The Limits of Intellectual Property
posted by Gerard Magliocca
The recent dustup between the NFL and T-shirt producers in New Orleans over who owns the phrase “Who ‘Dat?” — a rallying cry for the Saints — illustrates an important limiting principle for intellectual property — adverse public relations. (Full Disclosure: I live in Indianapolis. Go Colts!)
The NFL initially said that its trademark registration of “Who Dat?” prohibited the sale of unauthorized merchandise with that phrase. This claim was rather broad given that the phrase probably was used in New Orleans long before the league obtained its registration in 1988. In any event, the cease-and-desist letters sent by the NFL led to public outrage and a subsequent “clarification” that the league was referring only to merchandise that could be confused with official apparel.
While the formal rights accorded to patents, copyrights, and trademarks are sweeping, in practice they cannot be enforced to their limits because that would alienate potential customers. The suits brought by the music studios against illegal downloads were largely abandoned for this reason. Of course, there are many situations where shining the light of publicity on litigation will not deter someone from enforcing IP rights. Nevertheless, counsel representing someone who is the target of such a suit — especially when the defendant is David fighting Goliath — would be well-advised to concentrate on their media strategy rather than on their legal one.
February 2, 2010 at 7:33 pm
Posted in: Intellectual Property
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Responses (3)
Ken Rhodes - February 2, 2010 at 8:39 pm
Professor Magliocca, in re your “full disclosure,” I wonder are you familiar with the NFL’s trademark case regarding your Colts? I think the league is on firmer ground in their current attempt to limit commercial infringement than they were in the Colts trademark case, but the U.S. Seventh Circuit Court of Appeals found, to my surprise and dismay, in favor of the league and against the new Baltimore team of the CFL.
It seems clear to me that the phrase “who dat” cannot be trademarked out of the context of the NFL New Orleans Saints. Out of that context, it is a phrase in the vernacular since the days of black-face minstrels and comedians. I heard it repeatedly on the Amos ‘n Andy radio show sixty years ago. On the other hand, the T-Shirts with the phrase also include the trademarked emblems of the team, which at least puts the NFL on pretty firm legal ground, even if a weak P.R. stance.
I felt the Colts case was much more subject to the alternate view. The name “Indianapolis Colts” was the trademarked name of the team. As you might recall, the suit was filed by the NFL to prevent the media in Baltimore from calling their new Canadian Football League team the “Colts.” They claimed that allowing a team in a different pro football league to call themselves the “Baltimore Colts” had the potential to confuse their patrons, and thus devalue their team in Indianapolis. The opinion handed down by the court seemed in its language to make fun of the NFL for such a contention. At the end of paragraph 7, the court quite openly questioned “whether there are many of these football illiterates.” Then they turned around and upheld that contention.
Here is a link to that decision:
http://openjurist.org/34/f3d/410/indianapolis-colts-inc-v-metropolitan-baltimore-football-club-limited-partnership-l
I’d be interested in your comments on that decision.
Gerard N. Magliocca - February 3, 2010 at 6:37 am
Hi Ken,
Yes, I teach the Colts case, as it is of local interest! Basically, the problem is that Posner knows nothing about sports. Thus, his opinion was a mess, especially given how strongly Baltimore feels about the loss of the Colts. (Even now, they still call us the “Baltimore Professional Football Team.”) The Seventh Circuit got that one wrong, though the opinion definitely paved the way for the NFL to reap the rewards of the “throwback” jersey market, which didn’t exist long ago.
Ken Rhodes - February 3, 2010 at 2:53 pm
In re the previous discussion of the Colts case, here are a couple of opinions of mine that bear on the current “Who dat” contention, as well. I think the Baltimore team presented their case very poorly, and I suspect that contributed to their failure to carry the day.
1. Extraneous and annoying trial points.
a. Why in the world did they bother to argue jurisdiction? They couldn’t possibly win that one, and it surely annoyed the court, which always has to be a bad idea.
b. What’s with that spurious, worthless, and basically dumb, analogy. “Brooklyn Dodger” restaurant? Give me a break! If that’s what you’re paying your attorneys to come up with in rebuttal to the NFL, you ought to ask for a refund.
2. Failure to pursue the underlying reason justifying the NFL suit.
In my opinion, the Baltimore team failed to argue the one point central to the case, instead wasting their arguments on “fluff.” The one key point was whether their use of the name “Colts” had the potential to diminish the value of the Indianapolis Colts in any measurable way. Would patrons be confused and watch the wrong game? Would customers be confused and buy the wrong merchandise? Would broadcasters be confused and report the wrong scores?
[Please bear with me as I run on at some length.]
In paragraph 11, Judge Posner wrote: “if everyone knows there is no contractual or institutional continuity, no pedigree or line of descent, linking the Baltimore-Indianapolis Colts and the new CFL team that wants to call itself the “Baltimore Colts” (or, grudgingly, the “Baltimore CFL Colts”), then there is no harm, at least no harm for which the Lanham Act provides a remedy, in the new Baltimore team’s appropriating the name “Baltimore Colts” to play under and sell merchandise under. If not everyone knows, there is harm.
Some people who might otherwise watch the Indianapolis Colts (or some other NFL team, for remember that the NFL, representing all the teams, is a coplaintiff) on television may watch the Baltimore CFL Colts instead, thinking they are the “real” Baltimore Colts, and the NFL will lose revenue. A few (doubtless very few) people who might otherwise buy tickets to an NFL game may buy tickets to a Baltimore CFL Colts game instead. Some people who might otherwise buy merchandise stamped with the name “Indianapolis Colts” or the name of some other NFL team may buy merchandise stamped “Baltimore CFL Colts,” thinking it a kin of the NFL’s Baltimore Colts in the glory days of Johnny Unitas rather than a newly formed team that plays Canadian football in a Canadian football league.
Confusion thus is possible, and may even have been desired; but is it likely? There is great variance in consumer competence, and it would be undesirable to impoverish the lexicon of trade names merely to protect the most gullible fringe of the consuming public. The Lanham Act does not cast the net of protection so wide. (snip … citations) The legal standard under the Act has been formulated variously, but the various formulations come down to whether it is likely that the challenged mark if permitted to be used by the defendant would cause the plaintiff to lose a substantial number of consumers.
In paragraph 12, he goes on to clarify the test of relevance: “Confusion thus is possible, and may even have been desired; but is it likely? There is great variance in consumer competence, and it would be undesirable to impoverish the lexicon of trade names merely to protect the most gullible fringe of the consuming public. The Lanham Act does not cast the net of protection so wide. (snip…citations) The legal standard under the Act has been formulated variously, but the various formulations come down to whether it is likely that the challenged mark if permitted to be used by the defendant would cause the plaintiff to lose a substantial number of consumers.”
“…would cause the plaintiff to lose a substantial number of consumers.” At this point, the Colts blew it. They should have been jumping up and down in the courtroom shouting that famous John McEnroe challenge: “Are you SERIOUS??? You CAN’T be serious!!!”
Figuratively, of course.
But that’s what they should have been arguing. That’s the linchpin of the whole case — the potential loss to the Indianapolis Colts. And that potential was mighty slim.
And that’s the point the T-shirt merchants should be arguing in the “Who dat” case. “Show me the loss to the New Orleans Saints, and I will cease and desist.” Otherwise, “Who dat” belonged to Freeman Gosden and Charles Correll, and anybody can use it so long as their heirs don’t object.
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