In a move that has raised many an eyebrow in both Mexico and the United States, Vice reported that notorious drug lord Miguel Ángel Félix Gallardo, aka “the godfather of the modern Mexican drug trade” or “El Jefe de Jefes (The Boss of bosses)” has registered his name as a trademark in Mexico to be used on merchandise including clothing and jewelry. Gallardo, whose exploits were featured in Narcos: Mexico on Netflix, appears to be taking his cues from notorious drug lord Joaquín “El Chapo” Guzmán, who had two variants of his name and moniker registered in 2010 and whose wife began a clothing company under his name in 2020.
Now in his late-70s, Gallardo has been imprisoned in Mexico since 1989 for his alleged involvement in the homicide of DEA agent Enrique “Kiki” Camarena. The handling of Gallardo’s case by the Mexican legal system has imposed an ongoing strain on US-Mexican relations, and left many American policymakers skeptical about Mexico’s willingness and ability to cooperate with American law enforcement or assure the safety of American nationals south of the border. Gallardo’s move to capitalize on his renewed cross-border notoriety is especially surprising to American sensibilities because it is a well-known “fact” that convicted criminals in this country are barred from profiting from their crimes.
What most people don’t realize is that this “fact” is really—more of a guideline.
In American jurisprudence, there is a long-standing presumption which has been handed down from English common law that convicted criminals should not profit or prosper from their crimes. However, this hasn’t always panned out as well in practice as theory would suggest it should have, as demonstrated by the lavish lifestyle led by legendary gang boss Al Capone while in an Atlanta federal prison. It wasn’t until serial killer David Berkowitz, the “Son of Sam,” was offered money for his life story as related in the form of books, media interviews, and even movies in the mid-to-late 1970s that over 40 states began legislative movements to formally codify laws that would prohibit “notoriety-for-profit” by preventing convicted criminals, especially violent ones, from obtaining financial or other gains related to their crimes after the fact.
Not at all coincidentally, these laws are colloquially known today as “Son of Sam” laws, and they form the basis of the “common knowledge” that criminals cannot realize material profit from their crimes. Under these laws, the criminal, once convicted, is required to surrender all money and other considerations to the state to be dispersed among the criminal’s victims or, where applicable, the victims’ families.
There’s just one little problem—the vast majority of the Son of Sam laws have been consistently ruled unconstitutional as violations of the First Amendment rights to freedom of speech and the press.
In Simon & Schuster v. N.Y. Crime Victims Bd (1991), which came about as a result of the New York Crime Victims’ Board’s attempts to claw back proceeds paid for the autobiography of Mafia associated Henry Hill written by Nicholas Pileggi, the Supreme Court ruled that part of the New York Son of Sam law violated the First Amendment by “singl[ing] out speech on a particular subject for a financial burden that it places on no other speech or income.” The Court also relied on an opinion rendered in a previous ruling which stated that “the fact that society may find speech offensive is not a sufficient reason for suppressing it.” Other problematic parts of the law included the application of it to people who admitted to a crime in their memoirs or biographies, or who were merely accused of having committed some form of crime without being duly and properly convicted of the crime(s) in question. In response, the State of New York amended the existing law to cover any possible tangible benefit from a crime or the notoriety arising from same which might accrue to the criminal.
A cursory analysis of current Son of Sam laws suggests states that have overhauled their “Son of Sam” laws have done so in a way that allows a person’s victims, or the victims’ families, to sue the person for civil damages and financial remedies, including any profits from their misdeeds directly or the retelling of same (think OJ Simpson here), whether or not the person was found criminally guilty, thereby getting around the First Amendment issues many of these statutes incurred.
To the best of my knowledge and belief, Mexico does not have “Son of Sam” statutes in the same sense that American states do. (Note: I am not an expert on the Mexican legal system by any means!) However, in researching this article, I did find a masterful analysis of El Chapo’s Mexico trademark claim that indicates Article 4 of Mexican Industrial Property Law creates a very similar legal mechanism to a “Son of Sam” law in the US, stating:
“No patents, registrations or authorizations shall be granted nor shall publications in the Gazette be carried out for the legal figures or institutions regulated under this Law whose content or form is contrary to public order, to moral and decency, or that contravene any legal provision.”
Curiously, the boilerplate statement above appears to contradict Vice’s assertion that El Chapo and Gallardo would even be eligible for such trademark registration, let alone be able to actually obtain it. However, Vice does claim to have documentation backing the assertions in their article to which I’m not privy, and Mexico does have a ripe reputation for governmental corruption. If this is true, then it is entirely conceivable that El Chapo and Gallardo could have attempted or even successfully managed to obtain trademarks in Mexico for their names and/or likenesses as a direct result, rather than in spite, of their reputations and pasts.
But even if they managed to successfully get trademarks in Mexico, could they hope to succeed with such a filing here in the USA?
The answer is—it depends.
Gallardo most likely would not, based on the well-publicized fact that a key factor in Gallardo’s prosecution and imprisonment in Mexico was the homicide of an American national. If Gallardo were to move or be extradited to the US for trial, the state in which he landed and its laws would probably have some bearing on what he could and could not do with the proceeds of his trademarks, if the USPTO was to accept his claims at face value and not reject them out of hand. El Chapo’s case offers a bit more complexity, as the US has been working to extradite him for years. If El Chapo were extradited and bound over for trial, a plea of not guilty by reason of insanity may be enough to allow him to avoid triggering any extant “Son of Sam” laws in the jurisdiction where he ended up, thereby permitting him to file for a trademark as a foreign national.
Long story short: I wouldn’t be looking to see officially sanctioned El Chapo T-shirts at your local Walmart or Gallardo-branded tequila in your local liquor store anytime soon!
About John Rizvi, Esq.
John Rizvi is a Registered and Board Certified Patent Attorney, Adjunct Professor of Intellectual Property Law, best-selling author, and featured speaker on topics of interest to inventors and entrepreneurs (including TEDx).
His books include “Escaping the Gray” and “Think and Grow Rich for Inventors” and have won critical acclaim including an endorsement from Kevin Harrington, one of the original sharks on the hit TV show – Shark Tank, responsible for the successful launch of over 500 products resulting in more than $5 billion in sales worldwide. You can learn more about Professor Rizvi and his patent law practice at www.ThePatentProfessor.com
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