Ian Block is an attorney with Neal Gerber Eisenberg whose practice includes intellectual property and advertising-related matters. He advises clients on trademark use, brand protection, and the legal risks associated with marketing around major sporting events. With experience analyzing how organizations enforce their rights in high-profile competitions, Block offers insight into the evolving intersection of advertising, sponsorship, and IP law.
In this interview, he discusses how the NCAA approaches trademark enforcement during March Madness and what brands should consider when promoting around the tournament.
Question: What does the NCAA determine the “unaffiliated” or “unauthorized” use of their logo or name, and why does it matter?
Answer: I don’t represent the NCAA, so my understanding is secondhand as an outside observer. Whenever major sports competitions come up – be it the Olympics, the World Cup, or the NCAA basketball tournament – the operators of these highly publicized and extensively marketed events tend to make a big push to enforce the trademarks and other intellectual property they claim to own to prevent unauthorized uses by third parties. Typically, these operators determine uses to be unaffiliated or unauthorized if the operators do not have a formal agreement, arrangement, or partnership with an entity using the mark. These operators tend to take a very expansive approach when asserting their rights, often disregarding potential defenses such as nominative fair use. The operators expect that the recipients of their cease-and-desist letters will acquiesce to their demands to stop using the sporting events’ marks, rather than face the cost and distraction of defending potential litigation.
Of course, this calculus does not always pan out for the operators, and some businesses refuse to comply with the operators’ demands. This is how lawsuits like the NCAA’s action against Draft Kings’ use of the March Madness mark arise. Unlike aggressive brand owners, courts will consider advertiser-defendants’ defenses and the market conditions, which increases the likelihood that such “unauthorized” uses can be deemed not to infringe. The operators walk a fine line between strenuously enforcing their brands and backing themselves into creating bad precedent if a court rules against them.
Q: What is the NCAA’s current enforcement strategies for protecting their intellectual property?
A: See the prior answer.
But also, the operators of major sports competitions typically work with a law firm and other vendors to identify uses of their brands (often online) and then send cease-and-desist letters. These letters allege infringement from unauthorized use of the operators’ trademarks and other IP – which they’ve often protected through extensive registrations – and demand that the recipients of these letters stop using the operators’ brands immediately. Enhanced online search tools and AI now make it much easier to identify online uses in far corners of the internet that might have otherwise gone unnoticed.
Q: How can brands prevent legal issues while also leveraging the tournament for their marketing and advertising?
A: To help minimize the risk of challenge from the NCAA, FIFA, the Olympic Committee, and operators of other major sports competitions, advertisers should try to minimize their use of the operators’ brands to the extent reasonably possible. Nominative fair use is a powerful defense against trademark infringement claims, but it requires that an adviser use another’s mark to the least extent possible to communicate the message. A key is to avoid making any affirmative representations or suggestions of affiliation, approval, or endorsement by the competition operators that does not exist. Disclaimers noting that an advertiser is not affiliated with the operators can be helpful, but they are not a silver bullet, particularly if they are too small or far from the references to the operators’ marks.
Also, except in instances of egregious infringement or counterfeiting, the operators typically will give advertisers an opportunity to “clean up” their materials by removing the operators’ marks or other IP before initiating formal legal action.
