by: Pancho Galman

In the world of advertising and endorsements in sports, the rule of thumb is that one cannot use the name or likeness of another person without the latter’s permission. That much is obvious. Things get a little more complicated when an athlete changes his/her name. For example, if Philippine Basketball Association MVP June Mar Fajardo changes his name to June WAR Fajardo, what will happen to the old name? Will it be abandoned? Is the old name available for the general public’s use? What are the consequences if someone uses the old name for commercial use? These questions were answered in Kareem Abdul-Jabbar’s lawsuit against General Motors Corporation.

Kareem Abdul-Jabbar is arguably one of the greatest players in the National Basketball Association (“NBA”). As one of the cornerstones of the Milwaukee Bucks and the often-heralded “Showtime Lakers”, Kareem retired with an impressive resume. Among his career accolades in the NBA are six (6) NBA Championships; six (6) NBA Most Valuable Player Awards; and nineteen (19) NBA All-Star appearances, among others.[1] To non-basketball fans, he may simply be known as co-pilot Roger Murdock or Hakim from the films “Airplane!” and “Game of Death” respectively. To music aficionados, he will be remembered as the subject of the funky Red Hot Chili Peppers song “Salute to Kareem.”

During his heyday, however, he was popularly known as Lew Alcindor, superstar of the UCLA Bruins. After converting to Islam (and winning a championship with the Milwaukee Bucks too), Ferdinand Lewis Alcindor, Jr. adopted the Muslim name Kareem Abdul-Jabbar and the Lew Alcindor name, to paraphrase a popular saying, was history… or so Kareem thought.

During the 1993 NCAA basketball tournament, General Motors Corporation (“GMC”) aired a commercial for their 88 Oldsmobile. The 88 Oldsmobile spot played as follows:

A disembodied voice asks, “How ‘bout some trivia?”   This question is followed by the appearance of a screen bearing the printed words, “You’re Talking to the Champ.”   The voice then asks, “Who holds the record for being voted the most outstanding player of this tournament?”   In the screen appear the printed words, “Lew Alcindor, UCLA, ‘67, ‘68, ‘69.”   Next, the voice asks, “Has any car made the ‘Consumer Digest’s Best Buy’ list more than once?  [and responds:]  The Oldsmobile Eighty-Eight has.”   A seven-second film clip of the automobile, with its price, follows.   During the clip, the voice says, “In fact, it’s made that list three years in a row.   And now you can get this Eighty-Eight special edition for just $18,995.”   At the end of the clip, a message appears in print on the screen:  “A Definite First Round Pick,” accompanied by the voice saying, “it’s your money.”   A final printed message appears:  “Demand Better, 88 by Oldsmobile.”[2]

Kareem, while practicing his skyhooks,[3] realized that GMC had been using his name without authorization or compensation. Thus, Kareem sued under the Lanham Act; Section 43(a) of which expressly prohibits the use of any symbol or device which is likely to deceive consumers as to the association, sponsorship, or approval of goods or services by another person.[4] Kareem argued that GMC’s unauthorized use of the name Lew Alcindor will confuse customers into thinking that he endorsed the 88 Oldsmobile. Kareem further argued that the commercial also violated his publicity rights.

On the other hand, GMC contended that the name Lew Alcindor was “abandoned” once the name Kareem Abdul-Jabbar was adopted. GMC believed that one can abandon a name the same way a trademark can be abandoned,[5] thereby deeming it available for general use.

The District Court took GMC’s side and Kareem filed an appeal.

On the Abandonment of the name Lew Alcindor

The Court of Appeals ruled in favor of Kareem. Unlike a trademark, one cannot abandon his/her birth name as it is an integral part of one’s identity. It cannot be deemed “abandoned” throughout its possessor’s life, despite his/her failure to use it, or continue to use it, commercially.[6] An individual’s decision to use a name other than the birth name, whether the decision rests on religious, marital, or other personal considerations, does not imply intent to set aside the birth name, or the identity associated with that name.[7]

Going back to our hypothetical question, the name June Mar Fajardo still belongs to June WAR Fajardo despite the change to a new name. This, of course, is good news to athletes with name changes such as Chad Ochocinco,[8] Metta World Peace,[9] Muhammad Ali,[10] World B. Free,[11] and Mahmoud Abdul-Rauf,[12].

The Right of Publicity

Since the appellate court ruled that Kareem never abandoned the name Lew Alcindor, the next step was to determine if Kareem’s publicity rights were violated. Simply put, publicity rights are one’s rights to control the use or commercial exploitation of his/her name, likeness, or identity. In Kareem’s case, the appellate court had to determine if GMC’s use of Lew Alcindor in the Oldsmobile 88 commercial was an unlawful use of Kareem’s name or likeness.

The court found that Kareem had a valid claim under California common law and Section 3344(a) of the California Civil Code, which states:

Any person who knowingly uses another’s name, voice, signature, photograph, or likeness, in any manner, on or in products, merchandise, or goods, or for purchases of advertising or selling, or soliciting purchases of, products, merchandise, goods or services, without such person’s prior consent … shall be liable for any damages sustained by the person … injured as a result thereof.

The case was then referred to the district court for trial. However, Kareem and GMC settled the case out of court thereby depriving the world of a showdown between the parties.

In contrast, the Philippines, either in the Constitution or in any other statutes, does not have a provision on publicity rights like the one found in California’s Civil Code. However, the Philippine Intellectual Property Code expressly prohibits false representation in connection with any goods or services, to wit:

Sec. 169. False Designations of Origin; False Description or Representation. –

169.1. Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which:

a) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person;[13]

xxx

This is in consonance with Section 123.1(a) of the Intellectual Property Code which proscribes the registration of trademarks that falsely suggest connections with any person, living or dead.[14]

Unfortunately, the Philippine Supreme Court has yet to encounter a case similar to Kareem’s. Nonetheless, the Philippine Intellectual Property Code safeguards public figures, such as athletes, from the unauthorized use of their identity in commercial use. Even with the hypothetical name change, June WAR Fajardo can rest assured that no other person can use his current name or his previous name in any goods, services, or commercial activities without obtaining his permission.

Pancho Galman is an editor of Batas Sportiva.

Image credit: Getty Images.

[1]Kareem Abdul-Jabbar available at http://www.basketball-reference.com/players/a/abdulka01.html (last accessed 15 May 2016).

[2] Abdul Jabbar v. General Motors, 75 F. 3d 1391 (9th Cir. 1996).

[3] Purely speculative on the part of the author.

[4] Ibid.

[5] A mark shall be deemed to be “abandoned” when either of the following occurs: (1) When its use has been discontinued with intent not to resume such use. Intent not to resume may be inferred from circumstances. Nonuse for two consecutive years shall be prima facie evidence of abandonment. “Use” of a mark means the bona fide use of that mark made in the ordinary course of trade, and not merely to reserve a right in a mark. (2) When any course of conduct of the owner, including acts of omission as well as commission, causes the mark to become … generic… [Lanham Trade-Mark Act of 1946, [Lanham Act] Title 15 U.S.C., Section 1127 (1946).]

[6] Abdul Jabbar v. General Motors, 75 F. 3d 1391 (9th Cir. 1996).

[7] Ibid.

[8] Formerly Chad Johnson.

[9] Formerly Ron Artest; still considering change to Panda Friend.

[10] Formerly Cassius Clay.

[11] Formerly Lloyd B. Free.

[12] Formerly Chris Jackson.

[13] An Act Prescribing the Intellectual Property Code and Establishing the Intellectual Property Office, Providing For Its Powers and Functions, and for Other Purposes [Intellectual Property Code], Republic Act No. 8293, Section 169(a) (1997).

[14] 123.1. A mark cannot be registered if it:

(a) Consists of immoral, deceptive or scandalous matter, or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt or disrepute. [Intellectual Property Code Section 123.1(a)].