LeBron James’ video series set in a barbershop continues to get lots of buzz, though a trademark infringement lawsuit probably isn’t the kind of publicity the NBA star appreciates.
Sebastian Jackson, through his company Adventure Enterprises, has sued James’ company, Uninterrupted, alleging that Uninterrupted and its associates “stole” the barbershop concept from him to create "The Shop."
Adventure Enterprises filed the lawsuit in the U.S. District Court for the Eastern District of Michigan and is seeking an injunction to stop production, Uninterrupted's profits from the show and damages for trademark infringement.
"Shop Talk" Trademark
Since 2012, Jackson has operated the “The Social Club,” described in the complaint as “a dual-purpose barbershop and content studio whose mission, in addition to providing haircuts, is to support cultural discussion, building community, personal growth, and diversity.” From this concept, the complaint alleges, Jackson came up with the concept of “Shop Talk,” “a program where guests consist of local and national celebrities who share their business stories and other insights while getting their hair cut.”
Jackson trademarked the mark “Shop Talk,” listing its "goods and services" as “organization of events for cultural purposes” in 2016.
Jackson claims he had “numerous talks” via email and text message with Cree Nix, an Uninterrupted employee, about his concept for about two years prior to the premier of James’ show. The complaint describes “The Shop” as featuring James in a barbershop “while engaging in an intimate conversation describing cultural experiences with his contemporaries.”
After seeing the first episode, Jackson tried to get in touch with various people associated with Uninterrupted, and he says Rodney James, “an associate of Defendants” told him it was a “‘one-time thing’ and expressed remorse about the situation.” There have been two more episodes of "The Shop" since, however, and that has prompted Jackson to renew his fight, which he had begun in August 2017 with a cease-and-desist letter.
And Uninterrupted knows about letters.
University of Alabama's "Shop Talk"
Earlier this month, Uninterrupted sent a letter to the University of Alabama over “Shop Talk,” yet another barbershop-themed web series, warning them about possible copyright and trademark infringement. A trailer for “Shop Talk” featured Alabama’s football coach Nick Saban and former Crimson Tide wide receiver, now Atlanta Falcon Julio Jones. Saban isn't backing down, though, and the school has since released another episode of the show, now called, “’Bama Cuts.”
If you find it ironic that Uninterrupted would send a letter of concern over intellectual property rights to the University of Alabama about eight months after receiving a similar one themselves, you’re not alone. Adventure Enterprises noted this in its complaint:
Notably absent from Defendants’ cease and desist letter to the University of Alabama was any reference to the fact that Defendants (i) had actually stolen the SHOP TALK concept from Adventure Enterprises, (ii) engaged in the very same wrongful conduct and infringement that they accused the University of Alabama of in their letter, and (iii) were fully aware of this wrongful conduct and infringement by virtue of Adventure Enterprises’ August 14, 2017 letter.
Trademark Protection?
Jackson’s trademark infringement claims rest on the argument that there is a likelihood of confusion on the part of consumers, causing his company damages such as loss of revenue and goodwill. And there's no question that the programs have striking similarities.
But a closer look at Adventure Enterprises' trademark registration raises some questions. Trademarks are granted within classes, which means that even the exact same names may be used across industries; this makes the description of "goods and services" in the trademark application critical in determining the scope of protection. For instance, "Shop Talk" is also a trademark held by Westar Energy, Inc. for "educational services," including "conducting workshops."
Does Adventure Enterprises' description of its goods and services as "organization of events for cultural purposes" provide the protection it asserts regarding the production of a web series?
Its general class includes "entertainment," but the lack of a term such as "entertainment services" or anything else that more specifically states that it produces media content with the goods and services description could prove problematic. Allowing Jackson to trademark the "barbershop concept" in this way might even seem to be a kind of end-around copyright law, which doesn't permit the copyrighting of ideas and concepts. Indeed, "stolen ideas" cases are usually brought under breach of contract or breach of implied contract claims for this reason.
Still, because ideas and concepts do receive copyright protection once fixed in a tangible form, could Jackson register his text messages, emails and possibly other written notes about the barbershop video concept with the U.S. Copyright Office and sue based on those? Hmmm....
Whether James has a valid claim against the University of Alabama's show also remains a debatable question, but, in any event, this latest lawsuit has added a whole new interesting layer to the barbershop web series genre.
And it would appear to be a genre now.
