by Paul Alan Levy
Today I received this email from Boston.com, the online site for the Boston Globe. It is full of references to the “Big Game” – getting Globe readers engaged with the Globe in voting on the advertising during the Big Game, advertising photos and trivia about “the Big Game in Indy,” urging readers to log onto Boston.com for news and update “During the Big Game,” hosting a “Big Game party recipe” sweepstakes, and so forth.
Why all of these oblique references to the Superbowl? Because the National Football League aggressively polices the use of its trademarks, including its trademark in the use of the name “Superbowl,” and sends threatening communications to anybody who dares to advertise products by encouraging their consumption during or in conjunction with the Superbowl.
Of course, the NFL’s position is nonsense – this is a nominative use that is just as permissible as, for example, referring to the "Chicago Bulls" instead of “the two-time world champions” or “the professional basketball team from Chicago” (Judge Kozinski’s example from a different era, when the Bulls were dominant mattered).
Ron Coleman blogs about this issue regularly. This year, he very properly calls down Consumers Union for a blog post that accepts at face value the NFL’s position that “retail ads and promotions can’t legally use the phrase ‘Super Bowl’—or even ‘Super Sunday’—unless the companies have paid big bucks (really big bucks) to the NFL.” Consumers Union accepts the validity of the NFL’s extortionate assertions, even though it doesn't like it, praising one marketer for skating close to the edge by using "the words 'Super Sale' and the Roman numerals 'XLVI.'” But Consumers Union says that its own web page offering members a Superbowl XLVI game plan is exempt from these threats because CU’s use of the mark is by a "news organization."
It would certainly better if Consumers Union noted that even a store marketing HDTV’s can legally urge that they be bought for the purpose of watching the "Superbowl," even if they have to defend that right in court. Of course, Consumers Union has an ulterior motive for accepting the NFL's assertion, because it does some bullying of its own -- it falsely claims that it can prevent companies from bragging about their Consumers Union ratings. And Coleman’s “super-duper exemption” put down of Consumers Union is also overstated – although non-profits do not get an automatic exemption from the trademark laws, non-commercial use is a statutory fair use exception to dilution liability, and many circuits hold explicitly that a non-commercial use of the mark is outside the “use in connection with the sale of goods and services” that is needed for infringement liability as well. Consumers Union's use is plainly noncommercial.
Instead of praising retailers who skate close to the edge, we should take a page from David Bollier’s excellent Brand Name Bullies and call them Brand Name Weenies. Indeed, it is disappointing that a major metropolitan newspaper that belongs to an 800 pound gorilla like the New York Times Company is unwilling to defy the NFL by using the term in in its advertising. The Times and the Globe certainly advertise their coverage of the New York Giants and the New England Patriots, also trademarked names. If big players like the Times don’t have the cojones to stand up for bullying from the NFL, they make it harder for everybody else.
In their recent book Reclaiming Fair Use, Pat Aufderheide and Peter Jaszi warn that when we refrain from exercising our fair use rights, and act as if those rights do not exist, we help create a culture in which fair use loses ground to overly aggressive copyright enforcement. The same is true in the trademark realm. We can only hope that when the next Superbowl rolls around, the Times and its brethren, and even the HDTV sellers, will have shed their timidity.