The Greatest Trick The NFL Ever Pulled Is Convincing The World It Holds Trademark Rights That Don't Exist

from the in-the-details dept

It's nearly my birthday again, which of course can mean only one thing: we have to write up a post trying to explain to people that the NFL is completely full of shit in what it thinks its trademark on "Super Bowl" allows it to restrict. This has been something of an annual series for us, since the NFL really enjoys pulling out legal threats to bully businesses and churches over using factual phrases that do not in any way represent actual trademark infringement. The NFL certainly can restrict who claims to endorse the Super Bowl, or who can vaguely indicate some affiliation with the NFL or an NFL team, but the league instead likes to pretend that nobody can factually state that there is a thing called a Super Bowl and that it occurs at this time of year.

The output of this game of make believe is the world being a dumber, more cynical place. Businesses everywhere use euphemisms for the Super Bowl, such as "the big game." Everyone knows what the euphemism means, yet the NFL usually lets this kind of thing slide. This myth about what is and is not infringement has in part been perpetuated by non-Techdirt media outlets that parrot the NFL's claims, or at least warn everyone that the NFL is litigious. Which... thanks.

Most recently, this type of parroting comes in the form of articles such as this one, unhelpfully titled "Fear The Shield." To be fair to that post, the whole thing is fairly full of comments from exasperated business owners being confused as to how the NFL can trademark facts when it cannot.

Eithnee Carline is the co-owner of DJ’s Wings in Falmouth and Hyannis. The Hyannis restaurant has been in business for 30 years, she said. She recalled back when some newspaper accounts referred to the establishment as “Super Bowl Headquarters.” Ms. Carline said she is aware that no such verbiage can be used in the business’s advertising for this weekend.

“We use ‘The Big Game.’ Can’t even use Patriots, our favorite football team! Isn’t it crazy?” she said.

The sandwich board in front of the American Legion Post on Shore Road in Gray Gables announces a “SUPERBOWL PARTY.” Similarly, the marquee in front of Dino’s Sports Bar on Route 151 in Mashpee invites people to come watch “PATS-RAMS” this Sunday. Asked about the NFL’s trademark protection of the team names, owner Constantinos (Dino) Mitrokostas said that is why he phrased it the way he did, not using the full name of the Patriots.

“That’s why it says Rams Pats, that answers it all!” he said.

Indeed, except that this is all stupid. Venue owners somehow think that a sandwich board telling patrons to watch the Super Bowl at their establishment is infringement, but it very, very much is not. Business owners think that advertisements that make mention of the Super Bowl's existence without implying endorsement are infringement, but that absolutely are not. And, yet, this has been the un-reality that the NFL has successfully willed into existence with its legal team, aided by paragraphs in media outlets such as this.

Sunday, February 3 is the Super Bowl. As every sports fan knows, the New England Patriots will take on the Los Angeles Rams in what has also come to be known as Super Sunday.

Fortunately, everything written above appears in a newspaper article, and not an advertisement for a business, such as a restaurant or a sports bar. Placing any one of those phrases—Super Bowl, Super Sunday, Patriots, Rams—in an ad of any kind could land the business owner in a heap of trouble with the National Football League. They are all NFL trademarks, and the league charges substantially for the right to use what has been registered for intellectual property protection.

That is the opening frame for the entire post at The Bourne Enterprise (um, the name, guys?), a local "paper" in Massachusetts. And it's at best incomplete and at worst horribly misleading. Using those phrases in an advertisement would not land real legal trouble except under certain circumstances and in certain contexts. In trademark law, the linchpin is public confusion over to the source or affiliation of a good or service or brand. Without that confusion, there's nothing to worry about, and there is nothing confusing about a bar saying that it would be an appropriate place to watch the Super Bowl.

But every year, this is how I spend the run up to my birthday. I'd like to think that this some day will not be the case, but it's more likely that I can expect to be writing this post when I'm old and gray.

Filed Under: big game, fair use, nominative fair use, super bowl, trademark
Companies: nfl

Infamous Pinkerton Detectives Claim Red Dead Redemption's Use Of Historically Accurate Pinkertons Is Trademark Infringement

from the seeing-red dept

Take 2 Interactive is no stranger to fighting bogus complaints about "infringement" concerning how it represents characters in its various games. Most of these fights have been over its flagship franchise, the Grand Theft Auto series, where the developer often enjoys poking fun at pop culture and society through settings and characters that are an amalgam of several stereotyped individuals. This has resulted in entitled celebrities and property owners attempting to sue over trademark and publicity rights in the past, with Take 2 typically coming out victorious by pointing out that its work is that of parody and covered by fair use.

This is now happening with a different game but the basic story remains the same. In this case we have the added insanity of a rather infamous company trying to profit off of its infamous history. Pinkerton Consulting & Investigations sent a cease and desist notice to Take 2 after Red Dead Redemption 2 was released due to the game including characters who were a part of the company during ye olde olden times. In response, Take 2 filed suit.

Pinkerton sent Take-Two Interactive a cease-and-desist letter over the characters of Andrew Milton and Edgar Ross, a pair of Pinkerton agents and major antagonists in the game. Now, Take-Two is suing to have the characters declared fair use, arguing that they’re part of Red Dead Redemption 2’s detailed historical setting.

Pinkerton Consulting & Investigations (now a subsidiary of security firm Securitas AB) delivered its cease-and-desist order in December, roughly two months after Red Dead Redemption 2’s release. It commended game development studio Rockstar’s “clear affection” for Pinkerton, but claimed it was trading on the “goodwill” associated with the company’s trademarks, creating a false impression that the game was made by or connected with Pinkerton. The order demands that Take-Two pay either a lump sum or ongoing royalties. But Take-Two contends that Red Dead Redemption 2 — which the lawsuit describes as a “gripping Wild West adventure” and “essentially an interactive film” — is protected by the First Amendment.

Okay, so a lot to get into here. First and foremost, including Pinkerton in a story about the old west absolutely is an obvious aim at being historically accurate. I didn't realize it until reading this story, but the Pinkerton operation around today is the same Pinkerton organization that has a sordid history working with both government and industry specifically to infiltrate, investigate, and ultimately stop the spread of labor unions, while encouraging strikebreaking. The infamous Pinkerton agency goes all the way back to the 1800s and was somewhat notorious for its tactics. The company also was very much involved in investigating and tracking down notorious outlaws such as Jesse James, Butch Cassidy, and the Sundance Kid. All of this, of course, makes their appearance in an old west outlaw game perfectly reasonable fodder.

Take 2 notes all of this in its declaratory judgment suit, along with mentioning all of the other cultural media that includes references to Pinkerton in stories about the old west.

Take-Two notes that the Pinkerton National Detective Agency is referenced in plenty of other Western fiction, and that the agency played a major role in real 19th- and early 20th-century American history. (It was not, however, the inspiration for the Weezer album Pinkerton.) Among other places, Pinkerton agents appear in the 2000s-era TV series Deadwood; the 1980 film The Long Riders; and the 2010 game BioShock Infinite, where the protagonist is a former Pinkerton agent.

Yet, when it comes to the wildly successful game Take 2 released, Pinkerton suddenly wants to lean on trademark law as a way to profit over a historical reality. This is absurd on many levels, including that the use by Take 2 -- much like with its GTA series -- is obviously fair use. On top of that, Pinkerton's claim in its C&D that the public is going to somehow be confused into thinking that Red Dead is the product of, affiliated with, or approved by Pinkerton is laughable at best. I would posit that most people playing the game likely won't know that Pinkerton is a real company, whereas those that do will see it as the inclusion of historical characters that are prevalent throughout the game.

In response to the lawsuit, the Pinkerton folks claim that part of their complaint is that this is a historically inaccurate picture of the Pinkertons, and that it's harming their good will. Given the existing reputation of the Pinkertons from back in the day, it's difficult to see how there is much good will to harm here in the first place, and litigating the reputation of the Pinkertons from the 1800s in the old west doesn't seem like a productive use of anyone's time.

We'll see how the court decides this, but it's quite difficult to imagine works of art having to license history in the way Pinkerton has suggested Take 2 should.

Filed Under: fair use, history, licensing, nominative fair use, pinkertons, red dead redemption 2, trademark
Companies: pinkerton, pinkerton consulting and investigations, rockstar games, securitas ab, take 2 interactive

Heisman Trophy People Sue HeismanWatch For Using Images Of The Trophy And Stating Its Name

from the hail-mary dept

Way back in 2007, we shook our heads sadly as Motion Picture Academy decided that takedowns over past Oscar clips and a lawsuit against a website, OscarWatch.com, would somehow drive more attention to the current year's Oscar broadcasts because of... reasons? In that case, the MPA was mostly making trademark claims, laughably stating that allowing a site like OscarWatch would confuse the public into thinking that the site was in some way affiliated with the MPA. In actuality, the site was a fan-site that put out analysis of The Oscars and had a nice big disclaimer that it wasn't associated with the MPA right at the top of its site.

Ten years later, the organization that manages the Heisman Trophy, college football's most prestigious award, has decided to one-up the MPA by filing a similar suit against HeismanWatch.com, but also tacking on a copyright claim stating that online depictions of the trophy is violating the copyright on the original artwork that is the trophy itself.

The trophy itself is an original sculptural work entitled to copyright protection, asserts the plaintiff, which has licensing relationships with ESPN and the Collegiate Licensing Company, a division of IMG.

"As owners of the HEISMAN Copyright, the Trust has the exclusive right to (1) reproduce images of the Heisman Trophy® award, (2) publicly display the Heisman Trophy® award; and 3) distribute copies of the Heisman Trophy® award pursuant to Section 106 of the Copyright Act, 17 U.S.C. § 106," states the complaint. "Upon information and belief, Defendants have for years willfully copied, displayed and distributed copies of the Heisman Trophy® award on a consistent and systematic basis, without the Trust’s authorization or consent... Defendants past and continuing copying, transmitting, displaying and distribution of images of the Heisman Trophy® award constitutes a willful, deliberate and ongoing infringement of the Trust’s copyrights, causing irreparable harm and damage to the Trust."

Let's tackle these in order. Like OscarWatch, HeismanWatch also has a big fat disclaimer on its homepage that loudly informs visitors it isn't affiliated with the Heisman Trophy Trust. Between that and the context of the rest of the site (more on that in a minute), it is evident to anyone with a working frontal lobe that there is no association between these two entities. For that reason alone this trademark claim should fail. Furthermore, on the trademark claim, this is clearly nominative fair use. The site is discussing the Heisman Trophy, and thus is using the term to accurately describe the site's purpose.

On to the copyright claim. What is HeismanWatch? Well, the site is part a podcast repository for the contributors to the site, and part a repository for analytics and predictions for the Heisman race. If that doesn't fall squarely in the sports journalism category, then nothing does. As such, just as every newspaper in the country is free to reproduce images of the Heisman trophy in its reporting on college football, so too is HeismanWatch. Whatever licensing deals the trust might have in place, the use of images of the trophy by HeismanWatch simply doesn't violate the copyright of a sculpted work of art. Period.

The only useful function of this lawsuit at all, in fact, is as a litmus test for whichever court will hear it.

Filed Under: copyright, fair use, heisman, heisman trophy, heismanwatch, nominative fair use, trademark
Companies: heisman trophy trust

Come Witness The Commentators That Help The NFL Fool The Public About Its 'Super Bowl' Trademark Rights

from the shame-on-you dept

The Super Bowl is here and this Sunday many of us will bear witness to the spectacle that is million dollar advertising spots mashed together over four hours with a little bit of football thrown in for intermissions. As we've discussed before, this orgy of revenue for the NFL is, in some part, propagated by the NFL's never ending lies about just how much protection the trademark it holds on the term "Super Bowl" provides. While the league obviously does have some rights due to the trademark, it often enjoys playing make believe that its rights extend to essential control over the phrase on all mediums and by all persons for all commercial or private interests. This, of course, is not true, and yet a good percentage of the public believes these lies.

Why? The NFL, pantheon of sports power though it may be, is not so strong as to be able to single handedly confuse millions of people into thinking they can't talk about a real life event whenever they want. No, the NFL has been helped along in this by members of the media who repeat these lies, often in very subtle ways. Ron Coleman of the Likelihood Of Confusion site has a nice write up publicly shaming a number of these media members, including Lexology's Mitchell Stabbe.

At Lexology, Mitchell Stabbe writes a post about why the SUPER BOWL® is the specialest trademark ever, laying out a thorough analysis of “activities that create a significant risk of an objection by the NFL.” He soberly notes that while the NFL failed in its effort to register THE BIG GAME, “The NFL also has federal trademark protection for 'Super Sunday', 'Gameday', 'Back to Football', '1st and GOAL' and over a hundred other marks.”

Except that Stabbe's analysis of how to avoid the ire of the NFL includes such advice as suggesting that businesses not wish teams or players good luck, for newspapers not to have any special sections covering the Super Bowl be sponsored by any companies, and for restaurants and bars not to use the term in any watch parties they have for the game. In case it isn't clear, none of those are matters of actual trademark infringement necessarily. Stabbe doesn't bother to point out that there's no likelihood of confusion in the marketplace here, and that basic nominative fair use (i.e., naming the thing you're talking about) is not going to dilute a trademark either. These types of advice columns, seemingly from experts on the subject, undermine the public's awareness of its own rights when it comes to using language.

Another example has media members acting as though there is special space carved out just for them, or certain members of the public, to use the phrase "Super Bowl."

In a post at a website called “SB Nation” owned by Vox Media, Jeanna Thomas noted a year ago, quite correctly, that “The NFL keeps firm control over its trademark on the words ‘Super Bowl,’ and that control makes the league a whole lot of money.” Unfortunately, the next sentence starts, “The Super Bowl (we can say it, because here at SB Nation we write about sports,” which would be bad enough without being topped by the double-barreled whopper to the effect that “Private citizens are fine to use the phrase without consequence, as long as there’s no financial consideration involved.”

It should be clear that all of these "we're barely safe to use this term and avoid the NFL's team of lawyers if we follow these very strict rules" creates the impression that the majority of the rights to use the term belong to the NFL, with a tiny bit leftover for the public. This is not how trademark law works. Trademark rights are limited in scope and infringement is reserved for particular circumstances. Just because the NFL pretends otherwise does not make it so, except it can become effectively so with people who should know better repeating these lies.

So have fun watching the Super Bowl. I can say that because I'm a blogger, I submitted six forms of identification and a urine sample to Roger Goodell's office (unsolicited, by the way), and I have created a totem to pray to my lord and savior Tom Brady, made out of a combination of salami, sharp cheddar cheese wedges, and pickle slices. If I hadn't... well, let's just say I'm happy to still be alive.

Filed Under: exaggerations, nominative fair use, super bowl, trademark

Appeals Court Muddies Trademark Nominative Fair Use Doctrine

from the clear-as-mud dept

The nominative use doctrine allows third party references to trademark owners using the trademarks they chose as their preferred descriptors. Without a robust and well-functioning nominative use doctrine, trademark owners can have too much control over their brands -- they can shut down the advertisement of complementary or competitive offerings and potentially even critical scrutiny of the brands. Unfortunately, Congress never adopted a statutory nominative use doctrine for trademark infringement, and the doctrine seemingly baffles the courts. As a result, the circuits have created a patchwork of nominative use doctrines. A ruling this week from the Second Circuit exacerbated this problem.

The lawsuit itself is so ridiculous that it's hard to discuss with a straight face. The plaintiff owns the certification mark "CISSP" for certifying information security professionals. I've blogged about them before (1, 2). The defendant, Security University (SU), earned the CISSP designation and then ran ads self-referring to itself as "Master CISSP" or a "CISSP Master." When the certification mark owner challenged the "master" reference, the defendant responded "SU will continue to use the word Master. Master Clement Dupuis is a Male Teacher [and] thus he is a Master according to the dictionary." Oh come on, this is off the BS charts. Nevertheless, the district court dismissed the lawsuit because the defendant earned the CISSP certification and therefore could make a nominative use of it.

Trademark law isn't well-equipped to deal with an issue like this. The defendant's "master" usage implies the defendant has a superior knowledge compared to other CISSP. That's more of a false advertising issue than a trademark issue, and courts struggle when pressing trademark law to regulate broader advertising law issues. Furthermore, the way certified parties advertise themselves is best addressed by the terms of the certification, i.e., the certification should include restrictions on making superlative claims, forming combination marks or otherwise creating the impression that there are new certification flavors. I think contract principles, incorporated through the certification part of a certification mark, would be more efficacious than primary trademark doctrine.

Still, this case presented itself as a trademark case to the courts, so they address it using the tools of trademark. The Second Circuit reverses the district court's nominative use determination, remanding the case back to the district court to apply the legal principles it lays out in the opinion.

Regarding the nominative use doctrine, the court makes two major moves. First, the court could have adopted the legal articulation used by other circuits, such as this venerable language from the Ninth Circuit's New Kids on the Block case from a quarter-century ago:

First, the product or service in question must be one not readily identifiable without use of the trademark; second, only so much of the mark or marks may be used as is reasonably necessary to identify the product or service; and third, the user must do nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder.

Instead, the court chose to re-articulate the doctrine in its own words:

(1) whether the use of the plaintiff's mark is necessary to describe both the plaintiff's product or service and the defendant's product or service, that is, whether the product or service is not readily identifiable without use of the mark; (2) whether the defendant uses only so much of the plaintiff's mark as is necessary to identify the product or service; and (3) whether the defendant did anything that would, in conjunction with the mark, suggest sponsorship or endorsement by the plaintiff holder, that is, whether the defendant's conduct or language reflects the true or accurate relationship between plaintiff's and defendant's products or services.

You can see similarities to the Ninth Circuit test, but notice the differences. The Second Circuit's first factor requires a "necessity" of the trademark reference, a seemingly higher bar than the Ninth Circuit's "not readily identifiable" requirement (a phrase which nevertheless confusingly modifies the word "necessary"). In the second factor, the Second Circuit omits the "reasonably" qualifier from the identification necessity. In the third factor, the Second Circuit requires that the description be "accurate."

All told, the Second Circuit's modifications make it just a little harder for defendants to qualify for the nominative use case. Why did the Second Circuit toughen up the nominative use standard compared to the Ninth Circuit? The court provides no explanation, but I suspect it's an overreaction to the defendant playing semantic games ("bad facts make bad law," etc.), plus the overall misfit of using trademark law to govern what's really a false advertising issue.

Second, the Second Circuit addresses when a court should do its nominative use analysis. In the Ninth Circuit, the three-factor nominative use test substitutes for the standard multi-factor likelihood of consumer confusion test. In the Third Circuit, nominative use is an affirmative defense. Rejecting both approaches, the Second Circuit says that, "in nominative use cases," judges should add the three nominative use factors to the standard eight-factor Polaroid consumer confusion test -- in other words, an overlong eight-factor test now becomes an even longer 11-factor test. Any ideas how that's going to work out? (Recall Judge Walker's cogent and pithy critique: "Every circuit uses some n-factor test for likelihood of confusion, where n is an integer that is almost certainly too large for the task at hand").

By adding factors to the multi-factor test, the court makes it effectively impossible for defendants to establish nominative use on a motion to dismiss (a possibility under the Ninth Circuit's approach, even if unlikely), and it will inhibit judges from ruling for the defense on summary judgment. Judges can resolve consumer confusion analyses on summary judgment, but some judges are reluctant to do so because the factors encode so many factual questions. Adding three more factors to the test, each with additional factual predicates, will make judges that much more reluctant. So the court's ruling implicitly adds to the costs of a successful nominative use defense.

As I mentioned before, courts can't figure out how to deal with the nominative use doctrine. This is a problem because the nominative use doctrine plays a critical role in the successful functioning of markets, something I emphasized in my 2005 Deregulating Relevancy article. To facilitate socially beneficial nominative uses, we need doctrinal and procedural fastlanes that provide certainty and cheap resolutions to secondary users. The Second Circuit decision moves us further away from that direction.

A nomenclature note: there is some disagreement about whether to call the doctrine "nominative use" or "nominative fair use." The Second Circuit opinion uses the term interchangeably but seems to prefer "nominative fair use" -- that gets 34 references in the opinion, compared to 11 for "nominative use."

Reposted from the Technology & Marketing Law Blog

Filed Under: fair use, nominative fair use, second circuit, standard, trademark