Will Legislature Pass Cosby’s Law?

Bill Cosby

Bill Cosby wants Massachusetts to grant his image remunerative life after death by amending the commonwealth’s right-of-publicity law. If his bill becomes law, the right to commercially exploit the Cosby image will outlive Mr. Cosby himself by 70 years (the earliest point by which, to be snide, I predict the brand might recover some monetary value).

Until the scandalous allegations about Mr. Cosby returned to the headlines, the media having lost interest for a few years, it looked as if he was going to get his way. The State Senate had, back in 2012, already approved his proposal, “An Act Protecting the Commercial Value of Artists, Entertainers, and Other Notable Personalities,” to give the measure its full title. It did so again in 2014, and this time the bill made it as far as the Ways and Means Committee, where it lingered at the close of the official legislative session.

I think it unlikely that the Massachusetts Legislature will use its unofficial sessions to pass the bill, but can claim no inside knowledge. Leading the charge for the Cosby Law was Senate-President-in-Waiting, Stan Rosenberg. When the Legislature reassembles in January, the newly-elevated Senator Rosenberg will no longer be in the bill-sponsoring business and, with the putative Cosby Law about as popular as its eponym, a new lead sponsor may be hard to find. Let us hope so.

There are several reasons to oppose the bill. First, it grants special rights to one particular class of Bay Staters. At present, we residents of Massachusetts all have the statutory right to control the commercial exploitation of our names and likenesses. You can read the relevant statute here, and if you read only the first two words you will learn something important, namely that the current law protects “any person.” That is not some fancy legalistic term of art, by the way: It means any person. The Cosby Law, in contrast, would protect you only if you happen to be a “personality,” which the bill defines as “an individual whose identity has commercial value.” It would not merely amend the current law but repeal and replace it. Ordinary residents would no longer enjoy the right of publicity. That right would belong only to celebrities, not we the hoi polloi.

My second reason for hoping the proposed Cosby Law fades away is its potential chilling effect. At the risk of making a sweeping generalization, I have noticed that powerful people rarely welcome criticism. If there is a plausibly legitimate method for muzzling their critics, they will use it. Although the Cosby bill expressly allows the use of a “personality’s identity” for purposes of “news report or commentary” as well as in artistic and expressive works, some lawyers to the rich and famous have a tendency to send threatening letters to awkward writers and artists anyway. Those on the receiving end may know that they are within their rights but fear the cost of proving it. So they give in without a fight. When there is no downside to sending baseless cease-and-desist letters, the consiglieri will send them.

Third, the bill creates the right to control the commercial use of a personality’s “image,” an ambiguous term that the bill does not define. In fact, the word “image” does not appear in the bill’s relatively clear definition of “identity,” i.e. “a personality’s name, likeness, voice, or signature that uniquely identifies that particular personality.” Injecting the undefined word “image” into the bill creates just the kind of ambiguity that lawyers to the rich and famous could exploit for their nefarious, speech-chilling ends (see above).

My fourth and final reason is this. The bill contains the following: “A personality shall have a property interest in such personality’s identity and shall have the exclusive right to control the commercial use of the personality’s identity during the personality’s life and for 70 years after the date of the personality’s death.” What the bill aims to achieve here is not so much a legal impossibility as an ontological and biological one. The dead cannot control anything. That is just one of the many features that make death so unappealing.

Now, I think I know what the drafters meant to write — that the right should endure for 70 years after death, if vested in a transferee — but what they wrote does not embody that meaning. So they should tear up this draft and try again. Or, better still, just tear up this draft and leave it at that.

Tebowing Trademark Takeaways: Three Lessons

New York Jets quarterback Tim Tebow is in the news over rumors of a trade. Before that, the headlines were about his trademark. Wherever Tebow plays football, it seems a safe bet that he will be trying to control the use of the word “Tebowing,” a term that describes the Christian athlete’s practice of dropping to one knee in prayer. For fans and non-fans, faithful and faithless alike, Tebow’s recent experience with trademark law has three lessons.

Tim Tebow: a valuable image

But before the lessons, some background. In December 2011, Tebow filed a set of intent-to-use applications with the United States Patent and Trademark Office (USPTO) for the words “Tim Tebow” in connection with products such as jewelry, clothing, DVDs, and stationery, and services such as online seminars. The USPTO published three of the applications for opposition in the Official Gazette on October 16, 23, and 30 respectively. If nobody objects during the 30-day opposition period, Tebow’s name will become a federally registered trademark in three different classes in time for the holidays.

But Tim Tebow’s are by no means the only Tebow-related applications the USPTO has on its docket. There are currently seven live (and three dead) applications for the mark “Tebowing,” a verb that entered the lexicon in October 2011, according to Wikipedia. That was the authority the USPTO cited when it rejected the trademark application of Jared Kleinstein on February 22, 2012, a fact replete with irony in view of the fact that it was Kleinstein who – according to Wikipedia – coined the term Tebowing.

Kleinstein had filed his application (serial no. 85458244) to register “Tebowing” on October 27, 2011. Along with his application he submitted a screenshot showing a list of t-shirts he had sold that day via Café Press.

But before Kleinstein’s application could make it to the Official Gazette, Tim Tebow himself intervened. In January 2012, Tebow’s attorney sent the USPTO three letters of protest complaining that Kleinstein’s mark would cause consumer confusion: Consumers would presume a connection between the trademark and Tim Tebow. As evidence, Tebow’s counsel pointed to the athlete’s sponsorship deals with Nike, Jockey Apparel, and Electronic Arts. The USPTO concurred and refused Kleinstein’s application because it implied a false connection with a living individual, contrary to 15 U.S.C. section 1052(d).

Was that the end of Kleinstein’s application? No, it rose again and now –made reincarnate – has a new applicant, namely XV Enterprises, an LLC organized in Florida, with a business address of 5082 Hampden Avenue, Suite 115, Denver, Colorado. As the Hampden Avenue neighborhood might suggest (Temple Sinai on one side and Bethany Lutheran Church on the other) the owner of XV Enterprises is Tim Tebow.

So how did Tim Tebow’s company end up with Jared Kleinstein’s trademark application? The process seems to have involved nothing more miraculous than money. On May 10, 2012, Kleinstein assigned his trademark application to XV Enterprises “for good and valuable consideration.” Unfortunately for those of us who are curious about these things, the assignment does not state the number of dollars that moved from Tim Tebow to Jared Kleinstein.

With Tebow’s XV Enterprises as the applicant, the USPTO published “Tebowing” for opposition October 9, 2012. The 30 day opposition period runs until November 8, so if you have a legitimate claim to the mark “Tebowing” and do not wish Tim Tebow to acquire the exclusive, nationwide right to use it in commerce, you should act swiftly. In the meantime, what lessons can we draw from the mark’s sojourn in the USPTO?

1. Letter of Protest

Tim Tebow’s lawyer did not wait until the post-publication opposition period. He filed a letter of protest, a powerful weapon that enables third parties – not only the owners of competing marks – to step into the USPTO’s examination process at an early stage. Although it is an informal document, a letter requires factual, objective evidence, not mere opinion. But the evidentiary standards are not onerous. So trademark owners and concerned citizens who learn of applications with the potential to cause consumer confusion should not sit on their hands.

2. Assignment

Jared Kleinstein assigned his mark and “the goodwill associated with it” to XV Enterprises. As any intellectual property practitioner knows, you cannot assign a trademark in gross. What does that mean? It means that when you transfer trademark rights, you must convey not simply the mark, but also the goodwill associated with it.  The “amorphous goodwill concept,” as Professor Robert Bone calls it, refers to a mark’s consumer loyalty, but remains “abstract, and notoriously difficult to define.” Business owners and their attorneys should not fret unduly about the precise meaning of the word; all we need to remember is to include it in the assignment.

3. Right of Publicity

Tim Tebow is a resident of New Jersey, according to his Facebook page. New Jersey is one of the states that recognizes the right of publicity, which allows individuals to control the commercial exploitation of their name and likeness. Unlike federal trademark protection, the right of publicity does not depend on you registering your name anywhere, filing renewals, paying a fee, or using it in interstate commerce. These are clear advantages. On the other hand, whether you actually have a right of publicity depends on where you live. Almost half the states do not recognize it. Of those that do, only some have enacted statutes to delineate its scope; in the others it remains a common-law right and, therefore, less predictable. As a practical matter then, if your name has value in the marketplace, registering it as a trademark would be wiser than simply relying on the right of publicity.

Finally, it is worth remembering the power of parody. Although the Lanham Act does not explicitly provide fair-use exceptions like parody the way the Copyright Act does, judges are tending to imply it so as to uphold the First Amendment. This evolving area of law may affect Tim Tebow, because among the other entrepreneurs seeking to turn Tebow’s fame to their pecuniary advantage is Daniel Gordon of New Jersey. He has applied to register the word Tebow within the outline of a fish (think Jesus fish and Darwin fish). Does he have a prayer? Stay tuned.