Tyler lawyer J. Bennett White keeps his eyes peeled these days for products and trademark applications using the names and likenesses of Johnny Football, Johnny Heisman and other monikers referring to Texas A&M quarterback Johnny Manziel. That’s because Manziel is White’s new client.
Manziel has attracted national attention — and all those nicknames — since starting as quarterback for Texas A&M’s football team this fall and leading it to a victorious season with on-the-field eye-popping plays and off-the-field infectious grins. To top it off, on Dec. 8, 2012, Manziel won the Heisman Trophy, the only player ever to do so as a freshman. (Manziel was red-shirted his first year on the team.)
“He certainly has the ‘it’ factor,” says White of J. Bennett White PC.
Given Manziel’s football success and celebrity, his name and nicknames have become exceedingly marketable commodities. Last October, after Texas A&M officials urged Manziel to get his own trademark counsel to protect the use of his nickname “Johnny Football,” the star quarterback hired White, along with his associate Jay Jordan, to help claim and protect trademark rights to his name and nicknames and his common law rights to publicity.
White says Manziel selected his firm after regular outside counsel to the Manziel family, John E. “Ric” Freeman of Tyler, recommended White to the family. The quarterback’s grandfather had relied on White for trademark counsel years earlier, White says. Paul Manziel had sought White’s help when combating attempts to infringe on a trademark for an automotive-racing accessories product that the elder Manziel was marketing. Freeman, of the Law Offices of John E. “Ric” Freeman says he recommended White for his IP knowledge and because White is an Aggie.
White and Jordan have stayed busy trying to keep up with the Manziel mania. There seems no end in sight for the proliferation of Manziel-related products, many of which White alleges infringe on Manziel’s common law publicity and trademark rights.
Shane Hinckley, assistant vice president of business development at Texas A&M who works with the family, says Texas A&M identified more than 900 Manziel-related products for sale on eBay.com in December 2012 that infringed on either the school’s or the player’s trademark rights and common law publicity rights.
During the Jan. 4 Cotton Bowl game, at which the Aggies defeated the University of Oklahoma Sooners, Hinckley estimates that about 20 percent of the T-shirts worn by the crowd were “bootlegged” or produced by marketing concerns that were infringing on trademarks. The university and Manziel typically each send cease-and-desist letters, asking the sellers of products they suspect of infringing to stop using the player’s likeness and names and Texas A&M’s trademarks.
By the end of the month, Manziel will file a formal application to protect at least one trademark associated with his name, including one for “Johnny Football,” according to White, who declines to elaborate in detail about Manziel’s trademark strategies. The Tyler lawyer says Manziel will seek to register the trademarks even though National Collegiate Athletic Association (NCAA) rules prevent the Texas A&M quarterback or his family from profiting from the use of his name and likeness while he’s an amateur, college athlete.
Manziel is taking the trademark action to deter infringers from taking those profits, White says: “We would contend that anyone using ‘Johnny Football’ is infringing on his trademarks rights and his common law rights of publicity.”
Hinckley says two sets of rules have governed Texas A&M’s and Manziel’s lawyers’ approach to the explosion of publicity around Johnny Football and the resulting trademarking questions: NCCA regulations and federal trademark laws.
The NCAA rules require that, if someone other than the school uses Manziel’s name or image for profit-making purposes, Texas A&M must send a cease and desist letter, Hinckley says.
Regarding trademark rights, Hinckley says, Texas A&M and Manziel want to stop infringement. Texas A&M holds federal trademark rights to its name, to use of its Aggie maroon color in connection with that name and to other related marks, Hinckley says. The university decided in October, he says, that, “if anyone was going to profit from the use of the name ‘Johnny Football,’ it should be Manziel and his family.” That’s why school officials recommended in October that the quarterback hire outside counsel, Hinckley says.
Since Manziel tapped White, Texas A&M officials have sent White all the information the school collects about alleged infringers of trademarks related to Manziel “as a courtesy,” Hinckley says.
Manziel’s family pays for the legal services that White and Jordan provide — a cost that would be prohibitive, the Tyler lawyer notes, for many college football players who might have fewer family resources than the Manziels. A great-grandfather of the quarterback and a boxer in the 1920s, Bobby Joe Manziel struck oil in East Texas.
“We’ve all had to scratch our heads and regret what would be happening if this was a similarly talented athlete who didn’t have the family resources,” the lawyer says.
A 1982 graduate of Texas A&M University and later of Southern Methodist University School of Law — and an Aggie fan — White says he followed Manziel’s football exploits long before the quarterback hired him. Is White surprised about the victories, awards and attention his client has garnered? Absolutely not.
“Once somebody starts accomplishing the improbable to the degree that he has, it’s hard to say you are surprised by it anymore. He is as remarkably gifted as an athlete. I’m proud of the way he has handled himself,” White says.