United States: Sue-Per Bowl Shuffle 2014: The Year In NFL-Related Intellectual Property Litigation

Last Updated: January 29 2015
Article by David A. Kluft

Heading into this year's Super Bowl party season, there are two things every lawyer should be concerned about. First, why can't your team get it together? Second, what do you do if you are asked to explain to your friends and neighbors some NFL-related litigation that you haven't been following? We can't help you with the first problem (although, as an Iggles fan living in the heart of Patriots Nation, I feel your pain). As to the second problem, however, we've got you covered, at least when it comes to IP (and IPish) litigation. Laminate a copy of this handy summary, put it next to the guacamole dip, and you'll be able to field nearly any question that comes your way!

Blackhorse v. Pro-Football

If contentious trademark litigation were the stuff of championships, Washington and not Seattle would be headed to their second straight Super Bowl. After years of litigation over various "Washington Redskins" trademarks, in June the Trademark Trial and Appeal Board (TTAB) granted the petition of Amanda Blackhorse, a Navajo activist, to cancel certain registrations owned by the team. The TTAB held that these marks ran afoul of 15 USC §1052(a), which bars the registration of trademarks "which may disparage . . . persons, living or dead." Our summary of the decision is available here. See Blackhorse v. Pro-Football, Inc., 2014 TTAB LEXIS 231 (Trademark Trial and App. Bd. June 18, 2014).

A couple months later, the Washington team sought review in the Eastern District of Virginia, challenging the TTAB decision and arguing that the statute violates the First Amendment. After Blackhorse's motion to dismiss was denied, the Solicitor General of the United States moved to intervene in order to defend the constitutionality of the statute. See Pro-Football, Inc. v. Blackhorse, 2014 U.S. Dist. LEXIS 166889 (E.D. Va. Nov. 25, 2014).

Super Bowl Shuffle Litigation Continues

Back in January, members of the "Shufflin' Crew," which includes former Chicago Bears Richard Dent, Jim McMahon and other players who participated in the 1985 "Super Bowl Shuffle" song and music video, brought an action in Illinois state court for declaratory judgment and other relief against the assignee of the rights to the video. The former players alleged that the purported assignment to the defendant was invalid, and therefore their performances were being exploited without authorization. The defendant removed to federal court and argued that the plaintiffs' claims were preempted by the Copyright Act.  The Court agreed with respect to the plaintiffs' declaratory judgment and conversion claims, and decided to exercise supplemental jurisdiction over the remaining counts. See Dent v. Renaissance Mktg. Corp., 2014 U.S. Dist. LEXIS 152448 (N.D. Ill. Oct. 28, 2014).

Meanwhile, Don Levey, the photographer who took the picture on the cover of the Super Bowl Shuffle album, has been busy with his own litigation. In 2013, the Chicago Tribune reprinted the photograph, but did not include a credit to Levey – which had been printed on the back of the original album sleeve. Levey alleged that this omission amounted to the unlawful removal of "Copyright Management Information" under Section 1202 of the Digital Millennium Copyright Act (DMCA). The Tribune argued that such an analog notation could not as a matter of law fall within the DMCA's definition of "Copyright Management Information," but the Court disagreed and denied the Tribune's motion to dismiss. See Leveyfilm, Inc. v. Fox Sports Interactive Media, LLC, 999 F.Supp.2d 1098 (N.D. Ill. 2014).

At the same time, Levey also brought copyright infringement claims against a Fox Sports-affiliated website that had used his photograph to illustrate a post about yet another lawsuit also involving the Super Bowl Shuffle (one starts to wonder if that song is more trouble than it's worth). In July, the Court rejected Levey's arguments that Fox was secondarily liable for publication of the photo, and also held that the defendant's utilization of the photograph was fair use. Leveyfilm, Inc. v. Fox Sports Interactive Media, LLC, 2014 U.S. Dist. LEXIS 92809 (N.D. Ill. July 8, 2014).

TheDirty.Com

Sarah Jones, a former Cincinnati Bengals cheerleader (or "Bengal"), brought defamation claims against TheDirty.com based on comments posted by anonymous users ("The Dirty Army"). The comments, which were allegedly encouraged by the website operators, included accusations that Jones was a sex addict with several venereal diseases who had "slept with [placekicker Shayne Graham and] every other Bengal Football player." The Eastern District of Kentucky held that, by encouraging actionable comments, the website owners were in effect content "developers" who had forfeited immunity from suit under Section 230 of the Communications Decency Act. The Sixth Circuit, however, held that this definition of "development" was too broad and reversed. According to the Court of Appeals, the website operators may have "encouraged" the "Dirty Army" to post "dirt," but they did not author the defamatory comments or materially contribute to their defamatory nature, so the website did not lose its Section 230 immunity. Jones v. Dirty World Entertainment LLC,755 F.3d 398 (6th Cir. 2014).

Right of Publicity Claims Against the NFL

In 2009, a group of 23 retired players — led by actor and former LA Rams defensive end Fred Dryer — brought a putative class action against NFL Films, which creates various documentaries and other programs about the NFL. The suit alleged that NFL Films' use of footage of games in which the class members appeared constituted a violation of their publicity rights under the laws of various states, including California, Texas, Minnesota and New York. After most of the class members settled, Dryer and a few others proceeded as individuals. In October, the District of Minnesota allowed the league's motion for summary judgment, holding that the use of the game footage was not commercial speech and in addition was protected by the "newsworthiness" and "consent" defenses applicable to common law right of publicity claims. See Dryer v. NFL, 2014 U.S. Dist. LEXIS 144362 (D. Minn. Oct. 10, 2014).

Also in 2014, several similar cases brought by retired players who had opted out of the class action settlement were transferred to Minnesota, including claims by Atlanta Falcon Woody Thompson, the estate of Oakland Raider John "Jack" Tatum and Houston Oiler Curley Culp. Thompson v. NFL, 2014 U.S. Dist. LEXIS 57018 (W.D. Pa. Apr. 24, 2014); Tatum v. NFL, 2014 U.S. Dist. LEXIS 57592 (W.D. Pa. Apr. 24, 2014); Culp v. NFL Prods. LLC, 2014 U.S. Dist. LEXIS 137172 (D.N.J. Sept. 29, 2014).

The NFL was also hit with a less successful right of publicity suit by sports marketer Angela Burgin. Burgin alleged that she had approached the NFL in 2011 about creating a social media project targeted at women, which ultimately became the NFL Women's Resource Initiative. Burgin was unhappy with the credit she received on the site: she claims the NFL misappropriated her idea and then without authorization listed her on the site as a "contributor" alongside her copyrighted photograph. In April, the Southern District of New York dismissed Burgin's right of publicity and Lanham Act claims on the grounds that the complaint did not sufficiently allege that the NFL had made commercial use of her name and likeness. The Court further held that the unauthorized use of the copyrighted photograph, which was up on the site for only about a week, was de minimis. See Burgin v. NFL, 2014 U.S. Dist. LEXIS 61935 (S.D.N.Y. Apr. 30, 2014).

Siri, How Can I Travel Back in Time?

In Gadh v. Spiegel, 2014 U.S. Dist. LEXIS 6408 (C.D. Cal. Apr. 2, 2014), the plaintiff claimed that the Spike Jonze film Her, the story of a relationship between a man and his "Siri-like" cell phone assistant, infringed the copyright to a sitcom screenplay about a similar relationship. The Court found that the two works were not substantially similar, in part because, while Her takes place in the future, the plaintiff's sitcom was clearly set in the past, as evidenced by an anachronistic reference to Brett Favre as the quarterback of the Green Bay Packers.

Madden NFL

EA Sports' Madden NFL computer game continued to keep the Northern District of California busy in 2014. Robin Antonick, the creator of the first version of the game, claims that subsequent versions were mere derivatives of his original code, thus contractually entitling him to additional compensation. On January 22, 2014, Judge Charles Breyer overturned a jury verdict in Antonick's favor, holding that Antonick – who no longer had a complete copy of the original source code – had failed to present evidence from which a reasonable jury could determine that the works "as a whole" (not just isolated elements) were substantially similar.  Our write-up of the case is available here. Antonick's appeal is pending before the Ninth Circuit. See Antonick v. Elec. Arts Inc., 2014 U.S. Dist. LEXIS 7924 (N.D. Cal. Jan. 22, 2014)

On January 6, 2015, the Ninth Circuit affirmed the Northern District of California in another case related to the same video game. Several former players had alleged that their right of publicity was violated by the game's "historic teams" feature. The plaintiffs, such as LA Rams quarterback Vince Ferragamo and Cowboys tight end Billy Joe Dupree, claim that these "historic teams" included characters bearing their likenesses and/or exact statistics. EA Sports moved to dismiss the complaint on First Amendment grounds — the same First Amendment grounds that it had unsuccessfully asserted in Keller v. Electronic Arts, a similar case brought by former college football players over the NCAA version of the game. The Ninth Circuit held that its rulings in Keller – including that the game's use of the players' images was neither transformative nor incidental —   effectively precluded EA Sports from making the same arguments again. Davis v. Elec. Arts, Inc., 2015 U.S. App. LEXIS 154 (9th Cir. Jan. 6, 2015).

Floyd Mayweather and the Money Team

During Super Bowl XLVII in New Orleans between the 49ers and the Ravens, the French Quarter-adjacent Wine Bistro restaurant sought to capitalize on the festivities by selling $50 tickets to a "Ball So Hard Super Bowl Kick-Off" party hosted by"Floyd Mayweather and the Money Team." The "Money Team" is the nickname for the boxer's  entourage, which apparently includes the likes of Justin Bieber, Lil Kim and 50 Cent. Sounds like fun, right?  Not to Mayweather, who claims he had never agreed to have any part of the event. Mayweather sued the Wine Bistro for trademark infringement, false advertising and violation of his right of publicity. The District of Nevada granted a default judgment — about $2,000 in damages plus attorneys' fees — after the Wine Bistro failed to answer. Mayweather v. Wine Bistro, 2014 U.S. Dist. LEXIS 168720 (D. Nev. Nov. 17, 2014).

T-Shirts and Other Licensed Products

Gronk Nation, a company owned by New England Patriots wide receiver Rob Gronkowski and his brothers, brought suit against a company selling t-shirts bearing the GRONK mark. The defendant moved to dismiss the Section 43(a) false endorsement claim on the grounds that it was selling "Gronk" t-shirts prior to the "first use" date listed in Gronk's GRONK registration. The District of Massachusetts denied the motion, holding that the critical inquiry was not the first use date, but whether the defendant was trading on Gronk's persona and goodwill in a manner likely to cause confusion. Gronk Nation, LLC v. Sully's Tees, LLC, 2014 U.S. Dist. LEXIS 46797 (D. Mass. Apr. 4, 2014). And while we are on the topic of Gronk, we note that the bizarre romance novel A Gronking to Remember ("It was a passion that could not be spiked") was recently removed from Amazon, according to the Boston Globe, after complaints — possibly from the Patriots — that the book jacket featured an image of Gronk wearing his uniform and sporting a patch commemorating the late Myra Kraft.

The Patriots' bête noir, the New York Giants, didn't fare as well as Gronk with their own t-shirt dispute.  In July, the TTAB affirmed refusal of the Giants' application to register the mark G-MEN for t-shirts, on the grounds that it was likely to be confused with the GMAN SPORT mark for similar apparel. See In re: New York Football Giants, Inc., 2014 TTAB LEXIS 277 (Trademark Trial & App. Bd. July 3, 2014).

Meanwhile, a long-running antitrust licensing matter, one that has already paid a visit to the Supreme Court, continues to rage in the Northern District of Illinois. Prior to 2000, the NFL had granted non-exclusive licenses to apparel suppliers for the production of branded merchandise.  However, in 2000, the league entered into an exclusive licensing arrangement with Reebok, shutting out prior licensees like American Needle, which manufactures knit hats. American Needle filed suit against the NFL, Reebok and 30 NFL teams, claiming that this arrangement was an unlawful combination in violation of the Sherman Act. This April, the Court denied American Needle's motion for summary judgment because the NFL was able to demonstrate evidence of plausible procompetitive effects resulting from the Reebok license. However, the Court also denied the NFL's motion for summary judgment, rejecting the argument that the plaintiff's proposed market definition – the wholesale market for NFL trademarked hats – was improperly narrow because it excluded hats bearing the logos of teams in other sports. See American Needle, Inc. v. New Orleans La. Saints, 2014 U.S. Dist. LEXIS 47527 (N.D. Ill. Apr. 4, 2014).  Similar claims in Dang v. S.F. 49ers, Ltd., 2014 U.S. Dist. LEXIS 121344 (N.D. Cal. Aug. 29, 2014), a challenge to the same contract as a violation of California's Cartwright Act, also survived a motion to dismiss.

Other NFL licensing matters in 2014 included Action Ink, Inc. v. New York Jets, LLC,
576 Fed.Appx. 321 (5th Cir. 2014), in which the Fifth Circuit held that the plaintiff had abandoned its ULTIMATE FAN mark after about 20 years of non-use; Advanced Watch Co. v. Pennington, 2014 U.S. Dist. LEXIS 149919 (S.D.N.Y. Oct. 22, 2014), in which the Southern District of New York refused to dismiss Lanham Act and trade secret misappropriation claims between two watch manufacturers vying to make NFL-branded watches; and the descriptively-captioned United States v. Approximately 335 Counterfeit NFL Jerseys, 2014 U.S. Dist. LEXIS 79093 (E.D. Cal. June 9, 2014), in which the Court blessed the Department of Homeland Security's seizure of (guess approximately how many) counterfeit NFL jerseys.

Patent Disputes

In Inselberg v. New York Football Giants, 2014 U.S. Dist. LEXIS 158479 (D. N.J. Nov. 10, 2014), a "self-described inventor" sued the New York Giants in state court for unfair competition and unjust enrichment, alleging that the team had misappropriated his patented "wireless audience participation" technology. The Giants removed the case to federal court on the grounds that the gravamen of the claim sounded in patent infringement, but the District of New Jersey — rejecting the recommendation of its Magistrate — granted the plaintiff's motion to remand.

Emblaze Ltd. v. Apple Inc., 2014 U.S. Dist. LEXIS 57893 (N.D. Cal. April 24, 2014) is a dispute over what the Court describes as a "Veg-O-Matic" for "slicing and dicing" live data streams. Emblaze claimed, among other things, that certain video streaming technology used by Apple to deliver NFL preseason games infringed its patent. Apple argued on summary judgment that the claims with respect to the NFL stream should be dismissed because there was insufficient evidence as to who owned and operated the server that issued the stream, and Emblaze therefore was essentially speculating as to whether its technology was being infringed. The Court denied the motion, holding that while the evidentiary record presented by the plaintiff was not a "model of clarity," it included "just enough to squeak by."

Will the Real Jelani Jenkins Please Stand Up?

In Jenkins v. Lewis, 2014 UDRP LEXIS 1508 (WIPO June 23, 2014), Miami Dolphins rookie Jelani Jenkins initiated a WIPO arbitration proceeding to wrest control of jelanijenkins.com from Amy Lewis, a fellow Maryland resident who had tried to sell the site to Jenkins for $10,000. Lewis happens to be married to Kenneth Jenkins (no relation to Jelani), who was himself once an NFL running back. Lewis claimed that she and her husband had registered the domain name in 2008 in anticipation of having a child of that name. Lewis further alleged that she had no knowledge of the complainant at the time, who was just a high school student. However, the panel found that Jelani Jenkins was no ordinary high school student in 2008. Rather, he was a highly-touted and heavily-recruited athlete with a potentially lucrative future, and who was well-known in Maryland sports circles – circles which included Lewis. Therefore, in the absence of evidence that Lewis and/or her husband actually had a child named Jelani, the panel found that Lewis had registered the domain in 2008 in bad faith in order to exploit Jelani Jenkins' likely eventual success.

To view Foley Hoag's Trademark and Copyright Law Blog please click here

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