By: Isha Biswas
Famous NBA player Giannis Antetokounmpo, affectionately named “The Greek Freak” by his loyal fans, has registered trademarks surrounding his well-known moniker.[1] Since registering the “Greek Freak” and the “Greek Fr34k” as trademarks, Antetokounmpo has filed a slew of lawsuits in the Southern District of New York in an effort to protect his personal brand.[2] Most recently, the Southern District of New York ruled on Antetokounmpo v. Paleo Productions LLC et al.,[3] in which Antetokounmpo sued Paleo Productions, a mail-order meal-delivery company and its CEO “from selling a spice blend branded ‘Greek Freak.’”[4] The court denied Antetokounmpo the requested $100,000 in damages as “a reasonable consumer would not be tricked into thinking he or she is buying a genuine Greek Freak spice blend because there is no such thing.”[5]
Trademark infringement claims are commonly brought under the Lanham Act, which “imposes liability on a person who, without consent, uses another’s registered trademark in commerce in connection with its goods or services so as to cause confusion or mistake or to deceive”, and if the use is likely to cause confusion.[6] The likelihood of confusion test was most notably used in AMF Inc. v. Sleekcraft Boats and in Polaroid Corp. v. Polarad Electronics Corp.[7] In AMF Inc v. Sleekcraft, the Ninth Circuit Court of Appeals put forth eight factors used in assessing whether confusion between related goods is likely: “(1) strength of the mark; (2) proximity of the goods; (3) similarity of the marks; (4) evidence of actual confusion; (5) marketing channels used; (6) type of goods and the degree of care likely to be exercised by the purchaser; (7) defendant’s intent in selecting the mark; and (8) likelihood of expansion of the product lines.”[8]
In Antetokounmpo’s case, the likelihood of confusion test is difficult to apply as the ‘Greek Freak’ and ‘Greek Fr34k’ marks cover products such as apparel and backpacks, but the spice blend in question is a product that the registered trademarks do not cover.[9] Additionally, Antetokounmpo endorses GFG, a purveyor of Greek cuisine, and their line of Mediterranean products called “776” which features products such as feta cheese, spices, olive oil, and honey.[10] However, this is also insufficient to prove that a reasonable consumer would be buying one of Antetokounmpo’s products, as the ‘Greek Freak’ mark is not used in conjunction with the GFG 776 line.[11]
In Polaroid Corp. v. Polarad Electronics Corp.,[12] the 2nd Circuit Court of Appeals put forth several factors for assessing infringement when products are different, including but not limited to: (4) the likelihood that the prior owner will bridge the gap; (5) actual confusion; (6) the reciprocal of defendant’s good faith in adopting its own mark; (7) the quality of defendant’s product; and (8) the sophistication of the buyers.[13]
In this case, Antetokounmpo’s registered marks and the Greek Freak spice blend are difficult to link in terms of similarity and actual confusion especially.[14] Not only are Antetokounmpo’s products completely different from the spice blend in question, the proximity of the products is also vast.[15] The spice blend is a product exclusively on Paleo’s websites, and is not found freely in stores, let alone in any stores where Greek Freak clothing or backpacks may be sold, or where GFG 776’s food may be found.[16] Additionally, it could be argued that Paleo has demonstrated good faith in developing their own mark, as the Greek Freak spice blend is not styled as “Greek Fr34k” or linked to Antetokounmpo in any way, and, as the court notes, Paleo does not use the term Greek Freak as a mark as it is simply used to indicate a flavor, and not the origin of the spice blend.[17] Although Antetokounmpo disputed this, the court asserted that trademark use can be deemed counterfeit only if the alleged counterfeit trademark is used on the same good or service for which the original trademark is registered, thus barring him from recovering statutory damages under the Lanham Act.[18]
This recent suit indicates yet another development in the realm of trademark infringement law. For a star as well known as the Greek Freak, it follows that Antetokounmpo would want to protect his personal brand. However, the Lanham Act and the likelihood of confusion test, as well as the reasonable consumer factors cited in Polaroid present a difficult burden of proof for Antetokounmpo and other complainants alike who want to prove infringement. If Antetokounmpo had linked his trademarks to the GFG 776 line of spices, perhaps this suit would have turned out differently and the likelihood of confusion test would have worked. Is this burden of proof very difficult to meet in certain instances, or did Antetokounmpo simply get unlucky this time around? Unfortunately, even a celebrated basketball legend like the Greek Freak cannot win every battle.
[1] See Sam Harris, Giannis Antetokounmpo: The making of ‘The Greek Freak’, BBC (Oct. 13, 2021), https://www.bbc.com/sport/basketball/58873062.
[2] See Rachel Scharf, Next Up for NBA Champ Giannis: Winning These IP Cases, Law360 (Jul. 21, 2021), https://www.law360.com/articles/1405374 (examining how Antetokounmpo filed fifty-one intellectual property infringement lawsuits in the Southern District of New York in the last two years).
[3] Antetokounmpo v. Paleo Productions LLC et al., No. 20-cv-06224 (JGK) (RWL), 2021 U.S. Dist. LEXIS *113991 (S.D.N.Y. June 17, 2021).
[4] See Harris, supra note 1 (explaining that Antetokounmpo sued last year “alleging federal trademark violations and causes of action under New York business law.”).
[5] Antetokounmpo v. Paleo Productions LLC et al., 2021 U.S. Dist. LEXIS 113991, *7-*8 (S.D.N.Y. June 17, 2021).
[6] See id. at 10-11; see also 15 U.S.C. § 1114(1).
[7] AMF, Inc. v. Sleekcraft Boats, 599 F.2d 341 (9th Cir. 1979); Polaroid Corp. v. Polarad Electronics Corp., 287 F.2d 492, (2d Cir. 1961).
[8] See AMF, Inc. v. Sleekcraft Boats, 599 F.2d 341, 348-49 (9th Cir. 1979).
[9] See Antetokounmpo v. Paleo Productions LLC et al., at *7-*8 (S.D.N.Y. June 17, 2021).
[10] See id. at 3.
[11] See id. at 8.
[12] Polaroid Corp. v. Polarad Electronics Corp., 287 F.2d 492, (2d Cir. 1961).
[13] See id. at 495.
[14] See Antetokounmpo v. Paleo Productions LLC et al., *7-*8 (S.D.N.Y. June 17, 2021).
[15] See id.
[16] See id. at *3.
[17] See id. at *3-*4, *10.
[18] See id. at *8.
