Sue-per Bowl Shuffle III: The Year In NFL-Related Intellectual Property Litigation

Two years ago, 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 intellectual property lawsuits that sports fans assume IP lawyers know about. This anxiety led me to put together the Sue-per Bowl Shuffle I and Sue-per Bowl Shuffle II: guides to trademark, copyright, patent and other intellectual property disputes concerning the NFL during 2014 and 2015 respectively.

We’ve got you covered again for 2016. NFL ratings may be down a bit, but intellectual property lawsuits related to the NFL most certainly are not, so there is a lot of ground to cover. As usual, we recommend that you laminate this article and put it next to the garlic-herb dip. If your guests have discussed the heck out of Deflategate but still can’t seem to get enough law-talk, just grab the article and start reading

The “Washington Football Team”

The WASHINGTON REDSKINS trademark continued to be the biggest IP football story in 2016. Native American groups have been complaining about the team’s name since the early 1970’s, and litigating it since at least the 1990’s. Amanda Blackhorse and other Native Americans argue that any registration of the name as a mark is invalid pursuant to Section 2(a) of the Lanham Act, which precludes registration of marks that “disparage . . . persons, living or dead.” Blackhorse convinced the TTAB and the Eastern District of Virginia that the team’s mark should be canceled and that Section 2(a) does not violate the First Amendment. Pro-Football, Inc. v. Blackhorse, 2015 U.S. Dist. LEXIS 90091 (E.D. Va. July 8, 2015). The “Washington football team,” as the squad has come to be called by those supporting a name change, appealed to the Fourth Circuit.

In the meantime, the similar matter of In re Tam (the case regarding whether the SLANTS trademark is disparaging) also has been winding its way through the federal courts. Before the Fourth Circuit could take up the WASHINGTON REDSKINS case, the Federal Circuit heard the SLANTS case and held that Section 2(a) did indeed violate the First Amendment. When the Supreme Court allowed a certiorari petition to review the SLANTS case, the Washington football team sought permission to skip its Fourth Circuit appeal and go straight to the Supreme Court so both cases could be decided together. The Supreme Court denied this request, so the Washington team had to sit on the sidelines during the January 18, 2017 oral argument in the SLANTS case.

A Gronking to Remember

In 2014, Lacey Noonan (a pseudonym for a guy named Greg McKenna) published A Gronking to Remember, an erotic fiction in which a young couple’s relationship is torn apart by a woman’s sexual obsession with New England Patriots tight end Rob Gronkowski and “the primal power of the Gronk spike.” The cover of the book featured a photograph of a young couple, with Gronkowski goofily looming in the background. The book claims to be only the first in a series of Gronk-inspired erotica, and somewhat charmingly advertises itself on thusly: “If you read two books about Rob Gronkowski this year, make the second one A Gronking to Remember.

However, the actual Ohio couple that was depicted on the cover didn’t find anything about the book charming, because they hadn’t given permission for the image (which was from their wedding) to be used.  The couple filed a complaint, alleging violation of their right of publicity, against the author and against the online retailers of the book, including In March, the Southern District of Ohio denied the author’s motion for judgment on the pleadings, rejecting the author’s argument that the use of the image was not commercial in nature. Meanwhile, the online retail defendants moved for summary judgment on other grounds, claiming that they were shielded from liability under Section 230 of the Communications Decency Act. The Court sidestepped the issue of Section 230 immunity by holding that the online retailers were not “publishers” for purposes of Ohio right of publicity law, and granted summary judgment on that basis. In July, the Court certified an appeal by plaintiffs to the Sixth Circuit Court of Appeals, which will allow the couple to determine the potential liability of the online retailers before proceeding with their claims against the author. Roe v. Amazon, 170 F. Supp. 3d 1028 (S.D. Ohio 2016).

“The Case Against Olivia Munn”

Perhaps the ugliest dispute this year between a team and its fans stems from the website, which was founded by a bunch of Green Bay Packers boosters in 2008. The site, which generates revenue through pop-up ads, offers news and commentary about the team and, over the years, has become well known among the “Packers family.” The site also includes a “Broads” section (later renamed “WAGs & Such”), which features photos of and commentary about the female companions of team members. These days, the “Broads” section appears to be primarily dedicated to Olivia Munn or, more specifically, obsessive hand-wringing over Olivia Munn’s alleged impact on the performance of her boyfriend, quarterback Aaron Rodgers (stories include: “The Dream is Over: The Case Against Olivia Munn” and “Have we mentioned that Olivia Munn is a horrible person?”).

In 2016, the Packers purportedly became fed up with the “Broads” section and, allegedly for that reason, initiated a UDRP arbitration to wrestle away the <> domain.  The arbitration panel rejected the website’s laches argument (i.e., that the Packers waited too long to file the complaint), because the UDRP does not recognize such a defense. However, the panel found that the site, although commercial, offered actual news and commentary about the team, and this demonstrated a legitimate interest in the <> domain, thus precluding a finding of bad faith. The Packer’s complaint was denied: Let the puerile scapegoating of Olivia Munn continue! Green Bay Packers, Inc., v. McMahon, Case No. D2016-1455 (WIPO Oct. 21, 2016).

Madden NFL

Robin Antonick, a computer programmer and former college football player, created the underlying source code for the first version of the EA Sports Madden NFL game, released in 1988 for the Apple II. However, when EA Sports moved on from Apple II and introduced new versions of the game for the Sega and Nintendo platforms, it hired someone else to write the code. In 2011, Antonick filed suit against EA Sports, claiming that these new codes were copied from his original, in violation of a contract and copyright law. However, by this time, Antonick’s original source code no longer existed. So, in order to prove his case, Antonick recreated for the jury visual representations of the Apple II version of the game and, using expert testimony, worked backwards to establish what his original source code contained and to argue that the later EA Sports codes were substantially similar. The jury returned a verdict for Antonick, but the District Court nixed the jury’s verdict and granted EA Sports’ motion for judgment as a matter of law. In November, the Ninth Circuit affirmed. According to the Court, a jury can only determine that two works are substantially similar in “total concept and feel” if it has both works in front of it, and that wasn’t the case here because the Apple II source code was never in evidence. Antonick is seeking en banc review from the Ninth Circuit. Antonick v. Electronic Arts, Inc., Case No. 14-15298  (9th Cir. 2016).

The Right of Publicity

Meanwhile, EA Sports wrapped up a dispute with Cleveland Browns legend Jim Brown. EA Sports had sought permission to use Brown’s name and image for the “historic teams” feature of the game. Brown declined and EA Sports didn’t use his name, but allegedly nevertheless used his likeness, specifically by incorporating into the game “a virtual player on the historic 1965 Cleveland Browns team with a profile of characteristics substantively identical to those of Brown,” including his “approximate height, weight, age, home state, skin color, handedness, as well as relative skill level,” such that fans would easily recognize the character as a virtual depiction of Brown. EA Sports’ motion to strike was denied last year, and this year Brown settled for a reported $600,000, a sum that includes attorneys’ fees. Brown v. Electronic Arts, Inc., Case No. BC520019 (Los Angeles Superior Court).

A similar case brought by a group of former players who found themselves on Madden NFL “historic teams,” including former Cincinnati Bengals running back Tony Davis, is still alive in federal court. Last year, the Ninth Circuit held that the First Amendment did not bar right of publicity claims over realistic portrayals of former players in the game. EA Sports’ petition for certiorari to the Supreme Court was denied, sending the parties back to the Northern District of California to conduct discovery and fight over the propriety of class certification. Davis v. Electronic Arts, Inc.,Case No. 3:10-cv-03328 (Northern District of California).

A different right of publicity lawsuit involving former NFL players looks like it has finally come to an end. In 2009, a group of 23 retired players — led by actor and former LA Rams defensive end Fred Dryer – brought a putative class action against NFL Films, which creates various documentaries and other programs about the NFL. The suit alleged that NFL Films’ use of footage of games in which the class members appeared constituted a violation of their publicity rights under the laws of various states. After most of the class members settled, Dryer and a few others proceeded as individuals, but the District of Minnesota allowed the league’s motion for summary judgment. In February 2016, the Eighth Circuit affirmed, agreeing with the District Court that the NFL’s use of the game footage was not commercial speech, and in addition was protected by the “newsworthiness” and “consent” defenses applicable to common law right of publicity claims. The lower court dismissed the case with prejudice in December. Dryer v. National Football League, 814 F. 3d 938 (8th Cir. 2016).

The 12th Man and Other Unlicensed Uses

Texas A&M University’s 12TH MAN trademark is ninety-five years old but continues to be the subject of IP disputes. The school began using the mark in 1922, in commemoration of a student who voluntarily suited up on short notice to fill in during a football game against Centre College. The slogan later came to be used by both the Indianapolis Colts and the Seattle Seahawks as a gushing tribute to their fan bases. In February 2016, Texas A&M settled a trademark infringement action against the Colts. Texas A&M University v. Indianapolis Colts, Inc., Case No. 4:15-cv-03331 (S.D. Tex.). Meanwhile, the Seahawks have been using the mark under a series of agreements with the school, the latest of which involved a $140,000 payment for limited use in the Pacific Northwest during a five-year term. The Seahawks are reportedly attempting to transition away from the 12th MAN mark and towards other marks it has registered for its own use, such as 12, THE 12S and WE ARE 12. In June, the Seahawks moved to protect these marks by opposing a Washington company’s application to register 12 DYNASTY for sporting events and beer. That application was abandoned. Football Northwest LLC v. Creative Concepts, Opposition No. 91228332 (Trademark Trial & App. Bd.).

After serving time in prison on drug-related crimes, former Dallas Cowboys running back Sherman Williams decided to turn his life in a positive direction and co-founded The Palmer Williams Group, a non-profit youth athletic organization in his hometown of Prichard, Alabama, which includes a football team called the “Prichard Cowboys.” Whether or not the Dallas Cowboys mind that a bunch of kids are using the same name for a youth football team, they weren’t too thrilled about Palmer Williams’ recent application to the USPTO. The application sought to register the words PRICHARD COWBOYS, along with a stylized star logo very similar to the NFL team’s well-known sigil, for t-shirts and other apparel. The Dallas Cowboys opposed the Prichard Cowboys’ application. No doubt finding themselves somewhat overmatched, the Palmer Williams Group abandoned its attempt to register the mark. NFL Properties LLC v. The Palmer Williams Group, Opposition No. 91229911 (Trademark Trial & App. Bd.).

Many of this year’s NFL-related IP disputes arose from the actions of opportunistic and/or slightly overzealous fans. The Carolina Panthers successfully opposed a fan’s application to register the mark I GOT THE PANTHERS FEVER PANTHERS FEVER BABY for t-shirts. Panthers Football LLC v. Cunningham, Opposition No. 91230043 (Trademark Trial & App. Bd.). Meanwhile, a group of Buffalo Bills fans, calling themselves the Bills Mafia, applied to register a stylized logo with the word MAFIA superimposed on a buffalo. According to the application, the group intended to use the mark to sell merchandise featuring the logo (such as footballs and helmets) and then donate the proceeds to charity. The team opposed, and the fan group has since withdrawn the application. Buffalo Bills, LLC v. Buffalo FAMbase, Inc., Opposition No. 91225627 (Trademark Trial & App. Bd.).

The Oakland Raiders made some headlines this year by applying to register the LAS VEGAS RAIDERS mark, fueling speculation about the team’s move to Sin City.  After another rumor had the team moving to San Antonio, a Raiders fan attempted to register the SAN ANTONIO RAIDERS mark, with the idea of using it as part of an attempt to block the team’s move. In June, the USPTO issued an office action refusing the mark on the ground that it suggests a false connection with the Raiders football team (and, of course, that suggestion was the whole point of the mark).  The fan has not responded to the office action within the allotted time, and the application appears headed towards abandonment. The Oakland Raiders themselves have not yet opposed this or other SAN ANTONIO RAIDERS applications by fans, but they have opposed an application to register a logo (the phrase ONE NATION BC in a black and silver shield featuring a Grim Reaper caricature) for the service “non-profit fan club for Oakland Raiders fans.” After the Raiders filed its opposition, the applicant discharged its attorney and failed to respond, resulting in the issuance of a default on the grounds of “apparent loss of interest in this proceeding.”  The Oakland Raiders v. Bre’haut, Opposition No. 91230143 (Trademark Trial & App. Bd.).  M

And speaking team moves, just before we went to press on this article, the San Diego Chargers announced that they are planning to move to Los Angeles, and will start the 2017-2018 season as the Los Angeles Chargers. This was not entirely shocking since the team had applied for the LA CHARGERS mark the prior year. However, that application is in some jeopardy at the moment, because the L.A. Gear apparel company has opposed the LA CHARGERS mark on the grounds of likely confusion with its L.A. GEAR, L.A. GIRL and other “L.A.” marks. The apparel company has not opposed the team’s application to register the more cumbersome LOS ANGELES CHARGERS mark, which is just as good but probably harder to fit on a hat. L.A. Gear, Inc. v. Chargers Football Company, LLC, Opposition 91232118 (Trademark Trial & App. Bd.).

The Fifty-Six Foot Photo Bomb and Other Sponsorship Disputes

As part of its preparations for a new stadium in the Downtown East neighborhood of Minneapolis, the Minnesota Vikings entered into agreements with its would-be neighbors to prevent them from building giant rooftop signs intended to “photo bomb” the area around the facility, thus diminishing the value of stadium sponsorships and naming rights. One of those neighbors, Wells Fargo, was in the process of building large office towers right next door, and ended up installing a fifty-six-foot wide rooftop sign consisting of its name in eight-foot long illuminated letters, clearly visible in aerial photographs during stadium events. The Vikings, claiming that the sign violated the agreement and detracted from the “broader holistic stadium and district” image, filed suit in the District of Minnesota. In June, the Court agreed with the team and ordered that the signs be removed. Minnesota Vikings Football Stadium, LLC v. Wells Fargo Bank, N.A., 2016 U.S. Dist. LEXIS 82430 (D. Minn. June 23, 2016).

Meanwhile, the Kellogg company hit on the idea of registering the mark OFFICIAL SNACK OF FOOTBALL in connection with potato chips and cereal bars. This caught the attention of the Frito-Lay company, which is the actual “Official Salty Snack of the NFL,” and spent quite a bit of money to obtain that sponsorship. Frito-Lay therefore opposed Kellogg’s application, arguing that the Kellogg mark is deceptively misdescriptive because it gives the false impression that Kellogg also is an NFL sponsor. The matter has been suspended while the parties are engaged in settlement negotiations. PepsiCo, Inc. v. Kellogg North America Company, Opposition No. 91226866 (Trademark Trial & App. Bd.).

Super Bowl ads also continue to be a hotbed for intellectual property wrangling. Pepsi’s 2016 Super Bowl ad began with the close up of a jukebox, followed by the transcendent Janelle Monae dancing from room to room, each room encompassing the music and style of a different decade. This advertisement prompted a copyright infringement lawsuit from advertising agency Betty, Inc., which alleged that the ad was derived from a written proposal it pitched to Pepsi the previous year. That proposal included a “human jukebox” and a “hero character” moving from location to location within the jukebox, each location featuring the “Joy of Pepsi” jingle in a different musical genre. Pepsi has moved to dismiss, arguing that the only similarities between the works are not protected by copyright, such as the idea of a character dancing through various musical genres, and the scénes á faire necessary to depict each genre. The motion is pending. Betty, Inc. v. PepsiCo, Inc., Case No. 7:16-cv-04215 (S.D.N.Y.).

Hey, that was my idea!

In 2007, Everette Silas and Sherri Littleton shopped around their idea and screenplay for a program called Off Season, which told the story of a morally bankrupt NFL quarterback who owned a nightclub at which other players indulged in all sorts of nasty and illegal activity. Silas and Littleton met with HBO and with a group of producers, one of who shared the materials with actors Mark Wahlberg and Dwayne Johnson.  Wahlberg and Johnson allegedly came close to signing an agreement to produce the show, but negotiations broke down over who would get the “Created By” credit.  Several years later, HBO introduced the pilot episode of Ballers, starring Johnson and produced by Wahlberg, which tells the story of a retired NFL linebacker now working as a financial manager for young players.  Silas and Littleton filed a copyright infringement action in the Central District of California against Johnson, Wahlberg and HBO, alleging that Ballers was derived from Off Season.  The defendants moved to dismiss, arguing that Ballers simply is not similar to Off Season. The District Court agreed with the defendants.  The two works were only similar in the most general ways. For example, Plaintiffs contended that both works “follow an African American football player who is essentially a business man who tried to monetize his friendships with other professional football players.” The Court found that, even if this was a protectable element (and not an unprotectable abstract idea), it was not an accurate characterization of the two works or their similarities. The Court came to similar conclusions with regard to the rest of Plaintiffs’ alleged similarities, including the assertions that both works included a player being interviewed by the press, another player dying, and the main character at some point bribing a police officer. The complaint was dismissed, and the Plaintiffs have appealed to the Ninth Circuit. Silas v. HBO, Inc., 2016 U.S. Dist. LEXIS 107944 (C.D. Cal. Aug. 17. 2016).

Attorney Nick Katsoris also alleges that his idea was stolen. Katsoris is the author of a series of children’s books featuring Loukoumi the Lamb, a substantial portion of the profits from which Katsoris donates to the Make-A-Wish foundation and other charities. In 2007, Katsoris launched a competition in which children were encouraged to draw a picture of the themselves with Loukoumi and complete the phrase: “I want to be a ________ because _____”.  Katsoris later pitched the idea of turning this contest into a television program to various entities, including Nickelodeon. Nickelodeon didn’t want to work with Katsoris, but in 2016 did launch the program “I wanna be…” (later renamed “All in”) starring and executive produced by Carolina Panthers quarterback Cam Newton. Katsoris filed a complaint in the Southern District of New York, alleging that the program infringes both his copyrights and trademarks. Motions to dismiss are pending. Katsoris v. WME IMG, LLC, Case No. 1:16-cv-00135 (S.D.N.Y.).

Hastily Borrowed Photographs

Last year, New York Jets quarterback Geno Smith suffered a broken jaw during the pre-season when he was walloped during a locker room altercation.  The following week, photographer Angel Chevrestt snapped some photos of Smith playing catch with a friend outside his apartment, and then licensed those photos to the New York Post, which printed them as the “exclusive” first photographs of Smith since his jaw surgery. CBS wanted in on the story, and reprinted the images without permission on a website and on screen during a game telecast. Chevrestt filed a copyright infringement complaint against CBS, alleging both infringement and improper removal of copyright management information (specifically, the gutter credit that had been included in the Post story). CBS initially indicated an intent to assert a fair use defense, but the matter settled this July. Chevrestt v. CBS Broadcasting, Inc., Case No. 1:16-cv-00523 (S.D.N.Y.).

Meanwhile, the Bleacher Report was so excited about the news that Patriots Tight End Rob Gronkowski was starring as a police officer in the upcoming film You Can’t Have It, that the popular sports website appears to have inadvertently published some production stills owned by BWP Media, a photographic services company and frequent copyright litigator. BWP Media filed a copyright infringement action in the Central District of California. The matter quickly settled, and Bleacher Report removed its article about the film. BWP Media USA v. Bleacher Report, Inc., Case No. 2:16-cv-00196 (C.D. Cal.).

Football Technology

FieldTurf USA (of Montreal) brought a patent infringement claim against rival UBU in the Northern District of Illinois. FieldTurf is the exclusive licensee of a patent for a particular synthetic turf product used by many NFL teams for their practice facilities. According to the complaint, the success of this product has led to many “me-too” infringers, including UBU’s “Speed Series” synthetic grass surface, which UBU has installed or is planning to install at facilities owned by the Arizona Cardinals, Chicago Bears and others. UBU fired back with counterclaims alleging invalidity and inequitable conduct.  Specifically, UBU alleges that the inventor of the FieldTurf patent lied to the patent examiner about the dates the product was first offered for sale.  The matter is pending. FieldTurf USA, Inc. v. UBU Sports, Inc., Case No. 1:16-cv-05572 (N.D. Ill.).

Meanwhile, Lynx Systems of Massachusetts has been pursuing claims in the District of Massachusetts for misappropriation of trade secrets. Lynx’s IsoLynx system, an alternative to GPS technology, involves ultra-wide band radiofrequency tags worn by players, which transmit tracking data back to a central location, thus providing analytics on things like how far and how fast a player traveled during a play or a game. Lynx alleges that, after the NFL expressed interest in the technology, California’s Zebra Enterprise Solutions tried to acquire Lynx. The complaint further alleged that, when the acquisition attempt failed, Zebra hatched a scheme to steal Lynx’s technology while pretending to partner with it under a non-disclosure agreement. Zebra went on to become the “official on-field player-tracking provider” to the NFL, allegedly using Lynx’s technology. This year, the Court denied Zebra’s motion to dismiss, holding that the claims were “plausible.” Lynx Sys. Developers, Inc. v. Zebra Enter. Solutions Corp., 2016 U.S. Dist. 37777 (D. Mass. March 23, 2016)

Helmet maker Xenith also found itself involved in a false advertising case after it created ads that proudly announced its helmet was the top performer (“#1”) in a recent NFL-sponsored lab test. Rival helmet maker Schutt Sports filed a complaint against Xenith in the Southern District of New York, alleging that Xenith’s claims to have been the top performer were false because there was no single top performer in the test; rather, both parties’ helmets were placed in a ten-member “top-performing group,” among which there was no statistically significant safety difference.  The case settled shortly after it was filed. Kranos I.P. Corporation v. Xenith LLC, Case No. 1:16-cv-00837 (S.D.N.Y.)

Rounding out the football technology category is the long-running dispute involving sports memorabilia collector Eric Inselberg, whose 2014 state court complaint alleged that the New York Giants and several team employees falsely implicated him in a fraudulent memorabilia scam. Inselberg also alleged that the organization misappropriated his “innovative portfolio of media-related patents,” which apparently included a system for allowing “wireless audience participation” at live events (i.e., transmitting ads to the cellphones of stadium attendees). Inselberg’s complaint included claims for unjust enrichment and misappropriation, but the Giants argued that these were really patent infringement claims which belonged in federal court, and attempted to remove the action. However, the District Court held that the state law claims were not preempted and granted Inselberg’s motion to remand the case back to state court. Inselberg asked for attorneys’ fees in connection with the motion to remand, but the District Court refused. Earlier this year, the Third Circuit affirmed the denial of fees. Inselberg v. New York Football Giants, Inc., 2016 U.S. App. LEXIS 18156 (3d Cir. 2016).

Stop Wining

Winemaking has become a popular avocation for many celebrities, including professional athletes, and this year two successful former NFL vintners found themselves involved in trademark disputes. In May, the Salvatore Ferragamo fashion company filed a trademark infringement action in the Southern District of New York against former NFL quarterback Vince Ferragamo, who opened up the Ferragamo Winery in about 2010. The fashion company takes issue with the winery’s prominent use of the same name, especially since the fashion company actually registered the FERRAGAMO for wine back in 2006. A pre-motion letter filed by the winery’s attorneys alleged that, although the fashion company may have registered the mark for wine, it has never sold wine in the United States and has not demonstrated an intent to do so. The letter also argued that there was no personal jurisdiction in New York because the only sale made by the defendant into the jurisdiction was to the plaintiff, who allegedly purchased a bottle just to set up the lawsuit. The docket indicates that the parties have been engaged in settlement discussions. Ferragamo S.p.A. v. Ferragamo, Case No. 1:16-cv-03313 (S.D.N.Y.).

Meanwhile, former Philadelphia Eagles safety Terry Hoage and his Terry Hoage Vineyards is battling Chilean winery Viña Undurraga over the TH mark for wine. Last year, the TTAB canceled Viña Undurraga’s TH registration on the grounds that Hoage had priority rights. This year, Viña Undurraga sought to undo that decision by filing an action in the Central District of California. Hoage’s motion to dismiss was denied, and jury trial has been scheduled for June 2017. Viña Undurraga S.A. v. Serine Cannonau Vineyard, Inc., 2016 U.S. Dist. LEXIS 82141 (C.D. Cal. June 2, 2016)

Take it From Me

Two football legends have found themselves involved in recent false advertising lawsuits over dietary supplements. In one case, a group of consumers filed a putative class action lawsuit in the Northern District of California, asserting false advertising claims against the makers of Joint Juice, which allegedly was promoted as a remedy for joint pain and stiffness. Former San Francisco 49ers quarterback Joe Montana acts as a spokesperson for the product, and is featured in television advertisements in which he proclaims that, ever since his doctor told him about Joint Juice, he now drinks a botte every day because “the glucosamine and chondroitin lubricates and cushions the cartilage in my joints, so I can move more easily all day long.” The class action plaintiffs alleged that this and other advertising messages were false, because the product does not contain sufficient amounts of those ingredients to have any positive effect on joint health. In April 2016, the Court denied the defendant’s motion for summary judgment, holding that there were genuine disputed issues as to the state of the scientific evidence regarding these health claims. Mullins v. Premier Nutrition Corp., 178 F. Supp. 3d 867 (N.D. Cal. 2016).

In a twist on the typical class action claim, a group of plaintiffs in the Eastern District of California decided to sue not just the manufacturer of a dietary supplement, but the celebrity endorser as well, in this case former Washington quarterback Joe Theismann. According to the complaint, Theismann endorsed Super Beta Prostate, which is marketed as a treatment for the symptoms of benign prostate hyperplasia, but is actually an “elaborate hoax” perpetrated by a “convicted felon” passing himself off as a “research chemist.” In 2014, the Court dismissed the matter because the plaintiffs had all received refunds and therefore had no standing. This year, the Ninth Circuit reinstated the claims as to one of the plaintiffs, because he had received his refund after joining the lawsuit. The Court made it clear, however, that no claims by any plaintiffs were appropriate against Theismann, who was merely a spokesperson and thus not an appropriate defendant under California false advertising law. Luman v. Theismann, 647 Fed. Appx. 804 (9th Cir. 2016).

Valuable Nicknames

Retired San Diego Chargers Linebacker Shawne Merriman, and his company, Lights Out Holdings, are becoming frequent trademark litigators in the Southern District of California. LIGHTS OUT was Merriman’ nickname as a player, and now it’s his registered trademark for clothing. Last year, we reported on Merriman’s suit against Nike, which was using the same phrase to market an all-black line of apparel. Lights Out Holdings, LLC. v. Nike, Inc., Case No. 3:14-cv-00872 (S.D. Cal.). That case settled in February on undisclosed terms, but then Merriman’s company filed two more trademark infringement complaints in 2016. The first was against the Vermont Teddy Bear Company, which was selling “Lights Out” pajamas on Lights Out Holdings, LLC. v. The Vermont Teddy Bear Company, Inc., Case No. 3:14-cv-00813 (S.D. Cal.). That case settled quickly, and then Merriman filed another case against a Maryland company called “Lights Out Apparel,” which had just opened a new website specializing in clothing related to billiards, and had recently inked an endorsement deal with teenage billiards phenome Chezka Centeno of the Philippines.  That case is still pending, although the Lights Out Apparel website had already been taken down when we checked. Lights Out Holdings, LLC. v. Lights Out Apparel, LLC, Case No. 3:16-cv-02195 (S.D. Cal.)

When recently retired Seattle Seahawk Marshawn Lynch sought to follow in Merriman’s merchandising footsteps by filing an application to register his nickname, BEAST MODE, as a trademark for sports drinks, it was only a matter of time before the litigious Monster Energy Company, owner of the UNLEASH THE BEAST mark for sports drinks, stepped in and filed an opposition to the application. Lynch initially fought back with an answer to the opposition, but in March the parties settled, and Lynch withdrew his application. Monster has not attacked Lynch’s applications to register BEAST MODE as a mark for other items, including headphones, apparel, sunglasses and watches. Lynch also tried to register BEAST MODE as a service mark for “conducting and participating in football games,” but that application was rejected in light of the already-registered BEASTMODE USA mark for a fitness company in Wyoming. Monster Energy Company v. Lynch, Opposition No. 91220172 (Trademark Trial & App. Bd.).

The nickname “Orange Crush” was popularized in the 1970’s and 1980’s by sports writer Woody Paige and others to describe the Denver Broncos’ stalwart defense. By contrast, Orange Crush soda has been around since about 1916 and is now owned by Dr. Pepper, which holds several marks related to the beverage, the first of which was registered in 1924. Last year, the Broncos finally got around to applying to register ORANGE CRUSH for sports events and apparel. Dr. Pepper opposed, alleging confusion with its long history of commercial use of the same mark. This history of commercial use by Dr. Pepper and its predecessors in interest apparently included a marketing campaign in the 1970’s in which several Broncos appeared on official Orange Crush soda cans. In August, the Broncos abandoned the application. Dr. Pepper/Seven Up, Inc. v. PDB Sports, Ltd., Opposition No. 91228229 (Trademark Trial & App. Bd.).

Since retiring from the NFL in 2007, former New Orleans Saints offensive lineman LeCharles Bentley has been offering athletic training services under the O-LINE brand in association with an “LB” logo. In January 2016, Bentley brought a trademark infringement action against the maker of The Biggest Loser reality show, arguing that the program’s logo infringed his LB logo (both depict the letter “B,” the lower left corner of which also serves as an “L”). In September, the Court dismissed Bentley’s trademark dilution claim because he had failed to allege sufficient facts demonstrating that his mark was famous. A separate motion to dismiss the remaining claims, including for trademark infringement, is pending. Bentley v. NBC Universal, LLC (C.D. Cal. Sept. 28, 2016).

Psst . . . Wanna Buy a Super Bowl Ticket?

Each year, “large-scale, professional counterfeiters” of tickets and merchandise descend on the Super Bowl to make some extra cash. Days before last year’s Super Bowl L in Santa Clara, California, the NFL filed a preemptive trademark lawsuit against “Does 1 through 100,” unnamed counterfeiters the NFL suspected were on their way to the city to sell fake stuff. On February 2, 2016, days before the event, the Northern District of California issued a temporary restraining order against the manufacture or sale of counterfeit items, and further authorized the Department of Homeland Security to seize any offending goods it located. The NFL’s private investigators located 82 instances of counterfeit apparel and tickets at the game itself and, after the event was over, the NFL amended the complaint to add the names of the actual alleged counterfeiters who had been caught. The named defendants defaulted and, in May, the Court granted the NFL’s motion for a default judgment. The Court’s final order allows the NFL to dispose of the offending items, including by donating any counterfeit apparel to international charities. NFL Properties, LLC v. Humphries, 2016 U.S. Dist. LEXIS 61273 (N.D. Cal. May 6, 2016).

Previous Sue-per Bowl Shuffle articles are available at the links below:

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