With the Super Bowl fast approaching, broadcasters and other media companies are planning advertising and promotions around the big game. Here is some advice to broadcasters from Mitchell Stabbe, a lawyer from my firm who has spent over 30 years counseling businesses on trademark issues, about legal cautions to consider in finalizing your plans:
In addition to the monies it receives annually for the right to broadcast the Super Bowl, the NFL receives more than $1 billion in income from licensing the use of the SUPER BOWL trademark and logo. Not surprisingly, it is extremely aggressive in protecting its golden goose from anything it views as unauthorized efforts to trade off the goodwill associated with the game. Accordingly, with the coin toss almost upon us, advertisers need to take special care before publishing ads or engaging in promotional activities that refer to the Super Bowl. Broadcasters and media organizations have slightly greater latitude than other businesses, but still need to wary of engaging in activities that the NFL may view as trademark or copyright infringement. (These risks also apply to the use of “Final Four” or “March Madness” in connection with the upcoming NCAA Basketball Tournament.)
Simply put, the NFL views any commercial activity that uses or refers to the Super Bowl to draw attention as a violation of its trademark rights. Many of the activities challenged by the league undoubtedly deserve a yellow flag. However, the NFL’s rule book defines trademark violations very broadly. If anyone were willing to throw the red flag to challenge the league’s position, a review from the booth might reverse some of those calls. But, unless you are ready to take on the NFL in that fight, proceed with caution.
Advertising that Refers to the Super Bowl: Under trademark law, use of a third party’s trademark is considered to be permissible “nominative fair use” if the use does not suggest a relationship between the advertiser and the trademark owner and the trademarked goods or services cannot be readily identified without using the trademark. Nevertheless, the NFL objects to any unauthorized advertising that refer to the Super Bowl. For example, the use in advertising of taglines such as “Stock Up for the Super Bowl” for beer or snacks or “Get the Best View of the Super Bowl” for big-screen TVs has routinely led to the prompt issuance of cease-and-desist letters. The claim may be made directly against the advertiser or against a broadcaster or other media organization that publishes the ad. As a result, many broadcasters will not accept advertising that specifically refers to the Super Bowl unless the advertiser shows that it has NFL approval. To overcome these problems, many advertisers now replace any reference to the “Super Bowl” with “The Big Game.” When advertisers widely began using this tactic, NFL Properties tried to register THE BIG GAME as a trademark with the United States Patent and Trademark Office. Over twenty different parties threatened to oppose the application and the NFL voluntarily abandoned the application. We are not aware of any reported claims by the NFL against advertisers based upon the use of “The Big Game.”
Is there a meaningful difference between an ad that invites consumers to “Stock up for the Super Bowl” or “Stock up for the Big Game”? Do they convey different messages? Is one more likely than the other to confuse consumers into believing that the product being advertised is sponsored by, endorsed by, or otherwise affiliated with the NFL? Probably not. So, why is the NFL so aggressive? The answer almost certainly lies in the fact that official “sponsors” of the Super Bowl or other licensees of the NFL (particularly those who have been promised exclusivity in a given category, e.g., “The Official ——– of the Super Bowl”) would not be willing to pay for the right to do so if a competitor can also use the Super Bowl to promote itself without paying a license fee.
Following are some examples of other activities that create a significant risk of an objection by the NFL:
“Super Bowl” Events or Parties: A bar or restaurant that has a public performance license to show television programs on their premises has the right to show the Super Bowl broadcast to its patrons, but if it uses the words “Super Bowl” in its advertising to attract customers, the league will object. Similarly, a company should not be listed as the sponsor of a “Super Bowl” event or party. And, under copyright law, a fee should not be charged to watch the game. (Famously, in 2007, the NFL sent a cease and desist letter to an Indiana church group that had advertised a Super Bowl viewing party that would charge $3.00 per person to cover the cost of snacks.).
Sweepstakes or Giveaways (Naming or Prizes): Any sweepstakes or giveaway that incorporates “Super Bowl” in its name or as a prominent feature of its advertising should be avoided. Further, the NFL takes the position that game tickets cannot be offered as a prize or award. In most situations, the “first sale” doctrine provides that the buyer of goods may do whatever it wants with its purchase, including reselling it or giving it away. Faced with this argument some years ago, the NFL (as well as the other sports leagues) now includes language on the back of tickets, prohibiting their use as part of a sweepstakes, giveaway or other promotion. It can be argued that the purchaser of a ticket will not even see this language until after the purchase is completed and therefore the terms have not been agreed to and are not binding. Tickets to an event are legally considered a license to attend the event, rather than a good that is sold, and therefore can condition entry on any basis that is legal and does not violate public policy.
Names of Programs: Even if a broadcaster is not with the network that carries the Super Bowl (this year, CBS), it may want to produce a television program about the game. In years past, the NFL has repeatedly challenged local broadcasters that include the name of a team in a weekly program dedicated to discussions about the team. Thus, it would not be surprising if the NFL similarly objected to naming a pre-Super Bowl television program about the game if it incorporated “Super Bowl” in the title. (As discussed above, there is a strong argument that such naming constitutes permissible “nominative fair use.”)
Special Advertising: Newspapers and online news providers frequently have a special “section” that is devoted to coverage of the Super Bowl. The organization should be able to solicit advertising to accompany its stories, just as it does for any of its news reporting. It would be risky, however, to have an advertiser “sponsor” the coverage, particularly if “Super Bowl” is part of the name of the section.
Risk Analysis: Should broadcasters and other media organizations comply with NFL demands over use of the Super Bowl name and mark? Purely on a cost-benefit basis, it may be rational to acquiesce rather than run the risk of litigation. Moreover, any news organization that wants press credentials for the game faces an additional risk. Although news organizations are not required to have permission to report on an event (i.e. in your news and commentary, you can generally talk about the Super Bowl without worrying about the issues cited above), as a practical matter, their ability to do so may be hampered by a refusal by the NFL to issue press credentials if they do not comply with a cease-and-desist demand. Or, to paraphrase a time-honored maxim, “He who has the Golden Super Bowl rules.”