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Super Bowl, Super Trademarks: Protecting the NFL's IP
January 29, 2007

By Eriq Gardner

NEW YORK -- As nearly all Americans know, Super Bowl XLI will be played Sunday in Miami. But you don't hear the words "Super Bowl" or many references to the NFL's trademarked terms on radio, television, in print or on the Internet beyond what officially is licensed by the league. That's because football's most effective offense isn't a product of Peyton Manning's arm, but rather the NFL's squad of in-house lawyers who are particularly aggressive -- some say overly aggressive -- in enforcing its intellectual property rights.

Working from a modern Park Avenue headquarters, an eight-person department of trademark and copyright specialists monitors everything from local radio programs to telephone-poll advertisements, looking for mentions of off-limits words or images. This proactive strategy also includes sending out thousands of "reminder" letters each year to global advertising giants and communities where the game is played, setting out what can and can't be said in promotional materials.

Sometimes a reminder isn't enough. Each season, the NFL mails between 100 and 150 cease-and-desist letters, demanding that trademarks like "Super Bowl" or team names not be used in any commercial context.

"We take these issues very seriously and aren't afraid to pursue infringements vigorously," says Anastasia Danias, the NFL's vp of intellectual property.

According to others who have dealt with the NFL over its trademark policy, the league's lawyers rarely back down from a confrontation. With hundreds of millions of dollars in revenue coming to the NFL from official licensed sponsorships, not to mention the billions the league gets from networks to broadcast the game, it isn't hard to figure out why the nation's most popular sports league takes such an aggressive posture.

But many lawyers who handle trademark issues in the advertising business think the NFL's tactics -- including its broad interpretation of what constitutes "commercial" use -- might be going too far and bullying away legitimate fair uses of trademarked phrases.

"My understanding is that the NFL is probably among the more active policemen of their marks," says Graham Coleman, a partner at Davis Wright Tremaine who has represented big-event licensees and licensors like the American Theatre Wing's Tonys. "Nothing is more frustrating for someone in my position than when (trademark owners) don't realize there are non-infringing, permissible uses of a trademark."

The NFL's official reminder letter comes each year with a list of phrases and images that are not permissible. Uses of the terms "Super Bowl, "Super Sunday," "NFL" and team nicknames are off limits in any type of marketing or other attempt to create "the appearance of a relationship." Potential causes of action for trademark infringement, unfair competition, false advertising and "misappropriation of goodwill" are alleged.

Instead, the letter encourages advertisers to reference its annual event as "the Big Game" and refer to the teams playing by the cities (e.g. Indianapolis vs. Chicago).

In the past 10 years, owners of branded events from the Olympics to the Oscars have struggled to figure out ways to combat the rising phenomenon known as "ambush marketing," or nonlicensed promotions that leverage the hype or locality of an event for commercial purposes.

The NFL, with the help of outside counsel at the firms it uses (Debevoise & Plimpton; Quinn Emanuel Urquhart Oliver & Hedges; Akerman Senterfitt; and Leventhal Senter & Lerman), has been a leader, playing offense every chance it gets.

Five years ago, Coors Brewing Co. reached a deal with the NFL Players Assn. to market its beer as "the Official Beer of NFL players" only to be sued by the league for using its "NFL" trademark without permission. In 2005, the NFL pursued legal action against several Las Vegas casinos that advertised Super Bowl parties. And last year, when Clear Channel radio stations launched a promotional campaign giving away free tickets to the big game, the NFL sent more cease-and-desist letters, arguing the promotion violated its trademark rights. In all cases, the defendants backed down.

Douglas Masters, a partner at Loeb & Loeb who represents the NCAA and has experience dealing with the collegiate league's protection of its March Madness basketball tournament, says she understands why leagues pursue trademarks diligently: to keep corporate sponsors happy.

"If General Motors is paying you $10 million to be the official car, they get hacked off when Ford gets to do something around the big game for free," Masters says. "It cheapens the value of sponsorships and discourages people from going down that road."

Masters also says it's common practice for leagues like the NFL to get local legislatures in Super Bowl cities to pass "Clean Zone" statutes -- which guarantee that local jurisdictions are free of signs and merchandise that violate the league's trademarks -- and involve local law enforcement to police the areas around where the Super Bowl is played.

Not all lawyers are convinced that being so overtly aggressive is a good game plan.

Coleman believes sending hundreds of cease-and-desist letters every year for minor offenses could come back to haunt the league. Besides cutting off potential publicity for the game, relationships with potential future sponsors might sour, he says, and even existing sponsors might get the wrong message. "It, for example, shows a sponsor that you'll be trigger happy when it comes to exercising audit rights (in licensing contracts)," he says.

At the NFL, Danias defends the league's approach. "I think it's fair. It's noteworthy to mention that after we pursued Coors, they became one of our business partners," she says, referring to a $240 million, four-year sponsorship license that Coors signed in 2001 and renewed in 2005.

Advertisers caught in the cross-hairs of increased attention from sports leagues have mostly stayed neutral on the issue, and when actions have arisen, they have settled them privately.

At a recent conference put on by the Association of American Advertisers, Elizabeth Bilus, intellectual property counsel at PepsiCo. Inc., spoke about the careful balance that those in her position must take.

"I try not to be judgmental about ambush marketing," Bilus says. "Pepsi is often the sponsor and a nonofficial advertiser. Pepsi has an aggressive ad campaign approach, including poking fun at its major competitors."

The soft drink company has gotten into trouble at times for its behavior as a non-licensee ambush advertiser. For referencing track and field events in a commercial spot it ran during the 2006 Summer Olympics, the company was served with a cease-and-desist letter by the International Olympic Committee. After Pepsi introduced a commercial at the 2002 World Cup featuring sumo wrestlers playing a soccer match against trained professionals, a Japanese court issued an injunction for including a background banner in the spot that referenced a trademark of the organizing sponsor.

Bilus says that Pepsi's legal department carefully clears ads for trademark liability before they run, including performing a color analysis on any team jerseys featured in a commercial to determine whether it potentially infringes upon the colors worn by a real-life sports club.

In addition, every year before the Super Bowl, she says she reads the NFL's reminder letter.

"They appeal to our high ethical standards," she says. "The truth is by that time, we're all locked and loaded with our ambush spots."

This year, however, Diet Pepsi will be sponsoring the Super Bowl halftime show, and Bilus hopes the NFL will be dutiful about protecting Pepsi's rights. That said, "When the Super Bowl is running, I think it's a mistake to say that nonsponsors can't talk about football."

That's where concerned lawyers believe IP protection is heading.

Belinda May, a partner at Sonnenschein Nath & Rosenthal in New York, thinks the NFL is in danger of overstepping its rights. She worries that student newspapers choosing to run items about where to go to watch the Super Bowl might be seen by the league as violators of the Lanham Act's trademark protections. She also believes there is no just reasoning behind preventing bar owners from trying to attract crowds on Super Sunday.

"If Joe's bar wants to run a 2-for-1 special for the Super Bowl, I don't see how that's trading off of the good will and property rights of the NFL," May says.

Case law on ambush marketing is thin, particularly because advertisers have gone out of their way to avoid getting into court on the topic. Masters says, "Often times, ambush people one day are the official people the next."

This leads some to believe that if ambush marketers ever played more aggressive defense against the NFL and defended their rights of fair use, they would succeed more often than not.

Benjamin Mulcahy, a partner at Sheppard Mullin Richter & Hampton, says that a court handling an ambush marketing case likely would examine whether or not the promotion "creates confusion that consumers mistake you are associated with an event."

In cases like a local pub advertising a Super Bowl event or a TV store encouraging consumers to buy a giant flat-screen in time for the game, it's unclear whether the NFL would be able to meet the "likelihood of consumer confusion" threshold. In addition, Mulcahy says that simply adding disclaimers that a promotion is "not affiliated with the NFL" would probably pass court muster and get the advertiser off the hook. "Courts have held those disclaimers are good enough to discourage confusion," he says.

All of the lawyers interviewed say they believe that eventually, as the stakes grow and the Internet helps push the bounds of fair use, more litigation about what are legitimate forms of ambush marketing will make their way through the courts.

Until that happens, the NFL offers one bit of recourse for anybody troubled with its policy. In the reminder letter sent this year, advertisers were told they could make fun of the fact that you cannot say the phrase "Super Bowl."

They even offered a creative suggestion: bleep the words out.

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