Not pictured: endorsement deals, because he has none.

The first tackler Rashard Mendenhall ever faced in the NFL was Ray Lewis.  He broke Mendenhall’s clavicle on the first play.  Mendenhall’s initial foray onto the playing field of litigation has, remarkably, been more successful, as the star running back has successfully dodged a motion for summary judgment brought by Hanesbrand, whom Mendenhall sued for breach of contract.  Hanesbrand, through their subsidiary Champion Sports, terminated their relationship with the Pittsburgh Steelers player a little over a year ago over a series of controversial tweets following the death of Osama Bin Laden.  After the NFL star created a firestorm of negative publicity by criticizing those who were celebrating Bin Laden’s recent death and suggesting Bin Laden may not have been responsible for 9/11, Hanesbrand, who owns Champion Sports and with whom Mendenhall had a lucrative endorsement deal, issued a statement condemning his statements and terminated his endorsement contract shortly thereafter.  Mendenhall filed suit for breach of contract, alleging a violation of his First Amendment Rights.  Hanesbrand relied on the standard “morals clause” of the contract, which prohibits the endorser from doing anything that brings them “into public disrepute, contempt, scandal or ridicule, or tending to shock, insult or offend a majority of the consuming public.” 

It is far from uncommon for sports celebrities to lose endorsement deals over “questionable” actions, but Hanesbrand posited a unique argument that has drawn the attention of the entertainment industry at large: that trademark law imposes an affirmative duty on companies to protect the good name of their brand.  Under this theory, the standard “morals clause” in a celebrity endorsement contract is simply one means of complying with this “duty to the public to control the nature and quality of their goods.”  On a motion for summary judgment, however, Hanesbrand lost, and the case will move forward on the issue of whether a series of polarizing tweets, with a mix of critical and “thought-provoking” responses, could be considered an act bringing the speaker into “public disrepute,” thereby violating the morals clause of standard celebrity endorsement contracts.

This case has piqued the interest of the entertainment industry at large, and with good reason: it could either tremendously weaken and perhaps invalidate a standard industry contract feature (if Mendenhall wins) or, alternatively, could give companies issuing endorsement contracts increased clout, with the power of both traditional contract law and trademark law supporting the enforceability of the standard morals clause.  Such excitement must be tempered with caution, however.  Just because Mendenhall’s First Amendment argument was sufficient to withstand summary judgment does not mean it will prove to be a winning one.  Further, even if Hanesbrand prevails, their novel trademark law affirmative defense may not be adopted.  It’s quite a stretch to suggest that a concept designed to protect the profitability of certain brands would impose an affirmative obligation on those brands rather than passive protection.

Regardless of the outcome of the case, Mendenhall will undoubtedly think before he tweets in the future.  As the last running back drafted in the first round by the Steelers (in 2008), he has a long way to go to match the literary ability of the Steelers’ first ever draft pick, running back William Shakespeare.


— Shane Valenzi


image via Flickr

2 Responses to Can a Tweet Violate Trademark Law? Pittsburgh Steelers’ Rashard Mendenhall Hopes Not

  1. MAUREEN says:

    The Pittsburgh Steelers are not accustomed to their prized first round draft picks stirring up such negative controversy. Mendenhall’s tweeting remarks were big news in Steeler Country – and he eventually apologized for offending. Wondering if that could hurt his position as he continues on his quest for breach of contract?

  2. Caitlin says:

    If Hanesbrand’s argument prevails, it would open up a can of worms in any number of scenarios, not just celebrity endorsements. For example, could a CEO’s mishandling of an announcement that damages a brand’s “good name” lead to suit for breach of fiduciary duties on behalf of shareholders? Could a poorly received ad campaign?