Keep calm and Johnny Football: the evolving trademark rights of college athletes.

Grady, John ; Nagel, Mark S.

On February 15, 2013, Heisman Trophy winner Johnny Manziel's licensing company, JMAN2 Enterprises LLC, filed suit against Eric Vaughn, who had been selling a variety of shirts that featured the phrase "Keep Calm and Johnny Football" with various uses of Texas A&M's color scheme and/or protected logos (Watson, 2013a). Manziel filed to register a trademark in his nickname "Johnny Football" during the 2012 season prior to winning the Heisman Trophy (the trademark registration was still pending approval before the U.S. Patent and Trademark Office [USPTO] at the time of this writing). His licensing company sued for federal trademark infringement under the Lanham Act as well as violation of Texas right of publicity and unfair competition laws (Keahey, 2013). The case sparked an interesting discussion among athletic department compliance personnel and intercollegiate athletic observers when the National Collegiate Athletic Association (NCAA) noted that Manziel could keep any profits he was awarded for enforcing his trademark rights against potential infringers without jeopardizing his eligibility (Watson, 2013a).

Under the NCAA's interpretation of bylaw 12.5.2.2, which notes, the "student-athlete (or the institution acting on behalf of the student-athlete) is required to take steps to stop such an activity [illegal use of athlete's name or likeness] in order to retain his or her eligibility for intercollegiate athletics," Manziel, or another college athlete who decided to trademark their name, nickname, or other intellectual property, could now arguably sue to protect these marks and retain the monetary awards, creating what sport journalists called the "Johnny Football" loophole (Staples, 2013a). Though some speculated that this could lead to a bevy of future cases where athletic boosters would purposefully infringe college athletes' trademarks in order to divert money to athletes in the form of damages, the NCAA clarified "if [the trademark violation] was an orchestrated event, [then] it would fall under the enforcement proceedings" (Staples, 2013a, para. 5).

The "Johnny Football" case will likely be the impetus for several other high-profile athletes seeking to enforce their intellectual property rights in their name and nickname while still under the NCAA's governance. Given this changing administrative landscape, athletic administrators must now be aware of the emerging trend in college athletics where athletes may now more aggressively seek to protect their rights using existing intellectual property laws.

Professional athletes have already seemed to confirm this trend. Intellectual property lawyers have noted the growing trend of professional athletes seeking to trademark their names and catch-phrases (Pavony & Thomas, 2012). Prominent examples include the National Basketball Association's (NBA) Jeremy Lin, who trademarked the phrase "Linsanity," while playing for the New York Knicks. In 2012, American Olympic swimmer Ryan Lochte trademarked his odd catchphrase "Jeah," which Lochte explained as having been adapted from rapper Young Jeezy's often-used expression "Chea!" Perhaps most prominently was Tim Tebow receiving trademark protection for the phrase and the visual of "Tebowing" whereby he kneels with his fist to his forehead as though in prayer (Williams, 2013). Tebow's stated goal in trademarking his well-known pose was "to just control how it's used, [and] make sure it's used in the right way" (Goralka, 2012, para. 2).

Collegiate Licensing Industry Trends

College athletes have taken notice of the increasing prevalence at which professional athletes have positioned their personal brands across a wider range of sport and entertainment commercial endeavors. Furthermore, athletes have also recognized the tremendous value in licensing college athletic brands. From July 1, 2012, to June 30, 2013, the college athletic licensing business generated over $4.6 billion in sales (Rovell, 2013). Like professional athletes who are free to seek the advice of agents and lawyers well versed in protecting all forms of intellectual property, college athletes have come to realize that building and protecting their personal brands begins not on the day they are drafted or sign a professional contract but well before.

Seemingly, the NCAA has not only opened the door for college athlete brand building through its decision in the Manziel case, but NCAA President Mark Emmert has also noted that many of the top college athletes are "pre professionals" in training to fulfill their goals of becoming fully compensated professional athletes (Infante, 2011; Wieberg, 2011). In fact, the NCAA has previously acquiesced to the idea that high-profile college athletes want to market themselves. In response to a new fantasy sports game announced by CBSSports.com in 2008, which took the provocative step of being the first fantasy sports provider to identify current athletes by name (in violation of NCAA rules), an NCAA spokesman stated that the NCAA chose not to stand in the way of the game "because of the added exposure fantasy sports can bring the student-athlete" (Di Fino, 2008, para. 6). Given this previous stance and the recent action in the Manziel ruling, college athletic administrators need to prepare for the continued focus by college athletes upon their "preparation" to become a professional athlete through their personal brand-building activities while still in school.

Comprehensive intellectual property protection remains a critical component of any strategic brand-building effort, whether it involves an individual athlete or a team's athletic department. Trademarking an athlete's name gives the athlete and his or her legal team a greater ability to control how the trademark is used as well as police for unauthorized uses, ultimately enhancing the overall value of the athlete's brand (McKelvey & Grady, in press). This is a particularly salient issue with rampant infringement of athletes' trademarks occurring via social media. The creation of JMAN2 Enterprises demonstrates an increasing awareness by college athletes that the need to protect an athlete's IP is no longer reserved for the professional ranks.

The Future of Marketing College Athletes

The "Johnny Football" incident creates some important questions about contemporary enforcement of the intellectual property rights by college athletes. The NCAA's recent interpretation still restricts Johnny Manziel's ability to capitalize on his commercial appeal while still an amateur through an active marketing campaign via traditional merchandise licensing channels. However, Manziel can still take advantage of the enforcement provisions of the Lanham Act (which allow for defendant's profits, injunction, seizure of infringing goods, and the potential for treble damages). The less obvious implication centers around the specific role of athletic departments as athletes now begin to exert more legal rights, notably their intellectual property rights. Specifically, what obligations, if any, do athletic departments have to intervene in protecting their athletes from increasing commercialization? As Shane Hinckley, Texas A&M Vice President of Business Development, noted in response to the Tshirt issue, "this has been a learning experience on the business and legal side" (Staples, 2013a, para. 3).

While Texas A&M's athletic department was forced to be the first school to address this novel interpretation by the NCAA, it most certainly will not be the last. As high-profile college athletes gain notoriety for their athletic successes, it becomes inevitable that other commercial entities will want to "share" in that success through production and sale of items that utilize (and potentially infringe) the athlete's intellectual property in their name or likeness, often without the direct knowledge or authorization of the athlete. For example, prior to the start of the 2013 college football season, owners of the Daniel Island Grille near Charleston, South Carolina, received cease and desist letters from the compliance departments of the University of South Carolina and Clemson University after the restaurant included items such as Clowney's Turkey and Avocado Wrap and the Sammy Watkins Reuben on their menu (Staples, 2013b). While these menu items seem more akin to celebrating the athletic success of well-known football players in the state when compared to the sale of "Johnny Football" t-shirts, it remains to be seen how involved other schools' athletic departments will be in their efforts to protect the intellectual property rights of their athletes, especially if that assistance leads to the athlete receiving an immediate payment in the form of intellectual property damages.

References

DiFino, N. (2008). College football fantasy game to name names. (2008, July 31). Wall Street Journal. Retrieved from http://online.wsj.com/arti cle/SB121733679819593215.html

Goralka, J. (2012, October 21). Tim Tebow now owns "Tebowing" trademark: Setting a new precedent? The Washington Times. Retrieved from http://communities.washingtontimes.com/neighborhood/endday/2012/oct/21/tim- tebow-now-owns-tebowing-trademark-setting-new-/

Infante, J. (2011, February 17). Draft rules fail basics of amateurism. http://www.ncaa.org/blog/2011/02/draft-rules-fail-basics-of-amateurism/

Keahey, M. (2013, February 2013). 'Johnny Football' files trademark infringement lawsuit over shirts. The Southeast Texas Record. Retrieved from http://setexasrecord.com/news/282039-johnny-football-files-trade mark-infringement-lawsuit-over-shirts

McKelvey, S. & Grady, J. (in press). The legal aspects of sport marketing. In B. Mullin, S. Hardy, & W. Sutton (Eds.), Sport Marketing (4th ed.). Champaign, IL: Human Kinetics.

Pavony, B. H., & Thomas, J. (2012). For the love of the name: Professional athletes seek trademark protection. Pace Intellectual Property Sports and Entertainment Law Forum, 2(1): 153-166.

Rovell, D. (2013, August 12). Texas leads in merchandise royalties. Retrieved from http://espn.go.com/college football/story/_/id/9560094/texas-longhorns-again-top-merchandisesales-list

Siegal, B. (2011). A legal perspective on licensing ... reflections from the front line. NACDA. Retrieved from http://grfx.cstv.com/photos/schools/nacda/sports/icla/auto_pdf/2011 12/misc_non_event/ICLANov11.pdf

Staples, A. (2013a, February 26). NCAA rules clarification closes Johnny Football 'loophole.' Sports Illustrated. Retrieved from http://sportsillustrated.cnn.com/college-football/news/20130226/johnny-manziel- ncaaloophole/

Staples, A. (2013b, August 28). NCAA was better off letting Manziel play than enforcing the letter of the law. Sports Illustrated. Retrieved from http://sportsillustrated.cnn.com/collegefootball/news/20130828/manziel- suspension-ncaa-texas-am/

Watson, G. (2013a, February 25). Johnny Manziel's LLC sues over trademark infringing T-shirts. Retrieved from http://sports.yahoo.com/blogs/ncaaf-dr-saturday/johnny-manziel-llcsues-over- copyright-infringing-t-170102789--ncaaf.html

Watson, G. (2013b, February 27). NCAA is watching Johnny Manziel's trademark lawsuit for possible violations. Retrieved from http://sports.yahoo.com/blogs/ncaaf-dr-saturday/ncaa-watching-johnny-manziel- trademark-lawsuit-possible-violations-171255382-- ncaaf.html

Wieberg, S. (2011, January 14). NCAA president Emmert sets no-nonsense tone in address. USA Today. Retrieved from http://usatoday30.usatoday.com/sports/college/2011-01 -13-ncaa-emmert_N.htm

Williams, D. (2013, July 13). Athletes trademarking the phrase that pays. Retrieved from http://espn.go.com/blog/playbook/fandom/post/_/id/6108/athletetrademarks- becoming-commonplace

DISCLAIMER: Inquiries regarding this feature may be directed to series co-editors Steve McKelvey at mckelvey@ isenberg.umass.edu and John Grady at jgrady@mailbox.sc.edu. McKelvey is an associate professor and graduate program director in the Mark H. McCormack Department of Sport Management at the University of Massachusetts Amherst. Grady is an associate professor in the Department of Sport &

Entertainment Management at the University of South Carolina.

The materials in this column have been prepared for informational and educational purposes only, and should in no way be considered legal advice. Readers should not act or reply upon these materials without first consulting an attorney. By providing these materials it is not the intent of the authors or editors to enter into an attorney-client relationship with the reader. This is not a solicitation for business. If you choose to contact the authors or editors through email, please do not provide any confidential information.

John Grady, JD, PhD, is an associate professor in the Department of Sport and Entertainment Management at the University of South Carolina. His research interests are focused on intellectual property protection in sport and stadium accessibility for sport consumers with disabilities.

Mark Nagel, EdD, is an associate professor in the Department of Sport and Entertainment Management at the University of South Carolina and is associate director of the College Sport Research Institute. His research interests are focused primarily in college athletics.