by Paul Alan Levy
Another example of trademark law getting too big for its britches is provided by a lawsuit by Major League Soccer and “Soccer United Marketing”, MLS’s affiliated marketing arm. They claim that Black & Decker has infringed the trademarks of MLS and other soccer teams playing in games that MLS and SUM were promoting. These games involved Mexican teams (and thus were of interest to Mexican-American consumers to which Black and Decker wanted to sell its tools). Black and Decker was not overtly claiming any endorsement by the Mexican teams in question, but was offering tickets and soccer jerseys that Black and Decker had purchased in order to encourage fans to buy its DeWalt line of power tools, and was setting up its logo-laden tents and placing its logo-laden trucks in the stadium parking lots. Apparently, MLS and the Mexican National Team already have an “official power tool” (Makita), and MLS objects to Black and Decker’s effort to use its games to market a different set of tools.
This is not the first time that companies have used “ambush marketing” to promote themselves, but calling that trademark infringement seems to be a dangerous stretch. If Black and Decker has bought the tickets and the jerseys, why shouldn’t it be allowed to give them out on their own terms?
The MLS complaint alleges that Black and Decker was trying to “confuse the public into believing that Defendant acquired the right to utilize Plaintiffs' marks.” But does the public assume that anybody who gives away tickets or jerseys has paid for the right to do so? Or will the public just assume that Black and Decker is sympatico because it promotes athletic contests and teams that they think are important? There is actually a vicious cycle here -- the public may only conclude that there is a paid sponsorship relationship if MLS is able to win cases like this and the public learns about those victories.
The case is reminiscent of a revenue grab by sports teams in the 1980's. At one time, anybody could make up a shirt that said “Dallas Cowboys” or “Boston Red Sox”, and then wear it or sell it. The fans wearing those shirts didn't care one whit about whether the Cowboys or Red Sox made the shirt or had taken a cut of the shirt-makers’ revenue. But Major League Baseball and the National Football League, armed with surveys created by consumer survey expert Jacob Jacoby, started filing lawsuits claiming that some minority of fans would automatically assume that the Cowboys or Red Sox had endorsed or at least approved of the shirt sellers. By winning a couple of cases, they created a new rule of law -- you can't sell shirts showing support for a team without paying the team off for the privilege of doing so.
But they also allege at great length that Black and Decker was “free riding” on the MLS efforts to promote the games in question, and interfering in MLS’ right to sell the right to do marketing in conjunction with those games (a circular argument if there ever was one). In a recent draft, Mark Lemley and Mark McKenna urge that trademark law be cut down to size by requiring proof of likely confusion about the actual source of goods and services, while eliminating liability for confusion about sponsorship or affiliation.