[author: Bayton, Emily A.]
Today we post Part One of an article authored by our partner Ms. Emily Bayton and published by Law360 on October 16, 2012. Please check back next week for Part Two!
As an intellectual property lawyer and avid sports fan, I’m always interested in a case involving the legal intersection between sports and IP. There are plenty of IP issues facing the sports industry. Like any other industry, it’s driven by money, much of which is generated from IP. From licensing of team names and logos, to broadcast and sponsorship rights, to merchandise deals, IP plays a large role in the value of the sports industry.
A recent article by the World Intellectual Property Organization estimates global revenue from sponsorships, gate revenues, media rights fees to reach $133 billion in 2013. This figure does not account for revenue generated from the sale of athletic footwear and apparel, estimated at $300 billion worldwide.
It’s no surprise then that athletes, teams and sports organizations go to great lengths to protect their IP. This article provides a summary of current IP issues facing the sports world and the potential impact on the multibillion-dollar industry.
Counterfeiting flourished over the last several decades due largely to the availability of better and cheaper technology to facilitate copying. The sports industry took a significant hit from increased counterfeiting. From counterfeit tickets to knock off jerseys, IP owners fight a rigorous war to rid the market of fake goods. A 2011 survey by MarkMonitor revealed an astonishing 56 million annual visits to suspected counterfeiting websites and annual sales of almost 1.2 million suspicious jerseys.
Brand owners are fighting the proliferation of counterfeit products and tickets with comprehensive counterfeit plans, and federal officials have also stepped up their game. In July 2012, Homeland Security Investigations and U.S. Immigration and Customs officials joined forces to roll out “Project Copycat,” targeting websites selling counterfeit goods. The program has shut down approximately 70 websites for allegedly selling fake National Football League, National Basketball Association, Major League Baseball, National Hockey League and National Collegiate Athletic Association jerseys.
Defending the Domain (Name)
The battle over the Internet raged on with sports organizations filing suit to stop unauthorized use of their names within domain names over the past year. As an example, in Cleveland Browns Football Co. LLC v. Dinoia, the NFL franchise filed an arbitration proceeding against an individual from Italy regarding registration of the domain name browns.com. The Browns relied on its trademark rights in the marks "Cleveland Browns," the "Browns" and other trademarks incorporating “Browns.”
The complaint alleged that the browns.com domain name was identical to the trademark "Browns" and confusingly similar to the "Cleveland Browns" trademark, that Dinoia had no legitimate rights or interests in the domain and that it was registered and used in bad faith. The World Intellectual Property Organization agreed and ordered that the domain be transferred to the Browns organization. WIPO Case No. D2011-0421 (2011) (Trotman, Clive, Arb.).
Similarly, the National Football League sued EE Nation over its registration of superbowlconcierge.com. NFL v. EE Nation, WIPO Case No. D2011-1228 (2011) (Gibson, Arb.). The NFL, which aggressively protects its "Superbowl" trademark, filed an arbitration proceeding against EE Nation alleging that its registration and use of the domain superbowlconcierge.com without NFL authorization or consent violated its trademark rights.
The NFL relied on EE Nation's unauthorized use of NFL logos and pictures of NFL teams, as well as the display of links for booking rooms at hotels near NFL stadiums and purchasing tickets to NFL games, to support its claim that the domain was being used in bad faith. WIPO agreed, finding that the domain was identical to the NFL's trademarks, that EE Nation had no rights or interests in the domain, and that it had been registered and used in bad faith. The panel ordered the domain name superbowlconcierge.com to be transferred to the NFL.
In Pacific-10 Conference v. Lee, the Pac-10 conference (now the Pac-12) filed an arbitration action relating to a third party’s registration of the domains pac-12network.com, pac12network.com, and pac-12network.org. WIPO Case No. D2011-0200 (2011) (Sorkin, David, Arb.). The domains were registered following the PAC-10’s announcement that it was considering expansion of the conference to 12 teams.
The conference relied on its rights in various "PAC-10" formative trademark registrations, claiming they constituted a “family of trademarks,” and its pending federal trademark application for “PAC-12.” The conference argued that the domain names were confusingly similar to its trademarks, that the respondent had no rights or legitimate interests in the domains, and that Lee registered and used the domain names in bad faith. The panel agreed and ordered that the domains be transferred to the conference.
Rookie athletes have become increasingly savvy about protecting their IP. They recognize that their value involves much more than a playing contract amount — it’s about the commercial exploitation of their name, image and likeness. This explains why almost all up-and-coming athletes work to build and maintain their “brand.”
As examples, in 2012, the highly touted college quarterback Robert Griffin III (now starting quarterback for the Washington Redskins), filed federal trademark applications for "RGIII," "RG3," "Robert Griffin III" and "Unbelievably Believable," and star Kentucky basketball player Anthony Davis filed applications to protect "Fear the Brow" and "Protect the Brow," in reference to his “trademarked” unibrow.
College Football’s Battle of the Birds
In a battle that was not played out on the gridiron but instead was fought in the Trademark Trial and Appeal Board, the University of Iowa (my alma mater) opposed The University of Southern Mississippi’s federal trademark application for an eagle head design on the basis that it was confusingly similar to Iowa’s hawk head design. The University of Iowa and The Board of Regents, State of Iowa v. The University of Southern Mississippi, Opposition No. 91164745 (July 29, 2011) [not precedential].
The Trademark Trial and Appeal Board found in favor of the University of Iowa and sustained its opposition to registration of Southern Mississippi’s eagle head design. The TTAB held that the similarities between the marks outweigh the minor differences. The TTAB also focused on the consumer recognition of Iowa’s logo based on nationwide coverage of Iowa sports, and the overlap in the parties’ goods and channels of trade. Id. at 20-21.
Regarding degree of consumer care at the time of purchase, the TTAB noted that although loyal fans may be able to distinguish between the schools’ logos, other persons may not be “necessarily attuned to minor differences between somewhat similar sports teams’ logos.” Id. at 26.
Southern Mississippi argued that the coexistence of various bird-head designs as collegiate mascots significantly narrowed Iowa’s scope of protection for its Hawkeye design. The TTAB disagreed and found that "Iowa should be able to establish a reasonable zone of protection around its Hawkeye marks in spite of the existence of many other representations of bird heads." Id. at 37.
 See WIPO, Sports and Intellectual Property, www.wipo.int/ip-sport/en last accessed on Oct. 7, 2012.
 See https://www.markmonitor.com/pressreleases/2011/pr110201-bji.php last accessed on Oct. 7, 2012.
 See http://www.nfl.com/news/story/09000d5d82a84ce3/article/fake-nfl-jerseys-sold-on-seized-websites-officials-say last accessed on Oct. 7, 2012.