All posts by Mitchell Stabbe

It’s Madness! Be Wary of Using the NCAA’s Trademarks

Mitchell Stabbe
Mitchell Stabbe

By: Mitchell Stabbe, Wilkinson Barker Knauer, LLP via the Broadcast Law Blog

Less than a week ago, the National Collegiate Athletic Association filed a trademark infringement action in federal court against a company that runs an online sports-themed promotions and contests under the marks “April Madness” and “Final 3.” The NCAA is seeking injunctive relief, damages, the defendant’s profits, punitive damages and an award of attorneys’ fees.

Last year, I wrote about the risks of publishing ads or engaging in promotional activities that “play off” the NCAA Collegiate Basketball Playoffs. Clearly, such activities continue to carry great risks. Accordingly, I am republishing last year’s post on this subject:

It’s March Madness! Know the NCAA’s Rulebook or Risk A Foul Call Against the Unauthorized Use of Its Trademarks

With the NCAA Basketball Tournament about to begin, broadcasters, publishers and other businesses need to be wary about potential claims arising from their use of terms and logos associated with the tournament, including March Madness,® The Big Dance,® Final Four® or Elite Eight,® each of which is a federally registered trademark.

The NCAA Aggressively Polices the Use of its Trademarks

It has been estimated that, last year, the NCAA earned $900 million in revenue associated with the NCAA Basketball tournament. Moreover, its returns from the tournament have historically grown each year. Most of this income comes from broadcast licensing fees. It also has a substantial amount of revenue from licensing March Madness® and its other marks for use by advertisers. As part of those licenses, the NCAA agrees to stop non-authorized parties from using any of the marks. Indeed, if the NCAA did not actively police the use of its marks by unauthorized companies, advertisers might not feel the need to get a license or, at least, to pay as much as they do for the license. Thus, the NCAA has a strong incentive to put on a full court press to prevent non-licensees from associating their goods and services with the NCAA tournament through unauthorized use of its trademarks.

Activities that May Result in a Whistle

The NCAA acknowledges that media entities can sell advertising that accompanies the entity’s coverage of the NCAA championships. Even so, as discussed in greater deal in my earlier discussion of the “Do’s and Don’ts” of Super Bowl-related promotions, 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 that starts, “Come Get Your Big Screen TV in Time to Watch March Madness.”
    • 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 something such as “March Madness, brought to you by [name of advertiser].”
    • Sweepstakes or giveaways that include any NCAA trademark in its name.
      • Example: “The Final Four Giveaway.”
    • Sweepstakes or giveaways that offer tickets to a tournament game as a prize.
      • Example: the sweepstakes name may not be a problem, but including game tickets as a prize will raise an objection by the NCAA.
    • Events or parties that use any NCAA trademark to attract attendees.
      • Example: a radio station sponsors a happy hour where fans can watch a tournament game and prominently places any of the NCAA marks on signage.

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 view 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.

Note that 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 who does not have the rights to claim such association and the NCAA.

A Surprising History of “March Madness”

The NCAA was not the first to use “March Madness” as a trademark in connection with basketball tournaments. In fact, beginning in the 1940’s, the Illinois High School Association (IHSA) used it in connection with the Illinois state high school basketball championship playoffs.

The NCAA also 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 was unable to snag “Sweet Sixteen” or “Sweet 16,” which are registered to the Kentucky High School Athletic Association (KHSAA). (The NCAA, however, has the KHSAA’s approval 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 send a cease-and-desist letter over the types of activities discussed above, some of its claims would not be a slam-dunk as there may be arguments to be made on both sides of these issues. If you plan to accept advertising incorporating an NCAA trademark or logo or plan to use an NCAA trademark or logo other than in the context of reporting on the tournament, you should consult with an experienced trademark attorney so you can make an informed decision about the level of risk that you may be taking on.

Annual Super Bowl Advisory for Stations/Advertisers

Mitchell Stabbe
Mitchell Stabbe

By: Mitchell Stabbe, Wilkinson Barker Knauer, LLP via the Broadcast Law Blog

Last year, we posted some guidelines about engaging in or accepting advertising or promotions that directly or indirectly alludes to the Super Bowl without a license from the NFL. We are at that time of year again, so here is an updated version of our prior post.

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, they are 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 other news publishers have latitude to use the phrase “Super Bowl” in their news and other editorial content, but they need to be wary of engaging in activities, particularly in advertising and promotion, 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.

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. This is why broadcasters can talk about the game in their news and other topical programming, using the words “Super Bowl.” Nevertheless, the NFL objects to any unauthorized advertising that refers 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, as well as against a broadcaster or other news organization that publishes the ad. As a result, many broadcasters will not accept advertising that specifically refers to the Super Bowl unless the advertiser first shows that it has NFL approval.

Other Marks: 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. (The NFL also has federal trademark protection for “Super Sunday,” “Gameday” and “Back to Football,” and over a hundred other marks.) Over20 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.”

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 used “Super Bowl” to describe a viewing party for the game and would charge $3.00 per person to cover the cost of snacks. The NFL, however, will not object to a church viewing party for the Super Bowl if it is held in the church’s usual place of worship and no fee is charged for attending. In addition, the League will likely not object to religious organizations that refer to their events as a Super Bowl party, provided that no NFL logos are used.

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 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.

Disclaimers: A disclaimer such as, “Not an Official Sponsor of the Super Bowl” or “This Advertisement (or Event) Has Not Been Licensed or Authorized by the NFL” will not ward off a cease-and-desist letter. Moreover, in the event of litigation, it is unlikely to provide a defense to a claim of infringement. And, even if ultimately did so, the defendant would still incur significant attorneys’ fees and other costs of litigation.

Risk Analysis: The policy underlying protection of trademarks is to protect consumers against consumer confusion. That said, is there a meaningful difference between, for example, an ad that invites consumers to “Stock up for the Super Bowl” as opposed to one that says, “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 would not be willing to pay for the right to do so if a competitor could freely use the Super Bowl to promote itself without also paying a license fee. This risk is particularly high for those who have been promised exclusivity in a given category and the right to promote themselves as “The Official ——– of the Super Bowl.” Thus, looking at the big picture, the NFL has a huge incentive to prevent any advertising that may cross the line.

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, as a practical matter, their ability to do so from inside the stadium will be hampered by a refusal by the NFL to issue press credentials. (And, yes, we have seen professional sports leagues make such a threat.)

For these reasons, for most broadcasters and other news organizations, the better course is to be aware of and avoid any possible pitfalls, rather than run the risk of litigation.

Trademark Basics, Part Five: Trademarks on the Internet

Mitchell Stabbe
Mitchell Stabbe

By: Mitchell Stabbe, Wilkinson Barker Knauer, LLP

Once you have identified your marks and sought protection through registration for some or all of them, there are still going to be other issues that you will need to consider. Trademark owners have an obligation to police their marks and take steps to stop infringers. Otherwise, they may run the risk that someone else will profit off their marks or tarnish the reputation they have developed for those marks. In extreme cases, the failure to police one’s marks may result in losing them entirely. The biggest issues in trademark protection today arise from the use of trademarks on the Internet. In this blog, we identify some situations that you may encounter or want to think about.

Cybersquatting

You undoubtedly have one or more websites to promote your services, to interact with your listeners or viewers or to make video or audio available for online viewing or listening. You have spent a fair amount of time and money promoting your sites. Then, you learn that someone else has registered and is using a domain name that is confusingly similar to your domain name or one of your trademarks to attract traffic to their site. There are numerous ways that these cybersquatters can register a variation on your domain name or mark: adding (or dropping) a hyphen, adding a generic term, misspelling a word, omitting a letter, and replacing the letter “o” with a “zero” or the letter “l” with a “one” are some of the most common.

What should you do? You should establish a budget for taking action against cybersquatting. As a practical matter, however, you cannot pursue every one of these domain name registrations – you would need an unlimited budget. Our view is that you should only go after those domain names that have an active website that damages you in some way or are so close to your domain name or marks that they are drawing a lot of traffic. For example, does the domain name re-direct people who are looking for your website to a competitor’s site? Does it contain offensive content? Is it being used for some sort of scam or fraudulent activity?

Once you decide that there is a problem, what are your options? If it is a competitor, a cease and demand letter may do the trick. In many cases, however, you may not even be able to determine the true identity of the registrant. You probably do not want to incur the expense of bringing a civil action in court. There is an alternative. There is a relatively inexpensive and fast remedy, called the Uniform Dispute Resolution Policy. It is essentially a mandatory arbitration that all domain name registrants must agree to accept. There are three things that you will need to prove: (1) the domain name is identical or confusingly similar to one of your trademarks; (2) the registrant has no legitimate interests in the domain name; and (3) the domain name was registered and has been used in bad faith. If you prevail, the domain name will be assigned to you. Trademark owners win over 85% of all cases filed and they typically are resolved in about 60 days.

Finally, there are two types of websites where you may just need to accept them and take no action. First, parked or “pay-per-click” webpages incorporate various links to third party sites or advertisements. The domain name registrant receives a small payment for each person who clicks on one of these links. Such websites are extremely common and it is not usually going to be worth it for you to go after them unless there is a pressing need for that particular domain name. Second, if someone has registered a domain name similar to your mark and is using it only for legitimate criticism, they are protected under the First Amendment and you are unlikely to prevail. In fact, your actions may be posted on the website to claim that you are a hypocrite for asserting your own First Amendment rights as a broadcaster, while not respecting those of others. So, the better course may be to just grin and bear it.

Defensive Domain Name Registrations

You can avoid some of these problems by registering domain names that are similar to your domain name or trademarks, even though you do not want or need them. Your costs in registering such domain names may be less than the cost of having to take action against even one cybersquatter. An attorney who is experienced in this area can provide you with suggestions on the most common types of variations on your mark that you may want to register.

The New Top Level Domains

In the past, a trademark owner only had to worry about what cybersquatting in a limited number of top level domains (the part of the domain name that appears to the right of the dot), e.g., .com .net, .org and a few others. Even so, as discussed above, the scope of the problem has not been similarly limited because of the numerous possible variations on your domain name or mark.

Over the last two years, the organization that is responsible for the management of the Internet, ICANN, has approved the launch of hundreds of new top level domains, with more to come. These new top level domains fall in numerous categories: truly generic (e.g., .online, .site, .website, .cloud, .help, .xyz), geographic (e.g., .nyc, .london), industry (e.g. .news, .press, .accountant) and others. Thus, the potential number of problems has grown exponentially as has the cost of obtaining defensive registrations for your trademarks.

Very few, if any, of these new gTLDs have caught on with the public and it is expected that many will ultimately fail. It is my view that most businesses should be very selective in registering their marks in any of the new gTLDs. For example, the European Broadcasting Union has been chosen by ICANN to administer the “.radio” domain name as a community top level domain. Thus, it will only be open to members of the International Radio Community. Radio station licensees may want to register their call letters and other trademarks as .radio domain names.

Anyone who wants to register a mark as a second level domain should get that mark registered with the Trademark Office. Marks that are federally registered can then be registered in a database called the Trademark Clearinghouse, which will then allow the owner to seek registration in a new gTLD for a sixty-day period before the registry can make its domain names available to the public.

Keyword Advertising

Do you ever conduct a search on the Internet and wonder why the first-listed results are even there? It happens because someone is paying the search engine to lists its ad (or “sponsored link”) in response to searches for a particular term (or “keyword”). Sometimes, these terms may be one of your trademarks and, in some cases, the sponsored link may be for one of your competitors. Unless your trademark appears in the sponsored link, however, most courts have become unwilling to take action. More and more often, they conclude that there is no likelihood of confusion because the sponsored link is typically somehow set off or distinguished from the actual search results, such as by incorporating the word “Ad,” and consumers have become used to seeing these sponsored links and are not likely to think that they are associated with the owner of a brand that he or she was searching. Where, however, the sponsored link or the web page to which it is linked includes a reference to your trademark, you may have a remedy. If you decide to bid on your competitor’s trademarks as a keyword that will generate a sponsored link to your website, you equally need to avoid making any visible reference to the competitor or its marks.

Concurrent Use of Trademarks on the Internet

Historically, television and radio stations have been local. If two stations in the same market used similar slogans, consumers would likely be confused. Advertising for one station could result in more listeners for the other station. Similarly, one station might get credit from Arbitron for a listener who was tuned to a different station. In that situation, the broadcaster that used the slogan first would have a trademark infringement claim available as a remedy. In contrast, a station in Chicago, a station in Miami and a station in Los Angeles could each use the identical slogan without any problems. For example, Arbitron could determine that a listener who used a slogan to identify a station could easily determine which one it was based on where the listener lived.

Streaming of broadcasts meant that a listener in Chicago might be able to listen to the broadcast from Miami or Los Angeles on any Internet enabled device. Or, someone who conducted an Internet search using the slogan as a search term could easily be directed to the web site for any of these stations. Courts have resolved many claims based on webcasting or other activity on the Internet by finding that being on the Internet is not always the same as engaging in activity in every geographic area nationally. If one party has a federal registration for its mark, the answer may be more complex.

These issues will continue to arise in cases involving Internet-only radio stations or webcasters. Even though FCC-licensed broadcasters cannot use the same call letters as another licensed station, webcasters can try to identify themselves any way that they want, particularly if they are using four letter “call” letters that begin with a “W” or a “K.” Issues can arise when the website operator uses “call letters” as part of a format this is a “tribute” to a defunct station, but the call letters have since been assigned by the FCC to another radio station.

Social Media

Users of social media frequently adopt a name or handle that is identical to a well-known trademark. In many cases, there is no bad faith and making a complaint to the individual may result in unwanted publicity. Most social media have adopted policies to address complaints by trademark owners, but many are not responsive to the concerns of trademark owners. Here, too, defensive registrations of names in social media may be the best approach.

The increasing uses of the Internet have been a great boon to most businesses, but has created many new problems as well. They may seem overwhelming at times, but, with some planning, they can be managed whether your business is large or small. And, like most problems, they will not disappear if we ignore them.

This concludes our Trademarks Basics series – we hope you’ve enjoyed learning about this fun and engaging area of law.

For more in our series on trademark basics, see Part One on what a trademark is and why it is important. Part Two talked about the importance of trademark searches. Part Three, as set out above, dealt with the benefits of Federal trademark registration. Part Four suggested conducting a trademark audit to make sure that you are maximizing the value of the brands that you own.

Reprinted by permission.