Top 6 Football Rankings Are In… For Intellectual Property Cases? | Law360

Posted on 09-01-2015 by
Tags: SuperBowl , Trending News & Topics , LIT , intellectual property , trending news

The article below has been republished in full courtesy of Law360, written by Bill Donahue.

Are you ready for some … intellectual property? Here are the top six gridiron IP suits of the past few years, ranked.

6. "Pistol Pete"
Everybody loves a three-way collegiate trademark dispute over an 80-year-old caricature of a gunslinging cowboy, right?

Somehow, some way, it turns out that the sports programs at Oklahoma State University, New Mexico State University and the University of Wyoming all spent years using nearly identical versions of the same logo: Pistol Pete, a gun-toting cartoon caricature of real-life gunslinger Frank Eaton.

OSU owns a trademark registration on the logo and has been using it since 1930, but NMSU seems to have also used a nearly identical design and name from the 1960s to the 2000s — without any record of trademark disputes.

NMSU moved away from the design in the 2000s, but OSU sued the school last fall over its sale of retro-themed gear with the old logo. The two sides settled a few months later, with NMSU agreeing to strong limitations that allowed it to continue to sell certain throwback items.

It wasn’t the first time OSU fought to control Pistol Pete. Wyoming moved to register the image in 1989, but the trademark office eventually issued a registration to Oklahoma instead. The two schools buried the hatchet with a 1993 concurrent use agreement that required Wyoming to use different colors and clearly display its own school name, and Wyoming has since moved away from the design entirely.

5. Jim Brown v. Electronic Arts
In one of several major cases against Electronic Arts Inc. from the real-life players featured in its best-selling football video games, the Ninth Circuit said in 2013 that players like Hall of Famer Jim Brown couldn’t sue the company for false endorsement over unnamed, but similar-looking, players included in games.

EA gets licenses from the NFL players union to display the names and likenesses of current players in its Madden NFL franchise, but didn't seek out the same authorization for the old players like Brown. The “historic teams” in Madden didn’t expressly include his name, but they used real-life physical attributes, position and other indicators to show that it was Brown.

The video game giant has been sued several times over similar practices through state-law publicity rights claims — more on that later — but Brown accused the company of violating the Lanham Act’s rules on false endorsement.

In July 2013, though, the Ninth Circuit said the First Amendment shielded the team from the federal claim. Applying the extremely tough Rogers test, which allows for the free use of trademarks in expressive works under most circumstances, the court said the inclusion of a similar-looking figure didn’t give rise to a Lanham Act false advertising claim, either.

Brown is now back in California court, where he’s pushing a more traditional state-law publicity rights claim.

4. "12th Man"
Texas A&M University and the NFL’s Seattle Seahawks came to high-profile blows in 2006 over their mutual use of the name “12th Man” for their rowdy fan bases, and the tricky trademark situation continues to this day.

Coming off two straight Super Bowl appearances and heavy coverage of their particularly loud fans, the Seahawks’ usage is arguably better known these days, but Texas A&M claims it’s been using the name since a legendary 1922 football game — long before the Seahawks permanently retired #12 in the 1980s.

After years of apparent low-boil coexistence, the Seahawks got a cease and desist letter from Texas A&M in early 2006, as the team made more and more “12th” references in the lead up to its appearance in Super Bowl XL. The school sued a month later, and eventually came out on top: The Seahawks agreed to significant limits on how it could use the phrase, and agreed to pay licensing fees.

The details of that arrangement dictate the team’s marketing to this day. The team is allowed to use “12” and “The 12s” even after the licensing deal expires at the end of this year, but it would need to re-up the deal with Texas A&M if it wants to keep using “12th Man.”

Sure enough, there’s barely a mention of “12th Man” any more from the Seahawks, who instead aggressively market their fans as “The 12s,” or simply “12.” They’ve also made a strong push to register trademarks on those variants of the old nickname, and strongly police those marks at the TTAB.

3. Baltimore Ravens Logo
NFL teams and Hollywood studios aren’t exactly known as IP softies, so it’s not every day you see the two joining forces to win a major victory for the fair-use doctrine.

A Baltimore artist named Frederick Bouchat designed what eventually became the Baltimore Ravens’ first logo, but the team used the design from 1996 to 1998 without compensating or crediting him. After Bouchat successfully sued the team for copyright infringement, the Ravens switched to their current look after the 1998 season.

But Bouchat was hardly finished. He sued the team several more times over continued use of the old logo, and in 2012 he sued over brief shots of the design that appeared in highlight reels of old seasons and historical photos that appeared in the Ravens’ stadium. That last one was a bridge too far: A federal district judge tossed the claims, ruling they fell under the fair-use doctrine.

Bouchat appealed to the Fourth Circuit, drawing strongly worded amicus briefs from the Motion Picture Association of America and other film groups, who feared that Bouchat’s interpretation of fair use was “woefully cramped” and would subject moviemakers to huge new liability for incidental inclusions of copyright material.

In December 2013, the Fourth Circuit agreed, saying that the “fleeting and insubstantial” appearance of the logo in the videos did not amount to copyright infringement. Though the “NFL may not arouse sympathies in the way that a revered artist does,” the appeals court wrote, “the consequences of this case reach far beyond its facts.”

“Society’s interest in ensuring the creation of transformative works incidentally utilizing copyrighted material is legitimate no matter who the defendant may be,” the court wrote.

2. O'Bannon v. NCAA
Ed O'Bannon’s pending lawsuit against the NCAA — which could be on the verge of fundamentally altering the structure of college sports — is ultimately an antitrust case, but its roots are tangled up in intellectual property.

The litigation, involving football and basketball players, claims that the NCAA’s ban on player compensation violates antitrust law, restraining competition among the country’s big sports schools for top recruits. After a three-week trial last summer, a federal judge agreed that the pay ban was illegal and that players should be compensated.

Compensated for what, exactly? The lawsuits launched by O'Bannon and the other players in 2009 aren’t claiming player should be paid like employees, but rather that they should be paid for the use of their names and likenesses — their publicity rights — in television broadcasts, video games and merchandise.

As they’ve progressed, the cases against the NCAA have led to a few key rulings on the somewhat obscure area of intellectual property.

Electronic Arts, named as a defendant in the cases over its unlicensed use of player likenesses in its NCAA video games, lost key rulings in the Ninth and Third Circuits, which both rejected the company’s claim that its use of similar-looking players was protected by the First Amendment. The video game giant eventually settled out of the case, and has stopped making the college game altogether.

The Ninth Circuit’s precedent has already had an impact. Last year, citing the NCAA ruling, the appeals court said the First Amendment didn’t shield EA from similar claims brought by retired NFL players whose likenesses were similarly used without authorization.

1. Blackhorse v. Washington Redskins
How could the top spot not go to this trademark dispute?

It’s not just a two-decade effort to cancel the registrations for an NFL team name that’s become the poster child for the controversial use of Native American imagery in sports, but also a First Amendment battle that could end up with the Supreme Court invalidating a portion of the Lanham Act. Oh, and have we mentioned this is third most valuable franchise in the sport, which happens to play in the nation’s capital?

Amanda Blackhorse’s case — the latest in litigation against the team that was first filed back in 1992 — is currently heading for a Fourth Circuit appeal, following rulings by both the Trademark Trial and Appeal Board and a Virginia federal judge that the team’s name is prohibited by the Lanham Act’s Section 2a , which bars “disparaging” trademarks from being registered.

An eventual loss on the trademark front wouldn’t be the end of the world for the team in a brand protection sense, because it could enforce common law rights to the name and various logos. But it would be a major symbolic loss in a fight to keep using the name, which many critics consider an ethnic slur and have called on the team to change.

A win for the team, on the other hand, might result in a ruling that Section 2a is an unconstitutional viewpoint-based restriction on the team’s ability to use the federal trademark registration system. A Virginia federal judge rejected that argument last month, but the team is expected to pursue it on appeal, and it’s also currently being considered in a separate Federal Circuit case.

The above article has been republished in full and is courtesy of Law360For the latest breaking news and analysis on energy industry legal issues, visit Law360 today.

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