Posted on March 12, 2012 by David Silverman

MARCH MADNESS: An Unusual Case of Reverse Confusion

As we wrote about last year around this time, MARCH MADNESS is a term that is protected by trademark law.  It is owned by the March Madness Athletic Association (MMAA), a joint venture between the NCAA and the Illinois High School Athletic Association (IHSA).   The IHSA was actually first to begin using this mark to describe its high school basketball tournament in the 1940s. 

Brent Musburger brought MARCH MADNESS to public attention in using that term to describe the NCAA college basketball tournament, during which many hearts are broken each year....if you are lucky enough to have a team that made it this far. (Northwestern came this close to its first NCAA appearance.)

Normally, this would be a case of so-called "reverse confusion," in which the junior user of a mark (here, the NCAA) is so much bigger than the senior user of the mark (the IHSA) that the public thinks the mark belongs to the junior user.  In the typical reverse confusion case, the senior user can stop the junior user from using the mark.  But that did not happen here.  Why? 

In the typical reverse confusion case, the junior user adopts the senior user's mark and that can be stopped by the senior user.  But here, the public began using MARCH MADNESS to refer to the NCAA tournament before the NCAA began using the term itself.  The federal court that heard this trademark infringement action ruled that the IHSA could not stop the NCAA from using MARCH MADNESS because that term had entered the public domain as a nickname for the NCAA tournament before the NCAA adopted the mark itself.  Accordingly, the court held that the mark was subject to dual use by both NCAA and IHSA, who now own it jointly through the MMAA.

What does this mean for broadcasters?  It means your talent can discuss MARCH MADNESS all they like without fear of reprisal, so long as the term is not used to sell or promote goods or services.  The NCAA may not be as aggressive in protecting MARCH MADNESS as the NFL is in protecting SUPER BOWL, but the unauthorized commercial use of either term is prohibited by trademark law.  This means no "March Madness Sales" without authorization from the MMAA, which owns the trademark and related marketing rights to MARCH MADNESS.

 
Tags: , , , , , , ,
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.
Tags: , , , , , , , , ,
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.
Tags: , , , , , ,
Posted on August 4, 2008 by David Oxenford

Remember the "Olympics" are Trademarked - Advertisers Beware

Last week, an article in the Wall Street Journal focused on the enforcement of the trademark that the United States Olympic Committee has in the word "Olympics."  Thus, anyone who wants to call some sort of competition an "Olympic" contest, or anyone who uses any derivation of that word, is asking for potential issues should the USOC get word of that use.  What the article did not address was the issue that this raises for broadcasters and advertisers.  Just as the trademarked term "Super Bowl" can cause problems for companies that use it in advertisements without permission of the NFL, advertisers should refrain from the use of the term Olympics in connection with promoting their products.   Companies have paid huge rights fees to get the exclusive rights to use the Olympics in their advertising campaigns, usually getting exclusive rights in a particular product category.  These companies and the Olympic committee do not like to see local advertisers appropriating the use of the Olympics name (or the interlocking circles that comprise their symbol) in someone else's ad.  So, just as electronic stores promote the sale of their big screen TVs before the Super Bowl by talking about the "Big Game" rather than using the trademarked phrase, advertisers must use care and avoid any trademark infringement by trying to tie their products to the Olympics during this upcoming event. 
Tags: , , , , ,
  • Email This
  • Print
  • Comments
  • Share Link
 
<--!
-->