By David Oxenford, of Wilkinson Barker Knauer LLP
With the college football champion now decided, and the NFL league championships this coming weekend to decide this year’s Super Bowl teams, it’s that time when we post our warning about being careful with using the phrase “Super Bowl” in your promotions and commercials. Both copyright and trademark issues can arise at Super Bowl time. Trademark is usually the biggest concern, as there are always issues when broadcasters and advertisers don’t watch their commercials and promotions to avoid improper uses of a trademarked phrase like “Super Bowl.” But copyright issues can also arise when broadcasters or others make a commercial use of part of the game’s TV coverage, or hold commercial paid viewing parties where proper rights to display the telecast has not been obtained.
First the trademark issues that arise not only with the Super Bowl, but also with other big brand events like March Madness which will begin to be hyped soon after the Super Bowl. As we do every year when the Super Bowl and March Madness roll around, we remind broadcasters to scrutinize their advertising and promotions to avoid anything that appears to imply a tie-in with any of these events — especially where the trademark-protected name of the event is used in the ad or promotion itself. (See past articles here, here and here).
“Super Bowl” and “March Madness” are both trademarked terms, and violations of the trademarks have been vigorously prosecuted by the NFL and the NCAA, respectively. Sponsors of these events pay big bucks for the privilege of being associated with the events, and the organizations putting on the events rely on the money from these sponsors to fund their operations. So they go out of their way to protect their trademarks. What can and cannot be said about these marks? What are those limits?
First, it is the event name that is the biggest concern. So you’ll see promotions for electronics stores talking about buying your new big screen TV so that you can be ready for the “big game” or some similar formulation that avoid the use of the trademarked phrase. By not using the term the “Super Bowl” in the ad for the electronics store or TV manufacturer, you avoid the implication that the store chain or electronics company is somehow affiliated with the Super Bowl and the NFL through the purchase of sponsorships or otherwise. It is the implication of affiliation with the NFL brand that causes the trademark issue. Implying that the advertiser (or your own broadcast station in connection with a promotional event) is somehow affiliated with the big event can raise problems. So stations should be very careful using “Super Bowl,” “March Madness” or similar trademarked terms in advertising and promotions.
Every year, when we post these warnings, we get some skeptical comments suggesting that we are making more out of these concerns than legally warranted. Some have suggested that advertisers who say something like “buy a TV now so that you have it delivered and installed in time for the Super Bowl on February 1” might not have real legal issues, as such a use is merely stating a fact that the game is coming up, and does not in any way imply that the station or advertiser is affiliated with the game or that the NFL somehow endorses or is affiliated with the seller of the TV. While there may be ways to do that, how many stations or advertisers want to get into the business of parsing every ad to decide if the use of the phrase “Super Bowl” is permissible under trademark law or not, and how many want to have to go through the hassle of dealing with the NFL and their attorneys if they disagree with the station or advertiser’s assessment that a commercial use is permissible? That is why the “big game” formulation is so often used, as (unless you have an experienced trademark attorney on staff to review every ad) it is safest to simply avoid using “Super Bowl” or “March Madness” in your commercial announcements.
Does this stop your news people from reporting on the event, or your morning DJs from talking about who their favorite team is in the Super Bowl? No. These are newsworthy events that can be discussed on the air, just as your station can discuss the events that surround the new coach for your local NFL football franchise and use that franchise’s name without trademark worries.
There is a First Amendment right to be able to report on and discuss these events. It is the commercial exploitation of the trademarked phrases that raises the issues.
The copyright issues come in showing the Super Bowl, or really any other television program, in a location where a fee is charged to view the program, or at a business that exceed certain size limitations. This is a function of the right of copyright holders to limit the public performance of their works — the same right that was at issue in the Aereo decision (see our articles here and here), or is at issue in any of the music rights proceedings. While the Copyright Act exempts certain small establishments from the obligations to obtain public performance licenses, these businesses must meet certain well-defined criteria (e.g. no admission charge, only permitted to display over-the-air TV, a bar or restaurant must be under 3750 square feet of space, and less than four total TVs with no more than one per room and none bigger than 55 diagonal inches). These requirements are very specific, and if you don’t meet all of the requirements (there are others beyond the ones set out above), you need to buy a commercial license (licenses offered by most cable and satellite television providers) to show TV programs including the Super Bowl in your retail establishment, whether it be a store or a bar or restaurant. And don’t do a special viewing party with dozens of big screen TVs and an admission charge, as you are asking for trouble. We will write more about the public performance rights and the use of copyrighted material by commercial businesses in the near future, as these issues have recently been coming up for many broadcasters, and for local businesses who want to make available their local station’s broadcasts to entertain their customers.
So these big events are coming — enjoy them but don’t try to use their names to make a quick buck without legal caution!
This article appeared earlier this month in The Broadcast Blog.
