Tomorrow afternoon eastern time, I will be conducting a webinar for at least 20 state broadcast associations on legal issues for broadcasters in their social and digital media efforts. We’ll talk about many of the potential legal landmines that can be hidden in these new media efforts, many of which we have written about
The protection of brands, slogans, positioning statements and program titles must be a high priority of any electronic media company. These assets establish the identity of any broadcaster, webcaster or other media company. Media companies need to protect these assets through the rights accorded by trademark law. We have been running a series of articles…
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?
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?
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.
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.
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.
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:
- 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.
- 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.