Yesterday, I wrote about the history of the NCAA’s assembling of the rights to an array of trademarks associated with this month’s basketball tournament. Today, I will provide some examples of the activities that can bring unwanted NCAA attention to your advertisements or broadcasting of advertising. But, first, I will discuss yet one more issue that should be considered.
Endorsements by Individual Student-Athletes
After many years of litigation, in July 2021, the NCAA suspended its policy prohibiting college athletes from profiting from their names, images and likenesses (“NIL”) (or their right of publicity) without losing their eligibility. However, there is no national set of rules as to what is permissible. Rather, the right of publicity is governed by state law. Moreover, colleges and universities still have the right establish some rules or standards. For example, although student-athletes can now get paid to endorse a commercial product, they are not automatically entitled to use any NCAA or school trademarks. Thus, a college basketball player may not be authorized to wear their uniform in advertising unless the school has granted permission. Can the player wear a uniform with the school colors, but no names or logos? Can the player endorse an alcoholic product? Answers will vary state by state and school by school, so it will be extremely important to check with experienced counsel before running any advertising that involves college players.
Now, back to the game …
Activities that May Result in a Demand Letter from the NCAA
The NCAA acknowledges that media entities can sell advertising that accompanies the entity’s coverage of the NCAA championships. However, similar to my discussion earlier this year on the use of Super Bowl trademarks (see here) and my 2018 discussion on the use of Olympics trademarks (see here), unless authorized by the NCAA, any of the following activities may result in a cease and desist demand:
- accepting advertising that refers to the NCAA, the NCAA Basketball Tournament, March Madness, The Big Dance, Final Four, Elite Eight or any other NCAA trademark or logo (The NCAA has posted a list of its trademarks here.)
- Example: An ad from a retailer with the headline, “Buy A New Big Screen TV in Time to Watch March Madness.”
- Presumably, to avoid this issue, some advertisers have used “It’s Tournament Time!”
- local programming that uses any NCAA trademark as part of its name
- Example: A locally produced program previewing the tournament called “The Big Dance: Pick a Winning Bracket.”
- selling the right to sponsor the overall coverage by a broadcaster, website or print publication of the tournament
- Example: During the sports segment of the local news, introducing the section of the report on tournament developments as “March Madness, brought to you by [name of advertiser].”
- sweepstakes or giveaways that include any NCAA trademark in its name (see here)
- Example: “The Final Four Giveaway.”
- sweepstakes or giveaways that offer tickets to a tournament game as a prize
- Example: even if the sweepstakes name is not a problem, offering game tickets as a prize will raise an objection by the NCAA.
- events or parties that use any NCAA trademark to attract guests
- Example: a radio station sponsors a happy hour where fans can watch a tournament game, with any NCAA marks and prominently placed on signage.
- advertising that wishes or congratulates a team, or its coach or players, on success in the tournament
- Example: “[Advertiser name] wishes [Name of Coach] and the 2022 [Name of Team] success in the NCAA tournament!”
There is one more common pitfall that is unique to the NCAA Basketball: tournament brackets used in office pools where participants predict the winners of each game in advance of the tournament. The NCAA’s position (see here) is that the unauthorized placement of advertising within an NCAA bracket or corporate sponsorship of a tournament bracket is misleading and constitutes an infringement of its intellectual property rights. Accordingly, it says that any advertising should be outside of the bracket space and should clearly indicate that the advertiser or its goods or services are not sponsored by, approved by or otherwise associated with the NCAA or its championship tournament.
It should be noted that the NCAA also imposes strict rules about the authorized uses of its trademarks. The NCAA’s Advertising and Promotional Guidelines for authorized use of its marks are posted online (see here).
Again, importantly, none of these restrictions prevents media companies from using any of the marks in providing customary news coverage of or commentary on the tournament. Just be sure that they are just used to identify the tournament and its stages, and don’t in any way imply that there is an association between the station itself or any sponsor or advertiser who does not have the rights to claim such association and the NCAA.
A Surprising History of “March Madness” (For Those Who May Like Sports Trivia)
The NCAA may not have been the first to license the use of “March Madness.” Beginning in the early 1990’s, the IHSA licensed it for use by other state high school basketball tournaments and by corporations.
Moreover, the NCAA did not originate the use of “March Madness” to promote its collegiate basketball tournament. Rather, a CBS broadcaster is credited with first using “March Madness” in 1982 to describe the tournament. As CBS was licensed by the NCAA to air the tournament, the NCAA apparently claims that as its date of first use.
Finally, the NCAA was not the first to register “March Madness” as a trademark. That honor went to a company called Intersport, Inc., which used the mark for sports programs it produced and registered the mark in 1989.
So, how did the NCAA get to claim ownership of the March Madness® trademark? The short answer is through litigation and negotiations over a period of many years. Although it has also been able to obtain federal registrations for Final Four® and Elite Eight,® it was late to the gate and Sweet Sixteen® and Sweet 16® are registered to the Kentucky High School Athletic Association (KHSAA). (The NCAA, however, has the KHSAA’s consent to register NCAA Sweet Sixteen® and NCAA Sweet 16®.)
The Final Score
Having invested so much in its trademarks, the NCAA takes policing its trademark rights very seriously. Even so, although the NCAA may call “foul!” and send a cease-and-desist letter over the types of activities discussed above, some claims may not be a slam-dunk as there can be arguments to be made on both sides of these issues.
If you are deciding whether or not to pass on accepting advertising incorporating an NCAA trademark or logo or using an NCAA trademark or logo other than in the context of reporting on the tournament, or if you are not certain whether the NCAA (or anyone else) owns a particular word or phrase as a trademark, you should seek an assist. An experienced trademark attorney can help you make an informed decision about whether you can successfully post a defense against any such charge and assess possible risks.