Welcome to the Symmes & Hsu Law Blog. This is an interactive blog that details current events in sports, entertainment, trademark, and gambling law as well as discusses legal issues and projects that are currently being undertaken by attorneys Richard Symmes and Jay Hsu. Feel free to leave a comment and weigh in on any blog entries.
December 5, 2009
Why You Should Protect Your Trademarks Online and on Social Networking Sites
A recent article by Brian Winterfeldt of the National Law Journal caught my eye. http://www.law.com/jsp/article.jsp?id=1202435924630&rss=newswire. The article discusses how trademark owners must adapt to protecting their brands online and more particularly on social networking sites such as Facebook and Twitter.
Business owners should always be aware how their brands are portrayed online, particularly with social networking sites. Businesses need to monitor these sites as many of their consumers are most likely users who are using social networking sites and the internet. The web may provide grounds for “the sale of counterfeit goods and services, trademark infringement, using the brand or company name in a derogatory or defamatory manner, using the brand name in conjunction with false or misleading information and impersonating company personnel.” http://www.law.com/jsp/article.jsp?id=1202435924630&rss=newswire With the variety of rampant infringement that exists, a company needs to be aware of their online presence so that they may prevent this type of infringement and take legal action if necessary.
It should be noted that although a trademark may be used illegally, a trademark may be used legally through the First Amendment and fair use. Fair use allows for the use of another’s trademark for news, opinion, or educational purposes among other things. Just because somebody uses a businesses trademark does not necessarily mean they are doing so illegally. So to all business owners, if you are not monitoring your online trademark presence why not start now? Happy Monitoring!
October 16, 2009
WWE Lays the Smackdown When Protecting It’s Trademark
WWE
World Wrestling Entertainment Inc. “WWE” has sent a cease and desist letter to the Philadelphia Wine School for using the trademarked word “Smackdown” in advertising an event at the school. The wine school has advertised that it will be holding a Sommelier Smackdown for a food and wine pairing competition it has held since 2007. The WW is claiming that the school has infringed upon their trademark and the school should be forbidden from using the word Smackdown. http://www.law.com/jsp/article.jsp?id=1202434525206&rss=newswire
In order for trademark infringement to occur the WWE will have to prove that the average person would confuse the Sommelier Smackdown with the WWE’s Smackdown and that the WWE has suffered a financial loss because of the use of the trademark. I find it very hard to believe that a food and wine pairing competition can be confused with a bunch of large shirtless wrestlers in spandex hitting each other over the head with folding chairs. Furthermore the only financial gain from the event will most likely be from attendees of the event which will be minimal. Therefore the wine school would have a good case if they decided to challenge the trademark infringement claim. However, because litigation is an expensive endeavor for both parties, the wine school will most likely back down and let the WWE lay the Smackdown on enforcing their trademark even though the school has a very good chance of winning of the case went to court.
It is sad that large companies are this adamant about protecting trademarks, even if the trademark is being used for a fun and educational purpose for very little profit. This claim is ridiculous and paper should not have been wasted to bring the claim or cease and desist letter. Let the people have their fun, a potential claim will rack up lawyer fees which will be much more expensive than any judgement the WWE could win in this case. The WWE and other large corporations need to find something better to do with their money than make frivolous claims that waste the courts time.
September 28, 2009
Eminem Sues Apple(iTunes) for improperly using his music
Eminem
Rapper Eminem is in the legal news once again with his record label Eight Mile Style alleging that Apple Inc. did not have a license to reproduce and sell 93 Eminem songs in which Apple has allegedly made $2.58 million from the iTunes downloads. http://www.law.com/jsp/article.jsp?id=1202434110176&rss=newswire
Eight Mile is arguing that Eminem’s contract with Aftermath (his old record label) did not authorize Apple to make his music available for download on iTunes. Apple has argued that they have paid Eight Mile Style 9 cents per download via iTunes and have done nothing wrong. If Eight Mile comes out victorious, Apple may be ordered to pay significant damages for illegally allowing the music to be available for download. A ruling in Eight Miles favor could also cause distributors such as iTunes to be much more careful in the future, i.e. put in safeguards to make sure that distribution companies actually have the right to reproduce music and make it available for download. On the flip side, a ruling for Eight Mile could cause potentially unnecessary extra procedures in making music available for download since most musicians would like to profit from the services that iTunes offers. iTunes has every intention of compensating the musicians who may not otherwise be able to make significant profits from music sales any other way. Downloading albums and songs has now become the most common way for fans to obtain music with actual hand held album sales declining every year.
UPDATE 10/2/09 – Eminem and Apple settle lawsuit with Apple paying out an undisclosed amount of money: http://www.sohh.com/2009/10/eminems_publisher_settles.html
August 28, 2009
Who Decides Who can Own a Professional Sports Team; a Sports League or a Court of Law?
An interesting case coming from the NHL will most likely decide whether a sports league or a court of law may decide who may purchase a professional sports franchise. http://www.law.com/jsp/article.jsp?id=1202433401660&rss=newswire
The Phoenix Coyotes of the NHL filed for bankruptcy earlier this year in which the bankruptcy court will decide whether Jim Balsillie, a wealthy businessman from Canada, may purchase the team. If Balsillie is successful he intends to move the team to Hamilton, Ontario, Canada, a move that the NHL apposes. Balsillie had previous run ins with U.S. regulations and NHL owners have already voted 26-0 in favor of not allowing Balsilli to own an NHL team.
“Balsillie and the NHL have accused each other of negotiating in bad faith. Balsillie claims NHL Commissioner Gary Bettman holds an unreasonable grudge against him, while the NHL has claimed Balsillie is hurting the value of the Coyotes by smearing greater Phoenix as a hockey market.” http://www.law.com/jsp/article.jsp?id=1202433401660&rss=newswire. Balsillie currently has placed the highest bid for the franchise at $212.5 million while other lower bids have been placed by the NHL and private investors group entitled Ice Edge Holdings who bid $150 million. Creditors of the Coyotes are hoping that Balsillie is allowed to purchase the team so that they can recoup the debts owed by the Coyotes.
Generally a sports league and other owners in the league must approve a new owner and an owners request to move a franchise. The reason behind this is that most leagues engage in profit sharing among the franchises. If the current owners do not feel that a new owner will be profitable for the league or the owner wishes to move a team to a new smaller market location, the rest of the league and franchises may lose money. In this case, a judge must weigh whether paying off the Coyotes creditors is more important than current NHL rules and potential damage to the NHL brand. Even if Balsillie is allowed to purchase the team I don’t think the court can force the NHL to approve moving the franchise. The ruling on whether Balsillie can continue to be a bidder for the franchise is expected on September 2, 2009 and the team is expected to be sold on September 10, 2009. The outcome of this case will have an impact on all other major sports leagues in the future.
UPDATE 10/1/09 – Bankruptcy judge Redfield Baum rejected Canadian billionaire Jim Balsillie $242 million bid for the Phoenix Coyotes, concluding that it would interfere with the league’s relocation rights and procedures. http://sports.espn.go.com/nhl/news/story?id=4520635
July 26, 2009
Will former NCAA Athletes be allowed to Profit from the NCAA for the Use of their Own Name and Likeness in the Future?
Ed O'Bannon
In what would be a change of NCAA policy, former NCAA athletes may soon be entitled to receive compensation for the use of their name or likeness. Currently, former NCAA athletes are not allowed to gain royalties from the NCAA whenever the organization or member schools use athletes names or likenesses for profit on items such as video games, DVD’s or promotional items. When an NCAA athlete signs on with a school to participate in athletics, they must sign a waiver, giving the NCAA the rights to the name, image, and likeness while they are a student athlete and beyond. Former UCLA basketball player Ed O’Bannon aims to challenge this policy and gain royalties for all former football and basketball student athletes from the past and future in the class action lawsuit Ed O’Bannon v. NCAA filed in U.S. District Court for the Northern District of California. For a full discussion about the case see Michael McCann’s article at: http://sportsillustrated.cnn.com/2009/writers/michael_mccann/07/21/ncaa/index.html
The NCAA’s main arguments will be, if the former players are compensated for the use of their image and likeness, it would go against the NCAA’s policy of having amateur athletes, that the athletes waived their rights when they signed the required NCAA forms, giving the NCAA the rights to the images and likenesses and that if the players did not wish to play for an NCAA institution they had a choice not to sign the required forms. O’Bannon will argue that this case is only involving former student athletes who are no longer are bound by the NCAA bylaws and that the forms giving the NCAA the right to all images and likenesses violate the governments Sherman Act due to a restraint in trade.
This case will set a precedent for all future and past NCAA athletes. Both sides have valid arguments and I am sure the all present and future NCAA athletes will be watching closely as they all have a vested interest in the outcome.
July 5, 2009
Supreme Court to Decide Whether the NFL Licensing Agreement Violates Antitrust Laws
The Supreme Court of the United States has decided to take on the case of American Needle v. National Football League which is scheduled to be heard later this year or in early 2010. http://seattletimes.nwsource.com/html/politics/2009391296_apussupremecourtnfl.html
The case will have a significant impact on all sports leagues and will determine whether the NFL is acting as a single entity or 32 different businesses when negotiating licensing agreements or other contracts on behalf of NFL franchises. The case arose after the NFL signed an exclusive apparel contract to Reebok International Ltd in 2001. American Needle was one of many firms who manufactured head gear for some NFL teams prior to 2001, and they argue that the the NFL is breaching antitrust laws by dealing with only one company in outfitting teams. The NFL seeks to end antitrust law suites against them in the future by arguing the NFL is acting as a single entity when enterting into contracts on behalf of NFL franchises.
This case will have a signifacant impact on all sports leagues going forward. If the NFL wins, it will not have to fear being suied for antitrust lawsuites in the future which could significantly impact how all sports leagues conduct business.
June 20, 2009
So How Much Money is a Song Worth Anyways?
Jammie Thomas-Rasset
A jury last week determined the decade old question of just how much money a song is worth if it is illegally downloaded. The jury’s answer: $80,000 per song. Jammie Thomas-Rasset was accussed of illegally downloading 1,700 songs through the file sharing program Kazaa, although she was only prosecuted by the Recording Association of America (RIAA) for illegally downloading 24 songs. Thomas-Rasset alleged that other people in her family may have been responsible for the downloads, she replaced her hard drive because it was broken and not because of illegal downloads that would have been found on it, and that she never received any sort of cease and desist orders despite the plaintiffs producing such evidence that such messages had been delivered. http://technology.timesonline.co.uk/tol/news/tech_and_web/article6534542.ece
The RIAA said that they tried to settle the case with Thomas-Rasset for a sum of $3,000-$5000 but she refused to settle. Thomas-Rasset was the first person to refuse to pay a fine and challenge the RIAA in court. The RIAA, however is still willing to settle the case despite winning a $1.92 Million verdict.
The RIAA is taking the high road on this case and doesn’t want to alienate music fans. By settling the case for a small sum, the RIAA will deter people from infringing on music, but not alienate fans at the same time by looking like some kind of ogre. The RIAA said they are moving away from suing individuals for infringment and are trying to work out arrangement with internet service providers to take action against infringers.
Ms. Thomas-Rasset was extremely ignorant and misinformed by her lawyers that she had any chance of winning this case. The evidence was too concrete and stacked against her from the beginning. When a case can be settled for a couple thousand versus having to potentially pay millions in damages and lawyer fees, it doesn’t make any sense to try the case. This is why most rational people settle their infringement cases and move on with their lives.
For a play by play analysis of how the trial went down, check out: http://arstechnica.com/tech-policy/news/2009/06/jury-selected-in-thomas-retrial-shockingly-law-abiding.ars
June 14, 2009
Cardinals Manager Tony La Russa takes Twitter to Court, Will Probably Lose
Tony La Russa
The name, image, and likeness of a celebrity or sports figure is viewed by the courts to be the intellectual property of that particular individual. With the creation of Twitter, Facebook and other social networking sites, individual’s intellectual property in their names have the possability of being infringed upon in a new medium. Tony La Russa, the St. Louis Cardinals manager, is the first well known celebrity or sports figure to sue Twitter for the actions of an individual who used a name or likeness that didn’t belong to them on a Twitter page. http://www.law.com/jsp/law/careercenter/lawArticleCareerCenter.jsp?id=1202431321477&rss=careercenter
La Russa alleges that an unknown person had been tastelessly using his name and image, tweeting from an account named “TonyLaRussa.” La Russa’s suit claims that the impersonator is ruining his reputation among other things. In order to win a case for trademark infringement La Russa would have to prove that the average viewer of the fake Twitter page would confuse the postings as being those of the actual La Russa. Therefore, because of the nature of the posts (making fun of his drunk driving, and a Cardinals pitcher who had died earlier) it is unlikely that the average person would be confused that the actual La Russa made the offensive “tweets.”
La Russa could have also brought some torts claims against the individual posters who made the tweets for misappropriation of his name and likeness and being portrayed in a false light. The false light claim would have the best chance to succeed as he would have to prove (1) publication, (2) of views he doesn’t believe, (3) which are objectionable to reasonable person. Misappropriation of name or likeness requires a person to use another’s name or image for profit which did not happen in this case. The outcome of a suit of this type would probably be up to a jury to decide.
Celebrities and athletes should be careful in suing their own fans and those that actually follow their careers, especially if any damage is minimal as it is in this case. Suing fans of the game, could cause a backlash and project a negative image upon a person or sport. La Russa should have accepted that Twitter agreed to remove the page from the site and move on with his life. This is a frivolous claim that he will probably lose.
UPDATE 7/7/09: La Russa pulls Twitter suit – http://www.law.com/jsp/article.jsp?id=1202432045385&rss=newswire
May 17, 2009
Redskins Win Right to Keep Their Nickname…..For Now
The NFL’s Washington Redskins have won another legal decision against a group of Native Americans who claim that the team’s nickname “Redskins” is racially offensive. http://sportsillustrated.cnn.com/2009/football/nfl/05/15/redskins.ap/index.html
The battle between the Native Americans and the NFL franchise for the right to use the “Redskins” has been going on for over 17 years. The attorneys for the Redskins based their case on trademark law, claiming that if the team lost to their right to use the nickname, the organization would lose millions that have been spent on the Redskins brand. The Redskins trademark was first registered and used in commerce in 1967. The Native Americans challenging the trademark, first challenged the mark in 1992, 25 years after it was first used in commerce and the court ruled that the Native Americans waited too long to challenge the mark.
Another group of Native Americans plan on challenging the mark and will try to get the case challenged on its merits, that the term “Redskins” is racially disparaging and scandalous. The Native Americans plan on challenging the mark under under section 2(a) of the Lanham Act which states that “no trademark shall be refused unless it “consists or comprises of immoral, deceptive, or scandalous matter.” To determine whether a mark is disparaging the court must look at (1) the likely meaning of the matter in question, as it appears in the marks and as those marks are used in connection with the services identified in the registrations and (2) whether that meaning may be disparaging. To determine whether a mark is scandalous the court will look at (1) the view of the general public and (2) in the context of contemporary attitudes.
As the court ruled in Harjo v. Pro Football Inc. (1999), I believe a court would find that disparagement could be proven, but not that the mark is scandalous. The Scandalous test cannot be met as the general public views the Redskins mark in association with a proud NFL franchise in which the players are akin to warriors. Some Native Americans have even been quoted as saying that they don’t mind the Redskins mark as long as the team depicts Native Americans in a favorable manner. Disparagement could be proven under the test stated above, as it is possible that the mark is disparaging.
Even if it can be proven that the trademark is disparaging, it will be extremely difficult for anybody to challenge the mark at this point as the mark should have been challenged when it was first approved by the U.S. Patent and Trademark office in 1967. The mark is now accepted by the general public and a multi-million dollar brand. The courts are hesitant to take away a mark if those offended by the mark did not challenge the mark at an appropriate time when they had the chance.
May 9, 2009
New Legislation May Lift Ban on Using American Credit Cards for Online Gambling
Barney Frank
Currently in the United States it is illegal for Americans to use credit cards to place bets of any kind online. This rule was enacted in 2006 under the Uniform Internet Gambling Enforcement Act (UIGEA). Representative Barney Frank (D-Mass.) seeks to repeal the UIGEA and make it possible once again for American banks to allow their customers to place bets online. http://www.creditcards.com/credit-card-news/frank-bill-authorize-online-gambling-1282.php.
Although a person may get around the UIGEA regulations by using foreign companies to place bets; repealing the UIGEA is a much simpler alternative. Frank argues that the government should not interfere with a persons liberty interest to make online bets. The new legislation is called the Internet Gambling Regulation Consumer Protection and Enforcement Act and establishes framework that would allow online operators to obtain licenses to accept bets from U.S. residents. In order for the operators to obtain a license, they would have to meet strict requirements and pass background checks.
Allowing Americans to place wagers online while doing it in a matter that protects the consumer and requires background checks of online operators can only be beneficial. The online gambling business currently generates $10-$12 Billion a year, and the U.S. is being cut out of the action. This new law if enacted would be good for the U.S. economy and good for the American entrepreneurs while protecting consumers who are using foreign websites to meet thier gambling needs.
Richard Symmes
Jay Hsu
