Sue-Per Bowl Shuffle IV: The Year In NFL-Related Intellectual Property Litigation

If you are a lawyer, there is a serious danger that someone at the Super Bowl party you attend is going to want to talk about an NFL-related legal issue. Did Cowboys owner Jerry Jones really have standing to challenge Commissioner Roger Goodell's salary package? What is the status of Colin Kaepernick's collusion lawsuit?

Actually, we can't help you with those questions, but we can get you ready to discuss recent NFL-related intellectual property disputes. IP certainly was not the biggest NFL legal story in 2017, but you would be hard pressed to find another area of the law that has so consistently offered such a wide array of lawsuits pertaining to the sport. Our fourth annual Sue-per Bowl Shuffle, a review of the year in NFL-related intellectual property disputes, is just what you need to get up to speed.

So here's the game plan. Laminate this article and place it next to the carrots ... there they are, those orange things between the beer and the cake. If the game doesn't live up to the hype and you get bored, just pull out this article and tell your friends about some interesting football-connected IP cases. If you read quickly enough, you will be done just in time for the Patriot's inevitable fourth quarter comeback.

No More Slants and Skins

This will probably be the last time we lead with the WASHINGTON REDSKINS trademark, because Elvis has finally left the building on that particular issue. In June, the Supreme Court decided the landmark case of Matal v. Tam, which was brought by an Asian-American band calling itself The Slants (and which you can read about in more detail here). The band's application to register its name as a trademark had been refused by the U.S. Patent and Trademark Office ("USPTO") because Section 2(a) of the Lanham Act prohibited the registration of "disparaging" marks. The Supreme Court did not decide whether the name was or was not disparaging (that's an argument we will no doubt continue to have, especially now that the Cleveland Indians are sort-of abandoning Chief Wahoo), but it did hold that Section 2(a)'s prohibition was an unconstitutional restraint on First Amendment rights, thus opening the floodgates for the registration of all sorts of offensive names - whether employed ironically or not.

What does this have to do with football? The REDSKINS trademark, of course. Native American groups have been complaining about the team's name since the 1970's, and litigating it since at least the 1990's. Amanda Blackhorse and other Native Americans used Section 2(a) to argue for cancellation of the mark because of its disparaging nature, and Blackhorse won ... at least at first. Both the USPTO's Trademark Trial and Appeal Board ("TTAB") and the Eastern District of Virginia, in Pro-Football, Inc. v. Blackhorse, agreed with her. However, while the team's appeal was pending before the Fourth Circuit, The Slants case was decided by the Supreme Court. On January 18, 2018, the Fourth Circuit issued a "game over" order, acknowledging that the Supreme Court had decided the issue, and vacating the cancellation of the team's registrations.

The upshot: Contrary to some reports, the team's ability to use the REDSKINS name and logo was never in doubt (that's not how trademark law works!). As a practical matter, the only thing that the decision changes is that the team can now enforce the registered mark against infringers without worrying about a potential Section 2(a) cancellation counterclaim. In fact, only days after The Slants decision, the NFL filed paperwork with the USPTO indicating an intent to challenge a Canadian entity's application to register WASHINGTON RED NATION for sports-related clothing. Now all the team needs is a quarterback and they're good to go for 2018.

Trying to Forget "A Gronking to Remember"

In 2014, Lacey Noonan (a pseudonym for a guy named Greg McKenna) self-published A Gronking to Remember, an erotic fiction in which a young couple's relationship is torn apart by a woman's sexual obsession with New England Patriots tight end Rob Gronkowski and "the primal power of the Gronk spike." The original cover of the book featured a photograph of a young couple, with Gronkowski goofily looming in the background. However, it turns out that Noonan didn't have permission to use the photo of the young couple; he simply "obtained the photograph from a public social media website."

The couple in question (who we know as "Jane and John Roe") filed suit against the author and the book's online retailers. The complaint alleged that the Roes have been humiliated and embarrassed by their association with the book, and included a count for violation of the Ohio right of publicity statute (i.e., for unlawful commercial exploitation of their name or likeness). In March 2016, the Southern District of Ohio issued a ruling in Roe v. Amazon.com that kept the claims against Noonan in the case, but dismissed claims against the online retailers on the ground that they were not considered "publishers" of the offending photograph for purposes of Ohio law. The Sixth Circuit affirmed on other grounds, namely that there was no evidence the Roes' image had "commercial value." You can read more about the case here. The case against Noonan is still pending.

Gronk was involved in another IP dispute in 2017, this one before the TTAB. Early this year, Gronk Nation (his company) tried to register a silhouetted logo of Gronk spiking a football. Nike opposed in Nike v. Gronk Nation, LLC, arguing that the mark was too close to the famous JUMPMAN silhouette used by Nike to promote basketball products. Gronk abandoned that application, and later filed a new one for a silhouette with a more distinct appearance.

The Resurrection of Spuds Mackenzie

Just when you thought he was out of it, this year a legend came out of retirement to check into the big game. James Harrison? Think again, and say welcome back to canine Bud Light mascot, Spuds Mackenzie. Spuds (played by a female bull terrier named Honey Tree Evil Eye) made his debut in 1987 during Super Bowl XXI, but he was retired in 1989 after Anheuser-Busch was accused of using the pooch to encourage kids to drink. The dog passed away in 1993 and, by 1995, the company's SPUDS MACKENZIE trademark registrations had lapsed.

In an ad during Super Bowl LI (last year's game), the beer maker engaged in what it thought was a harmless trip down commercial memory lane, bringing Spuds back for a new ad as the ghost of parties past in a sort-of kegger version of Dickens' A Christmas Carol. However, in the interim since Spuds' initial retirement, the SPUDS MACKENZIE trademark had been claimed and registered by Mark...

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