While T-Sizzle Takes to Gridiron, His Lawyers Tackle "Ball So Hard University" Trademark, Right of Publicity Dispute
Terrell “T-Sizzle” Suggs roams the gridiron looking to make his presence known to opposing quarterbacks by delivering some of the most devastating sacks in the game of professional football. His lawyers, meanwhile, tackle a different kind of foe off the field: people they say are violating Suggs’ trademark and affecting his right of publicity.
Few know that Suggs, a linebacker for the Baltimore Ravens, uses his fame and talents—and a reported $63 million football contract—off the field to build media and apparel businesses. He’s the current CEO and President of Team Sizzle Worldwide, an independent film company based in Baltimore, and an entrepreneur in the apparel industry, selling t-shirts and other merchandize with his likeness and the catch phrase “Ball So Hard University,” which is at the center of a burgeoning legal dispute.
Suggs used the fictitious university name, according to the Baltimore Sun, rather than his actual alma mater, Arizona State University, when he introduced himself on national television at the start of the November 6, 2011, Steelers vs. Ravens game. He later filed five trademark applications on November 17, 2011, in the U.S. Patent & Trademark Office, to protect the phrase. But he wasn’t the only one who thought the name was catchy, or that it would help sell merchandize.
Within hours of Suggs’ use of the phrase on television, Brian Bussells, Tonyshirt.com, and others reportedly began selling Ball So Hard University products on the Internet. In Mr. Bussells’ case, he also registered the domain name “ballsohardu.com” and filed a trademark application for the phrase, both on November 7, 2011. Bussells operates Busstees LLC, a design company in Maryland.
Suggs' lawyer—Kimberly Grimsley of Bowie & Jensen—responded with cease and desist letters, arguing that the use of BALL SO HARD UNIVERSITY on t-shirts sold by others creates the appearance of a connection with Terrell Suggs, which is false and misleading in violation of the Lanham Act, she says, and would likely create confusion between T-Sizzle’s products and those of others who are selling merchandise without Suggs’ permission. Ms. Grimsley also contends that Suggs’ right of publicity is being violated, and will cause damage to the “commercial value of his persona.”
The outcome of Suggs’ trademark dispute will depend on whether Brian Bussells has superior rights to the BALL SO HARD UNIVERSITY trademark. In the United States, trademark rights are based on the use of a mark in commerce, so if Bussells can establish that his use was legitimate and before Suggs’ (Bussells claims a first use in commerce on November 7, 2011), he may prevail against the linebacker (assuming the catch phrase is even registerable under the trademark laws, which is a different issue altogether).
Suggs’ lawyer’s diminished right of publicity argument may be even more tenuous than his trademark position. The right of publicity is the inherent right of a person to control the commercial use of his or her identity (or that of someone else’s). Based in state law, the ability to control an identity for commercial gain is an intellectual property right that, when infringed and shown to reduce the commercial value of the person’s likeness or persona, can be compensated through damages.
Maryland courts, however, do not explicitly recognize a right of publicity, though they would consider the same relevant facts under a right of privacy action, i.e., misappropriation of likeness for commercial purposes. To establish a case of liability for invasion of privacy through misappropriation, the plaintiff must establish that the defendant, without permission, used some aspect of the plaintiff's identity or persona in such a way that the plaintiff is identifiable from that use. The plaintiff must also establish that his peace of mind and dignity were damaged by the defendant's use of plaintiff’s identify or persona.