US Sports Law Year in Review (2017/18) – Part 10 - Intellectual property and broadcasting
For ease, we’ve broken down the paper into its respective chapters, which will be published in turn as follows:
Agents and agent regulation
Leagues – labor matters
Leagues – non-labor matters
College, high school and youth sports
International and Olympic sports
Title IX/Gender equity and civil rights;
Intellectual property and broadcasting
Personal injury, health and safety
Stadiums and venues
Sports Betting/Daily Fantasy Sports;
It was drafted under the supervision on Professor Mattew Mitten and Professor Gabriel Feldman, and was presented at the Sports Lawyers Association Conference in Washington DC. The SLA, a non-profit, international, professional organization whose common goal is the understanding, advancement and ethical practice of sports law. Each year in May the SLA hosts an Annual Conference at which the above topics are presented and debated.
LawInSport would like to thank the SLA and in particular Professor Mitten and Professor Feldman for permitting the republication of this work.
Washington Redskins trademark
The Washington Redskins trademark saga can finally reach a resolution after the Supreme Court’s ruling in Matal v. Tam, which held that the USPTO’s regulations on registering disparaging or offensive marks violated the First Amendment. The prohibition against registering disparaging marks comes from a provision of the Lanham Act, which governs federal trademark law. The case reached the Supreme Court on a petition for certiorari from the USPTO, who asked the Court to examine the constitutionality of that specific provision of the Act. Ultimately, Justice Alito’s opinion explained that trademarks are private speech, not government speech, and therefore restricting them under the Lanham Act violates the First Amendment guarantee of free speech. For the Redskins, who have not held a registered trademark in their name since they were forced to cancel it in 2015, this means that their potentially offensive mark can no longer be denied registration under the Lanham Act.
Marshawn Lynch, owner of the “Beast Mode” trademark, will continue to enjoy exclusive rights to the mark, after the TTAB denied an appeal from someone trying to register “Beast Mode Soccer” for their sports apparel company. The applicant company, in conjunction with a soccer-training program, wanted to use the name, which the Board ultimately decided was too close to Lynch’s mark, which he has been using consistently since 2009 for his own apparel brand. The likelihood of confusion among consumers was too high to grant the new mark.
The U.S. Army’s Parachute Team, which has been known for over 50 years as the Golden Knights, has filed a notice of opposition against the Golden Knights, new NHL team in Las Vegas, for trademark infringement. The parachute team, who considers themselves to be a sports and entertainment brand similar to a hockey team, argue that they will suffer from dilution and consumer confusion if the NHL team is allowed to go ahead with their trademark registration. The new NHL team says they disagree with the possibility of confusion, but still may be unable to register their mark, pending the USPTO’s decision of the appeal.
Muhammad Ali Enterprises, LLC is challenging a video aired prior to Super Bowl LI, which featured images of famous NFL athletes, referring to them as “the greatest,” alongside images of the late Ali. Ali Enterprises claims that the video, which came from Fox Broadcasting, violates the boxer’s right of publicity via federal trademark law, and that the film gave audiences the wrong idea that the athlete endorsed the production. Ali Enterprises closely monitors use of the Ali mark, and regularly licenses it for use in similar promotional materials; they take issue with Fox’s use because this particular use of the mark was not authorized. To be successful at trial, Ali Enterprises will be required to prove that Fox’s use of Ali’s name was “commercial.”
NFL Trademark Disputes
Early in 2017, the Tampa Bay Buccaneers took action against Florida SouthWestern State College, who used the name “Buccaneers” for their newly rebooted football program. The Florida school applied to register the mark to use both for their sports teams as well as educational services, and Tampa Bay responded by asking the board to block the mark. Their argument? The school is in close proximity to Tampa Bay, and use of the mark to describe live sporting events could cause confusion among consumers. Ultimately, the two organizations were able to agree that the college could use the mark, as long as they included a disclaimer, denying any affiliation to the NFL franchise.
“For Texans Use Only”
In July 2017, seven NFL teams all filed lawsuits against Josh Morell, a resident of Philadelphia. Morell was allegedly taking advantage of NFL teams’ goodwill with fans to register marks purporting to be for each team’s “use only.” For example, the Houston Texans took issue with Morell’s trademark application to protect “For Texans Use Only.” The other teams affected were the Eagles, the Giants, the Jets, the Cardinals, the Rams and the Patriots. All cases are currently pending.
A Malaysian beverage company found themselves in opposition to the Detroit Lions, when the company attempted to register a mark for their “Big Power” drink, which featured a lunging lion, not unlike the one on the Lions’ logo. The case is currently pending.
“Raiders, Baby, Raiders”
The Oakland Raiders, on the cusp of a move to Las Vegas, has faced a lot of trouble defending against fans seeking to profit from the relocation. First, the team took issue when a North Carolina man attempted to exploit this move with an apparel design. Scott Keene applied to register the plain-text mark “Raiders Baby, Raiders,” with an eye at merchandising in anticipation of the team’s arrival. The phrase is a play on the famous movie like “Vegas baby, Vegas.” The Raiders came out on top of this one, as the application has been abandoned. The Raiders also took action against a Las Vegas resident who attempted to register the mark “Silver & Black Nation,” which is clearly in reference to the Raider’s team colors. This one is not yet resolved.
“You Falcon Right,”
The Atlanta Falcons opposed registration of a trademark for the phrase “You Falcon Right,” which was being printed on shirts and advertised across social media. Since the Falcons opposed the mark however, the application has been abandoned.
The Seattle Seahawks, who already have a history of trademark-related litigation (see their 2006 lawsuit against Texas A&M regarding the use of the phrase “12th Man” to refer to their fans), went after local man for attempting to register the mark “Tw Elves.” The Seahawks claim ownership over the mark “The 12s,” and continue to pursue litigation to protect it. They are also currently in litigation against a Seattle apparel company, who applied to register the mark “City of the 12s.” The Seahawks cited direct references to the team on the company’s website.
A California man applied to register a mark of a spoof California Flag, including the phrase “California Ramily,” to celebrate the return of the Rams to Los Angeles. On the flag, the man took out the bear and replaced it with a ram. The team claims the mark, which has been traditionally used in reference to the Rams’ franchise.
Skolkovo Institute of Science and Technology, a Russian university, recently found themselves at odds with the Minnesota Vikings over their registration of the mark “Skoltech.” The mark, which is a nickname for the university, is similar to the Minnesota fight song “Skol, Vikings.” The Vikings franchise was unable to register their own trademark in “Skol,” because the Russian school’s mark was already registered – a mark which had apparently fallen out of use. The litigation is still pending.
Professional athletes’ tattoos may be the next frontier of copyright protection, based on a recent lawsuit by a tattoo artist against 2K Games, the creators of the NBA 2K video games. The tattoo artist, who famously tattooed LeBron James, claims that the video games copy his now-famous tattoos to a tee in their animation of the players, thus violating his copyright in the designs. A similar suit is already pending in New York, based on the tattoos of other NBA stars used in the NBA 2K games, and the arguments in both suits are similar. The game makers argue that the use is de minimis, as the tattoos can only be seen very briefly, and that the reproduction of the designs falls under fair use.
PTAB concluded that a football helmet patent held by Riddell Inc. is invalid because several elements of the design fails the test of obviousness. They point all the way back to an image a football helmet printed in a 1970’s department store catalogue, which shows a helmet with similar features to those listed in Riddell’s patent design. Based on this, PTAB said that any person with ordinary skill would have been able to design a similar helmet based on the information available to them through prior art. Several other elements of the patent were valid, and Riddell is still working to resolve patent infringement suits with several parties regarding their helmet patents.
Wave Broadband, a Washington-based cable company and Comcast competitor, has brought a complaint to the FCC against Comcast, alleging that in order to meet minimum viewership requirements required by a distribution agreement, the cable giant is forcing Wave’s most basic-tier subscribers to pay for several regional sports networks. The networks in question are owned by NBC, which in turn is owned by Comcast. In order to retain access to these regional sports networks at all, Wave was forced to pay $3.5 million to continue carrying the channels, thus continuing to force their subscribers into paying for the unwanted programming. Wave wants Comcast to bear the full antitrust brunt of this anticompetitive behavior, and argues that Comcast leveraged its market position to force Wave into the unfavorable distribution agreement in the first place. They also cite that this is not the first time Comcast has used their market power in NBC’s favor.
A YouTube/MLB partnership that began in 2017 and has already garnered a billion views, will continue through the 2019 World Series, thanks to a deal inked in early March between the two companies. The agreement, which allows MLB games to be broadcast cable-free on the internet-streaming giant, is a huge win for YouTube. They will add an MLB Network channel to their fledgling YouTube TV service, but MLB will also name YouTube as a leading sponsor of the 2018 and 2019 World Series. While watching the MLB games on YouTube will cost extra for YouTube subscribers, it will mean that they will not have to have cable subscriptions to watch live games.
Manny Pacquiao v Floyd Mayweather Jr. PPV suit
It’s no luck for pay-per-view subscribers who claimed not to get their money’s worth out of the highly anticipated 2015 fight between Manny Pacquiao and Floyd Mayweather Jr. After the matchup, a class action suit was filed on behalf of pay-per-view subscribers, claiming that Pacquiao had not been fully healthy for the fight, and therefore they did not get what they paid for when subscribing to the fight. Pacquiao had sustained a shoulder injury, which he did not reveal to fans until hours before the fight, when it was too late, and many fans had already purchased the broadcast. The fight between the two fan favorites nonetheless garnered record viewing numbers, with the event bringing in over $400 million. That suit was dismissed in August by a federal judge in California, who noted that fans suffered no damages because they got exactly what they paid for - a chance to see Pacquiao and Mayweather fight. Their subscription did not guarantee that the fight would be close, and the uncertain nature of competitive sports is what makes it exciting. Notably, this ruling came down the day before another big fight, which took place between Mayweather and MMA’s Conor McGregor.
ESPN sharing of device serial numbers
ESPN Inc.'s sharing of an individual's Roku Inc. device serial number and a list of the ESPN videos watched does not violate the federal Video Privacy Protection Act (VPPA). The court held that an individual's streaming device ID number and videos watched isn't personally identifiable information (PII) protected by the VPPA. Under the statute, PII includes information that can be used to identify an individual, but only information that would “readily permit an ordinary person to identify a specific individual's videowatching behavior.” This decision continues to distinguish the First Circuit’s case, Yershov v. Gannett, which held that an app user's mobile device identifiers could constitute PII under the VPPA, particularly when collected in conjunction with geolocation data. See Eichenberger v. ESPN, Inc., 876 F.3d 979 (2017).
Jillian Michaels v. Lionsgate
Celebrity fitness guru Jillian Michaels won a $5.7 million arbitration ruling against Lionsgate in a dispute over content posted for free on YouTube. In addition to the multimillion-dollar award for lost past and future profits from DVD and digital distribution revenue, the award ordered Michaels' videos removed from YouTube. The legal issues focused on whether free YouTube videos devalue a creator's paid content. This decision represents a firm pronouncement that placing work on YouTube for free devalues it, and damages artists who create it.
Martial arts fighters sufficiently alleged that exclusivity agreements required by fight promoter were an anticompetitive scheme under Sherman Act. See Le v. Zuffa, LLC, US Dist. Ct., D. Nevada. (2016).
Ohio State, Oklahoma State and Oregon State have congruent usage agreements regarding trademark rights to “OSU.” Yet each school has a federal trademark that awards it “OSU” rights on a state-by-state or county-by-county basis. Ohio State’s current trademark covers nineteen states in the Midwest and on the East Coast, while Oklahoma State’s covers seventeen western and southern states. In February, 2017, Ohio State University filed for apparel rights to “OSU.” Oklahoma State plans to file a notice of opposition. The dispute did not make it to court before the two sides reached an amicable agreement. Not only have they dropped the dispute, they've dropped the geographic divisions – thanks to the internet, changes in conference boundaries and increased non-conference games. "Prior agreements as to the concurrent use of the respective (OSU trademarks) within specific geographic boundaries has been rendered impractical," the agreement says. The new agreement on "OSU" covers the entire United States and uses encompassing education, entertainment, apparel and merchandise. The two sides agreed to not use "OSU" in connotation with the other school's colors and mascots. They also agreed not to disparage each other as the fake OSU.
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