The heirs of Argentinian soccer super star, Diego Maradona, as well as a John Doe identified only by an IP address, have been sued for trademark infringement based on their use of the name “Maradona.” The suit was filed on January 13, 2022, and is just another episode in an ongoing struggle over the rights to the likeness and image of Diego Maradona.
After Diego Maradona’s death on November 25, 2020, it was revealed that Sattvica, S.A., Inc., a company owned by Maradona’s former lawyer, Matias Morla, owned the rights to Maradona’s brand name. Sattvica has since been litigating the right to use the name Maradona around the globe.
Recently, an Argentinean court upheld Sattvica’s trademark claim in a dispute, jeopardizing a videogame company’s rights obtained in a prior deal from another individual. With that wind in its sails, Sattvica undertook to remove certain images and uses of Maradona’s name and likeness that appear to have been posted in social media by Maradona’s children. That matter was voluntarily dismissed shortly thereafter. Now Sattvica has sued Maradona’s children directly in this most recent suit.
This suit is brought against Diego Maradona’s daughters, Dalma Nerea Maradona Villafane and Dinorah Gianina Maradona Villafane. Obviously, Sattvica cannot preclude the Maradona’s daughters from using their own name – so long as they use it as their own name. As one US Appeals court put it, “[a]n individual generally will be given some opportunity to use his own name and establish a reputation for that name, even in the face of a prior user’s trademark rights in the name, so long as the person using the name distinguishes his business and use of the name from the business owning the trademark rights.”
That is, however, not what Sattvica allege is occurring here: The complaint alleges the daughters are using “Maradona” with Diego Maradona’s likeness and for purposes of marketing the goods to which the Maradona mark was traditionally affixed. Unless these sisters can show a different set of facts, they will have an uphill battle here in Florida, where the courts have recognized that “[w]hile an individual might identify with a name, he still might not have the right to use that name to identify himself in commerce.”
Also of interest, the complaint seeks to sue the webpage owner of www.dm10.com. This person is identified as having an IP address of 126.96.36.199. The IP address information is typically readily available publicly. In this case, an internet search for the IP address listed in the complaint suggests that the IP address belongs to Shopify, Inc. It is highly likely that, now that suit has been filed, Shopify will be receiving, at a minimum, a subpoena requesting who is using their services to sell goods over this site.
This dispute is likely to be an interesting one.