Mark Madness: Avoiding Trademark Landmines in College Sports
Recently, the Washington Post reported on a Maryland high school’s thwarted attempt to expand its use of a green hornet mascot logo which resembles Georgia Tech’s famous “Buzz” mascot trademark. The Damascus Swarmin’ Hornets had previously negotiated with Georgia Tech to carefully define its use of the “Green Hornet,” which, unlike “Buzz,” faced in an opposite direction, had a “D” on its chest and was yellow and green, instead of gold and black. Damascus and Georgia Tech previously agreed that the Green Hornet could be used on helmets, hallway signs and in the school’s newspaper. According to the Post, the city had proposed placement of the Green Hornet on a nearby water tower that was being repainted, as a means of congratulating the football team on its recent championships. Upon learning that painting would commence very shortly on the Green Hornet mascot, the school’s general counsel approached Georgia Tech regarding this expanded use, but Georgia Tech stalled and referred the matter to its licensing and trademark committee. This incident is but one example of the scores of challenges that have emerged in NCAA sports in the past decade, and is yet more evidence that such mascot trademarks are big business. Indeed, traversing the gauntlet of collegiate trademark protection is daunting, but a review of the relevant case law and settlements made public reveals a few key strategies that could be the difference between winning and losing.
Avenues for Recovery
Under trademark infringement law, it’s theoretically possible for colleges to bring the following types of claims: 1) Trademark dilution, which can occur when a trademark is so commonly infringed that its value is negatively affected; 2) Likelihood of confusion, which may arise when the marks result in consumer confusion; and 3) Trademark tarnishment, which may happen when the party using a mark which is similar to the existing trademark is used in a distasteful or inappropriate manner so as to, in effect, tarnish the mark of the trademark holder.
In pursuing one or more of these paths to recovery, schools (and the Collegiate Licensing Company [CLC], which licenses NCAA merchandise) lack neither creativity, nor attention to even the smallest, seemingly insignificant uses of trademarks. A prime example: In August, 2012, CLC served a cease and desist order upon Mary’s Cake & Pastries and inquired as to the total sales of pastries containing an Alabama Crimson Tide “A” on them. In most cases such as this one, the University and CLC simply outspend the opposing party into submission…but situations such as Mary’s and other outliers provide useful roadmaps to potential success.
In an interview with a local paper, the owner of Mary’s Cake & Pastries indicated that she would discontinue use of any Alabama marks. Unexpectedly, news of the cease and desist eventually went viral on social media, depicting the University of Alabama as a petty, money-hungry cash cow that targeted the owner of a small business. The University of Alabama apologized and pledged to work with the owner to resolve the issue amicably, rather than proceeding with a lawsuit as previously threatened. The result: payment of a one-time, $10 licensing fee.
Use the Constitution
Daniel Moore, an artist, also tussled with the University of Alabama, in his case, for the better part of a decade (University of Alabama Board of Trustees v. New Life Art Inc., [11th Cir. June 11, 2012]) primarily due to his rendering of the football team’s uniforms in his paintings. Moore successfully argued that he had a First Amendment right to depict historical events (in his case, famous Alabama football plays) in his paintings, just as journalists depict those same events in newspapers. The federal judge did, however, prevent Moore from reproducing the depictions in calendars and on t-shirts and coffee mugs.
Beat Them to the Punch
In 2013, Johnny Manziel, the then-star quarterback of Texas A&M, prevailed in a suit against a t-shirt maker who sold shirts which incorporated the moniker made famous by Manziel, “Johnny Football.” The NCAA, however, prevents collegiate athletes from being compensated for their names and/or likenesses. How did Manziel prevail in the lawsuit without running afoul of NCAA regulations? He licensed the nickname to a third party—for free, thereby allowing the moniker to be used in commerce (by the third party), as is required by trademark law. Manziel slayed two birds with one stone: his licensing to a third party allowed him to satisfy the “in commerce” requirement and by making Texas A&M one of the licensees, he prevented them from asserting ownership. The NCAA was powerless to contest Manziel’s assertion of ownership.
If You Can’t Beat ‘em, Join ‘em
Most basketball fans associate the term “March Madness” with the annual NCAA basketball tournament. However, a member of the Illinois High School Association (IHSA) authored the phrase in the 1930’s to describe its own state basketball tournament. Commentator Brent Musburger began to use the phrase in the 1980’s during the NCAA tournament, and it quickly caught on with players and fans alike. Both the IHSA and NCAA claimed ownership of the phrase, and this conflict formed the basis of Illinois High School Association v. GTE Vantage, 99 F.3d 244 (7th Cir. 1996). The Seventh Circuit ruled that although the IHSA had obviously used the term first, to the general public, the phase had taken on an entirely different meaning associated with the NCAA college basketball tournament. Left in limbo given this “dual-use” decision, the parties chose to create a holding company for the intellectual property, allowing them to jointly license the phrase to other parties.
Back in Damascus, the city and the Washington Suburban Sanitation Commission (owner of the water tower) scrapped plans for use of the Green Hornet logo on the water tower, opting for a green and gold “D.” What could Damascus have done differently? Since this was yet another “David and Goliath” scenario, similar to the circumstances around Mary’s Cake & Pastries, Damascus could have taken steps to create a viral groundswell, thereby gaining sympathy and exerting more pressure on Georgia Tech. But viral groundswells take time, and Damascus did not reach out to Georgia Tech’s Licensing and Trademark Committee until mid-May, just prior to when painting of the tower was to commence. Trademarks are too profitable for universities to make such decisions on a whim, and if push comes to shove, university counsel will err on the side of caution and reject the proposed use. There’s no guarantee that being proactive and using the viral community would have allowed Damascus to prevail in this case, but those steps at least would have given the Swarmin’ Hornets a fighting chance.