Tag Archives: Sports IP

More, more, Moore!

Originally posted 2010-08-02 12:49:54. Republished by Blog Post Promoter

Joe CollegeOne of my favorite ever topics here on LOC has been the litigation brought by the University of Alabama against painter Daniel Moore for unauthorized artistic depiction of trademarks.  As I reported last November, after first writing about this emerging issue four years earlier:

U.S. District Court Judge Robert Propst said in an opinion that Moore did not violate trademark laws by painting scenes of Crimson Tide football without licensing the work through the university. He rejected UA’s argument that the football team’s uniform and colors are iconic enough to trump First Amendment rights in fine art.

‘This court concludes that the depiction of the uniforms in the paintings is incidental to the purpose and expression of the paintings; that is, to artistically depict and preserve notable football plays in the history of University of Alabama football,’ Propst wrote in his memorandum opinion.

As I said then,

You don’t have to go as far as I and praise the kinder, gentler world of the past when an ambitious entrepreneur could pay homage, and maybe pay the mortgage, by taking – yes, horrors! — “free rides” on significant popular culture phenomena that were unlikely to be deemed “affiliations” or “authorized merchandise” without doing the high-end brand equity any harm at all (and probably some good).

This campaign by Alabama, though, really does take the rent-grabbing aspect of this business model to truly offensive levels.  There’s no doubt that NCAA schools and other pro sports teams sell “official” sports art, but it is utterly, utterly meaningless to fans whether this art is “approved,” “official,” “endorsed” or anything else (much less “fine”).  The claim here is simply “The University of Alabama owns everything about the Crimson Tide, and no one is going to make a penny off fan enthusiasm for the team but us.  Period.”

Notwithstanding that, well, yes, the Lanham Act does by its terms protect “approved and endorsed” as well as “source of origin,” I stand by this argument — which is rather narrow, mainly that the NCAA schools and other pro sports leagues should acknowledge that none of this has anything to do with fans, quality or anything other than what may or may not be a legally-granted franchise on branded enthusiasm.

In any case, the decision could not be abided by Big Collegiate IP, which appealed the ruling to the Eleventh Circuit.  Last Friday Moore filed his brief as respondent.

The amicus brief (available here) filed by Big Collegiate IP demonstrates that the schools continue their goal-line defense of intellectual dishonesty in their the presentation of this issue.   Read More…

Best of 2013: A bunch of WHARTON business

Wharton logo

First published August 16, 2013.

Steve Baird — redoubtable Steve Baird — has a great post about a bunch of trademark business involving claims by the University of Pennsylvania’s Wharton School of Business over its trademark rights in the name WHARTON:

Earlier this week, Joseph N. DiStefano of Philly.com reported that the University of Pennsylvania filed suit in federal district court to protect its well-known federally-registered rights in the WHARTON name and mark. (Hat tip to guest blogger Dave Taylor of Taylor Brand Group).

For those who have not been paying attention to business for the past 132 years, The Wharton School is the world’s first collegiate business school, established in 1881, as part of the University of Pennsylvania. It has a remarkable reputation as one of the top business schools in the country.

It has one of the most published faculties and one of the largest and most influential alumni networks. And, we know how smart Wharton students are, as one of our talented guest bloggers,Nick Olson, is a UPenn law student who will graduate in 2014 with a J.D. and a Certificate in Business from the Wharton School. Remember his insightful blog posts on IP Valuation and Poetry in Slogans?

Not surprisingly, the lawsuit asserts pretty standard claims for federal trademark infringement, federal unfair competition, federal trademark dilution (blurring and tarnishment), federal cybersquatting (for registration in September 2012 and use of www.whartonadvisorscorp.com), Pennsylvania statutory unfair competition, and Pennsylvania common law unjust enrichment, against a financial consulting firm in New Jersey called Wharton Advisors Corp. Here is a copy of the complaint and exhibits.

Who else writes a thorough blog post like this any more?  That’s just the intro.  (Don’t worry, I will have some original thoughts on this too.  Sit down.)  Steve now takes a very nice little investigatory turn: Read More…

A bunch of WHARTON business

Wharton logoSteve Baird — redoubtable Steve Baird — has a great post about a bunch of trademark business involving claims by the University of Pennsylvania’s Wharton School of Business over its trademark rights in the name WHARTON:

Earlier this week, Joseph N. DiStefano of Philly.com reported that the University of Pennsylvania filed suit in federal district court to protect its well-known federally-registered rights in the WHARTON name and mark. (Hat tip to guest blogger Dave Taylor of Taylor Brand Group).

For those who have not been paying attention to business for the past 132 years, The Wharton School is the world’s first collegiate business school, established in 1881, as part of the University of Pennsylvania. It has a remarkable reputation as one of the top business schools in the country.

It has one of the most published faculties and one of the largest and most influential alumni networks. And, we know how smart Wharton students are, as one of our talented guest bloggers,Nick Olson, is a UPenn law student who will graduate in 2014 with a J.D. and a Certificate in Business from the Wharton School. Remember his insightful blog posts on IP Valuation and Poetry in Slogans?

Not surprisingly, the lawsuit asserts pretty standard claims for federal trademark infringement, federal unfair competition, federal trademark dilution (blurring and tarnishment), federal cybersquatting (for registration in September 2012 and use of www.whartonadvisorscorp.com), Pennsylvania statutory unfair competition, and Pennsylvania common law unjust enrichment, against a financial consulting firm in New Jersey called Wharton Advisors Corp. Here is a copy of the complaint and exhibits.

Who else writes a thorough blog post like this any more?  That’s just the intro.  (Don’t worry, I will have some original thoughts on this too.  Sit down.)  Steve now takes a very nice little investigatory turn: Read More…

The Licensing Law Blog

Originally posted 2010-03-25 18:38:15. Republished by Blog Post Promoter

My friend Richard Bergovoy has finally come in from the cold and, since January, has been publishing The Licensing Law Blog.

Richard’s smart, he’s funny, and he knows his stuff.  My choice of the day:  The creepy hand of the NCAA as it grips the neck of its means of production–student athletes–and the attempt to pry that grip off by a fellow who seems bound, for better or worse, to be remembered as the Curt Flood of college sports:

One of the foundations of that industry is that college athletes are required to sign documents that relinquish in perpetuity their rights of publicity for college sports-related purposes, as a condition of participating in NCAA-sponsored college athletics. That means the NCAA can, without compensation to the athletes, license their names and images for apparel, video games, broadcasts, and highlight DVDs, long after they have graduated from college.

Ed O’Bannon, a former basketball star at UCLA during the 1990s, said he got angry seeing his highlight clips from 15 years ago being used to promote NCAA broadcasts, so last July he filed a class action lawsuit against the NCAA and CLC in federal District Court in San Francisco on behalf of himself and other former student-athletes. . . .

[I]f O’Bannon wins, the NCAA, CLC, and many college athletic departments could take a large financial hit. They all derive substantial revenue from that $4 billion in licensing fees, but the O’Bannon plaintiffs would claim a major (as yet unspecified) chunk as compensation to former student-athletes whose rights of publicity were utilized in licensing deals. In fact, antitrust law allows victorious plaintiffs to triple their damages. And of course the former college athletes would have the right to cut their own licensing deals going forward, independent of the NCAA and their alma maters.

Furthermore, if O’Bannon wins, it is possible that current college athletes might utilize the rationale in any O’Bannon victory to attempt to weaken or throw out the current system of signing their rights of publicity over to the NCAA and CLC. For example, if the court were to rule the waivers were defective because the NCAA failed to advise students that they should seek legal counsel before signing away rights to future compensation for their intellectual property, then current athletes might argue they too should have the right to be represented by counsel in negotiating rights waivers during their college playing careers. Then star college athletes could get embroiled in contract negotiations, just like professional athletes.

Though somewhat drunker.  But, yeah.

Read Richard’s blog!

Color my world

For years I’ve been writing about the envelope-pushing in trademark by the business of collegiate sports.  In a like vein, but very scholarly-like, here’s a very cool piece from the Brooklyn Law Review – even though it’s in a law review! — by Joshua Saltzman of the winners at Wolf Popper, entitled “Smack Apparel, College Color Schemes and the Muddying of Trademark Law.”  An excerpt from the introduction:

In 2008, the collegiate licensing industry scored a major victory in its ongoing quest to secure revenue streams and to protect the brand images of universities. That victory, however, created major potential problems for trademark law. In Board of Supervisors for Louisiana State University Agricultural and Mechanical College v. Smack Apparel Co.  (“Smack Apparel”), the Fifth Circuit held that a university’s color scheme, combined with “other identifying indicia” of the university, was entitled to trademark protection under section 43(a) of the Lanham Act, thus allowing universities to block certain unlicensed uses of their color schemes on products.  The defendant, Smack Apparel—whose website boasts that its products  are “licensed only by the First Amendment”—sold t-shirts that used the color schemes of Louisiana State University and other universities, including the other three plaintiff universities—Ohio State University, University of Southern California, and the University of Oklahoma. The shirts did not mention the universities by name or use their logos or other registered trademarks, but rather combined their respective color schemes with indirect references to the universities by using geography, bowl championships, and/or allusions to rival teams. . . .

Although the plaintiff universities did not possess registered trademarks in their color schemes, the words and phrases used on the offending shirts, or in any particular combinations thereof, they successfully sued Smack Apparel under section 43(a) of the Lanham Act,11 which protects unregistered trademarks that are used in commerce, and the Fifth Circuit affirmed the trial court’s findings. The Lanham Act defines a trademark as “any word, name, symbol, or device, or any combination thereof—(1) used by a person . . . to  identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods. . . .”

The Smack Apparel decision thus gave universities increasing opportunity to pursue not only unlicensed manufacturers who reproduced the universities’ logos and other registered trademarks, but also manufacturers who merely combined the universities’ color schemes with indirect references. Likewise, it also expanded the number of items for which  manufacturers would have to seek licenses from the universities, presumably providing the universities with an expanded source of licensing revenue.

Courts have grown increasingly sympathetic to and protective of such interests in the context of trademark law. To a certain extent, this sympathy is understandable. Universities invest enormous amounts of money, time, and effort in building up their educational and sports brands. They hope to generate revenues that will fund athletic and academic programs and to improve their image with applicants and the general public.

But these motivations are not sufficient justifications in themselves for the Fifth Circuit’s holding, which not only distorts the letter of trademark law, but also the spirit of it. . . .

This note will argue that Smack Apparel fails to balance these concerns. First, the decision misreads and misapplies the Lanham Act by creating an unclear and open-ended “color plus other identifying indicia” framework that does not satisfy the definition of a “mark.” Second, it mistakes consumer association of color schemes with the universities for consumer confusion about the source of the products bearing the colors. Finally, it ignores the longstanding fan and community interest in showing support for colleges and their teams, and the longstanding traditional uses of college color schemes by fans and local businesses in ways that have not been pursued as trademark violations. The result trends toward a regime where anyone wishing to make reference to a university with a commercial product must seek permission of the university (which the university can deny), and must pay a royalty even if approved. In doing so, Smack Apparel continues and advances a troubling expansion of trademark law beyond its purpose of avoiding “source confusion” and toward a  creation of a right to total control over one’s brand and exclusive right to profit.

Not your everyday fare at an INTA gathering, mind you, but my kind of eatin’.  Color me purple!

More fantasy sports litigation

Originally posted 2006-12-27 18:15:12. Republished by Blog Post Promoter

We wrote in the past about the bogus “right of publicity” issue and the unsuccessful attempt by major league sports to claim ownership in statistics and grab a piece of the fantasy sports action for their fat selves. This one, reported by Andrew Braff, may be different:

TEB Capital Management, “the owner of the publicity and endorsement rights to the likeness, image and identity of [Patriots quarterback] Tom Brady,” is suing Yahoo! for “knowing and intentional unauthorized use” of Brady’s “likeness, image and identity” in advertising for Yahoo Fantasy Football. TSG has the complaint. The plaintiff claims false endorsement under the Lanham Act (43(a)), violation of California’s right of publicity statute, common law right of publicity and unjust enrichment.

A picture is worth more than a thousand numbers — Brady should win this. But look at the complaint and tell me if I’m wrong.

UPDATE:  PACER reports that the case was settled, on terms not disclosed, in April 2007.

Baseball been very, very good to lawyers

Originally posted 2006-05-17 17:04:25. Republished by Blog Post Promoter

Chico Escuela

Do you remember the lawsuit by Major League Baseball over the use of — well, not statistics, exactly, but the rights of publicity in baseball players and, marginally, the use of “players” (really, though, their statistics in a sense) by fantasy baseball leagues? That foul ball, unfortunately, has also not blown into the stands. Aaron Silverstein points to a New York Times article about the progress of this lawsuit as it heads into the bottom of the ninth. The issues are real ones, but the case will decide, in part, whether what was once regarded as common cultural of the American people — the personas of baseball players and what they do on the field — will be yet another “IP property” to be licensed, exploited and its rights “vigorously enforced,” to the (cultural) poverty of us all.

UPDATE: Colin Samuels refers us to Kaimipono David Wenger’s discussion of this case and notes:

Ron Coleman pointed out that the case, weak as it is, would turn on the rights in the players’ personalities (see here). Nevertheless, the players’ names, not their personalities or images, are being used; the names are only incidental to the statistics which are in the public domain. For the same reasons that player names can be reported with their game-by-game statistics in the morning sports pages without payment of royalties, I think MLB’s case will fall short; the only question in my mind is whether their market and financial strength will enable them to extract a compromise from the smaller and more fragmented fantasy/rotisserie league proprietors.