has been seen as lackluster, even among diehard New Yorkers. In short, it’s an incredible underdog story.

And underdog stories sell. The Knick star’s name has some serious brand value. Forbes estimates that value to be about $14 million, and growing fast. Forbes also points out that in the past month, Madison Square Garden’s stock price has increased by about 6%, adding $139 million to the company’s market value. During the same period, the S&P 500 has gone up less than 1%. Much of that is attributed to the national attention given to Lin. Not bad for a young guy who only played his first starting role on February 4.

That brand value has attracted attention both nationally and internationally. About a year ago, a small sporting goods company in Wuxi (China) saw the potential—before anyone in the United States did—and obtained a national trademark on the Chinese name of the basketball star for only about $700 USD. The trademark will allow that company to use Lin’s Chinese name on shirts, hats, shoes, balls, toys, and more. The company did not make any such products before their registration. Indeed, they probably only just started to do some manufacturing this month. In China, trademarks are awarded on a first-to-file basis. By contrast, in America, companies must generally show use of a mark in commerce (or at least a clear intent to use) before a trademark will be awarded or enforced. Most commentators seem pessimistic that Lin will be able to enforce his rights in China, a country known for its troubled IP regime.

In the United States, Lin’s mark has also received attention. Yenchin Chang, a 35-year-old California resident with no ties to Lin, became the first to apply for a trademark on “Linsanity.” According to the Associated Press, a total of seven people—none of whom have any connection to Lin—have made efforts in recent weeks to register this mark.

While Jeremy Lin will struggle to regain control of “his” mark in China, his attorneys filed for federal trademark protection in this country on February 13. Lin seems likely to prevail against Chang (and other Americans who have tried to register the mark over the past month). 15 U.S.C. § 1052 states that “No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration… unless it… a) … falsely suggest[s] a connection with persons, living or dead.” Registering the name of another living person (without their express or implied permission) is a fairly clear formula for registration failure. Lin paid a filing fee of $1,625 to the U.S. Patent and Trademark Office, which will decide the contested mark probably within the next couple months. Lin seeks to use “Linsanity” on all manner of apparel, including everything from underwear to action figures to beverage sleeves and backpacks.

So Lin and his attorneys are on the attack to enforce his domestic IP rights. But now we move on to our second New York icon, the Naked Cowboy. Our beloved Cowboy is less optimistic about protection. The Naked Cowboy—born Robert Burck—is a famed street performer in Times Square. Times Square, of course, is the tourist capital of the city. Broadway shows, odd museums, massive hotels, huge restaurants, and all sorts of entertainment surround the area. The Cowboy has become an odd fixture of the neighborhood over the past decade. He struts around in only his briefs and cowboy hat, carrying a guitar and taking pictures with countless visitors (and collecting tips).

Mr. Burck was upset to discover that a character dressed in similar attire was portrayed on CBS’s daytime soap opera “The Bold and the Beautiful.” He also objected to CBS’s posting a clip of the episode, which aired on Nov. 1, 2010, on Google’s YouTube video-sharing site using “The Bold and the Beautiful Naked Cowboy” as the title. Some three million people watched the episode, and CBS of course profited in advertising dollars from the broadcast. Burck sued with nine separate causes of action under federal and state law ranging from claims under the Lanham Act 15 USC § 1114 to unfair competition and trademark dilution.

The district judge, Hon. Barbara S. Jones did not see eye to eye with the Cowboy. Indeed, Judge Jones granted the defendant’s 12(b)(6) motion to dismiss in her decision on February 22. Though noting that the plaintiff had successfully registered the mark “Naked Cowboy” on April 9, 2002, she reminds the plaintiff “Not every use of a protected mark is actionable.” Indeed, 15 USC § 1115(b)(4) allows use where “the use of the name, term, or device charged to be an infringement is a use, otherwise than as a mark, of the party’s individual name in his own business, or of the individual name of anyone in privity with such party, or of a term or device which is descriptive of and used fairly and in good faith only to describe the goods.”

In other words, this defense allows references to protected marks in descriptive ways as long as they are not used as source identifiers. The soap opera’s reference to the Naked Cowboy was a “non-trademark use”—that is, CBS was not trying to commercially compete for consumers with the Cowboy himself. No one who would have enjoyed the Cowboy’s services (i.e. no one who would travel to Times Square and tip him) would decline a trip to New York merely because of the episode. The Cowboy does not provide any goods or services that are in competition with a daytime television series. Moreover, the plaintiff presents no evidence that CBS acted in bad faith, “intending to trade on the goodwill of plaintiff by creating confusion as to source or sponsorship.” Judge Jones further dismisses the dilution claim for the same reason—the mark needs to be used in commerce in order to prove dilution. The state law claims under the New York Deceptive Acts and Practices statute were also dismissed since they use largely the same standards as the Lanham Act.

Perhaps the best part of this case is the caption: Naked Cowboy v. CBS, 1:11-cv-00943-BSJ-RLE, U.S. District Court, Southern District of New York. You could imagine the clerk’s face while the case was being processed….

“Ideas matter in New York,” wrote David Frost. “Not just vague theories, but ideas that
New Yorkers have the will, and the clout, to do something about.” Frost might has well have been writing about the need for intellectual property protection in a city that is home to some of the most creative minds in art, culture, and business on earth. Even the relatively young icons like Jeremy Lin and the Naked Cowboy realize that in the 21st century, IP protection is a bedrock of commercial success. So there you have it. Two New York icons, two sets of IP interests. Are you an aspiring performer or tycoon? We’re here to help.