If you’re a sports merchandise vendor and you’re sidling up to that line where you might be using a celebrity’s likeness without his permission, DO NOT send him a letter claiming that he is creating “likelihood of confusion” with your products.
After O’Neal was traded to the Phoenix Suns in February 2008, he was dubbed by fans as “The Big Shaqtus.”
Soon thereafter, Mine O’Mine says defendant Michael Calmese with True Fan Logo Inc. registered shaqtus.com and began operating an online store selling items featuring “an animated character in the form of a cactus with the facial features of O’Neal wearing an orange basketball jersey bearing the name Phoenix Shaqtus and the number 32.”
In 2008 and 2009, ESPN ran a commercial that featured O’Neal running into a cactus “bearing O’Neal’s face in the Arizona desert.”
Calmese sent a letter to ESPN, claiming that the ads created a “likelihood of confusion” with his products, and offered to jointly develop an animated “Shaqtusclaus” clip for Christmas.
. . .
In December 2009, Mine O’Mine sent a letter to Calmese demanding that he stop using the Shaqtus mark to sell merchandise on his Web site, and to transfer the shaqtus.net and shaqtus.com domain names over to it.
Offering to team up for a Christmas special won’t help.
But, my favorite part is . . .
Calmese responded Jan. 4, 2010, claiming that O’Neal consented to his use of the Shaqtus mark when O’Neal agreed to take a picture with Calmese and autograph a T-shirt.
I am reminded of Monty Python’s brilliant How Not To Be Seen.