Repost from DLA Piper’s Sports, Entertainment, and Media Blog

By Matt Ganas

The “Johnny Football” nickname that Texas A&M’s freshman quarterback, Johnny Manziel, earned due to his Heisman-worthy efforts in the 2012 college football season is now the subject of federal trademark litigation. On February 15, 2013, JMAN2 Enterprises, L.L.C. sued Eric Vaughan in the Eastern District of Texas, alleging Lanham Act and Texas Unfair Competition violations in connection with Vaughan’s purported online sale and marketing of “Johnny Football” t-shirts. See Complaint at 2, JMAN2 Enter., L.L.C. v. Vaughan, No. 6:13-cv-00158-MHS (E.D. Tex. Feb. 15, 2013), ECF. No. 1. In its Complaint, JMAN2 alleges that Manziel assigned his intellectual property rights to the company, including rights to “the use of his name, nickname, image, picture, likeness, and trademark.” Id. JMAN2 also alleges that Manziel, “through his licensee Texas A&M University, has used the mark ‘Johnny Football’ in interstate commerce with regard to marketing his services as an amateur athlete and with regard to the distribution of goods, namely t-shirts bearing the mark ‘Johnny Football.’” Id.

According to the Complaint, Vaughan has ignored cease and desist letters from Texas A&M and JMAN2 sent in connection with t-shirts stating “Keep Calm and Johnny Football” through a website sharing the same domain name. JMAN2 thus alleges that Vaughan’s actions constitute willful trademark infringement, false designation of origin, and false representation of sponsorship and affiliation pursuant to Section 43(a) of the Lanham Act. Id. at 3-4; see 15 U.S.C. § 1125(a). JMAN2 also asserts causes of action for violation of the right of publicity, palming off, and misappropriation under Texas Unfair Competition law. Id. at 4. JMAN2 seeks injunctive relief and compensatory and exemplary damages as a result of Vaughan’s allegedly willful infringing activity. Id. at 5-6.

JMAN’s allegations and requested relief raise a number of intellectual property and NCAA eligibility issues. For one, Manziel already authorized the NCAA and its host institutions to use his name and likeness to promote NCAA events, activities, and programs by signing a “Student Athlete Statement” (Form 08-3a) for NCAA eligibility purposes. If Form 08-3a is interpreted broadly enough to encompass nickname rights, then arguably Texas A&M would not require the alleged license from Manziel to market “Johnny Football” products. Additionally, by assigning his intellectual property rights to a LLC while still in college, Manziel is navigating relatively unchartered waters. Although the NCAA has ruled that Manziel can keep any potential damage award resulting from this case, its decision disallows the suit to be funded by boosters. This suggests that, for eligibility purposes, the NCCA views a student-athlete’s efforts in enforcing purported intellectual property rights for exclusionary purposes to be distinguishable from the receipt of income through sales and licensing fees to boosters while competing collegiately. Regardless of the outcome, this litigation will likely provide a roadmap for college sports stars of the future seeking to maximize their potential value in the marketplace.

This lawsuit comes on the heels of Manziel and JMAN2’s February 2, 2013 joint application for registration of “Johnny Football” as a trademark and service mark on the federal principal register. See U.S. Trademark Application Serial No. 85,839,336 (filed Feb. 2, 2012). Through this pending application, Manziel and JMAN2 seek to register “Johnny Football” as a trademark in International Class 25, for a variety of athletic apparel and clothing goods, and as a service mark in International Class 41, for a variety of educational and entertainment services.  See id.