In May of this year, tennis player Novak Djokovic – probably the best known Serb alive – became the focus of a controversy with a strong intellectual property flavor. The media discovered at the time that a book authored by an anonymous Serbian writer and entitled “Kad porastem biću Nole” (“When I grow up, I want to be Nole”) was offered to be sold to primary school children in the province of Vojvodina, without Djokovic’s authorization. On the covers of the book, Djokovic’s nickname “Nole” and drawings of him figure far more prominently than the name of the author. Parents of the children, as well as Djokovic’s lawyers, were quoted as saying that they were upset by a poem in the book allegedly encouraging children to bet on Djokovic in order to make a quick financial gain. The author, Blagoje Bakovic, dismissed the allegation and told the media that, as a poet, he would not explain the content of his work.
Djokovic’s lawyers announced that they would react and stop the “impermissible activities which abuse the name of Djokovic, and abuse children too”. There have been no subsequent reports as to whether Djokovic initiated judicial proceedings. Suppose a case like this does come before a Serbian court: what legal issues would be involved?
A few months later (in August), another Serbian citizen of international fame, the late writer Danilo Kiš, also became the subject of a controversy of an IP nature. Kiš’s former wife complained to the media that an association of Serbian writers was misappropriating Kiš for the second consecutive year by using his name and quotes from his books in the call for submission of literary works in a open competition for the literary prize which the association awards. In contrast to Djokovic and his lawyers, the wife of the famous writer did not threaten with legal action.
The second installment of this two-part post will address the possible right-of-publicity issues involved in both controversies. This installment explores the possible infringement of a trademark held by Novak Djokovic.
Although the Serbian Trademark Act (2009) does not specifically provide for the possibility of registering a name or nickname as a trademark, such registration is allowed, and Djokovic has registered a few trademarks with variations of his name. One of these, “Novak Đoković – Nole”, was registered in April 2011. “Nole” is the nickname under which Djokovic is known both in Serbia and abroad. Among the classes in which the mark is registered is class 16, for books and a plethora of other goods. From the accounts in the Serbian press, it appears that the book “Kad porastem biću Nole” was published at some point in 2012.
Can the use of the word “Nole” on the cover of the book infringe upon the mark “Novak Đoković – Nole”? Of relevance in that context is Article 38(2)(2) of the Serbian Trademark Law:
A trademark holder shall be entitled to prohibit unauthorized use by third persons of … a sign identical to his earlier protected mark for similar kinds of goods and/or services, or a sign similar to his earlier protected mark for identical or similar kinds of goods and/or services, if there is a likelihood of confusion, including the likelihood of association of that sign and with the earlier protected mark, among the relevant segment of the public due to such identity and/or similarity.
The book’s title includes only one word (“Nole”), rather than all three, from the registered mark. But, if other conditions are met, a partial reproduction may suffice for an infringement to be found. “Nole” is a distinctive component of the mark “Novak Đoković – Nole”, because it has no other meaning apart from being a nickname, and Djokovic happens to be the only widely known person in Serbia with that nickname. Use of a distinctive component of a registered trademark in another mark may create the likelihood of confusion on the part of the public, because of the similarity of the marks that are used for identical or similar kinds of goods.
It is more open to discussion whether, as a precondition for the finding of an infringement, the alleged infringer must use its sign “as a trademark”, i.e. as an indicator of the origin of its goods and/or services, which differentiates those goods and/or services from other goods and/or services. Unlike the Australian Trademark Act (Art. 120), the Serbian Trademark Act does not specifically contain that requirement. As a practical matter, however, the difference between the presence of the trademark use requirement in legislation and the absence of such requirement is of little significance, because, in either case, use of a sign shall be infringing if it is likely to cause confusion. As Mark McKenna has shown, the use as a trademark is “simply likelihood of confusion by another name”. The question contributing to clarity is, therefore, not whether the use of the word “Nole” in the title of the book “Kad porastem biću Nole” can be considered “use as a trademark”, but whether it is likely to create confusion as the source or affiliation, i.e. whether the average consumer is likely to believe that an undertaking economically linked to Djokovic published the book, or Djokovic licensed or authorized the book’s publication, or – none of the above.
It is possible that in an example like the book “Kad porastem biću Nole”, the title is intended to praise the tennis star and describe the book’s content. This opens the question: if an alleged infringer does not intend to use the sign in order to indicate the source or affiliation of the product, but in order to convey a message of support for the trademark proprietor, or solely to describe what the book is about, may he nevertheless infringe? He may, if the public is likely to perceive the sign as indicating origin of the goods, or their authorization. This is what the Canadian Federal Court of Appeals argued convincingly in the Tommy Hilfiger case. Under such rationale, a court in a hypothetical case dealing with “Kad porastem biću Nole” would have to make a factual determination as to whether an average reader is likely to conclude that Djokovic is behind, or has endorsed, the publication of the book. A factor to consider would be the size of the word “Nole” and of the drawing of Djokovic, which dominate the cover of the book.
An analysis of the potential infringement by the use of the word “Nole” must also take into consideration the allegedly artistic nature of the book. “Kad porastem biću Nole” has been described in the Serbian press as a book of poetry for children. Here, two societal values collide: the prevention of consumer confusion, on the one hand, and the freedom of artistic expression, on the other. In the United States, courts tend to attach greater weight to the freedom of expression, as embodied in the First Amendment to the U.S. Constitution. Even there, however, courts have warned that
the First Amendment cannot permit anyone who cries ‘artist’ to have carte blanchewhen it comes to naming and advertising his or her works, art though it may be. …‘[T]he purchaser of a book, like the purchaser of a can of peas, has a right not to be misled as to the source [or endorsement] of the product. .. Trademark protection is not lost simply because the allegedly infringing use is in connection with a work of artistic expression.
The Serbian Trademark Act does not provide for any explicit defense based on artistic expression on the part of an alleged infringer. In addition, freedom of expression generally enjoys less prestige in Serbia than in the United States. That said, this freedom is entrenched in the Constitution. Courts are still to address the potential clash between that freedom and the imperative to prevent consumer confusion.
A potential dilution claim arising from the publication of the book “Kad porastem biću Nole” would be grounded in an argument that, upon seeing the word “Nole” on the cover of a book sold to children, the public might associate Djokovic – against his wish – with the commercial exploitation of that segment of the population. Additionally, dilution might result from the content of the poems, at least one of which is allegedly encouraging children to bet on Djokovic. However, for dilution of a trademark to exist, the trademark needs to be famous. “Novak Đoković – Nole”, while being a famous name and nickname of the world’s preeminent tennis player, is not famous as a trademark in relation to any goods or services for which it is registered in Serbia (perfumes, paper products, leather products, clothes, hats, toys, coffee, advertising, educational services, etc.). Thus, a finding of a dilution would be unlikely.
