A Costly Haircut

By Andrew Warren
May 21, 2018

Screenshot from YouTube Video of Alabama Football Shop Talk Ep 1 Part 1

Lebron James and Nick Saban are well-known for dominance in their respective sports of basketball and college football. Recently they found themselves opposing each other in an intellectual property controversy. James’ Uninterrupted media company sent the University of Alabama a letter claiming Bama’s new barbershop themed show, “Shop Talk,” is infringing James’ similarly themed show, “The Shop.” The choice to send the demand letter has led to unintended, but foreseeable consequences for Uninterrupted.

The Shop was created and released by James’ Uninterrupted brand last year during the NBA Finals. The Shop features James and others athletes, rappers, and celebrities chatting while in a barbershop. Alabama’s Shop Talk features discussions spotlighting Saban and Alabama athlete alumni.

Uninterrupted’s full infringement letter has not been released publicly, but ESPN printed excerpts of the document. The letter specifically refers to infringement of Uninterrupted’s “copyright, trademark rights and other valuable intellectual property rights in ‘The Shop’.” The letter also expresses a desire to discuss and settle the situation amicably to avoid litigation.

Quotes from both stars indicate that Saban has the superior understanding of intellectual property law. Lebron said that he respects Saban, but he would “be damned if I’ll allow someone to use our platform or try to do the same thing we’re doing and just think it’s OK.” Saban replied that “there’s been at least 20 barbershop-type things I’ve seen. I didn’t even know he had one… I enjoyed it and we’re going to continue to do it.”

Uninterrupted uses the vague claim of “intellectual property appropriation” in its letter, but its two main claims seem to be copyright and trademark infringement. Uninterrupted does not have a strong case on either claim, particularly the copyright claim.

Uninterrupted’s claim is that The University of Alabama is stealing its concept of a sports talk show within a barbershop. Copyright law does not recognize such a claim. Theme similarity simply is not copyright infringement. If it were, there would be far fewer films and audiovisual works; The Godfather and Goodfellas could not co-exist or Saving Private Ryan and The Thin Red Line or Antz and A Bug’s Life. In the realm of television, there have been multiple shows about storage and auction hunting over the past decade. There are multiple late-night television talk shows that mirror each other in both format and theme.

These and scores of other examples highlight the fact that no one can occupy the space of an entire theme, even if that theme is as specific as a sports-themed barbershop show. Saban also makes a strong point that there have been multiple shows that involve a barbershop themed chat atmosphere. A valid copyright claim would be present only if there were specific copying of Uninterrupted’s show. Though the themes here are similar, the shops themselves are different. The dialogue and music are different. The images are different, and the people on screen are different.

Uninterrupted’s trademark claims face difficulties as well. While the two shows have similar, and possibly confusing names, Uninterrupted lacks a registered trademark for “The Shop.” A common law trademark could be asserted, but the title “The Shop” is likely descriptive so it may not currently have any trademark protection. This problem could be defeated were “The Shop” to gain secondary meaning, but this is unlikely given that the show was created within the past year and that I, an avid sports fan, was not even aware of it.

There is some trademark protection for titles in a series of works (like a TV show) as opposed to a single work such as a film, but that protection appears limited. Confusion as to the source of a show may be avoided due to the television or YouTube channel it is on, the website it derives from, or the description that accompanies it on-screen. These factors limit the likelihood that a title alone would confuse consumers.

Lebron’s company and the University of Alabama have engaged in initial talks since the demand letter was sent, although details of those discussions are unknown. The best-case scenario for Uninterrupted would be to convince The University of Alabama to change the name of the show, as Uninterrupted has no valid claim to the content the show contains. Alabama has both more leverage and strong defenses to any copyright or trademark claims. As a practical matter, both sides may seek to avoid costly litigation centered around two shows that likely do not drive significant revenue to its owners.

In an ironic twist, days after Uninterrupted’s demand letter went public, the company was sued for trademark infringement and related claims with respect to the same program. The Social Club Grooming Company (SCGC) in Michigan has a program called “Shop Talk.” This approximately five-year-old program has a federally registered trademark for “organization of events for cultural purposes.” While the setting is also a barbershop, the concept seems to be geared towards community discussion with a large audience in the shop. This differs from both the Uninterrupted and Alabama shows but shares the broader concept of conversations in a barbershop.

SCGC’s issue with Uninterrupted seems to stem from prior discussions between the two companies centered on partnering to expand Shop Talk. Instead, Uninterrupted created The Shop and answered SCGC’s cease and desist letter in the summer of 2017, by responding that it did not infringe the Shop Talk mark.

SCGC’s complaint uses circular reasoning; if Alabama’s “Shop Talk” mark is infringing Uninterrupted’s “The Shop,” then Uninterrupted actually has been infringing SCGC’s “Shop Talk” as well. While creative, this claim is problematic. As articulated in this article, Uninterrupted’s claims against Alabama are weak. Thus, using SCGC’s reasoning, its claims against Uninterrupted are weak.

Ironically, SCGC’s best claim might be against The University of Alabama for trademark infringement. SCGC has been using the “Shop Talk” mark for five years, has a federal registration, and Alabama is using the mark in a format related to SCGC’s. SCGC’s format is different from

Alabama’s and its trademark is for a different trademark class than what Alabama is likely using the mark for. However, an argument could be articulated that the concepts are similar enough that Alabama’s “Shop Talk” mark would cause confusion with SCGC’s federally registered mark.

SCGC’s complaint underlines the most important lesson to arise from Uninterrupted’s demand letter to The University of Alabama. It is paramount to weigh the pros and cons of commencing a legal matter, especially when the parties to that matter are high-profile actors. The spotlight shone on a story may bring unwanted attention and, in this case, unanticipated litigation. Uninterrupted has likely cost itself time and money because it pursued a questionable IP claim without considering the consequences.

The Author

Andrew Warren

Andrew Warren is the founder and principal attorney of Trenholm Warren, LLC. Andrew previously worked as an attorney and NHLPA certified player agent for a boutique sports agency. He helped procure contracts in excess of $20 million in potential earnings for that Firm’s clients. In his current role as principal attorney of Trenholm Warren, LLC, Andrew provides services pertaining to copyright, trademark, media and sports law along with general business counsel.

For more information or to contact Andrew, please visit his Firm Profile Page.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

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