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Sunday, June 26, 2016
Does J.R. Smith Have A "Right-of-Publicity" In His Tattooed Upper Body? He Might Under Ohio Law

One of the most ingenuous marketing ideas to emerge in the aftermath of the Cleveland Cavaliers' stunning NBA Championship is a T-Shirt replicating J.R. Smith's heavily-tattooed upper body (featuring over 100 tattoos, including the logos of the New York Yankees and New Jersey Devils, and even one of him dunking). The controversial guard became something of a national cult figure when he began a long stretch of shirtlessness almost immediately following the final buzzer of the instant-classic Game 7 against the Golden State Warriors. From the celebratory visitors'  lockers room to Las Vegas nightclubs to the City of Cleveland's joyous victory parade, photos of a shirtless J.R. Smith galvanized the Internet, even prompting President Obama to implore Cavaliers' head coach Tyrone Lue to "tell J.R. Smith and everybody to put a shirt on."

You just knew that a T-Shirt endorsement deal was inevitable for the mercurial Smith. It would have been deliciously ironic for a traditional manufacturer to pursue the shirt-challenged Smith as a celerity endorser. Picture this: "Izod, the one shirt that J.R. Smith refuses to take off, under any circumstances." Well, one enterprising Ohio specialty shirt manufacturer, Fresh Brewed Tees (which "prints cool tees" and is licensed by the MLB Players Association) came up with an even better concept: a t-shirt replicating Smith's naked heavily-tattooed torso. The company's Twitter account has a pinned tweet featuring a mock-up of the Smith protoype t-shirt and urging visitors to "RETWEET if you want one." At last count, it has been "retweeted" over 6,000 times and "liked" nearly 4,000 times. But the shirt does not yet appear as an item for purchase on the company's website, so the cost (as well as the availability) of this soon-to-be collector's item remains a mystery (at least for now). Perhaps it's just a publicity stunt. If so, it's a brilliant way to publicize the company.

Assuming that Fresh Brewed Tees (a great name, by the way) is indeed serious about marketing a shirt that will undoubtedly become the must-have item of the summer, it begs the question: does the company have a marketing deal with J.R. Smith? If such a deal is in place, Smith may have found the perfect supplement to his undervalued NBA contract. While it is unlikely that a J.R. Smith body tattoo t-shirt will ascend to the stratospheric sales levels of the "George Foreman Grill," it is sure to be a hit (not only in Cleveland, but also at the popular beach-style nightclubs that line the Las Vegas Strip, a section of town that J.R. and his teammates have been known to occasionally frequent, especially after winning an NBA championship).

But if J.R. Smith has not consented to the use of his image or likeness, then, as Andrew Brandt is frequently fond of saying, "there will be lawyers" (Andrew should trademark that phrase, by the way). In that situation, Smith may have viable claims under Ohio's right-of-publicity statute (Chapter 2741 of the Ohio Revised Code) and federal trademark law (e.g., the Lanham Act), as well as claims under state law for "passing-off" (ironically, not one of J.R.'s basketball strong suits), unfair competition law and common-law right of publicity.

Ohio's right-of-publicity statute provides a strong disincentive for marketers to exploit a person's name, image or likeness for commercial use without his or her consent. Section 2741.02 prohibits the use of "any aspect of an individual's persona for a commercial purpose" both during the individual's lifetime and for sixty years after his or her death, unless that person "first obtains the written consent to use the individual's persona" from the person who owns the individual's right of publicity. Under the statute, "persona" means "an individual's name. voice, signature, photograph, image, likeness, or distinctive appearance, if any of these aspects have commercial value." The statute defines "commercial purpose" as the use of an individual's persona "in connection with a product, merchandise, goods, [or] services." Ohio Rev. Code s 2741.01(B).

The damages recoverable in a civil lawsuit for a violation of Section 2741.02 include "actual damages, including any profits derived from and attributable to the unauthorized use of an individual's persona for a commercial purpose." O.R.C. 2741.07. Additionally, the court could award treble damages (for a willful and knowing violation of Section 2741.02), attorneys' fees (should the plaintiff prevail), temporary or permanent injunctive relief, and, additionally, order impoundment or seizure of the goods. Id. Further, the statute makes clear that "this statutory cause of action [does] not supplant the Ohio common law claim for right-of-publicity." James v. Bob Ross Buick, Inc., 167 Ohio App. 3d 338, 342, 855 N.E. 119, 122 (Ct. App. 2006)

Under this framework, if Fresh Brewed Tees failed to obtain Smith's consent to depict his tattooed torso on a t-shirt, Smith could have a viable claim for a violation of his statutory right-to-publicity under Ohio law, as well as other similar claims under state and federal law. There is little question that Smith's heavily tattooed upper body (is there even a sliver of epidermis that is not covered in ink?) has achieved a level of notoriety in the aftermath of the Cavalier's historic championship. More importantly, it appears to satisfy the statutory threshold for "distinctiveness" even by NBA player standards (sorry, Allen Iverson!). A "Google" search for "J.R. Smith" and "tattoos" yielded over 193,000 results, and numerous articles refer to Smith's tattoos. Since the company appears to be marketing the specialty shirt for a "commercial purpose" (i.e., to make money), the elements under the statute would appear at first blush to be satisfied. Of course, it is quite possible that Fresh Brewed Tees already has a marketing deal in place with Smith. But if it does not, a right-of-publicity suit by Smith to recover the actual profits (and potentially treble damages) on the sales of this novelty t-shirt item could end up making his championship playoff share look like per diem meal money by comparison.

But would such a lawsuit succeed? Unfortunately, there are not a lot of tattoo right-of-publicity cases in Ohio. But even non-tattoo cases are rare. As one Ohio court acknowledged, "[t]here is a paucity of precedent in Ohio regarding the application of this tort." Roe v., 2016 WL 1028265, at *3 (S.D. Ohio Mar. 15, 2016). Nonetheless, there is some precedent involving another famous Ohio sports figure, Urban Meyer, that may lend some weight to Smith's potential claims. In Ohio State University v. Skreened Ltd., 16 F. Supp. 3d 905 (S.D. Ohio 2014), an Ohio federal court held that a print-on-demand t-shirt seller's use of Meyer's name and likeness without the permission of the state university (which owned his right of publicity and persona for purposes of licensing t-shirts) violated Ohio's right-of-publicity statute (O.R.C. 2741.02), and entered summary judgment in favor of the state university. Id. at 916-20. Although the court did not address the issue of damages in that decision (and the case later settled, presumably with a significant payment made by the t-shirt seller to Ohio State University), the Skreened case illustrates the sizable risk that a marketer undertakes in Ohio when it attempts to cash in on the publicity rights associated with a well-known sports figure.


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