What's Happening

Here’s what’s happening at the intersection of sports, marketing, and entertainment law as we leave Summer.

MVPs and Their Trademarks

It’s been a busy few weeks for sports MVPs and trademark.

First, in a move that shocked NY Mets fans, Tom Brady’s company TEB Capital Management filed trademark applications for TOM TERRIFIC for apparel, trading cards, posters, and photographs, a nickname Mets and other baseball fans have long associated with pitching great Tom Seaver. There was enough concern that a Letter of Protest – a tool used by interested third parties to inform the US Patent and Trademark Office (“USPTO”) of a potential conflict – was filed by a third party (likely Seaver’s representatives). The USPTO recently agreed – initially refusing Brady’s applications on the grounds of false connection and the use of the name of a living individual. Brady has six months from the date of the refusal to respond to the USPTO.

Then, Giannis Antetokounmpo, known as the “Greek Freak” and who has a trademark registration for that nickname, sued an individual using GREEK FREAK as the name of a clothing collection. Enforcing his rights, Antetokounmpo brought trademark infringement, trademark dilution, and several other related claims. The parties reached a settlement and the case was dismissed.

Finally, LeBron James’ intellectual property holding company recently filed an application to register TACO TUESDAY for various advertising and entertainment related services – to the collective question from sports talk radio of “Can he do that?” Indeed, as long as a trademark can serve as a distinctive source identifier for particular goods or services, trademark protection can be obtained. This application joins a surprisingly long list of pending applications and current registrations for the TACO TUESDAY phrase – in addition to the somewhat ubiquitous use of the phrase by restaurants.

As these instances show, it is important for athletes to protect their current or planned intellectual property, while being ever mindful of public reaction.

Fuel for Thought

The Seventh Circuit handed PepsiCo’s Gatorade brand a victory in a trademark case that pitted a nutritional supplement company against the sports nutrition giant. The court affirmed a lower court ruling that the use of “The Sports Fuel Company” was descriptive fair use. SportFuel, Inc., which owns trademark registrations for SPORTFUEL for dietary supplements and vitamin enhanced sports drinks, sued PepsiCo. and its Gatorade brand for trademark infringement and related claims following the use of the slogan “Gatorade The Sports Fuel Company.” Reviewing the required elements of the descriptive fair use test, the Seventh Circuit found that Gatorade was not using “sports fuel” as a trademark, used the phrase descriptively for its goods, and used the phrase in good faith.

Beyond the Term

Olympic snowboarding star Shaun White recently sued former sponsors Oakley and Luxottica (the owner of retailer Sunglass Hut) for using his name and image for marketing purposes after the expiration of his sponsorship agreement. In his suit, he alleges that the sponsorship and licensing deal he had with the brands ended on December 31, 2017, but the brands continued to use marketing materials featuring his name and image – including in the lead-up to, and during, the 2018 Winter Olympics, where White won a third gold medal in snowboarding. Whether or not the use of the marketing materials incorporating his name and image beyond the term of the agreement was purposeful, this suit is a good reminder that brands should take care to remove marketing materials featuring endorsers and other talent once the term of the sponsorship agreements ends; otherwise, unless there are specific provisions allowing post-term use (including leaving up materials previously placed during the term), a brand is at risk of a lawsuit such as White’s.

Noted and Quoted

Loot Boxes at the FTC

On August 7th, Sean F. Kane participated in the Federal Trade Commission’s public workshop related to video games: “Inside the Game: Unlocking the Consumer Issues Surrounding Loot Boxes.” He was part of a group of speakers which included industry representatives, consumer advocates, academics, and others that the FTC invited to talk about the marketing of loot boxes and other in-game purchases.

Betting, Beer, and CBD

Christopher Chase published "Betting, beer and CBD – how U.S. leagues & teams are approaching new non-traditional categories for sports sponsorships" with LawInSport, wherein he addresses new and expanded sponsorship categories for non-traditional products: namely, sports betting, beer marketing, and cannabidiol (CBD). In the article, he examines the historical reluctance to accept sponsorships in these three product categories, recent deals in each of these three product categories, and considerations for best practices going forward.

College Athletics: Student Athlete Compensation and Representation

A bill is winding its way through the California legislature that would prohibit public and private colleges and universities in California from revoking scholarships (for those who actually receive scholarships) or eligibility from student-athletes who monetize their name, image, and likeness. Mma Afoaku has the details here.

Live! Tonight! Sold Out! – Lessons from FTC’s Online Event Tickets Workshop

The FTC recently held a workshop exploring consumer protection issues and deceptive marketing practices in the online event ticketing industry, which featured representatives of the FTC, the NAD, the New York Attorney General’s office, trade associations, venue managers and online ticketing platforms such as Ticketmaster, Live Nation, SeatGeek, StubHub and Eventbrite. Matthew Vittone provides a roundup here.

Want to Learn More?

Christopher Chase speaks at LawInSport’s annual conference “Understanding the Rules of the Game” on September 12 where he appears on the panel “Marketing: creating and managing data and sports marketing agreements.”

Kimberly Maynard participates in a panel discussion on the “Licensing: Monetizing the Value of Your IP Assets” during the Managing Intellectual Property Women’s Leadership Forum in Chicago on September 12.

Sean F. Kane participates in a panel discussion on “Consumer and Youth Protection in Games” at the Video Game Law Conference Tokyo 2019 on September 13 and speaks at Goldman Sachs’ “The Future of Esports and Video Games Conference” on September 24.