Preserving a Rodeo Legend’s Legacy and Wrangling Rights in the IP and NIL Arena: A Case Study

Executive Summary

This riveting legal and business case study dives into a complex dispute over the intangible property rights of a deceased record-shattering rodeo champion, pitting his surviving family against a former licensee. At the heart of the conflict are the celebrated superstar's name, image, and likeness (NIL) rights, related intellectual property (IP) rights, and a contentious federal trademark registration featuring the departed icon's name. Armed with a sharp business acumen, a sense of fairness, and a robust legal strategy, a family-owned enterprise, spearheaded by the late legend's nephew, successfully ducks and weaves through a cyclone of laws of NIL and IP rights to secure a favorable resolution and regain control over the celebrated rodeo star's legacy.

Introduction

The power of a name and image, especially when tied to an iconic figure, can extend far beyond their lifetime. For those seeking to leverage and sustain their personal brand, understanding the legal landscape surrounding NIL rights, trademarks, and other IP rights is absolutely crucial. There's much crossover, but NIL rights and other IP rights (including trademarks and copyrights) are distinct and each can persist for many decades after death.

For instance, Bruce Lee, who died in 1968, exemplifies the generational potential of NIL and IP rights. His NIL rights are owned by a foundation managed by his daughter, which are licensed for use to various third parties. The foundation also owns registered trademarks featuring Bruce Lee's name in connection with a variety of goods/services. Bruce Lee's movies are copyrighted works. Bruce Lee is a prime example of the enduring value of NIL and IP rights.

Conversely, Marilyn Monroe serves as a cautionary tale about how conflicts between NIL and IP laws can lead to unintended consequences. Marilyn Monroe's estate lost all rights to her NIL following her death because her state of residence did not recognize postmortem NIL rights at the time of her passing.

This case study examines the intricate interplay between IP law (specifically, trademarks) and state laws governing an individual's right of publicity, which includes NIL rights, through the lens of a family's fight to preserve their loved one's legacy.

The Players

Our story begins with a one-in-a-generation rodeo talent, considered a true paragon in his field, who tragically lost his life at the pinnacle of his career. Upon his passing, his parents inherited his NIL rights, a treasure trove of commercial potential tied to their son's incredible standard-setting achievements.

Enter the late legend's nephew, a young entrepreneur with a vision to honor his uncle's memory. He founds a family enterprise and launches a clothing brand named after the late rodeo star, which quickly grows from a local e-commerce operation into a national apparel brand. VenCounsel represents the clothing brand.

The final player in this tale is an acquaintance of the celebrated rodeo legend’s family, who secures a license from the legend's parents to use the late star's NIL in connection with the licensee’s own business venture. Unbeknownst to the bygone superstar's family, this licensee takes a fateful step, obtaining a federal trademark registration featuring the rodeo legend's name. The licensee's federal trademark registration would inevitably prove to be problematic.

The Legal Landscape

Trademarks and NIL are both forms of intangible property. While similar in some aspects, trademarks and NIL are distinct legal concepts governed by separate laws. Trademarks, which are primarily regulated by federal statute (the Lanham Act), state statute, and common law, serve to identify and distinguish the goods and services of one brand from those of others in the marketplace. NIL rights, on the other hand, are a subset of the right of publicity and are governed by state statute, state common law, or both. The publicity rights (including postmortem publicity rights) allow individuals and their estates to control the commercial use of their name, image, and likeness, protecting their persona and the economic value associated with it.

While both trademark and NIL rights have commercial implications and, like tangible property, can be sold or licensed to third parties, they differ in their scope and the nature of the protection they offer. Trademarks are focused on brand identity and consumer protection, while NIL rights are more closely tied to an individual's personal rights and their ability to control the exploitation of their own persona before and after death.

The Inheritance and the Initial License

Upon the premature passing of the rodeo maestro, his parents inherited the rights to his NIL and related IP. Seeking to keep their son's memory alive, the deceased rodeo star's parents created and sold a few products and services bearing their son's name. They also licensed his NIL to a family acquaintance, which allowed the acquaintance (or licensee) to use the late star's NIL for a specific business purpose. This NIL license would become one of the central forces underlying a legal battle years later.

With the blessing and support of his grandparents, the celebrated legend's nephew eventually started a family enterprise, which launched a clothing brand named after the legend. The family business led by the rodeo star's nephew eventually acquired ownership of the departed rodeo champion's NIL and IP rights from the champion's parents, who recognized their grandchild’s passion and dedication to honoring the life and legacy of the celebrated champion. With this transfer of ownership, the brand set out on a quest to protect the late rodeo legend's name and likeness from unauthorized use in an effort to safeguard the family's heritage for generations to come.

Trademark Registration Refused

The brand's quest to protect the esteemed rodeo star's birthright hit a snag when they attempted to register the apparel brand's name as a trademark, which proudly bore the late legend's name. In a surprising twist, the USPTO rejected the application, refusing to register the apparel brand name as a trademark due to the licensee's prior trademark registration, obtained without the family's knowledge or consent.

The brand owner attempted to resolve the matter amicably with the licensee, including a myriad of written contract offers, but the licensee was unwilling to yield or seriously consider the brand owner’s attempts. The licensee remained steadfast, refusing to relinquish their prior trademark registration or move toward any resolution. It was as though the licensee was holding the late legend's name hostage and preventing the family from fully honoring and benefiting from the departed icon's patrimony.

The licensee's responses to the brand owner’s efforts became increasingly sparse and infrequent. Communications eventually ceased completely, and the brand owner remained unable to register a famous family member's name with the USPTO. With negotiations screeching to a halt, tensions rising, and time passing, the brand owner had to make a move. The brand owner terminated the original NIL license and demanded that the licensee cease any further use of the bygone rodeo sensation's NIL, thereby setting the stage for a legal showdown.

Clash of Rights

Both parties lawyered up and began to prepare for an epic legal showdown wrought with complicated jurisdictional issues and conflicting NIL and trademark laws.

Faced with the prospect of an impending legal battle that would likely cost hundreds of thousands of dollars and take years to resolve, the lines of communication re-opened, and discussions resumed. Both parties sought to justify and substantiate their interest in the celebrated rodeo luminary's NIL.

On one hand, the licensee had been using the bygone rodeo hero's NIL for many years and satisfied the licensee's obligations under the license. Additionally, the licensee's trademark had been registered for many years prior to the clothing brand's existence and had garnered substantial goodwill.

However, the family business was the exclusive owner of all the departed rodeo virtuoso's NIL and related IP rights, including the right to control how any NIL or IP rights were used and the right to register the late legend's name as a trademark. Moreover, the licensee had overstepped the bounds of the NIL license terms, which only granted the right to use the cherished rodeo champion's NIL for a specific purpose. The NIL license did not expressly permit the licensee to apply for and secure federal registration of a trademark featuring the cherished rodeo champion's name or confer any other trademark or IP right. Indeed, the late legend's parents had produced and sold various goods bearing his name throughout the years following his premature passing.

The parties shared their justifications and rationale to substantiate their respective claims to rights related to the celebrated rodeo sensation’s NIL and related IP.

Resolution

Through skilled negotiation, coupled with a deep understanding of the legal complexities and practical business realities at play, the family enterprise and the licensee were ultimately able to reach an equitable resolution. The parties' willingness to engage in open dialogue and explore creative solutions paved the way for a mutually beneficial outcome. The licensee agreed to abandon their trademark registration and discontinue commercial use of the legend's NIL, which allowed the family company to successfully register the trademark for the apparel brand and obtain better control and protection over the star's NIL and IP rights related thereto.

This outcome represented more than just a legal victory; it marked a family's triumph in preserving family legacy, ensuring that the rodeo legend's name and likeness would remain in the hands of those who cherished his memory most. For the family business, it was a promise kept, a legacy preserved, and a tribute to the indomitable spirit of a rodeo legend who, even in death, continues to inspire.

Key Takeaways

For entrepreneurs, public figures, and estates looking to build and protect a personal brand, this case study offers invaluable insights:

1. Understand the Difference: NIL rights and IP rights, including trademarks, share similarities but are ultimately distinct legal concepts governed by separate laws. Familiarize yourself with the nuances of each to better understand your or a loved one's NIL and IP rights, so you're better equipped to protect them.
2. Clarity is Key: When licensing your NIL or IP rights, ensure that license terms and restrictions are clearly defined to avoid potential disputes down the line, including the length, geographic scope, purpose, among many others.
3. Monitor and Enforce: Regularly monitor the use of your NIL, trademark, and other IP rights by third parties and be prepared to take action if necessary to protect and enforce those rights.
4. Seek Expert Advice: Don't hesitate to seek the advice of experienced legal, financial, and tax professionals to guide you through all of the intricacies of buying, selling, or licensing NIL or IP rights.
5. Preserve Legacy: NIL and IP rights, although intangible, can have immense financial value. But they're more than just assets; they're a mantle for preserving legacy. Take proactive steps to safeguard them in this lifetime and the next.

Conclusion

The case of the rodeo legend's intellectual property dispute is a testament to the enduring power of a personal brand and the need for strategic, vigilant, and ongoing monitoring and action to protect it. By understanding the legal and business atmosphere, seeking expert guidance, and taking decisive action, you can safeguard valuable NIL rights and related IP rights, ensuring that you and your family, whether through lineage or choice, benefits from a lasting heritage that endures over the course of multiple generations.