United States: Sue-per Bowl Shuffle II: The Year In NFL-Related Intellectual Property Litigation

Last Updated: February 3 2016
Article by David A. Kluft

Around this time last year, I started worrying about what would happen if someone at a Super Bowl party asked me to explain an NFL-related lawsuit, particularly one of those IP-ish lawsuits that I'm supposed to know about. So I put together the first Sue-per Bowl Shuffle, a guide to the year's gridiron disputes over trademarks, copyright, the right of publicity and other matters with a First Amendment flavor.

This year, we've got you covered again. Although the deflate-gate mishigas dominated the popular press, you will see that there were plenty of intellectual property and speech disputes that were just as entertaining, and often just as interesting. As usual, we recommend that you laminate this article and put it next to the salsa. That way, when the Panthers go up by 30 points and start posing for oil paintings on the sidelines, you'll have something to talk about with your yawning companions.

Of Slants and Skins

For the second year in a row, the biggest IP football story was the WASHINGTON REDSKINS trademark. Native American groups have been complaining about the mark since the early 1970's and litigating it since at least the 1990's, claiming that its registration was invalid pursuant to Section 2(a) of the Lanham Act, which precludes the registration of marks that "disparage . . . persons, living or dead, institutions, beliefs or national symbols." In 2014, a group of Native Americans led by Amanda Blackhorse finally convinced the TTAB that the mark should be canceled. The team responded by filing a declaratory judgment action with the Eastern District of Virginia, alleging that Section 2(a) violated the First Amendment. In July, the Court granted Blackhorse's motion for summary judgment, and the team appealed to the Fourth Circuit. Pro-Football, Inc. v. Blackhorse, 2015 U.S. Dist. LEXIS 90091 (E.D. Va. July 8, 2015).

But while that appeal was pending, the case of In re Tam came out the other way. In that case, an Asian-American rock band's application to register its intentionally in-your-face name, THE SLANTS, was refused on the grounds that it was disparaging, and the band appealed to the Federal Circuit. In December, that Court held that Section 2(a) did indeed violate the First Amendment, because it discriminated based on the content of the message . In re Tam, 2015 U.S. App. LEXIS 22593 (Fed. Cir. Dec. 22, 2015). As Peter Sullivan wrote in our blog earlier this year, both cases appear destined to be decided by a higher power, and there is little doubt we'll be talking about this case again next year.

But at least one Washington D.C. resident didn't want to wait for the Supreme Court to weigh in. In July, pro se plaintiff Albert Jenkins filed a two page complaint against the Washington Redskins and the NFL, demanding $27 billion in damages. The complaint alleged that the NFL had unlawfully "made profit ... from the commercialization of Native Americans by using a patent on a human being." The Court denied the plaintiff's motion to proceed in forma pauperis on the grounds that he had not articulated why he had standing to pursue the claim on behalf of . . . well . . . anyone. Jenkins v. Wash. Redskins, 2015 U.S. Dist. LEXIS 92213 (D.D.C. July 9, 2015).

Super Bowl Shuffle Litigation (Still) Continues

In 2014, members of the "Shufflin' Crew," the Chicago Bears 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, so the plaintiffs sought to amend their complaint to replace those counts with one under the Illinois Right of Publicity act. The defendants argued that this claim too was preempted by the Copyright Act, but this time the Court disagreed, holding that the identities the plaintiffs sought to protect extended beyond the four corners of the copyrighted work. The matter has been remanded to an Illinois state court. Dent v. Renaissance Mktg. Corp., 2015 U.S. Dist. LEXIS 70248 (N.D. Ill. June 1, 2015).

The Right of Publicity

Several high profile right of publicity cases continued to chug along in 2015, especially those involving former players. In January 2015, the Ninth Circuit affirmed that the First Amendment did not bar claims brought by former NFL players against EA Sports. The players, including LA Rams quarterback Vince Ferragamo and Cowboys tight end Billy Joe Dupree, claimed that the "historic teams" feature of the Madden NFL computer game included characters bearing their likenesses and/or exact statistics, thus violating their rights of publicity. Davis v. Electronic Arts, 2015 U.S. App. LEXIS 154 (9th Cir. Jan. 6, 2015). EA Sports' petition for writ of certiorari to the Supreme Court is pending.

Meanwhile, another right of publicity case appears to have been resolved. In 2009, a group of retired players led by one-time Minnesota Viking Jim Marshall brought a class action against the NFL and NFL Films in the District of Minnesota. The complaint asserted right of publicity and Lanham Act claims, and alleged that the defendants had used the players' names and likenesses in promotional films and documentaries without permission. The Court denied the defendants' motion for judgment on the pleadings, holding among other things that the claims were not preempted by the Copyright Act. A proposed settlement, approved by the District Court in 2013, is supposed to fund a charitable organization and create a licensing entity as a "one-stop shop" for parties seeking to purchase the publicity rights of former NFL players. Certain players objected to the terms of the settlement, but the Eighth Circuit affirmed its approval, finding that the terms were fair, reasonable and adequate to the class. Marshall v. NFL, 787 F. 3d 502 (8th Cir. 2015).

Even some current players got into the right of publicity act this year. In October, Washington Wide Receiver Pierre Garcon (that's "Pete Waiter," for any Kornheiser littles out there) brought a putative class action suit against FanDuel, Inc., alleging that the company uses the names and likenesses of NFL players in its advertisements without authorization. Garcon asserted claims sounding in right of publicity, false endorsement under the Lanham Act, and unjust enrichment, and sought $5 million in compensation for the class. Early in 2016, Garcon voluntarily dismissed the matter with prejudice, after the parties reportedly reached a confidential settlement. Garcon v. FanDuel, Inc., Case No. 8:15-cv-03324 (D. Md. 2015).

That's Not How Patent Law Works!

Pro se plaintiff James Cross holds two design patents for a sports jersey with a zipper added to the front, which he calls Zip-A-Tee shirts. Cross adorned the shirts with the logos of professional sports teams and sold them via the internet. The NFL and other leagues sent cease and desist letters to Cross and, when he didn't comply, they had his website disabled. Cross filed suit in the Northern District of Indiana for a declaratory judgment of non-infringement, and demanded what the Court called an "unbelievable $700 million in statutory damages . . . and a ridiculous $5 billion in punitive damages." Cross' theory appeared to be that, because he had a design patent covering the shirts, he could put whatever he wanted on them. The Court dismissed the case with the succinct holding: "That is not how patent law works." Cross v. Coal. To Advance the Prot. Of NBA, 2015 U.S. Dist. LEXIS 57964 (N.D. Ind. May 4, 2015).

Unsolicited Submissions

In March, Rickey Reed brought a breach of implied contract claim against the NFL in the Central District of California. Reed had noticed that the NFL was "out of breath[] in the area of fresh ideas," so he allegedly submitted to the NFL his idea for "NFL: The Next Generation," which he described as the "football version of American Idol." The NFL claimed not to have read his proposal, but Reed called this "a lie that only a fool would believe" and alleged that the NFL used his idea to create "Undrafted," a television program about the struggles of undrafted college players who are still pursuing their NFL dreams. The Court dismissed the case, finding that Reed failed to allege sufficient facts that he had conditioned his submission of the idea upon an obligation to pay if it was used, or that the NFL had accepted such a condition. Reed has appealed. Reed v. NFL, Case No. 2:15-cv-01796 (C. D. Cal.).

A similar matter was resolved this year by the Eastern District of Louisiana. Back in 2005, Plaintiff Johnese Lamar Smith put together a marketing plan for the New Orleans Saints, registered it as a non-dramatic literary work with the U.S. Copyright Office, and then sent it unsolicited to the Saints' management. The plan included such "unique strategies" as half-time shows, additional dance routines for the cheerleaders, and new uniforms. When Smith perceived that the team was using some of her strategies, she sued the NFL for copyright infringement, claiming $11 million in damages. The Court granted the league's motion to dismiss, noting that ideas are not protected by copyright. Smith v. Goodell, 2015 U.S. Dist. LEXIS 14019 (E.D. La. Feb. 5, 2015).

The World's Best Fashion Consultant

Michael Eugene Owens, who describes himself as "the world's best fashion consultant and the reason for the First African American President in the U.S.," filed a pro se complaint in the Western District of North Carolina against the NFL and most other professional sports leagues, asserting that the leagues' sale of pink-colored clothing infringed his rights. Owens claimed that he was the owner of intellectual property rights in the color pink by virtue of several business names he had registered with the Mecklenburg County Register of Deeds, including the "Pink House at Charlotte" and the "Pink Tie Ball," and that he was entitled to about a billion dollars in damages. The District Court dismissed the case and the Fourth Circuit summarily affirmed. Owens v. Major League Baseball, 606 Fed. Appx. 102 (4th Cir. 2015).

Defamed Coaches

Before deflate-gate undermined the reliability of the NFL's arbitration procedure in the eyes of the Southern District of New York, Oakland Raiders assistant coach Randy Hanson tried similar arguments with markedly less success. While preparing for the 2009 season, Hanson got into a physical altercation with head coach Tom Cable. Hanson came away from the fray with a broken jaw and a demotion. Pursuant to his employment contract, Hanson was required to bring his claims for assault and defamation to an NFL Commissioner for binding arbitration. Unhappy with the results of the arbitration, Hanson sought to vacate the award, arguing that because "the NFL Commissioner's salary is paid or determined by NFL member teams," it "means that in all circumstances the Commissioner must be biased in favor of teams." The Court rejected this systemic attack on the NFL's procedure, and also rejected Hanson's argument that his employment contract was unconscionable. Hanson v. Cable, 2015 Cal. App. Unpub. LEXIS 2663 (Cal. App. 1st Dist. Apr. 15, 2015).

Another coach who spent some of 2015 in the California courts was former NFL running back Todd McNair, who served as an assistant coach at USC while Reggie Bush was earning his Heisman Trophy. In 2006, allegations surfaced that Bush was earning more than trophies. McNair was investigated and then suspended by the NCAA for his alleged knowledge of a scheme to pay Bush's family in exchange for Bush signing with a particular sports agency after graduation. McNair brought suit against the NCAA, alleging that the NCAA's report defamed him. The NCAA moved to dismiss, but a state trial court and the California Appeals Court held that McNair had put forward a sufficient showing of actual malice by the NCAA. This included evidence that the NCAA maintained serious doubts about the accuracy of its report owing to the inadequate nature of the investigation, that the result was predetermined, and that certain facts outside the record (including "criminal events" from McNair's past) were injected into the deliberations. McNair v. NCAA, 2015 Cal. App. Unpub. LEXIS 8809 (Cal. App. Dec. 7, 2015).

The Best Defense....

In 2005, former Philadelphia Eagles Safety Terry Hoage started TH VINEYARDS, the offerings of which featured several subtle references to Hoage's football career, for example the "46" Grenache Syrah (for Buddy Ryan's 46 defense). When Hoage noticed that Viña Undurraga S.A. of Chile had registered the TH mark for wine, he decided that the best defense was a good offense and filed a petition to cancel the registration. The TTAB determined that Hoage's TH VINEYARDS mark had priority, and that there was a likelihood of confusion between the marks. Viña Undurraga argued that it also owned the TH TERROIR HUNTER mark for the same product, which was registered before TH VINEYARDS. The TTAB held that this "prior registration" defense (or "Morehouse defense") could not prevail because it had not been pled and, even if it had, the TH TERROIR HUNTER mark was not "essentially the same" mark as TH alone, so the defense did not apply. The petition to cancel was granted. Serine-Cannonau Vineyard, Inc. v. Viña Undurraga, 2015 TTAB LEXIS 425 (Trademark Trial & App. Bd. Oct. 16, 2015).

Is Eli Manning a Fraud?

New York Giant Eli Manning once referred to himself as an "elite" quarterback and, while Giants fans nodded their heads, other commentators called him a fraud. Sports memorabilia collector Eric Inselberg went even further, alleging that Manning committed actual fraud. Inselberg alleged in a New Jersey state court complaint that Manning sold him memorabilia that was supposed to be "game worn," but in fact was not. The Giants and Manning moved to dismiss, but in January 2016 the Court issued a 63-page opinion which kept Inselberg's common law fraud claim against Manning alive. Inselberg v. New York Football Giants, Docket No. BER-L-00975-14 (N.J. Sup.). Last year, we discussed Inselberg's related (and failed) patent infringement suit against the team.

Take it Easy

Back in 2010, Eric Holguin attended a San Diego Chargers game at Qualcomm Stadium. During the game, he drank about five beers, got into an altercation with some other spectators, and was asked to leave by security. Instead of going home, Holguin hung around the outside of the stadium waiting for his wife. When two police officers intercepted him, Holguin explained to them that they should "take it easy" because he too was a police officer. The officers, not inclined to believe Holguin's claim in the absence of his ID or his shirt, detained him on suspicion of impersonating a police officer. Holguin, who it turned out was in fact a police officer, filed an action against the City, claiming among other things that the detention was in retaliation for his exercise of the First Amendment right to speak to the officers. The Court dismissed this claim on summary judgment, holding that the officers had plenty of probable cause for the detention. Holguin's allegation of excessive force survived summary judgment and is scheduled for trial in April. Holguin v. City of San Diego, 2015 U.S. Dist. LEXIS 130595 (S.D. Cal. Sept. 28, 2105).

Other Trademark Squabbles

In 2014, retired San Diego Chargers Linebacker Shawne Merriman filed a trademark infringement suit over Nike's use of LIGHTS OUT, Merriman's professional nickname and his registered trademark. Merriman's lawyers requested in discovery a wide array of Nike emails about the ownership of the mark. Nike objected on the grounds that the only ownership issue in the case was the validity of the mark, to which Nike's own documents would not be relevant. The Court held that the documents were relevant, "albeit marginally so," and ordered the parties to work out a compromise. As of this writing, Nike's motion for summary judgment is pending, and the parties have been engaged in settlement discussions. Lights Out Holdings, LLC v. Nike, Inc., 2015 U.S. Dist. LEXIS 100530 (S.D. Cal. July 31, 2015).

In February, a Chicago restauranteur applied to register SOUPER BOWL as a trademark for drinkable soups. The NFL opposed, arguing that the registration will likely be confused with its various SUPER BOWL marks. The applicant did not respond and, in December, the TTAB issued a notice of default. NFL Properties v. Wexler, Opposition No. 91224480 (Trademark Trial & App. Bd.). Several past attempts by various parties to register the same pun also have been abandoned.

In November, the Texas A&M University sued the Indianapolis Colts in the Southern District of Texas. Texas A&M alleged that the Colts were using the term "12th Man" to refer to fans in advertisements and on merchandise, and that this was an infringement of the school's registered 12TH MAN mark, which it used for the same purpose. The complaint notes a history of negotiations between the parties prior to the filing of the complaint, and it appears that those talks continue notwithstanding the initiation of the suit. Texas A&M University v. Indianapolis Colts, Inc., Case No. 4:15-cv-03331 (S.D. Tex.).

Everbank, a financial institution based in Jacksonville, Florida, holds the naming rights to the Jacksonville Jaguars' home stadium, Everbank Field. Everbank initiated an arbitration pursuant to the Uniform Domain Name Dispute Resolution Policy (UDRP), to take over a series of domain names registered by an individual named Scarlett May, including everbank-field.com, everbankfield-tickets.com and jaxevents-everbankfield.com. May allegedly had been offering to sell the domains to Everbank, at one point raising the price when she felt "insulted" by the bank's refusal to comply with her wishes. The panel found that May had no legitimate interest in the domain names and that her actions met the standard for bad faith under the UDRP. The domains were transferred to Everbank. Everbank v. Scarlett May, 2015 NAFDD LEXIS 441 (NAF April 23, 2015).

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

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