What’s in a name?

Plenty, especially money. Just ask the very buff and very blond wrestling legend, Hulk Hogan. Early in his career, Hogan referred to himself as “The Incredible Hulk Hogan.” No surprise that Marvel Comics showed keen interest in this development. “We get a call from Marvel Comics,” Hogan recently recalled in a podcast interview. ‘You’re infringing on our mark. Reasonably similar. We’re going to sue you, put you in litigation.’ We let them have the name but didn’t license the name. I only had to pay them one-tenth of 1%. That went from 1985 to 2005. 20 years fast forward to 2005. It’s over.

“Now, I can’t use Hulk Hogan anymore, and I’m red hot in 2005. I went to my attorney, ‘I don’t give a damn what deal you make, you’re going to make a deal because I need the name.’ What happened was, I got a one-year extension and I had to pay them 30% of everything I made. Movies, TV wrestling, they got 30% of everything. However, they had to give me the first shot at buying the name if they decided to sell it, at a fair market value.”

Lady Luck shone on the eternally bronzed Hogan at just the right moment. “All of a sudden Marvel Comics gets into a feud with the WWE about intellectual properties, that they can’t re-air old Hulk Hogan matches. They lost, Marvel Comics lost, and the events cost them around 35 million dollars. They made a huge mistake of including that in the deal. They said, ‘No, instead of paying you 35 million dollars, how about we give you the Hulk Hogan name?'

“I heard about it, and I went, ‘You guys screwed up now because now I don’t have to pay 35 million dollars for the name. You have to sell it to me at a fair market value, which is only like 750 Grand, wow yeah.’ So, I bought the name back.

The name game can be less fortunate for other players, alas. The legendary fashion designer Joseph Abboud sold his name to a licensing firm for some $65 million in 2005. Being the creative force that he is, Abboud decided that he wasn’t finished with fashion and in 2007, prepared to launch “jaz,” a new line of menswear. The licensing company was understandably vexed and sued in federal court. They won. Abboud appealed.

In its ruling, JA Apparel Corp. v. Abboud, 568 F. 3d 390, the Second Circuit Court of Appeals zeroed on the ambiguity of the contract’s coverage of licensed “names” and Abboud’s intended “good faith” fair-use of his personal name to market his new line of clothes. The panel ruled he wasn’t trying to violate the spirit of the licensing contract. Nor was he attempting to confuse consumers by competing with the company that had purchased his trademarks. Yet the panel remanded the case to district court to examine the proposed advertising of Abboud’s new clothing line to make sure Abboud met the fair-use standard.

Licensing contracts are serious business. Joseph Abboud learned that the hard way. There is no room for ambiguity. In his analysis of the case for the National Law Review, Theodore Max suggested “designers should be careful and proceed with absolute caution when licensing or selling their personal name trademarks and names, especially if the designer intends to retain rights in and to his or her personal name rights of publicity and privacy, including for commercial purposes. Additionally, designers need to take care to make sure that all intentions are explicitly captured in any Sales Agreement or licensing contract to avoid litigation and uncertainty.”

The battlefield of branding spares no one in its relentless pursuit of dominion over names. George Foreman, the heavyweight champion turned grill guru, cashed in his name for a hefty $137.5M deal with Salton, Inc. in '99, forever intertwining his legacy with sizzling slabs of fame. Even more spicy, reportedly, it was Hogan’s agent that presented three deal options to Foreman, which netted the big payout. But with over 100 million units sold worldwide (and still selling), Foreman no longer reaps the benefits of ongoing royalties. I’m not saying that Foreman has been knocked out of the game, but certainly, the makers of the ubiquitous grills continue to feast on the profits.

In another long shot bid to reclaim rights to a personal name, on August 1st, a federal judge in Florida ruled against legendary golfer, Jack Nicklaus, granting a motion to dismiss for the Nicklaus Companies. In 2007, the Nicklaus Companies purchased Jack Nicklaus’ intellectual property for $145 million. In a double whammy, Jack Nicklaus was previously ordered by a NY court to cease use of his name, image and likeness for commercial endorsement.

The saga of personal names and trademarks weaves a tale of cunning strategies and unforeseen twists. Hulk Hogan, the muscle-bound maverick, danced with danger and emerged victorious, seizing back his iconic identity from the clutches of fate. Yet not all tread the path of triumph.

This lesson isn’t just for celebrities. For the would-be celebrity, founders, content creators and designers alike:

When you sign your name on the dotted line, you may well be signing away your name…PLUS all that it’s worth in the marketplace, now and forever (unless you luck out like Hulk Hogan did, paying less than the original $35MM).