2. Chapter Objectives
After reading this chapter, you will know the
following:
• The areas of intellectual property law that apply to
sport
• The types of trademarks that are used in the sport
industry
• Ways that a sport organization can protect itself
when its trademarks, copyrights, or patents are
used by others who are not authorized to do so
• The value that athletes have in their personal right
of publicity
3. Sources of Revenue in Sport
• Tangible sources
– Merchandise
– Tickets
– Concessions
• Intangible sources
– Player or team name and likenesses
– Sponsorship of events and facilities
– Sale of merchandise with particular names and
logos
4. Definition of Intellectual Property
• Property rights over artistic and commercial
assets
– Musical and literary works
– Discoveries and inventions
– Words, phrases, symbols, and designs used in
commerce
• Provide creators with an economic
incentive to develop works
6. Trademark
Any word, name, symbol, or device that an
organization uses to identify and
distinguish its services from the services of
another organization and to indicate the
source of the service
7. Trademark Law
• Trademark Act of 1946, known as the
Lanham Act, governs the law of trademarks
and their registration and provides causes
of action that protect trademark rights from
infringement
• Purpose is to protect the owner of a mark by
preventing others from using the mark
without permission or in a way that will
cause confusion
8. Trademark Law: Dilution
• Dilution is the lessening of the capacity of a
famous mark to identify and distinguish
goods or services.
– Blurring: A party uses or modifies a mark, resulting
in the weakening of the original mark to identify
goods.
– Tarnishment: The mark is used in association with
unwholesome or shoddy goods and services.
9. Functions of a Trademark
• Identifies a seller’s goods and distinguishes
them from those sold by others
• Signifies that goods come from one
particular source
• Indicates that products are of a certain
quality
• Advertises, promotes, and assists in selling
the particular goods
10. Uniqueness of Trademarks
• Arbitrary or fanciful marks
– Inherently distinctive because they describe the source of
a good and not the actual good itself
– Example is Nike
• Suggestive marks
– Require some creativity to understand the product that
they describe
– Example is Hot Pockets
• Descriptive mark
– Describes a characteristic or quality of a good or service
– Not protected under trademark law
(continued)
11. Uniqueness of Trademarks
(continued)
• Generic mark
– Marks that are so common they cannot receive federal trademark
protection
– Example is Jell-O
• Collective mark
– Mark used by the members of a cooperative, association, or other
collective organization to indicate membership in that organization
– Example is NBA
• Service mark
– Mark used in the sale of advertising or services to identify and
distinguish the services of one entity from the services of others
– Example is NCAA because it stands for events and services
related to the National Collegiate Athletic Association
12. Ownership of Trademarks
• Must be first to use the mark in trade
• Must make continuous, uninterrupted use
• May federally register the mark but this is
not required (common law use allowed)
13. Trademark Infringement
• Definition: When someone who is not a trademark owner
engages in some unauthorized use of a trademark that is
likely to cause consumers to be confused or deceived about
who really owns the trademark mistake
• Elements of claim
1. Trademark owner must show that she has used and preferably
registered the mark
2. Must demonstrate that the other party’s use of the mark is
likely to cause confusion or to deceive consumers about who is
the true source of the trademark.
14. Factors That Determine Infringement
• Strength of the mark
• Similarity between the marks
• Evidence of actual confusion
• Consumer sophistication
• Quality of the alleged infringer’s products
• Similarity between the products and the ways they are
sold
• Likelihood that the owner will expand the use of his own
marks on other products in the future
• Whether the alleged infringer acted with good faith
15. Defenses to Claim
of Trademark Infringement
• Fair use: Where a trademark is used fairly
and in good faith only to describe the goods
or services involved (e.g., logo used in
newscast)
• Noncommercial use: Artistic transformative
use (e.g., Andy Warhol’s Campbell’s Soup
paintings)
• Agreement or license by the trademark
holder consenting to use by another
16. Licensing
• License: A right granted by an owner, known as the licensor,
to a third party, the licensee, which permits the licensee to
associate his or her goods, services, or business with the
logos, names, and mascots of the licensor. Granting a
license creates a contractual relationship between the
licensor and the licensee
• In sports:
– Professional leagues and unions have licensing programs.
– Some players license their own names and likenesses.
– The NCAA registers its own marks.
– Schools license their marks.
17. Olympic Marks
• Special level of protection under federal law
• Covers the interlocking rings, the word
Olympic
• No proof of likelihood of confusion;
improper use is enough
18. Nicknames
• Trademark protection can be denied if a
mark is shown to be immoral, deceptive,
scandalous, or disparaging
– Are Native American caricatures disparaging?
– Fighting Sioux
– Washington Redskins
19. Internet Domain Names
• Cybersquatting: Registering a domain name similar
to someone’s registered trademark and demanding
payment for the trademark holder to buy back that
name
• Uniform Dispute Resolution Process
– UDRP is administered by the Internet Corporation
for Assigned Names and Numbers (ICANN).
– Trademark owner must allege that its mark is
identical or confusingly similar to the mark used by
the cybersquatter and that the cybersquatter
registered and used the domain name in bad faith.
20. Copyright Law
Unlike trademark law, copyright law does not
protect intangible ideas; rather, it protects
ideas or other items that can be identified
on tape, on paper, or on screen.
21. Copyright
• A right granted by statute to the author or
creator of a literary or artistic work that
provides the author with the exclusive right
to reproduce, publish, or sell the
production.
• Not limited to authors or creators. A
nonauthor can obtain these rights by
agreement.
22. Works That Are Copyrighted
• Books and other literary works
• Music and musical works, including any accompanying words
• Dramatic works such as plays, including any accompanying
music
• Pantomimes and choreographic works
• Pictorial (photographic), graphic, and sculptural works
• Motion pictures and other audiovisual works
• Sound recordings
• Architectural works
23. Exclusive Rights of Copyright Owner
• Reproduce the copyrighted work
• Prepare derivative works based on the copyrighted work
• Distribute copies to the public by sale or other transfer of
ownership or by rental, lease, or lending
• Perform the copyrighted work publicly
• Display the copyrighted work publicly
• Perform the copyrighted work publicly by means of a digital
audio transmission
24. Copyright Infringement
• Unauthorized use of copyrighted material in
a way that violates one of the owners’
exclusive rights in the copyright
• Punishment includes fines and injunctions
25. Right of Publicity
• Right of any person to control the commercial use
of his or her identity
• Not produced under federal law
• Many states have recognized the right by common
law or included it in their state statutes
• Protects athletes’ and celebrities’ marketable
identities from commercial misappropriation by
recognizing their right to control and profit from the
use of their names and nicknames, likenesses,
portraits, performances (under certain
circumstances), biographical facts, symbolic
representations, and so on
26. Statistical Information
• A major issue is whether the use of names
and statistics for fantasy sports constitutes
a misappropriation
– CBC v. MLBAM case: Appeals court ruled such
information is protected, but First Amendment takes
precedence
27. Patent Law
• A document provided by the federal government
that gives the owner of an invention the right to
exclude others from reproducing the patented
invention for 20 years
• Specifically describes the invention in great detail
• Invention is patentable if it is a new and useful
process, machine, manufacture, or composition of
matter, or any new and useful improvement thereof
28. Patents in Sports
• Equipment used to play the sport (balls,
bats, gloves, clubs)
• Designs for the apparel worn (shoes, shirts,
jackets, cleats)
• Certain games themselves (the Arena
Football League owns a patent for that style
of football)
29. Patent Infringement
Action whereby someone other than the
patent holder (without permission) makes,
uses, sells, offers to sell, or imports
patented material
30. Ambush Marketing
• Situation where one company creates advertising or
promotional campaigns that confuse consumers and
wrongly imply that the company is an official sponsor of
an event
– Harms companies that are official sponsors by weakening their
relationship with the event
– Found with large-scale events such as the Super Bowl or
Olympics
