It’s Linsane: my catch-phrase one minute, nek minnit… someone else’s?

Thursday 5th April 2012

There’s been much talk recently about the plight of those who have coined or been the subject of catch-phrases, only to find that someone else is profiting from the catch-phrase by being the first to register it as a trade mark.  This article examines the pitfalls of being popular, and suggests how you can protect your own catch-phrase from others who wish to exploit it.

One unfortunate example is skateboarder, Levi Hawken.  Levi was catapulted to fame after a YouTube clip featuring Levi coining the catch-phrase “Nek Minnit” went viral.  Nek minnit (as Levi would say) an Auckland company capitalised on Levi’s popularity by applying to register the mark NEK MINIT in relation to soft drinks.  Budget clothing company Supré also seized the opportunity to profit from Levi’s catch-phrase selling t-shirts emblazoned with “Nek Minute”, without Levi’s consent.

On a grander scale, when Jeremy Lin of the New York Knicks applied to register the trade mark LINSANITY, a catch-phrase referring to the meteoric rise of the previously unknown basketballer, he found that two quick-thinking Americans had registered the mark first.  Lin also discovered that, a year earlier, a Chinese basketball manufacturer had registered Lin’s full name as a trade mark in China and was selling merchandise featuring the mark.

What are the consequences for Lin and Levi?  Luckily for Lin, in the US (and New Zealand) an applicant cannot register a mark that clearly identifies a living individual without that individual’s consent.  Lin should therefore have no difficulty obtaining the registration of LINSANITY for himself.  In China, however, first registrations assume priority over everyone else, which means that Lin and sponsor Nike face an expensive legal battle to gain ownership of the mark if they wish to sell any merchandise in China with Lin’s name on it.  
After Levi appeared on television to discuss his woes, the Auckland company that applied for registration of NEK MINIT agreed to sell Levi the trade mark “for a few [hundred] bucks”.  Without this concession, Levi would have also faced a pricey legal battle to establish that he was the true owner of the NEK MINIT trade mark.  Because Levi had no prior registration of any Nek Minnit related trade mark, he would be relying solely on his reputation to do this.  In Supré’s case, the risk of a finding that Levi is also the true owner of the “Nek Minute” mark appears to be a battle that Supré is willing to wage, no doubt in the knowledge that Levi is an individual of limited financial means.

As surprising as it sounds, Lin and Levi could learn a valuable lesson from Charlie Sheen.  Sheen found himself in considerable strife last year when he spouted dozens of outrageous catch-phrases on television including, “I am not bi-polar, I am bi-winning!”, “tiger blood”, and “defeat is not an option.”  Sheen got his own back though by registering (through a newly formed company) 34 trade marks that captured the content of his outbursts.  Anyone that sought to capitalise on Sheen’s popularity (including one company that applied to register TIGER BLOOD in respect of soft drinks) has been promptly sent cease and desist notices from Sheen’s attorneys.

Another trade mark success story is that of AMI Insurance in the late 1990s.  AMI fashioned a successful advertising campaign using graffiti styled billboards and television advertising to dramatise the potentially nightmarish consequences of a fictional “Party at Kelly Browne’s”. AMI registered a number of “Kelly Browne” related trade marks as a result, and profited (both financially as well as from further publicity) from licensing those marks to others.  For example, AMI permitted the Otago Rugby Union to use the slogan, “Party at Tony Brown’s” (Tony Brown at the time being an Otago rugby player) for a big home game.  AMI also successfully prevented the registration of other similar marks, such as KELLY BROWN BEER.

So, to use a Sheen-ism, what do winners do?

  • apply to register catch-phrases.  Registration counts as notice to the world (or at least, to your jurisdiction) that you are the owner of the catch-phrase.  Once the catch-phrase is registered, the trade marks can be enforced against against anyone that infringes, as well as licence the rights to those that will further promote your catch-phrase; and
  • apply to register the catch-phrase sooner, rather than later.  If someone else gets in first, there will be legal costs in opposing the application, or in trying to get back the trade mark at a later date.  As the Lin example shows, this is even more important in China, where being first to register is everything.

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