A year in review: US sports law - Intellectual Property & Broadcasting (Part 5)

Friday, 05 August 2016

This article provides a broad overview of legal developments relating to intellectual property & broadcasting in the United States of America between May 2015 to May 2016. This content of this article originates from the presentation by Professor Matt Mitten at the annual conference of the Sports Lawyers Association ("SLA") in Los Angeles in May 2016.

The content of this article originates from the presentation by Professor Matt Mitten at the annual conference of the Sports Lawyers Association ("SLA") in Los Angeles in May 2016.

For the ease of our readers we have broken down each topic presented by Prof Mitten into a series of articles. The the full update covers the following topics:

Agent Regulation and Team Sports – Labor Matters; 
Team Sports - Non-Labor Matters;
Individual Sports College, High School and Youth Sports;
Title IX/Gender Equity & Civil Rights;
Intellectual Property & Broadcasting;
Personal Injury and Safety, Stadiums and Venues;
Sports Betting/Daily Fantasy Sports;
International & Olympic Sports Miscellaneous.

The SLA, a non-profit, international, professional organization whose common goal is the understanding, advancement and ethical practice of sports law. Each year in May the SLA hosts an Annual Conference at which the above topics are presented and debated.

Intellectual Property & Broadcasting

Current and former Division 1 college football and former men’s basketball players starting to receive checks ranging from less than $100 to $9300 from $60M fund settling right of publicity litigation against Electronic Arts and NCAA arising out of unauthorized use of their images in college video games.

EA Drops Women Players From FIFA 16

To Prevent Potential Violation of NCAA Rules o Six Canadian Women’s National Soccer Team’s players were removed from

Electronic Arts’ FIFA 16 videogame along with six players from the Mexican Women’s National Soccer Team and one player from the Spanish Women’s National Soccer Team to avoid risking their eligibility to play intercollegiate soccer, although EA obtained the rights to use their images through their respective national governing bodies and federations and none of them would be paid by EA for their inclusion in its video game.

Electronic Arts Inc. v. Davis (9th Cir. 2015)

“Historic teams” feature in EA’s Madden NFL games, which allows gamers to control avatars resembling retired players, not protected by First Amendment and violates those players’ right of publicity because those likenesses are “central to the creation of an accurate virtual simulation of an NFL game”); petition for writ of certiorari review filed 10/5/15 and subsequently denied.

Dryer v NFL, 814 F.3d 938 (8th Cir. 2016)

Former NFL players’ right of publicity claims arising out of expressive, non- commercial use of a copyrighted work, namely footage of NFL games in historical films, are pre-empted by federal copyright law.

James Marshall v. National Football League  

The Supreme Court denied a petition for a writ of certiorari filed by objecting members of the class of former NFL players to review a $42 million settlement of right of publicity litigation against the NFL, which was approved by the Eighth Circuit.

Ray v. ESPN, Inc., 783 F.3d 1140 (8th Cir. 2015)

Rejecting professional wrestler’s claim that rebroadcast of his performance violated his right of publicity, which is preempted by copyright law.

Marshall v. ESPN, Inc., 111 F.Supp.3d 815 (M.D. Tenn. 2015)

Intercollegiate athletes do not have a right of publicity in televised sports events in which they participate that are produced by others under Tennessee law.

Maloney v. T3Media, Inc., 2015 WL 1346991 (C.D. Cal.)  

The court ruled that federal copyright law preempted the right of publicity claims of members of Catholic University’s men’s basketball team that won the 2001 NCAA Division III championship arising out of the unauthorized sale of their copyrighted photographs owned by the NCAA. Observing that there was no use of their likenesses “not wholly contained within the photographs” or “independent of the mere sale of the pictures,” the court concluded: “Thus their right-of-publicity claims involve the same subject matter, i.e. the photographs, and the same rights, i.e. the display, reproduction, and distribution, encompassed by the Copyright Act. Consequently, these claims are preempted.”

Fox Broadcasting Co., Inc. v. Dish Network LLC, 114 USPQ2d 1100 (C.D. Cal. 2015)

The court held that a satellite television provider’s Dish Anywhere service (which includes a DVR and built-in Sling device) that enables its subscribers to view copyrighted television programming such as sports events on their computers and mobile devices does not violate copyright law. In contrast to American Broadcasting Companies, Inc. v. Aereo, Inc., 134 S. Ct. 2498 (2014), the subscribers’ use of this service to access their individual live or recorded programming and transfer it to these Internet-connected devices does not result in a public performance of copyrighted programming because the provider has a license for initial retransmission of this programming to its subscribers.

Cancellation of Washington Redskins Trademark Registration

Pro-Football, Inc. v. Blackhorse, 115 U.S.P.Q2d 1524 (E.D. Va. 2015). A judge has ordered the cancellation of the team’s federal trademark registration. The court determined that under Section 2(a) of the Lanham Act, the “Redskins” trademark is disparaging to a substantial composite of Native Americans. The court also determined that “[t]he disparagement claim is not barred by laches because (1) Blackhorse Defendants did not unreasonably delay in petitioning the TTAB; and (2) the public interest at stake weighs against its application.”

The club has appealed the district court’s decision to the Fourth Circuit. Its federal registration for the Redskins mark will not be cancelled until the club has unsuccessfully exhausted the appeals process. The team can still use the Redskins mark, which is protected by state trademark law.

Michael Jordan trademark and right of publicity litigation

A Beijing court has dismissed Jordan’s 2012 trademark lawsuit against Qiaodan Sports, which alleged the Chinese sportswear company “built its business around his Chinese name” and his renowned “23” jersey without his permission. The court concluded there was “insufficient evidence to prove [the] trademark referred to the U.S. star.” (SBD 5.18.15)

In Jordan v. Jewel Food Stores, Inc., 743 F.3d 509 (7th Cir. 2014), the Seventh Circuit ruled that a Chicago grocery store ad in Sports Illustrated magazine’s commemorative issue congratulating former Chicago Bulls player Michael Jordan on his induction into pro basketball hall of fame is commercial speech under the First Amendment, which may violate his right of publicity under Illinois law. However, on remand the federal district court ruled that this unauthorized usage of Jordan’s name does not necessarily satisfy the “commercial purpose” element of the Illinois Right of Publicity Act, which defines it as “the public use or holding out of an individual’s identity (i) on or in connection with the offering for sale or sale of a product, merchandise, goods, or services; (ii) for purposes of advertising or promoting products, merchandise, goods, or services; or (iii) for the purpose of fundraising.” Jordan v. Jewel Food Stores, Inc., 2015 WL 1204282 (N.D. Ill.).

In a related case against Dominick’s, another Chicago grocery store chain that ran an ad with a coupon for discounts on steaks in the same Sports Illustrated commemorative issue, a jury awarded Jordan $8.9 million in damages for violation of his right of publicity.

Pierre Garcon v. FanDuel, Inc. (D. Md., filed 2015) (pending class action suit by NFL players against FanDuel, alleging misappropriation of their publicity rights, violation §43 of the Lanham Act by false endorsement, and unjust enrichment by unauthorized usage of their names and likenesses in daily fantasy sports games).

Antitrust lawsuits against leagues and broadcasters

Lawsuits against the NFL, DirecTV, and other related parties:

Ninth Inning Inc. v. National Football League, Inc., C.D. Cal., No. 2:15-cv- 05261

A class action lawsuit was filed against the NFL, DirecTV, and other related parties. The plaintiffs claim the league and providers have violated federal antitrust law since they require consumers to purchase all out-of-market games, instead of having individual out-of-market games available for purchase. (SBD 6.19.15)

Abrahamian v. National Football League, Inc., C.D. Cal., No. 2:15-cv-04606 (and Aliano v. National Football League, Inc., C.D. Cal., No. 2:15-cv-05508)

The NFL, DirecTV, and other related parties, are facing a class action lawsuit from fans claiming the defendants have violated federal antitrust laws. This lawsuit claims that the prices are artificially increased because of the NFL’s territorial divisions and blackout policy. The plaintiffs claim that if it were not for these restrictions, teams would be able to compete against each other for licensing their broadcasts, increasing the availability of games over all platforms. (HR 6.19.15).

NHL and MLB television settlements (Garber et al. v. Office of the Commissioner of Baseball et al., No. 1:12-cv-03704 (S.D.N.Y))

Fans sued NHL, MLB, cable and satellite providers regarding blackout policies and out-of-market restrictions.

The NHL and MLB both settled the cases prior to trial and agreed to charge a lower price for the full-season (all team) package and to provide a full-season single team package.

Robert Gary Lippincott Jr. v. DirecTV Inc. et al., No. 2:15-cv-09996 (C.D. Cal.), as part of the MDL In re: National Football League’s “Sunday Ticket” Antitrust Litigation, No. 2:15-ml-02668 (C.D. Cal.)

Plaintiffs argued that the agreement they made with DirecTV over their NFL Sunday Ticket package is void due to unconscionable provisions under California law. There have been more than 20 lawsuits involving antitrust claims against the NFL and DirecTV over NFL Sunday Ticket. These were consolidated by the Judicial Panel on Multidistrict Litigation in December 2015. These other lawsuits “allege that the NFL Sunday Ticket scheme also protects the broadcasters by limiting their competitors, driving up advertising proceeds and distributor consent fees.” (Law 360 2.1.16)

Varsity Brands, Inc. v. Star Athletica LLC, 799 F.3d 468 (6th Cir. 2015)

The Sixth Circuit, in a split decision, determined that decorative designs used on cheerleading uniforms can be copyrighted. The court ruled “that the stripes and other graphic elements on uniforms sold by Varsity Brands Inc. . . . were eligible for copyright protection. . . .” Accordingly, the majority determined that these designs on Varsity’s uniforms are “conceptually separable” from the clothing itself. Since these designs could be identified separately from the uniform, the Sixth Circuit determined that the Varsity’s graphic designs can be copyrighted. The court rejected the lower court’s determination that the elements Varsity had copyrighted were integral to the function of the uniform. The court reasoned that if they were to adopt the lower court’s decision, it would “render nearly all artwork unprotectable.”

Videogame Maker Sued for Use of Player’s Tattoos without Permission from the Rights Holder

Solid Oak Sketches, which allegedly owns the copyrights to athletes’ tattoos, has sued Take-Two Interactive and Visual Concepts, the producers of the videogame franchise NBA 2K, for copyright infringement. Solid Oak claims that Take-Two has “graphically represented those tattoos on NBA players without its permission” in its video game, infringing eight copyrighted tattoo designs including “a child’s portrait and script scrolls with clouds and doves on LeBron James’ [sic] forearms and butterflies on Kobe Bryant’s arm.” Solid Oak has offered Take-Two a license to depict the athletes’ tattoos in its videogames for $1.1 million (Yahoo 2.2.16)

Bikram’s Yoga College of India LP v. Evolution Yoga LLC, 803 F.3d 1032 (9th Cir. 2015)

The Ninth Circuit rejected Bikram Choudhury’s effort to obtain a copyright registration for yoga poses, which it concluded are “a system designed to improve health” and not a copyrightable compilation or choreographic work.

TCR Sports Broadcasting v. WN Partner LLC et al., No. 652044/2014, (N.Y.)

The Baltimore Orioles and the Washington Nationals are heading to mediation in an attempt to settle a dispute between the two baseball teams over the broadcast fees paid to the clubs by the network that airs both teams’ games, the Mid-Atlantic Sports Network. An arbitration panel originally ruled in favor of the Nationals, but the panel’s ruling was vacated by a New York court because the National’s chosen arbitrator also represented Major League Baseball. (Law 360 3.16.16)