First published November 11, 2013, this post
is based in part on part of my contribution on trademark law and the right of publicity in the New York State Bar Association publication, In the Arena
. As with other posts on the blog where I have
revisited such material, it may sound a little bit less like a LIKELIHOOD OF CONFUSION® blog post and a little bit more book-like. In this case, however, the post is a significant expansion upon what appeared in the book.
As seen in the Benny Goodman case in the TTAB, celebrity, brand power and trademark rights may outlive a celebrity’s peak performing years, but will bear fruit only as long as the roots of the “brand” itself—the image, sensibility or other association the celebrity name elicits—remains alive. How does a brand stay alive after the celebrity’s career (much less his life) are over?
For insight into the answer, consider the management of the BENNY GOODMAN trademark, where one significant basis for the TTAB’s ruling against the seemingly bona fide applicant was the finding that a corporate successor in interest was actively exploiting the late King of Swing’s fame.
In contrast, the custodian of the intellectual property rights bequeathed by Goodman’s contemporary and colleague, the great band leader Glenn Miller, managed to completely squander those rights. Miller died tragically in 1944, and decades of internecine squabbles among his heirs followed. Finally, in 2006 the Ninth Circuit essentially declared the “Glenn Miller” and “Glenn Miller Orchestra” trademarks dead as well, affirming the district court’s ruling that decades of inaction by the plaintiff, despite knowledge of the defendant’s infringement, amounted to a fatal case of laches.
The lessons of these cases for advising celebrities are obvious: Lawyers must ensure that a star’s brand does not die with him — or with his playing career. An athlete’s planning for post-career continuation of the brand should begin early. Few athletic careers extend past age 40, and most end far earlier. Absent proper brand management, a sports star’s trademark rights may wither and die well before he does.
This need not be the case. Endorsement power can live and grow well past the active playing life of a professional athlete. There is no better example than the extraordinary post-play branding career of golfing legend Arnold Palmer, who unlike Miller and Goodman didn’t lead the perfect band but arguably developed, and exploited, the perfect brand.
Arnie is very much alive, but his competitive golfing days are well behind him. Yet he has made far more after the peak of his glory days than he ever did on the green.
The Arnold Palmer brand is built on a fame and stature that few people under 60 can appreciate. It came into being during Arnie’s playing days, and far outstripped mere sports, as this 1967 Sports Illustrated article recounts:
The country produces superb athletes regularly, of course, and the 1960s have seen many of them—Jim Brown, John Unitas, Willie Mays, Sandy Koufax, Mickey Mantle—but none can rival Palmer. Not only has he reached a celebrity status enjoyed by few individuals in any field, he is the first athlete to become a walking million-dollar corporation in his prime. . . .
By Tuesday afternoon the filming is done. Arnold hurries to La Guardia and flies in his jet to Shawnee, Pa. to participate in the grand opening of a food-processing plant built by his father-in-law, Martin Walzer. He spends the night in Shawnee. The next morning he flies back to New York City, where he picks up four top business executives as part of his association with the U.S. Banknote Corporation. He flies them to Latrobe for a VIP day of golf, meals and drinks at Laurel Valley Golf Club. On Thursday he poses for photographs again, this time for the Bolens Division of FMC, for whom he endorses lawn equipment and snowplows. Two days in Latrobe follow, but on Sunday he is off once more, this time to Winchester, Ky., where he is made a Kentucky Colonel and an Admiral of the Kentucky Waterways. He plays an exhibition there and is back in Latrobe by nightfall. Monday and Tuesday are Arnold Palmer Enterprises days in Latrobe, as 14 executives from his various corporations fly in to consult, dine and play golf with the boss.
Meanwhile Tuesday has brought an unexpected problem. The State Department called both Arnold and me on a matter of some importance.