|
| ||||||
|
02/23/07 |
||||||
|
Royal W. Craig Appeared in the Baltimore Business Journal The NFL claims to sell between $100 million to $125 million in Super Bowl merchandise a year, much of which comes from about 50 master licensees authorized to produce NFL-branded goods. Most of the merchandise is high-margin stuff, and necessarily so to ensure that the NFL and everyone else involved gets their cut. And such margins are just too tempting to keep brazen vendors sitting on their hands. They place orders for counterfeit goods to China, pay a few dollars per unit, and sell them for hundreds. Such trademark theft has become big business, reportedly costing the rightful owners hundreds of billions of dollars per year in lost profit. The problem peaks at the end of the football season. At last year's Super Bowl, authorities impounded about $5 million worth of unlicensed NFL merchandise. Those authorities included the U.S. Immigration and Customs Enforcement, the Detroit Police Department, and the NFL itself, all of which partnered for a concerted street sweep dubbed "Operation Gridiron." The counterfeit vendors likewise geared up for their own nameless operation. They are of two types: "hit and run" artists who hope to sell a batch of counterfeit goods unnoticed, and the more conservative vendors who sell goods that are only questionable infringements. These marginal goods are usually calculated to make a trademark infringement case difficult to prove, hopefully keeping them off the NFL's radar screen. For example, which of the following would be unlawful: selling purple beads at a Ravens game? A purple bandana? A purple T-shirt? A purple-and-black T-shirt? A white T-shirt emblazoned with the familiar No. 52 of Ray Lewis? With player names, numbers and likenesses, the current rule of thumb is hands-off completely. Player names, numbers, and likenesses are thought to be owned by the players themselves (via the various players associations or player-agents) under a "right of publicity," a common law recognized in about thirty states. Photographs of baseball players on trading cards, for example, is infringement. On the other hand, there are First Amendment limits to this right of publicity. Parody pictures of players on cards are OK because they are "an important form of entertainment and social commentary that deserve First Amendment protection." Similarly, artistic works are fine. In a recent case, artist Rick Rush painted a picture of Tiger Woods called "Masters of Augusta." Rush's brother started selling the prints and Woods sued. The court held that the prints had First Amendment protection. More recently, the Major League Baseball Players Association licensed the rights to players' names, statistics and likenesses to Major League Baseball Advanced Media for use online with fantasy baseball for $5 million over five years. The licensee immediately started writing cease-and-desist letters to all other fantasy baseball operators. One operator, CBC Distribution and Marketing Inc., fought back, suing for a declaration that the unlicensed operation of such games does not constitute infringement. CBC maintains that baseball statistics and player names are in the public domain. In December, New England Patriots quarterback Tom Brady jumped on the bandwagon and sued Yahoo for using his image to promote its fantasy football game. As a result of these challenges changes may come, but until then art and parody are the only safe harbors. Team names, logos, and colors, meanwhile, are trademarks, or trade dress, owned by the respective teams. For the most part, they too are off-limits. Courts have held that team colors are protectable trademarks. All other NFL-related marks, including the NFL acronym, and all video reproduction rights, are trademarks of the National Football League and are managed by NFL Properties, Inc. NFL Properties, a corporation jointly owned by all the teams of the NFL, was created for the sole purpose of commercially exploiting NFL trademarks. Indeed, NFL Properties is the exclusive representative of the NFL and its teams for the licensing and protection of its name, logos, symbols and other identifying marks, and is responsible for protecting and enforcing the trademark rights. Thus, those seeking legitimate license deals must approach NFL Properties, and the illegitimate ones must face their wrath, as NFL Properties spearheads any enforcement effort on the team's behalf. |
||||||
|
|
||||||
