Sports Law Scoreboard : Sports Lawyer & Attorney : Fox Rothschild Law Firm : Intellectual Property, Copyright Infringement & Privacy for Athletes

A friend's daughter has an award winning blog on weddings and wedding planning. Wickedly fun and funny. She has been approached by commercial ventures about featuring their products on her blog for $$$. So far she has declined these proposals.  

Nothing illegal about this  practice, although the Federal Trade Commission is supposedly looking into it. I suppose the point is one of expectations. We have gotten used to branded uniforms on high school basketball players and NASCAR drivers dressed as walking billboards. The public is sophisticated enough to know that there is no implied endorsement. For better or worse, we are still somewhat in the infancy of the internet and I think the public has different expectations for this medium. Lest it not be obvious, the observations here are solely those of the authors.

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As featured in TheLanter.com, an enterprising young undergraduate at Ohio State University has been selling McNutt for Heisman t-shirts at $11 each.

Seems that neither the New York Athletic Club, which owns the intellectual property rights to the Heisman, nor OSU (ditto on Ohio State) were thrilled with this promotion. Cease-and-desist letters were sent and the campaign ended. Obviously, 40,000 OSU students are free to write "McNutt for Heisman" on their t-shirts, but a commercial enterprise runs afoul of copyright and trademark laws. Maybe McNutt should start a candy bar.

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Post contributed by Jaysen Chung, Summer Associate

Who won in the marketing contest between Nike and Adidas in this World Cup? Sometimes spending millions of dollars to be an official sponsor of an event like the World Cup just doesn’t pay off.  This seemed to be the case for Adidas, an official sponsor of the World Cup, as it appeared to be beat out by unofficial brand Nike in “connecting with soccer fans and consumers,” the Sydney Morning Herald reports.  The unfortunate situation for Adidas may be best highlighted by two main advertisements released by Nike and Adidas.  Many fans have stated that Nike’s “Write the Future” ad is simply more appealing than Adidas’ “The Quest” ad, and thus it is not a surprise Nike won with soccer fans and consumers.  Nike is engaging in “ambush marketing,” which occurs when companies that are not official (i.e., paid) sponsors of an event nevertheless engage in marketing campaigns that create the impression that they are associated with the event.  This is not necessarily a new phenomenon, and occurred during the Winter Olympics this year, as discussed in Fox Rothschild’s fashion law blog. 

Is it a smart decision to save on paying to be an official sponsor of an event and instead invest that money on effective “ambush marketing”?  In the United States, there is not currently a law specifically addressing ambush marketing, so parties complaining of “ambush marketing” must rely on broader intellectual property claims.  Is the United States in need of such a law, similar to how South Africa amended its Merchandise Marks Act in 2002 in an attempt to “protect events” from ambush marketing?  Or would this be going against various principles we value, including intellectual property law’s principles of encouraging innovation and creativity?

While Nike may have won the marketing contest against Adidas, perhaps Adidas came out on top in the end: the ultimate champion of the World Cup, Spain, wore Adidas.

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Post Contributed by Jaysen Chung, Summer Associate

With the World Cup in full swing, vendors selling knock-off national team soccer jerseys are sure to be out in full force in the host nation of South Africa (and of course, other soccer-devoted nations). In the past months, South African authorities have been trying to crack down on these sales. The Dawn Media Group reports that according to the Counterfeit Goods Act in South Africa, conviction for possession of fake goods can result in a three-year jail term or a 5,000 rand (approximately 650 US dollars) fine per item found in possession. Reportedly, the official brands of these soccer jerseys (Adidas, Nike, etc.) will lose thousands of dollars in sales.

On Fox Rothschild’s Fashion Law Blog, Staci Riordan has discussed the debate over whether knock-offs can hurt or help fashion designers. Although these official brands will unfortunately lose thousands of dollars from these knock-offs, perhaps they can grab some benefit as well. With more people wearing these "fake" jerseys (that look like the real thing) sold all over South Africa, this could be yet another advertising tool for the official brands to sell their own jerseys. For instance, if people in the US want to buy a Bafana Bafana (the nickname of the South African national team) jersey, they will likely have to go to the store to purchase one made by the official brands.

While it may be inevitable that knock-offs will continue to be sold throughout the remainder of the World Cup, perhaps the official brands can turn lemons into lemonade…even though that lemonade will still be pretty bitter.

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In sportsnetworker.com’s article, “How Athletes Can Build Their Personal Brand,” the author provided both text and video as to athletic brand building. To our mind, no one can touch the Jersey TV lad who trademarked his abs. Nice to know that in a land with almost 10% unemployment, the big issues are being tackled.

Of more interest to us are "Los Suns" the jerseys modeled the other night by the Phoenix Suns to highlight Cinco De Mayo and to (perhaps) offer a subtle comment on Arizona's new immigration law. Interesting to see if the Phoenix team aggressively markets these both here and in Mexico.

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Assume that you have a mark in a sports' logo. You hop on line to see what traffic is out there regarding your mark and find that someone 1,000 miles away is using your mark in commerce and making money at it. Trying to be the gentleman (or gentlewoman), you nicely pick up the phone, place a call and try to resolve the matter over the phone. You tell the infringer that you want to resolve the situation, might be amenable to license and hope to keep those pesky lawyers out of the situation. You get a couple of grunts of assent and a promise to call you back. Rather than the callback, you get a summons and complaint in the mail, demanding that you respond in Kansas or Alabama rather than in your home forum. You call your legal beagle who advises that you may very well be stuck there.

That is the opinion of the U.S. Supreme Court in the MedImmune Inc. v. Genentech Inc., 549 U.S. 118 (2007) case and we think it bad law. The other side has filed a declaratory action against you alleging a lively controversy between your two companies. The Supremes ruled that this is likely sufficient to allow the other side to proceed in their forum.

Why is it bad law? It encourages lawsuits (you should have pulled the trigger first) rather than working things out. We are loathe to tell people to write their member of Congress when the country is still recovering from recesses ion, but somewhere down the line, this one needs to be addressed. For the time being, you need to give thought to filing first, calling second. Not the best of public policies.

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In EXAMINER.COM, we see that rapper Jay-Z has sued baseballer "Big Popi" David Ortiz for trademark infringement over the 40/40 clubs.  Jay-Z got there first.  Forty-forty refers to forty home runs and forty stolen bases, a traditional standard of excellence.  Question for the court will be one of jurisdiction.

Don't see how he can maintain jurisdiction, unless Ortiz actively marketed his club in the U.S.  Under the WTO membership rules and Berne Convention, trademark rights are still territorial. So even if the fame of JZ's club does reach the Dominican Republic, the fame by itself cannot qualify as use in commerce, so there is no claim.  Again, the key should be whether Ortiz marketed his club such that it constitutes use in commerce in the US.

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On April 7, 2010, the LATIMES.com reported Nike’s new commercial with Tiger Woods featuring the voice of his late father on the eve of the Masters. In this commercial, Tiger is standing silent with a golf course in the background and his father’s voice taking about responsibility and learning from mistakes.

Several people have criticized this commercial as being improper and out-of-line for using his late father for commercial gain. However, the import of this commercial is that Tiger is confronting his past indiscretions head-on. To a certain extent, this ad seems more like an apology than commercial advertising. It also sends a message that his actions were wrong and must not be repeated. What more can we ask from him?

Moreover, in many states, the dead do have the right to advertise and generate income for their estate.  Several states have enacted statutes that protect the right to publicity after death. For instance, California Civil Code section 3344.1 is an example of a statute protecting a dead person's right to publicity. The estate of Tiger’s father may have received some substantial income for the Nike ad.  

As noted in a previous post, it’s best to deal with problems before they get bigger. 

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Logos are trademarks and are protected under U.S. law.  This is true even if the mark has not been registered with the U.S. Patent and Trademark office.  Therefore, you need permission to use the marks.  

The products are a little less cut and dried.  It really depends on what you are using the products for: if you are using them to comment on the sports products, then there is an argument that your use is fair use, but I would still ask.  If you are using someone else’s image, you need their permission too. 

You can write about the product in your book, as long as you do not defame the product.  Remember, Oprah spent a fortune defending herself against the meat producers out there for defaming beef.  Limit yourself to reporting and commenting and things should go well.

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