In the year or so since I started the BJJ New & Upcoming Gear Opportunities group (and sister page) in the Fall of 2013 on Facebook (BJJ New Gear for short), I have noticed a startling number of what can only be described as trademark, copyright and wordmark infringements by scores of people making BJJ clothing and gear.
Now some of these are just the "Average Joe" BJJers who want to make and sell a shirt with Helio Gracie's image on it to a few friends and fans. And there are LOTS of those people doing exactly that. But some are established Brand Owners (names withheld to protect the guilty) who are not only risking their reputation by illegally using someone else's intellectual property, but also risk substantial amounts of money should they be sued by the owner of said intellectual property. And even if they do not lose, the attorney costs alone will run into the tens of thousands of dollars if not substantially more. And how many tee shirts with Helio's face on it do you need to sell to net $10,000 or $20,000 that you'll need to spend on legal fees?
That being said, I do NOT have a formal legal education, but in my capacity as a high-end commercial real estate broker for over two decades I have dealt with attorneys from all walks of life. From the small mom & pop, one man shop attorney to attorneys for Fortune 100 companies, and everyone in between. So while my legal training is neither scholastic nor formal, it is real life. And when I don't know the answer, I do know where to go and find the answer as I did recently for one major Brand Owner whom I was concerned for. And here is what I found out:
I wrote to and spoke on the telephone at length with a trademark attorney that I know. And in summary he said the following:
For items, such as clothing, that will have either a photograph or artwork you will need two permissions.
The first permission is from the photographer or artist who owns the copyright (or rights to) the photograph or artwork. He took the photograph or painted the painting, as the case may be, and as such he owns it. It's that simple.
The second permission you will need is from the subject person or their estate (if they are deceased) because he (or she) owns the Right of Publicity to their image and name. In a deceased persons case that Right of Publicity will be owned by his (or her) estate for 75 years after death. Then after 75 years it is available for anyone to use.
So NO you can't make a shirt or rash guard with the photo or drawing or painting or anything with Helio, Rickson, Bruce Lee or anyone living or dead (unless they have been dead since before 1940) without that persons permission or the permission of the dead persons estate. It is that simple.
Recently one friend purchased the rights to some artwork of a famous person to put on a shirt. And because he had bought the rights to that artwork from the artist himself, my friend thought he was good to go with making and selling hundreds of shirts with that artists digitized image on it. Nope. That might seem like a logical assumption, but look at it this way. Do you think that if I drew you a beautiful line drawing of Donald Trump on it and you made a shirt using that artwork that Mr. Trump would be okay with it? Hell no. And you'd definitely get sued. The Donald protects his Trump brand with a vengeance. I know this first hand having dealt with his people in New York before.
The estates of Elvis and Marilyn Monroe and many others have full time staff just searching the internet for people infringing on their intellectual property and simply suing them. They protect what they own and don't take any prisoners in the process. You will end up far worse off financially if you infringe on the ownership rights of their intellectual property than if you had never gotten out of bed for the past six months.
Then there are the huge corporations like DC Comics, Lucas Films and Disney who own the rights to Superman, Batman, Star Wars, etc. And let me ask you this. Have you ever seen a "Superman" gi? A Batman or Dark Knight gi? A Yoda on the size tag of a major brands gi? You have? Well me too. And personally I do not care. But if DC Comics or Lucas Films or Disney ever sees these, beleive me they will care and they will do something about it.
Some will argue: well the Superman "logo" on the gi does not look EXACTLY like the real Superman logo. The difference is more than 10% so it's okay. Having heard that several times before I asked my trademark attorney that exact question, and his reply is simple. He said: Those types of beliefs are all old wives tales. They do not exist and do not apply. The ONLY judge as to whether or not an item is infringing on a trademark, copyright or wordmark is either a jury of your peers, or a judge in court. And even if you are found "not guilty," again let me ask how much money are you prepared to spend defending yourself in court against the likes of Lucas, Disney and DC Comics? Forget tens of thousands now. It'll be hundreds of thousands. And for all but the largest BJJ Brands, that is a death sentence.
I have several friends that own BJJ gear companies and one of them became involved in just this EXACT type of situation. Unknowingly he infringed on the trademark and wordmark of a very well known company. And like so many other large companies they have a team of in house lawyers and staff that spend their days scouring the internet seeking out those who would use their intellectual owned property for self profit. And low and behold my friend had done just that.
** Now, did he knowingly do this? I don't think so. I truly don't think he even knew what a wordmark was before this happened.
** But SHOULD he have known? Yes, no question.
** DID he do it? Sure, there was no denying it. It was a obvious as if he had taken the design from their website and put it on his gear without even photoshopping it first to make it look a little different. The pattern, colorways, name, etc., were all blatant and obvious infringements.
So what happened?
He received a cease and desist letter from legal counsel. And a settlement was offered by the plaintiff that would have sucked out any and all profit that he had made in the sale of this gear. But fortunately he is a small brand owner with no real assets to his name or the companys name. So with some help he was able to convince the plaintiff that if he destroyed all remaining inventory, provided the name and contact information of the manufacturer (in Pakistan), and promised to never infringe on their trademarks again, they would drop the claim. And do so for only several thousand dollars in restitution.
Well, we ultimately were able to negotiate that restitution payment down to zero and everyone was satisfied. Fortunately for my friend he came to me and asked for help. So together we were able to make this go away with very little pain. Now don't get me wrong, I've got a good 12 to 16 hours of time into reading all the correspondence and writing replies. Fortunately my time is not $350 an hour or more like most attorneys. I do it for free for my friends who need help. No issue, no questions. Let's just make this go away. And we did. But don't do it again. Please.
Anyway, I know this kinda thing goes on a lot, and for some people the risk is worth it (if they are even aware of the risk), but as Jiu Jitsu becomes more mainstream and more visible the chances of being tapped on the shoulder by an attorney representing a plaintiff becomes more and more likely.
I just had to say this once again and a final time because I am seeing this more and more often. It's only a matter of time in my opinion before what happened to my friend happens to one of the bigger brands and it isn't settled, it goes to court. And then all eyes will be on BJJ and there will be no place for anyone to hide.
In Google Images....when I type the following searches I get the following results:
Superman jiu jitsu kimono
The first image that pulls up is this:
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I think trademark business name provides a couple of benefits. One is that you have legal protection from someone else claiming rights to your business name, which is wise when it’s the same as your own name.
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