Football and IP

This weekend’s Super Bowl provides an opportunity to review some of the past year’s interesting developments relating to the National Football League and intellectual property:

1.  Titlecraft v. NFL:  wooden Lombardi trophy replicas infringe NFL copyright.

In Titlecraft Inc. v. National Football League (D. Minn. Dec. 20, 2010) the NFL and NFL Properties sued Titlecraft, a manufacturer of custom wooden trophies.  Titlecraft made wooden replicas of the Vince Lombardi trophy.  The Lombardi trophy is a silver statue made by Tiffany & Co. that is awarded to each year’s Super Bowl champion; Titlecraft’s trophies were small wooden replicas that were sold to fantasy football leagues for honoring their own champions. 

Finding that (i) the NFL had a valid copyright registration for the Lombardi trophy; (ii) Titlecraft had access to the Lombardi trophy; and (iii) the two trophies were substantially similar, the court granted summary judgment for copyright infringement in favor of the NFL.  Although Titlecraft pointed to minor differences in size, angles, and texture, the court stated that “‘if it walks like a duck, quacks like a like and looks like a duck, it has got to be a duck’ – or in this case a copy.” 

2.  Who dat say dey gonna own dem trademarks?

When the New Orleans Saints reached the Super Bowl in 2010, the NFL sent cease-and-desist letters to several Louisiana merchants, demanding that they stop selling merchandise bearing the “who dat” phrase and other indicia that it considered to be associated with the Saints.  After public outcry and a phone call from the governor, the NFL relaxed its claims.  However, that didn’t stop another company, Who Dat, Inc. (WDI), from filing suit against the NFL, the Saints, and several others, claiming that the defendants damaged WDI’s right to profit from commercial use of the phrase.  Several of the defendants counterclaimed, the court recently denied various parties’ motions to dismiss, and the case is still pending as of Super Bowl Sunday 2011. 

Baton Rouge attorney James Napper III published a detailed article summarizing the WDI case and its origins in the Louisiana Bar Journal in fall 2010.  The article is available on the Louisiana State Bar Association website.

3.  Supreme Court rules addresses antitrust law in NFL apparel licensing case.

In American Needle, Inc. v. National Football League, the U.S. Supreme Court considered whether the NFL’s attempt to enter an exclusive license arrangement with an apparel maker constituted “concerted action” by the NFL’s 32 individual teams and thus governed under U.S. antitrust law.  The Court held that the teams’ collective licensing through NFL Properties was governed by Section 1 of the Sherman Act.  However, the Court also noted that in some cases cooperation may be necessary to produce the NFL’s product.  The Court remanded the case to consider whether the particular licensing activity was reasonable. 

My colleague Barbara Sicalides published a detailed analysis of the American Needle case and antitrust law  after the opinion was published.  Barbara’s article is available on the Pepper Hamilton website by clicking here.

Enjoy the game!  (and Go Steelers!)