United States: April Sports Industry News

Last Updated: April 18 2017
Article by Christopher R. Chase and Alan Sacks

So much is happening at the intersection of sports, marketing, and entertainment that we've been inspired to send you summaries to help you put it all into context. Please enjoy this month's content.

What's Happening

Waivers from International Olympic Committee Rule 40. 
The US Olympic Committee ("USOC") recently released guidance on IOC Rule 40 as it pertains to the 2018 Winter Olympics in PyeongChang. The rule prevents 2018 Winter Olympic participants from appearing in advertisements during a "blackout period" unless such participants obtain specific waivers. For the upcoming PyeongChang Games, the "blackout period" is February 1 through February 28, 2018. Although directed at the Olympic participants themselves, the rule is meant to deter so-called brand-based "ambush" marketing during the Games.

The recently released guidance relaxes that ban by creating a waiver from such restrictions. The waiver allows brands using Olympic participants to continue "generic, in-market" campaigns as long as the campaigns begin running before October 1, 2017 and run continuously through the Winter Olympics. Much like Rio 2016, the USOC will grant waivers for Olympic participants that seek to appear in advertising as long as the following criteria (among others) for brands are met:

  • no direct or indirect association with the PyeongChang Games, Olympics intellectual property, or terms generally associated with the Olympic Games; " the initial campaign submission must be submitted to the USOC website no later than August 1, 2017; and
  • submissions must include a media schedule demonstrating that the campaign will be in market and run continuously starting no later than October 1, 2017.

Frankfurt Kurnit helped brands obtain Rule 40 waivers for the Rio Games. If your company is considering employing 2018 Winter Olympics participants for marketing purposes, and you have questions about the Rule 40 waiver process, please contact Christopher Chase.

The Madness May Be Over, But the March Continues: NCAA Enforces Its Rights In MARCH MADNESS. 
In early March, the NCAA sued online game developer Kizzang for trademark infringement, alleging that the company's "April Madness" online fantasy games infringed the MARCH MADNESS mark. National Collegiate Athletic Association v. Kizzang LLC, No. 1:17-cv-00712 (S.D. Ind. March 8, 2017). The NCAA also accuses the company of infringing its FINAL FOUR mark through the company's offering of a "Final 3" online bracket-predicting game. Although the lawsuit continues, Kizzang has stipulated that it will not use the allegedly infringing names during 2017.

A stringent enforcer of its rights in MARCH MADNESS and other marks used in connection with the Division I basketball tournament, the NCAA's suit against Kizzang comes on the heels of an opposition it filed in the US Patent and Trademark Office against the Big Ten Conference (which is made up of NCAA members). In that matter, the NCAA opposed the conference's trademark application for the phrase MARCH IS ON! for the promotion and coordinating of athletic events. The National Collegiate Athletic Association v. The Big Ten Conference, Inc., Opp. No. 91232826 (US Patent and Trademark Office, Feb. 13, 2017) (although the opposition continues, it has been suspended for settlement discussions). And for those brands that incorporate brackets into basketball-related marketing during March and April, note that the NCAA also claims common law trademark rights to the "images of brackets and marks consisting of or referring to the term 'bracket' in connection with entertainment services and related promotional and sponsorship services." See The National Collegiate Athletic Association v. Class Act Sports, Opp. No. 91220749 (US Patent and Trademark Office Feb. 23, 2015) (filing an opposition against the applications for BRACK ATTACK and DON'T LET ONE TEAM BUST YOUR BRACKET).

US Supreme Court Supports Copyright Protection for Fashion and Industrial Designs. 
On March 22, the US Supreme Court ruled in Star Athletica v. Varsity Brands that copyright law can protect designs on cheerleading uniforms. The Court set a clear, single test for copyrightability, resolving a split among various courts. The decision provides needed clarity and changes the tone of IP protection in the design industry: it can no longer be argued that US copyright law does not protect fashion and industrial design. Frankfurt Kurnit's Craig Whitney and Rachel Kronman penned an alert on this important decision.

The decision is already providing a helpful tool in a fashion/apparel brand's arsenal, as Puma SE recently cited the case in its infringement suit against fast-fashion retailer Forever 21, Inc. for allegedly copying a line of Puma shoes made in collaboration with pop star Rihanna. Puma SE v. Forever 21, Inc., No. 2:17-cv-02523 (C.D. Cal. March 31, 2017).

Protecting Three Stripes. 
Sportswear and footwear giant Adidas AG has increasingly enforced its three stripe trademark of late, suing the brands Puma, Marc Jacobs, Skechers, and now Juicy Couture, against whom Adidas brought a lawsuit for selling apparel that allegedly infringes the company's "three-stripe" trademark.  Adidas America Inc. et al. v. Juicy Couture Inc., No. 3:17-cv-00437 (D. Or. March 17, 2017).

The three stripe trademark enforcement threats have increased so much that Forever 21, Inc. filed a preemptive lawsuit against Adidas in response to a cease and desist letter it received. In this suit, Forever 21, Inc. argues Adidas is a trademark bully for taking enforcement of its three stripe mark too far. Forever 21 Inc. v. Adidas America Inc. et al., No. 2:17-cv-01752 (C.D. Cal. March 3, 2017). The retailer argues that "Adidas should not be allowed to claim that Adidas, alone, has a monopoly on all striped clothing."

Fanatics Acquires the Majestic Brand.
No longer solely a back-end e-commerce solution, Fanatics has transformed itself into a vertically integrated platform, whereby it not only operates e-commerce platforms and bricks-and-mortar retail locations, but also controls significant licensing rights. Recent licensing acquisitions include rights across the NHL, NBA, NFL, and various colleges, and, with the ownership acquisition of VF's Licensed Sports Group (which includes the Majestic brand), as announced on April 4, MLB's current on-field uniform rights as well. By adding Majestic's Pennsylvania-based manufacturing facility and the various league licenses, Fanatics now has greater influence over the sports licensing industry, as it can increasingly provide an end-to-end solution for licensed apparel and merchandise.

The "Moral" of the Story. 
Athletes sometimes misbehave. And sponsors or employers sometimes fire them -- relying on the so-called "morals clause." These clauses can be controversial for both endorsers and properties due to the sheer number of behaviors that can cause a breach. The "morals clause" was at issue when the recently relaunched N.Y. Cosmos soccer team terminated retired international soccer star Eric Cantona's consulting agreement with the team. The Cosmos argued Cantona breached the morals clause when it was reported that he punched a press photographer outside a pub in London. When the team enforced the morals clause, Cantona filed a breach of contract suit against the team for alleged improper termination of his consulting services. The parties have likely settled this dispute, however, as after two years Cantona dismissed his complaint at the end of March. Cantona et al. v. New York Cosmos LLC, No. 1:15-cv-03852 (S.D.N.Y. March 27, 2017) (Stipulation of Dismissal). Frankfurt Kurnit has written about the controversial "morals clause" issue here.  

Noted and Quoted

Stephen Curry Spoke. Under Armour Listened. Now What? 
An article written by The Associated Press and picked up by ESPN, USA Today, CBS News, and Sports Illustrated, among others, quoted Christopher Chase on contract issues arising from friction between the NBA star and his sponsor.

Protecting Your Legacy. 
Athletes Quarterly recently published H. Sujin Kim and Adam Osterweil's article, "Protecting Your Legacy: Every Athlete Needs A Game Plan For Estate Planning And Philanthropic Ventures." The article discusses estate planning and philanthropy from the athlete's point of view.

Want to Learn More?

On April 11, Christopher Chase presents a webinar for the Brand Activation Association entitled "From Acquisition to Activation, Best Practices for Brands When Negotiating Sports Marketing Agreements," where he will discuss negotiating sponsorship, endorsement, and licensing agreements with leagues, teams, and athletes. Info here.

On April 14, Christopher Chase speaks at NYU Law's Sports Law Colloquium on "The Evolution of Intellectual Property As a Key Value Driver in Sports." Info here.

www.fkks.com

This alert provides general coverage of its subject area. We provide it with the understanding that Frankfurt Kurnit Klein & Selz is not engaged herein in rendering legal advice, and shall not be liable for any damages resulting from any error, inaccuracy, or omission. Our attorneys practice law only in jurisdictions in which they are properly authorized to do so. We do not seek to represent clients in other jurisdictions.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
Christopher R. Chase
 
In association with
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement

Mondaq.com (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of www.mondaq.com

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about Mondaq.com’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.

Disclaimer

Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.

Registration

Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to unsubscribe@mondaq.com with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.

Cookies

A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.

Links

This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.

Mail-A-Friend

If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.

Security

This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to webmaster@mondaq.com.

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to EditorialAdvisor@mondaq.com.

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at enquiries@mondaq.com.

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at problems@mondaq.com and we will use commercially reasonable efforts to determine and correct the problem promptly.