Opening Day Read: Baseball Mascots and the Law

Just in time for Opening Day 2017, Attorney Christian H. Brill and Prof. Howard W. Brill have published a comprehensive examination of legal disputes involving mascots and America's national pastime.

"Baseball Mascots and the Law" discusses a variety of legal questions involving mascots, such as:

• Can a Dayton Dragons fan sue if she was distracted by a mascot’s performance when she was injured by a foul ball?
• Do the actions of an “unofficial mascot” tarnish the protected trademarks of the Chicago Cubs?
• Can a Pittsburgh Pirates mascot be fired for disparaging comments posted on social media?
• Does the arrest of protestors burning a Cleveland Indians mascot effigy violate free speech rights?

Originally presented at the 27th Cooperstown Symposium on Baseball and American Culture at the National Baseball Hall of Fame and Museum in Cooperstown, New York, the article covers such areas of law as tort law, intellectual property law, and employment law.

The entire article is available from the Kansas Law Review.

NHL Expansion Team Faces Trademark Fight

The newest National Hockey League team - the Vegas Golden Knights - is facing a legal battle before its first puck even drops on the ice.  The U.S. Patent and Trademark Office recently issued an Office Action refusing the team's trademark registration, citing a likelihood of confusion with the College of Saint Rose Golden Knights,

The franchise (which is already selling merchandise with its name and logo) has six months to respond to the Office Action and does not plan to change its name.

From ESPN.com:

"We consider this a routine matter and it is not our intention to reconsider the name or logo of this franchise," NHL deputy commissioner Bill Daly said in a statement Thursday. "We fully intend to proceed as originally planned, relying on our common law trademark rights as well as our state trademark registrations while we work through the process of addressing the question raised in the federal applications."

The United States Army has also signaled its opposition to the "Golden Knights" moniker.  The Army's demonstration parachute team has been known as the Golden Knights since 1962, but the name was never protected by federal trademark law.

From the Washington Post:

“For us, the bottom line is the (perceived) connection between the Army and the professional sports team,” [Army spokesperson Alison] Bettencourt said, declining to answer whether the Army will ask the Vegas Golden Knights to change their name before the military’s review is completed.
 
“Our interest in this announcement is meant to protect the proud history of the Army’s Golden Knights and their vital role in telling the Army story and connecting America with their Army,” Bettencourt told the [Fayetteville] Observer.

For comparison, the Columbus Blue Jackets own numerous trademarks, including registrations for CBJ, Blue Jackets, Let Fandom Ring, We Are The 5th Line and a team logo featuring a cannon.

Money Don't Matter 2 Night?: Prince Estate Complicated by Lack of Will

In 1991, recording artist Prince released a song entitled "Money Don't Matter 2 Night" with these lyrics:

Money don't matter tonight 
It sure didn't matter yesterday 
Just when you think you've got more than enough 
That's when it all up and flies away 

These lyrics may now have a new meaning for Prince's relatives. Despite hundreds of millions of dollars in assets, the music star apparently never took the time to make a will before he died last month at age 57.

From the New York Times:

Prince died without a will, according to court documents filed by his sister on Tuesday, potentially causing big complications for that star’s sprawling financial estate and musical legacy. 

In probate documents filed with the Carver County District Court in Minnesota, Tyka Nelson, 55, Prince’s sister, said that her brother died without a spouse, children or surviving parents, and that “I do not know of the existence of a will.” 

From the Minneapolis Star-Tribune:

If Prince left no trust or will, state law determines how the assets will be distributed. Attorneys say the more money there is at stake, the more likely there will be a dispute that could take years to sort out. 

For federal tax purposes, the only thing that matters is the value of the estate the day Prince died. By any measure, that’s a bundle. 

In addition to Prince's physical assets - such as homes or recording equipment - the star owned intellectual property rights such as song copyrights or the trademark to his "Love Symbol", as well as many unreleased songs. Each of those assets must be valued and then distributed as provided by the laws of Minnesota.

While most of us have assets far less than those of Prince, this is yet another reminder of the importance of considering your end of life wishes and consulting an estate planning attorney to ensure that those wishes are carried out.

Ohio State Seeks to Trademark "Woody Hayes"

The Ohio State University has filed a trademark application to protect its use of the name of Woody Hayes, the legendary coach of five national championship-winning Buckeye teams.

From the Columbus Dispatch:

While this marks the second Ohio State coach whose name has been trademarked by the university — Urban Meyer's name was officially registered a year ago — the need for the designation predates the Meyer registration by many years, said Rick Van Brimmer, director of trademark and licensing services at Ohio State.

"We've been using Woody's image and name on products for years," Van Brimmer said. "But we've had an increasing number of people using our marks. This helps us in the long run."

The use of Hayes' name "started very innocently, with 'Woody' on the back of a hat, which we called 'the Woody Hat' because it was the kind of hat he wore with the block 'O' on the front," Van Brimmer said.

The trademark application is currently pending before the U.S. Patent & Trademark Office.

Star Wars: The Judicial Opinions

Our last post explored how the lens of Star Wars has been used to interpret various aspects of the law. In addition to these broader discussions, judicial opinions themselves are also full of references to the Star Wars franchise.

Some of these are directly related to the Star Wars movies and licensed products, such as this 1977 suit over allegedly derivative toys, in which the court described the characters in great detail:

C-3PO (also "See-Threepio") is a humanoid robot of a gleaming brass- or [744] gold-colored metal. His metal plates overlap at various joints but do not cover his stomach area, through which complicated wiring is displayed. He is a "human-robot relations specialist" and often accompanies R2-D2. Ideal Toy Corp. v. Kenner Prods. Div. of Gen. Mills Fun Grp, Inc., 443 F. Supp. 291 (S.D.N.Y. 1977) 

In a major copyright infringement lawsuit, the court compared the differences between Star Wars and the movie Battlestar Galactica:

To describe STAR WARS as a morality play captures its essence, taken as a whole. The central character of STAR WARS, Luke Skywalker, is flawless, greater, purer than life. The Princess, another important character, is untouchable and unreal; also purer than life, more a symbol than an actual person.
...
Now, contrast STAR WARS, as I have described it, with BATTLESTAR GALACTICA. The latter is merely a prosaic familiar story of the goods fighting the bads. GALACTICA is no morality play.It is not pure fantasy. It puts very human people, with all their weaknesses and feelings, in a situation we can all relate to, except that the familiar scenes all take place in a space setting. 
Twentieth Century-Fox Film Corp. v. MCA, Inc., 1980 U.S. Dist. LEXIS 16637 (C.D. Cal. 1980)

Even in cases unrelated to the movies, a number of judicial opinions have referred to characters from the saga to illustrate points. For example:

Luke Skywalker, the mythological hero:

• Precisely this reluctance drives many hero stories. Spiderman, Batman and Superman are a prime examples of reluctant heros. So are Luke Skywalker, the Hobbits, and Buffy the Vampire Slayer. Mere reluctance to take up the mantle of greatness cannot be grounds for copyright infringement. Davis v. ABC, 2010 U.S. Dist. LEXIS 76145 (W.D. Mich. July 28, 2010) (copyright infringement)
• Absolute certainty in matters of paternity, of course, has historically been unobtainable. Think of the characters in classical mythology who discover who their true father was somewhat late in their lives. E.g., Theseus, Arthur, Luke Skywalker. Estate of Carter, 111 Cal. App. 4th 1139 (Cal. App. 4th Dist. 2003) (paternity)

Jar Jar Binks, the symbol of disappointment:

• The toys customers seek in all these stores are highly differentiated products. The little girl who wants Malibu Barbie is not likely to be satisfied with My First Barbie, and she certainly does not want Ken or Skipper. The boy who has his heart set on a figure of Anakin Skywalker will be disappointed if he receives Jar-Jar Binks, or a truck, or a baseball bat instead. Toys "R" Us v. Ftc, 221 F.3d 928 (7th Cir. 2000) (antitrust) 

Lando Calrissian, the traitor:

• Capuano promised the others he would "not do anything 'Callrisian-esque,'" which was his way of saying that he would not betray defendants to TestMasters, as the character Lando Calrissian ("the mayor of [13] Cloud City" played by Billy D. Williams) had done in the Star Wars movie The Empire Strikes Back (Lucasfilm 1980). Robin Singh Educ. Servs. v. Blueprint Test Preparation, 2013 Cal. App. Unpub. LEXIS 537 (Cal. App. 2d Dist. Jan. 23, 2013) (unfair competition) 

Obi-Wan Kenobi, the master of diversion

• Without citation to authority or much supporting argument, Stapleton tries a unique line of attack. He directs the Court for "guidance" to the more detailed requirements of the analogous rule of civil procedure. See R. 45 at 5 (quoting Fed. R. Civ. P. 26(a)(2)(B)). This attempted diversion—the legal equivalent of Obi-Wan Kenobi's "These aren't the droids you're looking for," see Star Wars Episode IV: A New Hope (Lucasfilm 1977)—is unavailing. United States v. Stapleton, 2013 U.S. Dist. LEXIS 108189 (E.D. Ky. July 31, 2013) (expert testimony dispute) 

Darth Vader, the symbol of evil:

• This case is somewhat akin to deciding a dispute between Darth Vader and the Borg, or if you prefer a classical metaphor, Scylla and Charybdis. Anthony v. Mazon, 2006 Cal. App. Unpub. LEXIS 5625 (Cal. App. 4th Dist. June 27, 2006) (exclusion of evidence dispute)
• Defendant portrays Officer Fleming as the Darth Vader of High Desert State Prison and the nurse and other correctional officer, both of whom testified they saw the weapon in defendant's shoe, as his minions. People v. Pimentel, 2015 Cal. App. Unpub. LEXIS 3043 (Cal. App. 3d Dist. Apr. 30, 2015) (exclusion of witness testimony)
• After receiving extensive testimony, the Court notes that Vader does not appear to be anything like the powerful Dark Lord of the Sith, Darth Vader, from the epic saga Star Wars. In essence, Vader the dog, appears to be a lovable pet that was rescued from the Humane Society and put to work as a police dog. United States v. McLaughlin, 2005 U.S. Dist. LEXIS 39402 (D. Utah June 15, 2005) (search and seizure) 

With the enormous box office success of Star Wars: The Force Awakens, it is likely only a matter of time until a judge incorporates references to new characters Kylo Ren, Rey, or BB-8 into a ruling.

Protecting Your Trademark Overseas

A federal trademark registration with the United States Patent & Trademark Office (USPTO) is limited to protection within the United States. Outside of the country, similar marks are not automatically preempted without an additional filing (and even if they are, may be burdensome to enforce). You might be surprised to stumble across, for example, an Applebee’s restaurant near Shakespeare’s Globe Theater in London or an Old Navy café not far from Paris’s Luxembourg Gardens.

However, registering your trademark internationally is not as burdensome as it may seem. The Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (Madrid Protocol) is an international treaty that allows a trademark owner to seek registration from any of the 96 parties with a single application. Instead of requiring individual applications in the language of each country where an applicant desires protection, the Madrid Protocol allows the applicant to file a single international registration through the United States Patent and Trademark Office. An international application may be filed electronically using the Trademark Electronic Application System for International Applications.

While every applicant may not need international protection, it may be wise to consider international registration if you anticipate using your mark overseas or know of potentially infringing marks. More information on the Madrid Protocol and international applications is available from the USPTO.

Upcoming CLE: Baseball Mascots and the Law

Attorney Christian H. Brill, along with Chief Justice Howard W. Brill, will be presenting a Continuing Legal Education seminar on Friday, October 2, 2015, at the 2015 University of Arkansas School of Law Reunion Weekend in Fayetteville, Arkansas.  The seminar, Baseball Mascots and the Law, is a modified version of a presentation given earlier this year at the National Baseball Hall of Fame and Museum in Cooperstown, New York.

Attendees will discuss current legal issues in such fields as torts, employment law, constitutional law, criminal law, and intellectual property by examining the intersection of baseball mascots and the law.

Baseball Mascots and the Law

Attorney Christian Brill is speaking this week at the 27th Cooperstown Symposium on Baseball and American Culture at the National Baseball Hall of Fame and Museum in Cooperstown, New York.  The presentation, made with Prof. Howard W. Brill, is entitled “Baseball Mascots and the Law” and covers such areas of law as tort law, intellectual property law, and employment law.

Brill will discuss a variety of legal questions involving mascots, such as:

• Can a fan sue a team for injuries resulting from objects thrown by a mascot?
• Can a California or Ohio plaintiff sue if he was distracted by a mascot’s performance when he was injured by a foul ball?
• Is a mascot’s act involving a large purple dinosaur trademark infringement or parody?
• Do the actions of an “unofficial mascot” tarnish the protected trademarks of a baseball franchise?
• Can a mascot be fired for disparaging comments posted on social media?
• Does the arrest of protestors burning a mascot effigy violate free speech rights?

The Cooperstown Symposium on Baseball and American Culture, co-sponsored by SUNY Oneonta and the National Baseball Hall of Fame and Museum, examines the impact of baseball on American culture from interdisciplinary and multi-disciplinary perspectives.

Listen....Do You Want to Know a Secret?

“Three may keep a secret, if two of them are dead.” Benjamin Franklin, Poor Richard’s Almanack

Secrets, especially business secrets, are hard to keep, and companies may take extreme measures to protect their valuable confidential assets. There are times, however, when your confidential information may need to be shared in a limited manner.  When discussing a potential business sale, franchise agreement, collaboration, subcontractor hiring, or other transaction, it’s important to protect yourself from the intentional or accidental spilling of secrets.

Before you begin sensitive business discussions, we recommend that the two parties begin by signing a nondisclosure or confidentiality agreement. A nondisclosure agreement enables you to explore a potential business relationship without fear that your existing business secrets will be compromised. In essence, the parties agree that certain confidential information may only be used to evaluate the potential relationship and may not be disclosed to third parties.

Among the important questions to examine are:

1. What information must be kept confidential?
2. Are there any exceptions in which confidential information may be disclosed? For example, can the information be shared with your attorney or financial advisor? 
3. What efforts are required to prevent disclosure? 
4. How long does the confidentiality agreement last? 
5. If confidential information is disclosed in violation of the agreement, what remedies do you have? 

Because there are at least 45 tips to consider when reviewing a nondisclosure agreement, you may wish to consult an attorney to make sure that your secrets are well-kept.

The Benefits of Federal Trademark Registration

Registering your business’s trademark with the United States Patent & Trademark Office (USPTO) is not a requirement for protecting your mark. However, any “common law” rights based on the use of your mark are far more limited than the federal protections. For example, although you can file for trademark protection in Ohio, the state’s trademark statutes do not prevent someone from using the same mark in Indiana. A business which later discovers an existing trademark (like this North Carolina taco restaurant chain) could be forced to rebrand itself in order to avoid claims of infringement. 

Although you may still be able to establish rights based on your legitimate use of the mark, there are significant advantages to federal trademark registration.  The USPTO lists at least five important benefits of registration:

1. Constructive notice nationwide of the trademark owner's claim. Any potential users of the same mark are presumed to know that your claim is federally protected, even if the infringer does not have actual notice. For example, even if a soft drink maker had never heard of Coca-Cola and acted in good faith, his attempt to trademark the new drink name Koca-Cola would likely be denied because he is assumed to know that he is infringing.


2. Evidence of ownership of the trademark. Federal registration proves that you have the exclusive right to own and use the mark nationwide, barring others from trademarking the same mark or claiming ownership.


3. Jurisdiction of federal courts may be invoked. If your mark is federally protected, you can seek to have a trademark infringement case heard in federal, rather than in state, court.


4. Registration can be used as a basis for obtaining registration in foreign countries.  Marks can also be protected in foreign countries; however, in order to register your mark in a foreign country, you must first have a U.S. registration.


5. Registration may be filed with the U.S. Customs Service to prevent importation of infringing foreign goods. Once your mark is federally registered, it can be filed with U.S. Customs and Border Protection to stop imitation foreign goods from infringing on your protected mark. This can prevent infringing goods from being imported, as in recent cases involving counterfeit Hermes handbags or Levi’s jeans.

Other important advantages of federal trademark registration include the right to use the ® trademark symbol and the potential of receiving higher damages in a lawsuit.

As a result, in order to fully protect your business's trademark, federal protection is a must.