By: Christopher Kinney
Not long after winning back-to-back Most Valuable Player awards and a league championship, NBA Superstar Giannis Antetokounmpo (“Giannis”), has his sights on a different type of victory: winning in the courtroom. Giannis has come to be known around the league as the “Greek Freak” largely in part due to his Greek heritage and ferocious playing style. Unsurprisingly, Giannis trademarked the nickname and began incorporating it into his merchandise. Shortly thereafter, Giannis and his legal team began aggressively pursuing lawsuits against any individual that used “Greek Freak” in commerce.
For Giannis to successfully claim trademark infringement, he must prove that someone used his registered mark in a way that is likely to cause confusion. Absent a showing of likely confusion, Giannis would simply be entitled to an injunction against the violators rather than damages. Likelihood of confusion exists between trademarks when the marks are so similar and the goods for which they are used are so related that consumers would mistakenly believe they come from the same source. Each application is decided on its own facts, and no strict mechanical test exists for determining likelihood of confusion.
Over the course of the past two years, Giannis has filed more than fifty separate lawsuits over infringement of his trademark. While nearly 80% of the disputes have been dropped or settled, there are several still being litigated and a few that have been decided in favor of Giannis. One dispute involving the sale of cooking spices, however, was not decided in a manner the NBA star envisioned.
Paleo Productions (“Paleo”), is a specialty food provider that markets its products as a convenient, paleo friendly, meal prep company. One of the ingredients used by the company is called “Greek Freak Seasoning”. Giannis and his team sued the company for violating the Latham Act, a federal trademark statute. Paleo and its CEO, Nick Massie, did not respond to the lawsuit, leading to a default judgment being entered in favor of Giannis and his team. U.S. District Judge John Koeltl ordered a permanent injunction and payment of Antetokounmpo’s legal fees but withheld an award of damages.
Judge Koeltl, with the assistance of U.S. Magistrate Judge Robert Lehrburger, determined that damages for counterfeit were inappropriate because Giannis did not have a similar product that would cause consumer confusion. The Antetokounmpo legal team objected to the decision, arguing that Paleo’s spice did amount to counterfeiting because the description of the flavor used was identical to Giannis’s “Greek Freak” trademark, but Judge Koeltl said that the trademark only covered products that Giannis made, like shoes and apparel.
While this decision was disappointing for Giannis, it was the correct one. This particular case represents a dilution issue, a legal claim also under the Latham Act, but different than counterfeiting. Dilution occurs when unlicensed use of a registered mark decreases the distinctiveness of the mark. Here, because a consumer would be unlikely to confuse the seasoning with a product attributable to Giannis, a ruling of counterfeiting damages would have been inappropriate. Counterfeiting, as opposed to dilution, occurs when fake products are sold under the name and trademark of another brand without authorization from the brand owner and are passed off as the genuine product. There was nothing to suggest that Paleo was using “Greek Freak” to convince consumers that the product was endorsed by Giannis, but rather because it included traditional Greek spices. Despite the decision and subsequent injunction, Paleo Products to this day has continued to use “Greek Freak” seasoning in its product descriptions in violation of a federal court order. This should signal to the court and others that absent damages, trademark infringers have little incentive to comply.
This case, however, is an outlier of the many intellectual property disputes that Giannis has pursued. The vast majority of the more than 50 lawsuits filed involve memorabilia profiting off of the former MVP’s likeness and name. While the details of most of the disputes are largely unknown due to settlements, Giannis has collected more than $140,000 in damages from individuals using “Greek Freak” on phone cases, apparel, and action figures. Many of these items are sold on e-commerce platforms like Etsy, which leads to greater concerns about the dangers of counterfeiting on similar digital platforms. In 2016 alone, more than $500B of counterfeit goods were estimated to be sold worldwide.
While few feel sorry for athletes like Giannis, who signed a $228M contract extension, his situation is a necessary reminder about the dangers of trademark and copyright infringement on e-commerce websites. Intellectual property laws are designed not only to protect the owners of the trademarks, but also consumers. As we dive deeper and deeper into the digital age, it is important to keep in mind the necessity to take intellectual property rights seriously.
Student Bio: Christopher Kinney is a second-year law student at Suffolk University Law School. He is a staffer on the Journal of High Technology Law. Prior to law school, Christopher received a Bachelor of Arts Degree in History from Boston College and spent several years working for one of the largest technology providers in the United States.
Disclaimer: The views expressed in this blog are the views of the author alone and do not represent the views of JHTL or Suffolk University Law School.
