"Float like a butterfly, sting like a bee" is one of, if not the most, famous quotable phrases uttered by Muhammad Ali over his legendary boxing career and he's stepping into the ring again to protect it.
On July 13, 2011, Muhammad Ali Enterprises LLC filed suit against Kobo Inc., accusing the digital bookseller and e-book maker of unauthorized use of the former boxer's "Float like a butterfly, sting like a bee" as a slogan in an advertisement for its electronic reading device.
Muhammad Ali Enterprises LLC left the corner swinging in its trademark infringement complaint, claiming that Kobo's unauthorized use of the boxer's iconic slogan in a full-page New York Times advertisement on June 17, 2011, infringes the company's registered trademarks. Muhammad Ali's company owns several U.S. registered trademarks using the phrase, including U.S. Reg. No. 3,895,589 which covers, among other things, books, journals, writing paper, writing pads, various stationary and desk accessories, publications and writing implements and U.S. Reg. 3,768,688 which covers among other things, cups and mugs, drinking glasses and glass mugs and lunch boxes. The slogan is also the subject of an allowed federal trademark application, serial no. 78/970,537, for goods that include various toys and games, hand-held units for electronic games, entertainment services and production of various forms of media.
Going toe-to-toe with Kobo, Muhammad Ali Enterprises LLC alleges that Kobo's use of the trademarked expression falsely implies to consumers that the product is endorsed personally by the boxer or is affiliated with him. The New York Times advertisement featured the quote, attributed to Ali, alongside an image of the electronic reading device. The advertisement makes "commercial use of valuable property without authorization or compensation" to Muhammad Ali Enterprises LLC, according to the complaint.
The advertisement also included adulatory press blurbs about the electronic reading device that the complaint alleges are a "reinforcement of the persona of Muhammad Ali." One such blurb, from Computerworld magazine, describes the electronic reading device as a "real contender," according to the complaint.
According to the complaint, Muhammad Ali Enterprises LLC was formed in 2006 for the purpose of "promoting Muhammad Ali's legacy throughout the United States and the world, including the licensing of Muhammad Ali's identity." Ali's company has all right, interest and title to the boxing champion's identity, including his "name, likeness, voice, image, trademarks and other elements of Muhammad Ali's persona." Going for the knockout, the suit also contends that Kobo's conduct is likely to diminish, "if not destroy, the opportunity to license Muhammad Ali's identity to the manufacturer of competitive devices and eliminates the ability for Muhammad Ali Enterprises LLC to offer any such manufacturer an exclusive license, which typically is of greater economic value."
The complaint seeks relief against Kobo for (i) acts of federal trademark infringement, trademark dilution, unfair competition, false designation of origin and deceptive acts and practices in violation of the U.S. Trademark Act, 15 U.S.C. §1114, 1125(a) and 1125(c) et seq., (ii) trademark infringement, trademark dilution, unfair competition, unfair and deceptive practices, misappropriation and unjust enrichment in violation of the statutory and/or common law of each state in which Kobo allegedly disseminated the advertisements, including New York General Business Law §133, 349 and 360(l) and California Business and Professions Code §17200 et seq., and (iii) violation of the right to publicity under the statutory and/or common law of each state in which Kobo allegedly disseminated the advertisements, including New York Civil Rights Law §51 and California common law and California Civil Code §3344. It also seeks injunctive relief against Kobo, requests that it recall and destroy all allegedly infringing advertisements and seeks attorneys' fees and damages.
Will this bout go the distance? Stay tuned to find out.