by Paul Alan Levy
In today’s Washington Post, John Feinstein captures an important truth about college sports –- the print headline of his column is: “Greed is the most powerful tradition in college football.” (In the online addition, the headline described greed as "the new tradition"). Whether new or longstanding, a tradition of greed is typified by a dangerous decision issued this week by a federal judge in Columbus, Ohio, in which Ohio State University was able to use trademark law to suppress a fan web site and magazine devoted to its sports teams, established by a commercial publisher.
The case arose because in the Columbus area, and indeed, throughout the State of Ohio, anything having to do with Ohio State’s major sports teams is a matter of intense public interest. Responding to that interest, a Wisconsin company, which also has a web site called Badger Illustrated and as well as a magazine about the Wisconsin Badgers, created a web site called “Buckeye Illustrated” and announced plans to publish a “Buckeye Gameday” magazine and on “Ohio State Buckeye ebook,” all featuring lavish coverage of Ohio State’s popular sports teams and containing extensive advertising. Instead of welcoming this additional coverage as a form of homage, and considering how a second set of web sites and magazines could intensify public interest and thus help promote the University, Ohio State went to court complaining of the defendants’ attempt to “rip off” Ohio State’s sports enterprise. The university protested that it had just started to license out the right to publish sports programs, instead of doing such publications inhouse, and if outsiders could publish programs without permission, the value of this licensing would be reduced.
Ohio State filed a substantial pile of TRO papers and set a hearing on six days notice. In the minimal time allotted, the defendant’s lawyer, a solo practitioner, was able to file only a response that can fairly be described as flimsy. The next day, the judge heard argument by telephone and granted not only a TRO but a preliminary injunction forbidding the defendants from using any domain names that includes the name Ohio State or Buckeyes, or using the Ohio State or Buckeyes name in any publication.
The decision proceeds mechanically through an analysis of the "likelihood of confusion" factors, which can always be recited in a way that favor the plaintiff in a case where the defendant is speaking about the plaintiff or the plaintiff's product and in which the real issue is fair use. But the judge rejects the fair use defense by assuming that the issue is descriptive fair use rather than nominative fair use. That is, Buckeye Illustrated is a web site and magazine about the plaintiff's product, and there is no way to prepare such a magazine and web site without using Ohio State's trademarks throughout.
In a series of cases in the 1970's and 1980's, professional sports teams persuaded the courts that it was vital to protect their ability to make money selling sportswear and other accessories bearing their logos, using the argument (based on suspect consumer surveys) that consumer would naturally assume that a Tshirt showing the Dallas Cowboys’ logo was necessarily sponsored or at least authorized by the team itself. Forbidding the sale of fan paraphernalia without a license is bad enough, but extending that monopoly to the right to publish written materials about sports teams would give those teams the ability to suppress unfavorable commentary, simply because it is published with a profit motive.
The price of creating a major sports franchise that is the main interest of the populace of a large state is that the teams become a legitimate topic of public conversation. Indeed, a well-counseled franchise ought to revel in being a subject of such discussion and indeed adulation. Third parties ought to be able to participate in that discussion even when their motivation is to make money from their participation. Trademark law should not be available to impede such discussion.