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Spike TV, the so-called first network for men, officially launched on Aug. 11. If you tuned in at 9 a.m., you were treated to the babe-filled beaches of “Baywatch.” And that’s not something that filmmaker Spike Lee wanted to be associated with. To avoid any such taint and confusion, Lee sought this summer to enjoin Viacom from changing the name of its TNN cable network to Spike TV. Lee alleged that use of the name Spike TV constituted a violation of his right of publicity, an infringement and dilution of his name, and unfair competition. After a brief but hotly contested legal battle, a settlement was reached in July that allowed Viacom to adopt the Spike TV name after all. While the world is once again safe for “Stripperella,” observers must wonder what might have happened had the case not settled. Could Lee have succeeded? Was the law on his side? ‘SLIGHTLY AGGRESSIVE’ As part of its strategy to lure more male viewers to TNN, Viacom sought a new name with obvious masculine connotations — a name that was, to quote Viacom statements, “edgy,” “hip,” “smart,” “irreverent,” and “slightly aggressive.” After hundreds of hours of cogitating, the company chose Spike TV. Claiming to be convinced that Viacom chose that name to refer to him and to take advantage of his name and public persona, Lee, aided by celebrity lawyer Johnnie Cochran, sought to enjoin Viacom. Lee submitted affidavits from numerous business associates and friends — including former Sen. Bill Bradley (who ran an ad during the 2000 Democratic presidential primary featuring Lee) and actor Edward Norton (who starred in Lee’s 2002 release “25th Hour”) — stating that when they first heard of Spike TV, they believed Lee was somehow affiliated. In its defense, Viacom argued that its use of the name did not in any way refer to or otherwise associate Lee with the network. Viacom showed, at length, that spike is a common word in the English language. Among its many definitions, spike refers to a move wherein one drives a volleyball downward into the opponent’s court, the act of adding zest to something (such as punch), and an abrupt sharp increase. Moreover, noted Viacom, Lee is hardly the only well-known person to have used the name Spike. Other celebrated Spikes include Spike Jones (comedic songwriter from the 1930s to the 1960s); Spike Jonze (contemporary film director of “Being John Malkovich” and “Adaptation”); Spike Hughes, Spike Robinson, and Spike Wilner (all musicians); and Spike Walker (author). Justice Walter Tolub of the New York State Supreme Court acknowledged that spike is a common word with multiple meanings and that the list of famous Spikes in arts and sports was far too exhaustive to set forth in his written decision. He also agreed that there are no reported New York cases in which a celebrity’s first name, standing alone without some other indicia of the celebrity’s persona, received the protection sought by Lee. Nevertheless, on June 12, Tolub granted Lee’s motion preliminarily enjoining Viacom’s use of Spike TV based on New York’s right-of-publicity law. The court concluded that, in addition to the word spike, there were other indicia that Viacom sought to exploit Lee’s persona — most notably, his reputation for irreverence and aggressiveness. Accordingly, the court enjoined Viacom pending a full trial on the merits. The Appellate Division upheld the injunction. Before Viacom had a chance to argue its case to the New York Court of Appeals, the parties reached a settlement. NO WALTER CRONKITE New York law prohibits the use of a person’s name, portrait, picture, or voice within the state of New York for purposes of advertising or trade without that person’s consent. Individuals are entitled to protection only from those uses in which they are identifiable from the objectionable material. Given the many meanings of the term spike and the use of the name by other celebrities, Justice Tolub’s ruling here was surprising. Typically, cases of this nature involve much more than the use of a word; the defendant is usually presenting a look-alike, sound-alike, or other distinctive indicia of a celebrity. Here, the “other indicia” linking Spike TV to the filmmaker — a sense of irreverence and aggressiveness? — seemed rather attenuated. The court likened this case to a network’s hypothetical use of the names “Cronkite News Hour” or “Brinkley News Hour” without the consent of Walter Cronkite or the late David Brinkley. But that analogy is misplaced. Cronkite and Brinkley are specific surnames rather than fairly common first names. Moreover, the names are also not common English words. As a result, there can be little doubt that the public would identify such programs with the two news icons. But Spike TV, without reference to Lee’s picture, voice, or films, does not create the same kind of direct association. Despite the lack of precedents in New York law, Justice Tolub concluded, “[T]he court is of the opinion that in the age of mass communication, a celebrity can in fact establish a vested right in the use of only their first name.” By way of example, he mentioned Cher, Madonna, Liza, and Sting. That is somewhat ironic. Like Spike, Sting has tried to bar another from using his name — in the domain name sting.com. But a World Intellectual Property Organization arbitration panel said no, pointing out that sting is “a common word in the English language with a number of meanings.” And the other names mentioned by Justice Tolub are not common English terms with various meanings beyond a particular person, as is spike. ME, ME, ME Though the New York court based the injunction solely on right-of-publicity grounds, Lee’s suit also involved claims for trademark infringement, dilution, and unfair competition. Here again, the case was atypical. Unlike most trademark disputes, it involved an individual’s name and persona. Day in and day out, companies fight to protect their names from infringement, but individuals are much more likely to take a “bet the farm” approach to stop perceived infringements. This is especially true of celebrities, who are inclined to see their personas as very distinctive — perhaps more so than they actually are — and generally have the money to put up a fight. Indeed, pride is sure to play a large factor in a celebrity’s decision to pursue a possible infringer, regardless of the legal arguments. Details of the settlement were not released, but apparently Spike Lee was satisfied. In a July 8 statement, he announced, “I no longer believe that Viacom deliberately intended to trade on my name.” That’s good, because the court expressly noted that the preliminary injunction was for the purposes of maintaining the status quo and that it “must not be equated with the showing of a certainty of success.” On the merits, the case would likely have been a win for Viacom, leaving Lee to pick up any damages as a result of the injunction. Viacom was claiming losses in the double-digit millions, and the court had already made Lee post a bond for $2.5 million. But what if the case hadn’t settled? It would have been interesting to see how many famous people the court would have let Lee call to the witness stand to testify on the perceived association between filmmaker and network. The case would have likely brought trademark issues to the forefront of the nightly news, for a short time. And it would have allowed Johnnie Cochran to argue, “If Spike TV calls Lee to mind, then infringement you shall find.” Robert Wasnofski Jr. is an associate at the New York office of Baker Botts, concentrating in all aspects of trademark law. He also serves as an articles editor for the International Trademark Association’s Trademark Reporter. He can be reached at [email protected].

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