Posted: January 17th, 2012
By Tierryicah Mitchell *
Retired basketball player, Shaquille O’Neal is no novice when it comes to victory. Throughout his nineteen year career, O’Neal was the recipient of the 1999–2000 MVP award, the 1992–93 NBA Rookie of the Year award, three All-Star Game MVP awards, three Finals MVP awards, and two scoring titles. However, one of O’Neal’s most recent victories occurred off the basketball court and in the courtroom against an Arizona company, True Fan Logo Inc., Michael D. Calmese of Phoenix, and Utah resident Dan Mortensen.
On or around January 2010, O’Neal’s licensing company, Mine O’Mine, filed a lawsuit in a U.S. District Court in Las Vegas alleging, among other things, that the named parties infringed upon O’Neal’s trademarks by operating an online store called “Shaqtus Orange Clothing Co.” The suit also alleged dilution, unfair competition, infringement of O’Neal’s right to control the commercial use of his name, and cybersquatting. Cybersquatting occurs when an individual “register[s], sell[s], or us[es] a domain name with the intent of profiting from the goodwill of someone else’s trademark.”
At the center of all of Mine O’Mine’s allegations is Calmese’s use of the name, Shaqtus. O’Neal coined the nicknames “The Big Shaqtus” and “The Big Cactus” while playing for the Phoenix Suns. According to the allegations, after O’Neal was traded from the Miami Heat to the Phoenix Suns in February 2008, Calmese, in the name of True Fan Logo, and Mortensen registered the website domain names shaqtus.net and shaqtus.com respectively. Both websites were primarily used to promote the sale of “Shaqtus” apparel and collectibles. The websites prominently displayed an animated cactus that bore a loose resemblance to O’Neal. According to Mine O’Mine and O’Neal’s attorneys, “Defendants’ use in commerce of the Shaqtus mark and domain names constitutes a reproduction, copying, counterfeiting, and colorable imitation of the Shaq marks in a manner that is likely to cause confusion or mistake or is likely to deceive consumers.”
On or around this time and into 2009, ESPN broadcast commercials featuring O’Neal encountering an O’Neal lookalike cactus in the Arizona desert. According to the lawsuit, on December 4, 2009, Calmese sent a conditional cease-and-desist letter to ESPN claiming to own the Shaqtus trademark. In the letter, Calmese claimed that the commercials created a “likelihood of confusion” with his products. In order to establish a prima facie case for trademark infringement, the actual owner of the trademark must prove that there is a “likelihood of confusion between his or her trademark and the allegedly infringing mark.” That is, where the owner of the trademark can show “a comparison of the appearance, pronunciation, meaning, and commercial impression of the respective marks,” he may have a viable claim of trademark infringement.
However, according to the terms of the letter, Calmese would have been willing to resolve the matter on the condition that ESPN conduct business with Calmese, including the joint creation of a “Shaqtusclaus” clip for Christmas. A few days later, ESPN attorneys informed Calmese that ESPN had received consent from Mine O’Mine to use “Shaq” trademarks and countered that Calmese was in fact the trademark infringer on Mine O’Mine’s intellectual property rights. On or around December 29, Mine O’Mine and O’Neal’s attorneys sent Calmese a cease-and-desist letter demanding that Calmese and True Fan Logo not only discontinue the Shaqtus name, but also that Calmese transfer the shaqtus.net and shaqtus.com Web site names to Mine O’Mine.
In response, Calmese stated that O’Neal implicitly consented to Calmese’s use of the Shaqtus name when O’Neal, of his own volition, took pictures with Calmese and autographed a t-shirt. Further, Calmese’s response stated, “These pictures clearly show that there was no ill intent by defendants and that there was no indication that plaintiffs had any problems with defendants’ Shaqtus trademark, cactus character and/or company. . . [b]y virtue of having used and continuing to use the cactus character, Calmese has acquired common law trademark rights in the cactus character.”
In its denial of any form of consent to the use of the Shaqtus name, Mine O’Mine and O’Neal’s attorneys stated, “Neither O’Neal nor Mine O’Mine has granted a license to use the Shaq right of publicity or to use and own the Shaqtus mark or the shaqtus.com or shaqtus.net domain names.” Federal Judge, Kent Dawson, ruled in favor of O’Neal in late October 2011 and issued an injunction which effectively barred the defendants from any further use of the “Shaqtus” mark and the website domain names shaqtus.com, shaqtus.net, as well as any other names that could cause a likelihood of confusion to any of O’Neal’s trademarks. Judge Dawson held that “Calmese intended to cause confusion with the Shaqtus mark. He knew about the Shaq mark and yet chose the Shaqtus mark anyway after O’Neal was traded to the Phoenix Suns in February 2008 and after O’Neal was dubbed ‘Shaqtus.[T]here is no question Calmese intended Shaqtus to be confusingly similar to Shaq and the Shaq family of marks.”
I am inclined to agree with Judge Dawson. The average consumer would likely be confused regarding the distinguishable difference between Mine O’Mine’s apparel and merchandise, which bears the Shaq trademark, and Calmeses’, which bears the Shaqtus mark. Given that Calmese’s Shaqtus websites and merchandise fail the primary and basic tenant of trademark law, Judge Dawson correctly barred the defendants from the use of the Shaqtus mark. To have ruled in any other way would have been… well, Shaq-ing (PUN).
* Tierryicah D. Mitchell is a third-year law student at Wake Forest University School of Law. She holds a Bachelor of Arts and Science in Political Science and History from the University of North Carolina at Chapel Hill. Upon graduation in 2012, Ms. Mitchell plans to work for the federal government.