by Jay Marshall Wolman
Yesterday, on Twitter (yes, I’m on Twitter @wolmanj), I shared an article by Mike Masnick from 2012 regarding the myth of the Big Game/Super Bowl nomenclature. It seems the issue is still a popular one on Techdirt.
Here’s the thing–the 9th Circuit laid out a nice test for nominative fair use:
First, the product or service in question must be one not readily identifiable without use of the trademark; second, only so much of the mark or marks may be used as is reasonably necessary to identify the product or service; and third, the user must do nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder.
New Kids on the Block v. News America Publishing, Inc., 971 F.2d 302, 306 (9th Cir. 1992). “The Big Game” can mean any other championship. Thus, the first test is met. The second test is also met–it only uses two words. Finally, so long as you are not suggesting sponsorship, it is okay to say “Come to Gary’s Olde Towne Tavern to watch the Super Bowl.”
Everybody pretty much knows using “Super Bowl” is nominative fair use in the above context. Yet, the NFL seems to knowingly flout this right and send improper cease-and-desist letters. A suit by the NFL would not likely be successful and probably frivolous. Thus, it could be fair to say that by claiming Gary’s is infringing, despite nominative fair use, the NFL would be making a blatant misrepresentation. Gary’s could then potentially sue the NFL for violation of state mini-FTC acts which prohibit unfair and deceptive trade practices. These acts typically provide for attorney fees upon success, sending a message beyond just a declaratory judgment. Further, if the FTC wanted, it could probably pursue the NFL for these overreaching practices.
Just as copyright holders must consider fair use before sending a DMCA takedown notice, so too should trademark owners. [I haven’t researched whether anyone has ever brought a state mini-FTC act claim over an improper cease-and-desist letter, so feel free to share.]