I have a friend in the poker industry. He’s a fantastic player, very smart, and a successful entrepreneur. On top of it, he’s a great guy. He has started up, managed, and hosted several top-rated poker television shows. He’s no slouch; he knows his stuff.
A few months ago, he called me up and wanted to talk about moving his (then-current) show to a new venue, broadcast medium, and sponsor. Specifically, he wanted to know if he could take the name of his show with him to his new broadcast home. For purposes of the discussion, let’s call the show “Big Slick.” Was Big Slick his property?
Truthfully, but unhelpfully, I told him: “It depends.” To try to start to figure it out, I asked him a number of questions about Big Slick. (I was a fan of the show, but didn’t know how the name came about. I also hadn’t been his attorney when he started it, so I didn’t know how the show itself began and developed.)
Not all of the questions and the follow-ups are here, but below are a few of the initial and critical ones if you have intellectual property that you want to protect and carry with you through your poker career. Poker players and personalities know the value of branding, personalities, and trade names. Often, they just need to make better up-front efforts to safeguard that value.
1. What does the agreement say?
What did the written agreement between my guy and his promoter/broadcaster say? It turns out it didn’t say anything; there was no written agreement. Not having a written agreement doesn’t necessarily mean there’s no contract between the parties. Some important contracts can be verbal. But some laws specifically prohibit verbal contracts (for example, many jurisdictions prohibit verbal real estate contracts selling real estate has to be done by written agreement). More important, verbal contracts are invariably tougher to enforce than written contracts. Their terms often aren’t clear and, even when they are, there’s often a disagreement about whether the parties agreed to commit themselves to a contract, as such. A clearly drafted and properly executed written agreement solves both of these problems.
Anyway, back to my pal. When he and the promoter decided to collaborate, it was agreed that an advertising sponsor would pay a certain amount to broadcast the show (this wasn’t committed to writing, either). My friend hosted and produced the show. He came up with the name Big Slick and owned the corresponding web domain name. Some help was provided gratis by the promoter in putting together the Big Slick logo for the show. There was no term on the agreement between my friend and the promoter.
2. Who had trademark rights in Big Slick?
While I was on the phone with my friend, I did a quick search of the trademarks databases in the US Patent and Trademark Office and the Canadian Intellectual Property Office. Neither showed a registration for the Big Slick trademark. (Remember that Big Slick is a pseudonym; you’ll have to take my word that the real mark was and is not descriptive and otherwise fully registrable.) Which meant that neither my guy nor his promoter had a registered trademark in the name.
What about common law trademark rights? Common law trademark rights are rights obtained through use of a non-registered mark. To the extent that there is a paramount issue in trademarks, it’s this notion of use, and not just use in any manner, but use as a trademark. Both my buddy and the broadcaster had been promoting the name through marketing for the show. However, had they been using Big Slick as a trademark? The promoter had listed Big Slick on its website as a member of a family of shows that it broadcast and promoted. This wasn’t use as a trademark; this was arguably an indication that it had a licence from the trademark owner to call attention to the fact that it broadcast the show. My friend’s usage was much more consistent and compelling. He used Big Slick as a brand and a trademark. His website or service wasn’t just broadcasting Big Slick; his show was The Big Slick.
While my friend came up with the name, the logo was a collaboration. This highlights the difference between word marks and design marks. Word marks are trademarks that are bare words in any font, style, or size. “PartyPoker” is trademarked as a word mark around the world (confined to the wares and services set out in the particular mark) however it is written or it appears. Design marks are trademarked logos or words written in a specific font or style (or both); “PartyPoker” in the stylized lettering with which we’re all familiar is also trademarked as a design mark in several jurisdictions.
There was no registered design mark for Big Slick. My friend indicated that both he and his promoter had worked on it “together” and that both had used it in marketing the show. A key question here (for copyright purposes) was “who actually put pen to paper and designed the logo?” Often, there’s one person that did it, and here it was my guy. My buddy should have had the copyright and the better set of trademark rights because the logo had been used by him as a trademark.
3. Other Issues
As briefly mentioned above, copyright also came into our discussion, but this post is already getting long enough without drilling down into that. I asked my friend whether Big Slick had any value separate and apart from his involvement. That is, if he left and the promoter still had a show called Big Slick, what would it be worth, either as a show or as a bare name or design mark containing Big Slick? Setting aside the IP aspects of who owns what, there was a practical question of whether the parties were about to start fighting over something that might not be worth a fight.
At the end of the day, the promoter suggested that it had some rights in Big Slick and would need to have those rights bought out. I disagreed, based fundamentally on my guy’s use of the word and design marks as trademarks (see above). My friend - ever the serial entrepreneur - decided to create a whole new name and go forward with his new promoter. I told him that he still had considerable rights in Big Slick and that simply walking away wasn’t his only option, but I respected his decision. (A potential public fight about the name between the parties wasn’t without risk for either of them.)
The bottom line, of course, is that the parties are always well-advised to turn their minds to these questions when they’re establishing their relationship so that there’s little room for argument later on. My friend went with a new promoter on a new site, but this time we insisted on a written agreement. (A written contract doesn’t have to be anyone’s magnum opus or cost an arm and a leg. My friend’s agreement was three pages and my review took a few minutes.) In it, I specified that my friend was to retain all intellectual property rights in his new show, inclusive of the name and all trademarks. The promoter would have an unlimited and non-exclusive right to broadcast and host the show on its website. Both parties are happy with the arrangement.
My friend also owns the new associated Internet domain name and is considering a trademark application.
The moral of the story is: write it down in advance and think the issues through so that, when poker-related property that has been developed is valuable and people are parting ways, there’s less to fight about and fewer fees wasted on lawyers. As another like-minded lawyer friend of mine puts it: Tough contractual negotiations are always easier than tough settlement negotiations.
(Thanks to Michael Hilliard (my best friend, an eminent IP lawyer, and counsel to Microsoft) and to Jamie Bashtanyk (@TCTrademarks on Twitter and my go-to trademark agent), for correcting this blog post for me. However, any errors in this post are mine alone.)
Toronto-based Stu Hoegner writes a darn good disclaimer as a gaming attorney and legal advisor. You can follow him on Twitter @GamingCounsel.
