Trademark law is a nuanced discipline. Word choice matters greatly. The use of a particular word, a certain combination of words, the exact construction of a phrase, and/or the precise arrangement of particular terms – each of these can affect the validity and enforceability of a trademark. It is important.
Last week, I was in the middle of a trademark infringement trial in federal court. Opposing counsel colloquially referred to official certificates of registration as “trademarks” and the underlying applications as “trademark applications.” Each time I had to stand up and object. For one simple, yet legally necessary reason:
There is no such thing as a “trademark application.”
In January 2015, in Davis v. Electronic Arts Inc., the United States Court of Appeals for the Ninth Circuit held that the makers of the extremely popular Madden NFL video game series could not overcome former players’ claims for violation of publicity rights by claiming First Amendment protections. Electronic Arts Inc., the Defendant and the maker of the game, eventually appealed to the United States Supreme Court on grounds that they are essentially being penalized for making a game that is “too realistic” and life-like. An emboldened use of the “we are just too good at our jobs” defense, perhaps?
On Monday, March 21, 2016, without any further commentary, the Supreme Court denied EA Sports’ petition to hear the appeal. Procedurally, this is called a denial of certiorari, and it means that the Ninth Circuit’s verdict remains the final judicial determination on the issues presented. Colloquially speaking, and while maintaining the proper sports metaphors, this means the Supreme Court punted.
But what really is the issue here? Where do publicity rights end and the First Amendment begins? Why does EA Sports contend that it has no obligation to pay retired professional athletes for the use of their images and likeness rights?
On Thursday, November 12, 2015, Texas A&M University filed suit against the NFL’s Indianapolis Colts alleging infringement and dilution of its various “12th Man” trademark rights. If this sounds familiar or redundant, remember that A&M previously sued the NFL’s Seattle Seahawks for unauthorized use of the same trademarks nearly a decade ago. A&M eventually settled that matter with the Seahawks, with the NFL franchise agreeing to pay a license fee to A&M. The actual terms of that license and settlement were never made public and Seattle continues to use variants of the “12th Man” name today.