A federal judge in Florida on Tuesday dismissed part of Jack Nicklaus’ intellectual property case against a company that paid the 83-year-old golf legend for the right to use his name, image and likeness, and to register trademarks on his behalf.
Judge Robin Rosenberg granted a motion to dismiss filed by Nicklaus Companies, which purchased Nicklaus’ intellectual property in an agreement worth $145 million in 2007. Nicklaus Companies, founded by Howard Milstein (whom Nicklaus also named as a defendant), has since used this IP to develop several business lines, including course design, real estate development, branded merchandise and golf equipment.
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The dispute centers primarily around the exclusivity, or lack thereof, to use the Nicklaus name and brand in licensing deals.
Rosenberg stressed she has no choice, because another judge has already ruled on the same IP and barred Nicklaus from using it. Last December, New York Judge Joel Cohen issued an injunction against Nicklaus, whom Nicklaus Companies sued in that jurisdiction. Cohen ordered Nicklaus to refrain from “using or authorizing” the IP he transferred to Nicklaus Companies and from licensing his “name, image and likeness for commercial endorsements.” While the injunction did not extend to whether Nicklaus can compete with Nicklaus Companies in the design of courses, it covered business dealing that involved NIL, trademarks and endorsements.
Rosenberg explained that she is bound by what is known as the Princess Lida Doctrine. The doctrine is from a U.S. Supreme Court case in 1939 and holds that when one court has control over a particular property, another court must not disturb that control.
“[Nicklaus’] claims of ownership over the property would necessarily involve the adjudication of the right to use, or the exclusive or non-exclusive right to use” the same property at issue in the New York litigation, Rosenberg wrote.
Rosenberg separately moved Nicklaus’ state law claims to a court in Florida’s Palm Beach County, noting she is not obligated to rule on them and sees no basis for them to remain in federal court.
The two sides can continue to litigate in New York and Florida, though it’s also possible they could work out a settlement to end the dispute.