Gnarls, Charles, and Trademark Rights in Proper Names

In yesterday’s Philadelphia Daily News, Dan Gross says that former NBA player Charles Barkley “likes” the music group “Gnarls Barkley,” whose hit song Crazy is one of the unofficial anthems of the summer.

Gross writes (HT to Ben Maller):

CHARLES BARKLEY says he's “flattered and honored” to be the namesake of Gnarls Barkley, the hip-hop/rock duo comprising Danger Mouse and Cee-Lo.

The Round Mound of Rebound says he has their CD “St. Elsewhere,” and “it's pretty good, an interesting mix of rock and rap.”

“I'm excited for all their success,” Barkley told us yesterday.

Gnarls, who blend hip-hop, rock, funk and soul, and who performed their hit “Crazy” while dressed as “Star Wars” characters at the recent MTV Movie Awards, are getting serious, and well-deserved, acclaim for “St. Elsewhere,” their debut CD.

Earlier, the group had denied any such connection between Sir Charles and Gnarls. The band told the Observer Monthly

“You ask me why we're called Gnarls Barkley and I'm asking you “why not?”,’ says Cee-Lo. He's hunched over a burger in a hotel suite in Burbank, California, talking about the group for the first time. “The name Gnarls Barkley isn't anchored down. It's a drifter. A High Plains drifter, I might add.”

Danger Mouse grins. “There's no story behind it,” he says, reaching for the cheesecake. A Mouse who likes cheese - no surprises there. “The name doesn't have anything to do with anything.”

Not even Charles Barkley, the basketball player?

“Nope. It's just like everything else on this record. There was no conscious decision about stuff.”

Let’s say, as the Daily News does, that the name is dervied from the proper name Charles Barkley. What if the athlete didn’t like the music? Suppose that instead of being flattered, Charles Barkley was steamed up. What if instead of a pleasantly deranged pop band, Gnarls Barkley was a death metal neo-fascist rave DJ? What rights, if any, would Charles have to stop Gnarls from using its name? In the 1996 case Abdul-Jabbar v. General Motors, the Ninth Circuit afforded trademark protection under the Lanham Act to the name “Lew Alcindor,” explaining, “One's birth name is an integral part of one's identity.” The key question under the Lanham Act would be whether Charles could prove a “false endorsement claim based on the unauthorized use of a celebrity's identity ••• [which] alleges the misuse of a trademark, i.e., a symbol or device such as a visual likeness, vocal imitation, or other uniquely distinguishing characteristic, which is likely to confuse consumers as to the plaintiff's sponsorship or approval of the product.” Yogi Berra, as Greg noted here, got an undisclosed settlement after Sex and the City appropriated his name.

Are consumers likely to be confused about whether Charles Barkley endorses the band? Would the band have a defense based on altering the name somewhat (that is, because it changed a “Ch” to a “Gn” and dropped an “e”)? Is it possible some people might confuse Cee Lo with Barkley, and think that Sir Charles has gone from rebounding to singing high notes? With Cee Lo in the wig and hat, or in a Darth Vader costume, is such confusion impossible? [George Lucas's IP claims are a completely different matter, beyond the scope of the Sports Law Blog].

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