Update: Since I originally published this article, Eastern Market Brewing has resolved its issues with Barry Sanders and no longer uses his likeness on the beer can. Same Old Lager is available again, and instead of a Lions player wearing the number 20, the brewery’s mascot graces the can against a pixilated, video-game style football field. The marketing and slogans still stand and continue to play on the Lions’ reputation for mediocrity – and perhaps Eastern Market can capitalize on the Lions’ recent coaching and GM change to push their cleverly branded lager.
Still, many lessons here for any enterprising business owner. Intellectual property law has many hidden pitfalls, and falling into one not only will cost legal fees to defend against a cease-and-desist, but also disrupt your marketing and sales.
Detroit’s own Eastern Market Brewing Company came up with a genius marketing idea: a beer called “Same Old Lager,” a clever play on the “same old Lions” saying that has become familiar to Detroit football fans after years of mediocre results. The slogan for the crisp 4.5% ABV lager is “don’t set your expectations too high” and the beer itself was announced the same day the Lions suffered a crushing 20-0 defeat to the Panthers, and just about a week out from the Lions’ annual Thanksgiving game. Clever marketing, impeccable timing, free media attention. Hit product, right?
Wrong. Apparently someone forgot to run the new product by their lawyer or if they did, their lawyer missed a big problem. The day after the new lager was announced, it was removed from sales in response to Barry Sanders’ cease-and-desist for unauthorized use of his likeness on the cans. The retro-video-game-style logo featured a pixelated football player in a Lions uniform with the number 20 (Barry Sanders’ famous number) carrying a football against a gridiron backdrop. Mr. Sanders quickly took to social media to disclaim any affiliation with the product and announced that his image was being used without his permission. As quickly as the new beer was announced, production and sales were halted. Opportunity lost and a genius marketing plan derailed.
I have previously written about Peloton and how the billion-dollar publicly-traded behemoth was facing millions dollars in liability for unlicensed use of music in their workout videos. In today’s digital world, intellectual property rights are more critical than ever, and the Eastern Market snafu is just the latest example of how (presumably inadvertent) infringement can happen. So what did the company do wrong? And how could they have done it right?
What did they do wrong?
The brewery’s marketing ploy was actually very clever. Nothing in the slogan or description expressly referred to the Lions. The Detroit Lions is a valuable trademark, along with the logo, so Eastern Market obviously did not want to pay for its use or licensing. A marketing campaign that riffs on the Lions’ reputation for consistent mediocrity, but does not expressly reference the Lions does not violate the trademark itself. In a nutshell, trademark law prohibits unauthorized use of a mark in a manner that is likely to cause confusion about the source of the goods or services. When something is clearly parody, let alone does not use the actual mark, there is no trademark violation. In other words, no one can reasonably claim that they think a beer called “Same Old Lager” is somehow actually endorsed by the Detroit Lions.
The problem was not trademark law – rather, it was the “right to publicity.” A pixelated video-game likeness of a Lions player wearing Barry Sanders’ famous number 20 jersey graces the front of the can. Generally, a celebrity like Mr. Sanders owns the rights to his own image and has the right to control its distribution. Here, the brewery used Mr. Sanders’ likeness on the beer, implying his endorsement. Accordingly, his legal team took action, which lead Eastern Market to take down its new product, likely pending a new can design. Even if Eastern Market decided to make the case in court and fight back, the campaign momentum has been disrupted, and even so, Mr. Sanders’ case appears to be fairly strong and supported by decades of caselaw. The “right to publicity” is a concept dating back to the 1950s and is related to copyright law, although they two are not the same. There are cases that have protected everything from Vanna White’s likeness that Samsung tried to replicate as a robot, to Bette Midler’s voice, to Johnny Carson’s catchphrase “Here’s Johnny,” to a human cannonball circus act. And, of course, there is a number of exceptions, including when a likeness is used for educational purposes, news items, public issues, and even “entertainment and amusement concerning interesting aspects of an individual’s identity.”
How could they have done it right?
The brewery should have requested a legal opinion from an attorney approving the marketing as well as the packaging. Once the attorney flagged the right to publicity issue and the possible misuse of Barry Sanders’ likeness, a minor redesign would have likely taken care of the issue. Changing the number of the player, removing the number, changing the uniform colors, or any other number of tweaks are possible options. Another potential issue is the design’s likeness to the beloved retro football game “Tecmo Bowl” – and an attorney should have researched and cleared that issue (potential copyright infringement) as well before the design went to print.
The bottom line is that the marketing team can get ahead of the legal team. Copyright, trademarks, patents, licensing, and the “right to publicity” are all important concepts that all business owners should be aware of. Doing it right may cost a little bit more in the short run, but can avoid significant costs down the line.
Disclaimer: This article is for general informational and promotional purposes only. Nothing herein constitutes legal advice and is the author’s individual opinion. Every business is different and faces its own unique set of challenges. Do not take any action with respect to your business until you have obtained specific guidance from a qualified professional.
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