Rights to beloved Phillie Phanatic mascot in dispute after more than 40 years

Baseball superstar Bryce Harper was sitting in the visitor’s clubhouse at Spectrum Field in Clearwater, Florida, last March with his wife, Kayla, and his parents. His agent, Scott Boras, and a few friends were also present. They were waiting for the start of his first press conference since he’d signed his record 13-year, $330m free agent contract with the Philadelphia Phillies.

Suddenly, the Phillie Phanatic burst into the room. The mascot, fully in character, made a show of greeting everyone. Then Harper’s mother said, “Hey, Bryce, show him the baseball bat you have.”

The superstar got out his phone and proudly displayed a picture of a customized, painted bat with the Phanatic all over it. And that was only the beginning.

Unlike several prior high-profile Phillies players who endured tough relationships with local fans, Harper immediately went out of his way to embrace his new baseball home. And the most obvious way he flaunted that new allegiance was by attaching himself to the big, furry green character in every way possible.

In spring training, he wore Phanatic socks and filmed commercials for his hair care products with the Phanatic. On Opening Day he wore Phanatic spikes after walking into Citizens Bank Park with a Pulp Fiction-themed T-shirt featuring the Phanatic along with Gritty, the popular mascot for the neighboring Philadelphia Flyers of the National Hockey League.

Smart move. Because nothing embodies the Phillies more than the Phanatic, something that has been true for essentially all of the mascot’s 41 years of existence.

Except what if that was no longer true? It’s a once-unthinkable question that now has to be at least considered.

In early August, the Phillies sued Harrison/Erickson, the New York-based company formed by artists Bonnie Erickson and Wayde Harrison that designed the distinctive Phanatic costume in 1978, and is also well known for its work with Jim Henson to create some of the famed Muppets, including Miss Piggy. The team’s filing in the United States District Court for the Southern District of New York asks that the team be granted sole use of all things Phanatic, as well as monetary damages.

That came in response to a letter from H/E dated June 1, 2018, claiming the right to terminate an agreement that had been reached in 1984 which ceded all Phanatic-related rights to the Phillies in perpetuity. Without a new deal, the agency claims, the team could no longer use the Phanatic after June 15, 2020.

The Phanatic would then become a free agent with its rights available to another team, not unlike how another iconic sports team mascot, the H/E-designed Youppi!, became property of the NHL’s Montreal Canadiens after its original rights-holder, baseball’s Montreal Expos, became the Washington Nationals in 2005.

The idea that the Phanatic might suddenly disappear from Citizens Bank Park in the middle of next season or even – gasp! – end up representing another team suddenly had to be considered. It’s forced the team to at least kick around ideas how to explain his absence.

“The club has consistently used and invested in the Phillie Phanatic marks, and has therefore built up valuable good will in the marks, and a powerful association of source and sponsorship among the relevant consumers and channels in trade,” the Phillies’ complaint reads in part. “If H/E were to follow through on its threat of making the Phanatic a ‘free agent’, it would likely cause confusion, mistake, or deception as to the source of origin, sponsorship or approval of the use of the Phillie Phanatic.”

Manny Pokotilow, a well-known intellectual property attorney with the firm of Caesar Rivise in Philadelphia and not involved in the litigation, believes the Phillies have the stronger case. But he stresses that it would all depend on what facts are brought out at trial.

He also doubts it will get that far.

“What I think is going to happen is that it’s going to settle,” he tells SportBusiness. “Quite frankly, the money they’re talking about here isn’t worth what the copyright infringement suit would cost.”

Still, the fact that the team filed its lawsuit 14 months after receiving the original letter suggests that subsequent negotiations on a settlement have not gone well. The Phillies claim in their filing that H/E is demanding an “exorbitant” payment of “millions of dollars”, although that, of course, is a matter of opinion.

Without knowing exactly what H/E is asking for and how much the Phillies profit from Phanatic merchandise – the team declined to address that issue – it’s impossible to assess what a reasonable compromise might be.

But the agency-team relationship surrounding the Phanatic, a perennial star performer in the licensing business, has been fraught with tension almost from the mascot’s very beginning.

According to the Phillies’ complaint, H/E earned more than $200,000 from their original Phanatic licensing agreement by the end of January 1980. The company, however, was unhappy with its share of the growing Phanatic-related revenue and sued the Phillies for copyright infringement in 1979.

It turned out that H/E had registered the Phanatic with the U.S. Copyright Office as an “artistic sculpture.” Remember that. It’s a key point in the current dispute.

That original suit was settled and in 1984, the Phillies then gave H/E a $215,000 lump-sum payment for all-encompassing rights to use the Phanatic “in any medium whatsoever, everywhere and forever”. Which turns out not to be nearly as final as it sounds.

If there is a trial in the latest round of the dispute, here are some of the key issues on which the judge’s decision will be based:

Who actually designed the costume?

That’s not as simple a question as it sounds. H/E claims the company should get all the credit. The team, conversely, says it was a collaborative effort and that they not only “dictated…distinctive features” of the design including the color and physical features of the Phanatic, as well as providing additional aspects such as the Phanatic’s jersey, cap and leggings.

Bill Giles, then a club vice-president and later an owner, is credited with shepherding the Phanatic into existence. In his 2007 memoir, Pouring Six Beers at a Time, he wrote: “Their first rendition was not to my liking. I asked them to make him fatter and the nose bigger. They did. The Phillie Phanatic was born.”

Further, the Phillies contend, it’s not just the suit that became wildly popular. It was the person inside, first Dave Raymond and now Tom Burgoyne, who created the personality that literally and figuratively made the mascot come alive, in part through mime classes Raymond took at the club’s behest.

“[The Phillies] have a first cause of action based on the fact that the copyright isn’t completely owned by the company,” Pokotilow says. “Basically, what they’re saying is, even if you could copyright the entire outfit, there would be a co-authorship in the Phillies. And if the Phillies are co-authors, they can’t be stopped from using the copyrighted total.

“Plus, the reality is that it’s more than just a costume. (Raymond or Burgoyne) have a performance about them. And that performance is as copyrightable as is the artistic design that went into the costume,” he says.

Why is this even an issue if the Phillies bought the rights to the Phanatic “forever” in 1984?

Because copyrights are good for 95 years with a right of reversion after 38 to 40 years. That trumps any language that was written into a contract.

“The agreement was forever. But just putting something in like that doesn’t prevent the right of reversion,” Pokotilow says. “Say a company signs a young songwriter. That would mean anytime the songwriter is assigning his copyrights, the companies who are basically trying to get these young artists to give them the copyright would put ‘forever’ on all their copyright agreements.”

Also, companies are allowed to use their right of reversion once. So a judge would have to rule on whether the 1984 deal was the legal equivalent to H/E exercising that option. “I don’t believe it meant a copyright agreement made five years later to get more money for it is going to prevent that,” he added. “But it may.”

There are 17 different Phanatic-themed children’s books that have been published, and four home videos. The Phanatic has been to Los Angeles and New York to film episodes of the television sitcoms The Goldbergs and 30 Rock. He recently had to decline an invitation from star comedian and actor Kevin Hart to appear in a YouTube fitness program because it conflicted with a Phillies home game.

And then there’s the merchandise.

There are Phanatic likenesses on dozens of different items, including everything from infant clothing to Christmas decorations. A couple years ago, Phanatic dangle hats were all the rage among fans. This season, the hottest item at the Majestic clubhouse store is Phanatic headbands, fueled in part by Harper’s frequent use of the accessory.

Says Pokotilow: “The real thing that I think is a very interesting aspect of this is that if you see the Phillie Phanatic, you’re going to assume it was sponsored by the Phillies. And they’ve used that as a trademark since 1978 when it was introduced. You’re talking right now about a 41-year use of a trademark for the Phillies which is actually a service mark because it’s an association with the entertainment services provided by the Phillies.

“So if the H/E company wanted to use that copyright to permit someone else to use it and they used it in association with a baseball team, for example, the Phillies could stop it. Because it’s likely to cause confusion,” he says.

What’s the significance of H/E registering the Phanatic as an “artistic sculpture” 40 years ago?

Clothing has traditionally not been copyrightable. The Phillies have taken the position that, to get around that, H/E engaged in fraud by purposely misleading the copyright office, and claim the agency “knowingly failed to advise the Copyright Office of facts that likely would have resulted in the rejection of its application”.

“That’s a very serious allegation,” Pokotilow says. “It’s also very difficult to prove fraud on the copyright office. So that’s going to be a very tough argument.”

H/E, for its part, has not yet formally responded with the court to the Phillies’ complaint. But in a statement, Erickson and Harrison said they “will not yield to this lawsuit tactic”.

Pokotilow reiterated that both sides can make robust arguments, and that any final determination would depend on what facts could emerge at a trial and how the judge interpreted them. But he still thinks a compromise is the logical end game, even as both sides currently have dug into their positions.

“If I were the H/E people I would definitely be ready to settle this case for a reasonable amount,” he said. “It’s going to be an expensive lawsuit for a couple reasons. This has both copyright and trademark matters involved. It’s got fraud on the copyright office. And you’re talking about something that, if the 1984 deal was for about $533,000 by today’s money, this lawsuit will cost anywhere from three-to-four times what that value is.”

Lacking hard numbers, he bases that statement not only on the agreed-upon value of the earlier deal and the fact that more than 95 per cent of all cases in Federal Courts settle, but also on the harsh reality that appeals could tie the case up for anywhere from five to 10 years. That could easily run the total tab for both sides far higher, to at least $10m, with no guarantee of a satisfactory conclusion.

Such a figure would eat heavily into any commercial opportunities gained from holding the Phanatic’s rights. If H/E were to prevail, the company will be able to ask for attorney’s fees. But it could also be liable for attorney’s fees if it loses.

“So that’s why I say, in many respects, they’re going to have to settle this case,” he concludes.