Posted on January 19, 2012 by David Silverman

Is Super Bowl Protected by Trademark or Copyright Law? Try Both.

One of the questions we commonly get from broadcasters and others around this time of year is whether and/or how they can use the term SUPER BOWL.  Some refer to it as a trademark while others call it a copyright.  Who is right...and how can it be used?  The term SUPER BOWL is a registered trademark owned by the National Football League. We previously discussed this issue in 2009, 2010 and 2011. 

Actually, the NFL owns at least eight trademark registrations containing the words SUPER BOWL, as well trademark registrations for the terms PRO BOWL and even SUPER SUNDAY.  Aside from these trademark registrations, the NFL also owns the copyright to the telecast of the game itself.  You may have heard that in past years, the NFL tried to stop Super Bowl parties shown on large TV screens.  This was an enforcement of the NFL's copyright in the game.  Now, the NFL apparently no longer tries to stop Super Bowl parties unless the proprietor charges admission to see the game.  Again, this is a copyright issue.  But what do these rights mean for a broadcaster who wants to run a Super Bowl promotion or an advertiser who wants to run a campaign involving the Big Game?

 

When it comes to use of the trademarked term SUPER BOWL, the NFL will take action against third party attempts to use that term in a commercial sense, in other words, to sell goods and services using the term SUPER BOWL in advertising.  This is because commercial sponsors pay the NFL to be the official car or soft drink or whatever of the SUPER BOWL.  Any unauthorized use of that term in advertising could imply a false sponsorship or affiliation with the NFL.

So, what is permitted?  It is fine to use the term SUPER BOWL in news stories about the game and in conversations about the game.  There is a trademark concept called "nominative fair use" that allows others to use a trademarked term when there is simply no better way to refer to it.  But that concept does not extend to commercial use of the term. 

In summary, you can discuss the Super Bowl and do news stories about the Super Bowl, all while referring to it as the Super Bowl.  But any commercials or promotional announcements should avoid use of that trademarked term.  It is OK for commercials to refer to it as the "Big Game" or any other term that does not include the words "Super Bowl" or "Super Sunday."

And go ahead and have that TV Super Bowl party you were planning.  You will not be violating any copyright enforced by the NFL so long as you do not charge admission to see the game.  By contrast, selling food and drink at the venue is permitted.  In fact, that is pretty much what every bar in the US will be doing on Super Sunday.
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Posted on July 13, 2011 by David Silverman

Protect Your Call Signs and Other Marks in the .xxx Domain

ICANN (the Internet Corporation for Assigned Names and Numbers) has approved the use of .xxx as a domain (like .com) for the adult entertainment industry. In September, broadcasters and others with registered marks will have an opportunity to reserve their marks defensively in the .xxx domain.   

While adult-oriented website operators may be interested in reserving spots in the .xxx top level domain (TLD), broadcasters may be just as eager to prevent their call signs and other marks from being used in that TLD where they may be associated with adult content. The ICM Registry, which will operate the .xxx domain, will allow those who own registered trademarks to reserve .xxx domain names to prevent others from using their marks in that domain.

 Beginning September 7, 2011, there will be a 30-day “Sunrise” period during which adult-oriented website operators will be able to register their marks and domain names in the .xxx TLD. Simultaneously, non-adult-oriented trademark owners can file to block use of their call signs and other marks in that domain, so long as those marks are nationally registered in the United States or any other country.  Registered marks could include call signs, slogans or company names.  For example, Google could secure a domain reservation for google.xxx to prevent an adult-oriented company from actively using that domain name. In registering defensively,  broadcasters would not gain use of the .xxx website, but rather would go a long way toward ensuring that no one else can use it for an adult-oriented website. Broadcasters will not be able to prevent use of unregistered marks or call signs, misspellings of registered marks, or mere domain names during the Sunrise period.

It will be extremely beneficial for broadcasters and others to reserve their registered marks during the Sunrise period if they do not want to see those marks used as domain names in the .xxx TLD for an adult-oriented website. This is especially true since the next registration period, the so-called “Landrush” period beginning Oct. 24, 2011, will allow adult-oriented services to apply for any .xxx domain names unclaimed during the Sunrise period. During the Landrush period, there will be no simultaneous opportunity for broadcasters or others to defensively block use of their call signs or other marks in the .xxx TLD.

Owners of unregistered marks or call signs, as well as those who simply miss the Sunrise period will still be able to take advantage of various dispute resolution measures such as the Uniform Domain Name Dispute Resolution Policy (UDRP) to recover domain names registered in the .xxx domain. Owning a prior registered or common law mark could well be grounds for recovery of a similar .xxx domain name in a UDRP proceeding, but UDRP proceedings can be expensive to prosecute. By contrast, the simple reservation of registered marks during the Sunrise period beginning in September—the cost of which is estimated at between $200 and $500 per domain name—could avoid needless cost and effort later on.

Additional details can be found in our Client Advisory on this subject.
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Posted on November 28, 2010 by David Silverman

Looking for a New Positioning Statement, Slogan or Name for Your Station? - Consult a Trademark Attorney First

Many station owners think they can adopt any name, positioning statement or slogan for their station so long as no one else in the market is using the exact same name or slogan.  That thinking is often incorrect, and can be very costly if a name is adopted and has to be changed later because it infringes on someone else's intellectual property rights.  Nicknames and slogans used in station advertising or promotion are controlled by trademark law.  Even a station's call sign, which must be approved by the FCC, cannot be too similar to an in-market competitor's call sign without running afoul of trademark law.  You may have read about recent litigation concerning the station nicknames "Bob" and "Bob FM."  In that case, there is apparent contour overlap between two separately owned stations using the same name.  But trademark law can come into play even when stations are not in the same market and do not have overlapping contours.

Trademark rights can be established in one of two ways.  The first station to use a name or slogan can establish priority within that station's geographic market or contour.  Alternatively, one can file an application for registration of a station name or slogan at the US Patent and Trademark Office (the "PTO"), and thereby obtain nationwide rights in that name or slogan, if no one else had prior use or a prior application.  Since trademark applications can be filed on an intent-to-use basis, a station can establish priority for a mark it is not yet using.  This is why a trademark search is so important prior to using a mark. 

Determining whether a name or slogan is available for use requires a bit of research best done by a trademark attorney.  First, a "knockout" search of both the PTO database and the Internet may reveal whether anyone has nationwide rights to the term you want to use.  Even if no prior application has been filed at the PTO, widespread Internet usage might also serve to establish nationwide rights.   If that preliminary search reveals someone else's rights to the term you want, it may be easy to "knock out" that name as a possibility.  Perhaps you know of a competitor in the market using that same name or slogan, and if so, that should be a clear signal not to use it.

If the "knockout" search does not reveal any obvious problems, it may be wise to follow that up with a "full" or "comprehensive" search conducted by a trademark search firm.  Such a search may be useful, not only because it may turn up exact hits that were missed in the "knockout" search, but also because it may reveal similar marks that can be equally as troublesome.  Trademark infringement is based on "confusing similarity" of marks and services, and marks can be confusingly similar even if not identical.  For example, one federal court found that the call sign KISS infringed another station's use of KIIS.  Even though the FCC approved these different call signs for different stations, the court found that one infringed the other as a matter of trademark law since they were pronounced the same way over the radio.

The same principles that apply to station slogans and nicknames also apply to marks and slogans used in advertising produced by broadcasters for third parties.  We have written before about the dangers of using third party marks such as "Super Bowl" and "Olympics" without authorization.  But some third party marks are not quite as obvious.  One station prodcued a commercial using the phrase."Get ready to rumble," only to discover that this phrase was a registered mark belonging to a third party.  It is best not to assume that any name or slogan is available for use, even if you are unaware of any in-market use of the same--or similar--mark (unless, of course, the mark belongs to the client for whom you are producing the spot).  The best idea is to consult a trademark attorney before using any call sign, nickname or slogan for your station or before producing a spot for a station client.
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Posted on January 26, 2010 by David Oxenford

Remember "Super Bowl", the "Olympics" and "March Madness" Are Trademarked Terms - Don't Use Them In Advertising Without Permission

With the Super Bowl and the Winter Olympics less than 2 weeks away, and March Madness not far behind, we once again need to remind our readers that all three are trademarked terms, meaning that their use, particularly for commercial purposes, is limited.  We've wrote here last year about the use of the term "Super Bowl" in commercials, and about the use of "Olympics" two years ago (here).  Our warning then bears repeating now - the trademarked terms should not be used in commercial messages except by authorized advertisers.  These advertisers have paid big bucks to be able to say that they are an Olympic sponsor, or that they are having a Super Bowl sale.  The holders of these trademarks enforce them rigorously (so that they can get the big bucks from the official advertisers), so don't risk their use without official permission.  See our Super Bowl post from last year for details on how to refer to these events without running afoul of trademark limitations.

As we wrote last year, this does not prevent all use of these terms.  News reports about the events can still be given.  DJs can still chat about who is going to win the Super Bowl, or about the latest judging controversy in Ice Dancing at the Winter Olympics.  But don't try to commercially exploit these terms (e.g. saying that you are "Springfield's March Madness station") unless you have really paid for the rights to use the trademarked term.  Be careful, as a cute promotional idea can end up costing your station far more than you intended. 

Note - 1/29/10 - We have had many questions since we first posted this entry, including the question as to whether the words "Super Bowl", "Olympics" and March Madness" are really "copyrighted" so they can't be used in local commercials.  While we hate to be too legal about it, but the issue discussed above is one of trademark, not copyright law.  Copyright covers creative works - movies, books, songs, etc. - while trademark covers the commercial use of words or symbols to represent a product or service, which is what the use of these words are - the identification of the particular events. 
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Posted on June 11, 2009 by David Silverman

Protect Your Company Name or Call Sign on Facebook

As you may have heard, Facebook is going to allow users to register names in their Facebook URL, replacing the former random ID numbers.  This policy, announced in a Facebook blog post earlier this week will become effective on a first come, first served basis beginning Saturday, June 13 at 12:01 am.  This new policy creates the danger that Facebook users may try to register as their user name words or phrases that could infringe on a company name, trademarked slogan, or even a broadcast station's call signs.  To prevent others from using your company's name, call sign or other trademark, Facebook has created a form allowing rights holders to register their marks ahead of time.  To protect your intellectual property in the easiest manner possible (without the need for costly infringement lawsuits of other actions), companies should take advantage of the procedures outlined by Facebook itself, and register with the company.

A couple of caveats:  

  1. User names have to be at least five alphanumeric characters.  This means that four letter call signs cannot be used as user names unless used with a suffix or frequency.  Since periods are the only punctuation allowed, acceptable user names might be WXYZ.FM, or FM98.1, for example. 
  2. In order to prevent someone from using your trademark in advance, it appears that it must be a registered mark.  However, a separate form appears to allow intellectual property rights holders to reclaim a user name, even if it is not a registered trademark.  Thus, if your company name, mark or call sign is unregistered, you can either register it as your own Facebook user name or wait until someone else does that and complain after the fact.  You do not need to be a Facebook user to submit the intellectual property rights forms described above.

Broadcasters and other media companies should take steps now to avoid having someone else registering their intellectual property as a Facebook URL.  Certainly, if someone is going to exploit your brand on Facebook, it should be you.  Act now to avoid more trouble later. 
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