By: Mitchell Stabbe, Wilkinson Barker Knauer, LLP via the Broadcast Law Blog
For the last five years, I have posted guidelines about engaging in or accepting advertising or promotions that directly or indirectly reference the Super Bowl without a license from the NFL. As hard as it may be to believe, the NFL has almost made its way this season to another championship game, so here is an updated version of my prior posts.
The Super Bowl means big bucks. It is estimated that each of the three television networks that broadcasts the Super Bowl pays the NFL over $1 billion per year for the right to broadcast NFL games through 2022, including the right to broadcast the big game on a rotating basis once every three years. The investment seems to pay off for the networks. Reportedly, it cost $5.6 M for a 30-second spot during last year’s Super Bowl broadcast and national advertising revenue totaled $448.7 M, not counting income from ads during any pre-game or post-game programming. (In addition to the sums paid to have their commercials aired, some advertisers spend millions of dollars to produce an ad.) In addition, the NFL receives hundreds of millions of dollars from licensing the use of the SUPER BOWL trademark and logo.
Given the value of the Super Bowl franchise, it is not surprising that the NFL is extremely aggressive in protecting its golden goose from anything it views as unauthorized efforts to trade off the goodwill associated with the mark or the game. Accordingly, with the coin toss almost upon us, advertisers should take special care before publishing or engaging in advertising or other promotional activities that refer to the Super Bowl. Broadcasters and news publishers have greater latitude than other businesses, but still need to be wary of engaging in activities that the NFL may view as trademark or copyright infringement. (These risks also apply to other named sporting events, for example, making use of the terms “Final Four” or “March Madness” in connection with the annual NCAA Basketball Tournament.)
Simply put, the NFL views any commercial activity that uses or refers to the “Super Bowl” to draw attention as a violation of its trademark rights. Many of the activities challenged by the league undoubtedly deserve to be penalized. However, the NFL’s rule book defines trademark violations very broadly. If anyone were willing to throw the red flag to challenge the league’s position, a review from the booth might reverse some of those calls, but seeking review of the NFL’s play may be risky and would almost certainly be time-consuming and expensive.
Advertising that Merely Refers to the Super Bowl. Under trademark law, use of a third party’s trademark is considered to be permissible “nominative fair use” if the use does not suggest a relationship between the advertiser and the trademark owner, and the trademarked goods or services cannot be readily identified without using the trademark. Nevertheless, the NFL objects to any unlicensed third-party advertising that refers to the Super Bowl.® For example, the use in advertising of taglines such as “Stock Up for the Super Bowl” for beer or snacks or “Get the Best View of the Super Bowl” for big-screen TVs has routinely led to the prompt issuance of cease-and-desist letters. It is important to understand that the NFL may make a claim directly against the advertiser, as well as against a broadcaster or other news organization that publishes the ad. (Whether a claim against the broadcaster could succeed will be the subject of a future blog post.) As a result, many broadcasters may not want to accept advertising that specifically refers to the Super Bowl unless the advertiser first shows that it has NFL approval.
Other Marks. To overcome these problems, many advertisers now replace any reference to the “Super Bowl” with “The Big Game.” When advertisers commonly began using this tactic, NFL Properties tried to register THE BIG GAME as a trademark with the United States Patent and Trademark Office. Over twenty different parties threatened to oppose the application and the NFL voluntarily abandoned the application. We are not aware of any reported claims by the NFL against advertisers based upon the use of “The Big Game.” (In addition to “Super Bowl®,” the NFL has federal trademark protection for “Super Sunday®,” “Gameday®,” “Back to Football®,” “1st and Goal®” and over a hundred other marks.)
Below are some examples of other activities that create a significant risk of an objection by the NFL:
“Super Bowl” Events or Parties. A bar or restaurant that has a public performance license to show television programs on its premises has the right to show the Super Bowl broadcast to its patrons, but if it uses the words “Super Bowl” in its advertising to attract customers, the league will object. Similarly, unless it is licensed by the NFL, a company should not be listed as the sponsor of a “Super Bowl” event or party. (And, under copyright law, a fee should not be charged to watch the game.)
Famously, in 2007, the NFL sent a cease and desist letter to an Indiana church group that had used “Super Bowl” to describe a viewing party for the game and would charge $3.00 per person to cover the cost of snacks. Possibly as a result of the adverse publicity, the league now says that it will not object to religious organizations that refer to their events as Super Bowl parties, provided that no NFL logos are used. Moreover, the NFL has said that it will not object to a church viewing party for the Super Bowl if it is held in the church’s usual place of worship and no fee is charged for attending. Churches can, however, request donations to help cover the cost of the event.
Sweepstakes or Giveaways: Naming. Promoters should avoid incorporating “Super Bowl” in the name of any sweepstakes or giveaway or as a prominent feature of their advertising for the sweepstakes or giveaway. It will lead to a swift cease-and-desist demand based on the argument that consumers are likely to believe the sweepstakes or giveaway is sponsored by the NFL. Although that argument is not ironclad, the NFL is sponsoring its own “NFL Super Bowl LV Fan Campaign Contest,” which would provide another basis for claiming trademark infringement, namely, that the public is likely to believe that the unauthorized contest is associated with the NFL’s contest.
Sweepstakes or Giveaways: Prizes. The NFL takes the position that game tickets cannot be offered as a prize or award. In most situations, the “first sale” doctrine under trademark law provides that the buyer of goods may do whatever it wants with its purchase, including reselling it or giving it away. Faced with this argument some years ago, the NFL (as well as the other sports leagues) now includes language on the back of tickets (or with electronic tickets), prohibiting their use as part of a sweepstakes, giveaway or other promotion. Tickets to an event are legally considered a license to attend the event, rather than a good that is sold, and therefore entry can be conditioned on any basis that does not violate public policy. Although it can be argued that the purchaser of a ticket will not even see this language until after the purchase is completed and therefore the terms have not been agreed to and are not binding, this argument has not precluded sports leagues from bringing claims when broadcasters have tried to engage in unauthorized giveaways with tickets bought on the open market as prizes. Given the actions we have seen taken by sports leagues in the past, we would caution against contests involving NFL game ticket giveaways unless authorized by the NFL. (This caution is not limited to NFL games. Other sports leagues have incorporated similar language on the back of their tickets as well.)
Names of Programs. Even if a broadcaster is not with the network that carries the Super Bowl (this year, NBC), it may want to produce a television program about the game. In years past, the NFL or a local team has challenged local broadcasters that include the name of a team in a weekly program dedicated to discussions about the team. Thus, it would not be surprising if the NFL similarly objects to naming a pre-Super Bowl television program about the game if the program incorporates “Super Bowl” in the title. Indeed, several years ago, the NFL opposed an application to register “Play Everyday Like It’s Super Bowl Sunday” for a series of books in the field of management, and the application was abandoned. (As discussed above, there is a strong argument that such naming constitutes permissible “nominative fair use,” but it can be expensive to take on a major sports league.)
Special Advertising. Newspapers and online news outlets frequently have a special “section” that is devoted to coverage of the Super Bowl. The organization should be able to solicit advertising to accompany its stories, just as it does for any of its news reporting. It would be risky, however, to have an advertiser “sponsor” the coverage itself, particularly if “Super Bowl” is part of the name of the section or used in the special advertising.
Disclaimers. A disclaimer such as “Not an Official Sponsor of the Super Bowl” or “This Advertisement (or Event) Has Not Been Licensed or Authorized by the NFL” will not ward off a cease-and-desist letter. Moreover, in the event of litigation, it is unlikely to provide a defense to a claim of infringement. And, even if the defense were ultimately successful, the defendant would still incur significant attorneys’ fees and other litigation expenses.
Masked Advertisements. A broadcaster who accepts an advertisement from a company wishing good luck to the players or congratulating the winning team, but not expressly promoting the advertiser’s goods or services, still runs a substantial risk. In recent years, some businesses that have run “congratulatory” pieces in honor of some achievement by an individual athlete have been sued. In one case, a jury rejected the defense that the business was engaged in protected non-commercial speech and awarded $8.9 million in damages. Although this verdict was based on a violation of the athlete’s right of publicity, it would not be surprising to see a similar claim made by a sports league based on its trademark rights in the name of an event or a team.
Don’t Get (Too) Cute. With tongue planted firmly in cheek, Stephen Colbert has poked fun at the NFL’s enforcement efforts by encouraging advertisers to use “Superb Owl” instead of “Super Bowl.” See here. Last year, an Arizona company tried to register “Superb Owl” as a mark for running events.” It was presumably no coincidence that the Superb Owl race was scheduled to take place in Phoenix, where the Super Bowl was being held, on the same day as the game. In addition, the company used the mark with slogans such as “Start Superb Owl Sunday Morning right with a football-themed tailgate party.” It should have come as no surprise that the NFL opposed the application, which was ultimately withdrawn. Other marks opposed by the NFL include “Superbowling Spectacular” for charitable bowling events, “Souper Bowl” for soups and “Supa Bowl” (“Supa” means “large” or “big” in Pidgin English) for restaurant services. None became registered marks.
So, How Close Is Too Close? On the other hand, the NFL took no steps to oppose an application to register “Superb Owl” for an online column that promotes entrepreneurs. In addition, it has twice taken steps to preserve its right to oppose applications to register “Super Brawl” as a mark for boxing or wrestling matches, but ultimately backed off. It has also considered opposing an application to register “Phil’s Grill Burger Bowl” on a design that resembles the Super Bowl trophy, but with a burger on top, rather than a football. See here and here. In that case, it could have been reasonably argued that the applicant was trying to get customers to make an association between the restaurant and the Big Game. On the other hand, it could also be argued that the trophy design was a parody. Ultimately, the league took a pass and the mark is now registered. So, where is the invisible line that advertisers should not cross? Probably somewhere near the ten-yard line. (In other words, there is no way to know.)
Risk Analysis: The policy underlying protection of trademarks is to protect consumers from deception and prevent customer confusion. That said, is there a meaningful difference between, for example, an ad that invites consumers to “Stock up for the Super Bowl” as opposed to one that says, “Stock up for the Big Game”? Do they convey different messages? Is one more likely than the other to confuse consumers into believing that the product being advertised is sponsored by, endorsed by, or otherwise affiliated with the NFL? Probably not.
So, why is the NFL so aggressive? The answer almost certainly lies in the fact that “official sponsors” of the Super Bowl and other trademark licensees would not be willing to pony up the huge sums they pay if a competitor could freely use the “Super Bowl” trademark to promote itself without also paying a license fee. This risk is particularly high for those who have been promised exclusivity in a given category and the right to promote themselves as “The Official _____ of the Super Bowl.” Thus, the NFL has a huge incentive to prevent any advertising that may cross the line. Aggressive enforcement also has a significant deterrent effect on businesses who might be tempted to engage in Super Bowl-related advertising or promotions.
These limitations apply to commercial uses of the NFL’s marks. To be clear, however, news organizations, however, have the right to use “Super Bowl” or other NFL marks in reporting on the game. (If they could not, viewers, listeners or readers might find themselves very confused!) That said, a news organization that wants press credentials for the game faces an additional risk if it accepts what the league considers to be unauthorized Super Bowl-related advertising. Although news organizations are not required to have permission to report on an event, as a practical matter, their ability to do so from inside the stadium will be hampered by a refusal by the NFL to issue press credentials. (And, yes, we have seen professional sports leagues make such a threat.)
For these reasons, for most broadcasters and other news organizations, the better course is to be aware of and avoid any possible pitfalls, rather than run the risk of litigation.