Can You Smell a Lawsuit Cooking? Possible Risks with The Rock’s Trademarks

Dwayne Johnson is one of the most recognizable and successful working actors on the planet. For an entire generation, he is synonymous with smash-hit franchises such as Baywatch, Tooth Fairy, and Jungle Cruise. In fact, between 2019 and 2021, he was the highest-paid actor in Hollywood and raked in $270,000,000 in 2022 alone.¹  Further, he is a co-founder of Teremana Tequila, which holds an estimated value of $3.5 billion, putting him on track alongside George Clooney and Ryan Reynolds as success stories in the celebrity alcohol market.² His most recent endeavor, however, may put him on track towards a series of legal troubles as he seeks to protect the intellectual property rights to a laundry list of decades-old catch phrases.³

Before Dwayne Johnson made his 2001 Silver Screen debut as The Scorpion King in The Mummy Returns, the follow-up to Brendan Fraser’s 1999 cinematic masterpiece The Mummy, Johnson experienced his first bout with fame in 1996, when he joined the World Wrestling Federation (WWF) under the stage name Rocky Maivia.⁴ After an initial run as a “face,” or protagonist in the parlance of modern wrestling storylines,⁵ in 1997 Johnson recast his persona as a “heel,” or antagonist.⁶ In doing so, he began referring to himself in the third person, taking on the name “The Rock.” Over the next several years, Johnson’s popularity within the wrestling community exploded, and to this day, he remains considered one of the greatest professional wrestlers of all time.⁷

Integral to his branding success was his use of a litany of character-specific catchphrases. This includes the words, “jabroni,” “candy ass,” and “know your role and shut your mouth.”⁸ His most famous catchphrase, “if you smell what The Rock is cooking,” was first used in 1998 during a WrestleMania 14 interview when he was asked how he would address the problems facing the judicial system in America.⁹ These strategically deployed turns of phrase helped Johnson achieve wrestling icon status, and eased his transition into full-time acting when he retired from active wrestling in 2004 to focus on a different career. He did not, however, take the intellectual property rights to these phrases with him when he left wrestling. Those remained with his former employer, until recently.¹⁰

Per an SEC filing by TKO Group Holdings, the public company that owns WWF-successor World Wrestling Entertainment (WWE) and Ultimate Fighting Championship (UFC), Johnson has been appointed to TKO’s Board of Directors.¹¹ Under the terms of the appointment, TKO has transferred title to the various trademarks and IP rights associated with The Rock brand, and Johnson has received an estimated $30,000,000 stock award. As explained by Alex Weprin of The Hollywood Reporter,

Giving Johnson the full rights to The Rock would allow him to exploit the brand name as he sees fit, rather than seeking to cut TKO in on certain licensing agreements or other products (i.e. Under Armour’s Project Rock). Per a source, WWE has been granted a license to use The Rock name for certain categories and products for 10 years, and during that period Johnson can’t license the IP to businesses competitive with TKO.¹²

While it is objectively a net positive that Johnson received the intellectual property rights to the core elements of the brand that launched him to superstardom, a cursory look at some of the listed phrases invites some scrutiny as to whether Johnson is stretching the limits of protectable assets.

The statutory foundation for American trademark law is the Lanham Act, a sprawling piece of legislation that allows brands and individuals to reserve the exclusive right to use specific signifiers as a form of source identification in commerce.¹³ An image serving as a logo for a brand or even exact combinations of colors and building design can serve as protectable marks under the Lanham Act, so long as it serves a source-identifying purpose.¹⁴ Catchphrases, too, are protectable if they fall under this criteria. For example, given The Rock’s newly acquired rights, he could not legally enjoin another public figure, say Vin Diesel, from using the word jabroni in day-to-day conversation. He can, however, seek to enforce his rights against the National Park Service if it seeks to sell Alcatraz merchandise using the phrase “if you smell what the rock is cooking” alongside an image of the famous island prison.¹⁵

There are, however, limits to what is protectable under the Lanham Act. Of the various requirements for eligibility with the U.S. Patent and Trademark Office, a trademark requires some form of distinctiveness. That is, it is unique enough to clearly and effectively serve the intended source-identifying work needed for a trademark to function. An extreme example? IKEA couldn’t try to trademark the word “table” for a new line of tables.

In Abercrombie & Fitch Co. v. Hunting World, Inc., Judge Henry Friendly of the Second Circuit outlined one of the most influential tests to determine trademark distinctiveness, known as the Abercrombie Spectrum.¹⁶ Judge Friendly split the universe of potential marks into several categories: (1) generic, or a term so associated with the product itself that it self-describes the product, or is required for competitors to use to describe their own product and therefore can never be protected; (2) descriptive, or a term that reflects some innate characteristic of the product but can be protected with a showing of secondary meaning; (3) suggestive, or a term that requires some logical leaps to create the association between the language and the product; and finally, (4) arbitrary or fanciful, or a term so divorced from the nature of the product that it can only do source-identifying work.¹⁷

Johnson must demonstrate that a third party is infringing upon his valid, protected trademark in order to pursue enforcement of his newly acquired rights. That, in and of itself, opens him to attack if the defendant sought to show that the protected mark in question lacked the distinctiveness necessary to serve as a source identifier under the Abercrombie Spectrum. Of the various marks, Johnson is much more likely to succeed on some compared to others. His stage names, such as The Samoan Sensation, The Blue Chipper, and The Brahma Bull, are all clearly on the fanciful end of the spectrum, affording maximum protection. Individual taglines, however, “it doesn’t matter what,” “the millions,” or “the nation” might be more susceptible to differing interpretations.

There are also certain temporal issues. Trademark owners who do not use their mark for an extended period of time may be held to have given up their rights under a theory of abandonment. While TKO has offered merchandise featuring the more memorable quotes,¹⁸ it does not seem to have capitalized on phrases such as “roody poo.” Without use for three consecutive years, and The Rock having been away from the ring for twenty years, a court may find a lack of intent to use.

He might, then, consider some judicious application of enforcement, lest he risk losing any rights at all. Then again, The Rock never backs down from a fight.

Cameron Brody is a second-year law student at the Benjamin N. Cardozo School of Law and a Staff Editor on the Cardozo Arts & Entertainment Law Journal. His legal interest areas include antitrust and intellectual property.