Escobar’s $1 Billion Trademark Threat

As students everywhere head towards finals, the siren call of Netflix’s binge-worthy dramas is likely pulling many away from their books and notes towards their TVs and tablets. And while Netflix indicates that Narcos is more likely to be “savored” by viewers than binged, the program that tells the story of the head of the Medellin cartel, Pablo Escobar Gaviria, has been a popular streaming option since its premiere in 2015.¹ However, one person who is not so anxiously waiting for season four to be released is Pablo Escobar’s brother, Roberto Escobar Gaviria. Escobar and his company Escobar, Inc. have accused Netflix of infringing on his trademark rights.²

The dispute between Escobar and Netflix began in 2016 when Escobar sent a letter to Netflix demanding to review the second season of Narcos prior to its release.³ In the letter, which TMZ.com obtained and published in 2016, Escobar stated “I do not believe you may profit on my name, my brother’s name and my family’s name and our likeness, unless you pay and get our approval.”⁴ The letter did not specifically name a trademark infringement claim, but additionally warned Netflix against producing Narcos merchandise in violation of California Code § 3344.1, also known as “California Celebrities Rights Act.”⁵ This Act prevents the use of a “deceased personality’s name, voice, signature, photograph, or likeness, in any manner, on or in products, merchandise, or goods, or for purposes of advertising or selling, or soliciting purchases of, products, merchandise, goods, or services, without prior consent from the person” or a person to whom the right of consent has been transferred.⁶

Since this 2016 letter, the conflict between Escobar and the video streaming service has escalated, and Escobar has now claimed a variety of intellectual property violations caused by the hit show.⁷ Escobar, Inc. currently has thirteen pending trademark applications at the USPTO.⁸ Escobar has attempted to trademark terms including “Escobar,” “Pablo Escobar,” “Pablo Escobar,” “Pablo Emilio Escobar Gaviria,” “Narcos,” “Cartel Wars,” and “Casa Escobar.”⁹ He asserts a variety of goods and services of the alleged marks, including “balloons; toys and games, namely, action figures and accessories,” “leather and imitation leather goods, namely, wallets, shoulder bags,” and “prerecorded compact discs, prerecorded discs, audio tapes and downloadable videos.”¹⁰ By attempting to trademark these terms, Escobar, Inc. is effectively claiming that consumers associate these terms with products made or sold by Escobar, Inc. and other companies would unfairly profit from the use of these marks.¹¹

Escobar, Inc.’s pending applications do not grant the same protections as properly registered trademarks, but Escobar, Inc.’s claim is covered by common law trademark rights that are created through the prior use of the trademarks.¹² Several of the trademarks for “Pablo Escobar” have been granted, specifically trademark has been granted in “Pablo Escobar”  for goods and services related to tobacco and smoking paraphernalia.¹³ However, many of the applications are still pending, and a final refusal has been mailed denying Escobar’s application to trademark “Narcos” for goods and services including “[e]ntertainment services, namely, operating a web site for others featuring information about music, celebrity, film, television, animation, comics and cartoons, and popular culture.”¹⁴

After the recent murder of a Narcos location scout named Carlos Munoz Portal, Escobar discussed both Portal’s murder and the trademark dispute in an interview with The Hollywood Reporter.¹⁵ Although there is no known connection between the Escobar family and the murder of Portal, Escobar recommended in the interview that Netflix should “provide hitmen to their people as security.”¹⁶ Escobar additionally stated that he, through his counsel at Browne George Ross LLP, is in “discussions” with Netflix to obtain the $1 billion payment.¹⁷ In the interview, Escobar stated that if he did not receive the money, then he and his associates “will close their little show.”¹⁸ Although it is unclear based on the pending USPTO applications whether Escobar has any enforceable trademark claims against Netflix, based on his interview statements this trademark conflict seems like it would make for a surprisingly riveting episode of Narcos.