The Bus (the NFL trademark bus, that is) rides again…

With the Pittsburgh Steelers’ sixth Super Bowl (err, I mean “Big Game“) victory, local fans are quick to make merchandise celebrating.  And the NFL is quick to demand that those fans cease and desist from manufacture of that merchandise under copyright and trademark law.  While I can completely understand the NFL’s enforcement efforts for blatant knock-offs, the latest victim was this T-shirt, which did not feature the words “Pittsburgh,” “Steelers,” the Steelers logo, and only sort of approximated the Steelers’ color scheme.  Yet, the manufacturer made one fatal mistake:  He included an image of the Lombardi trophy.

The logo that caught the ever-watchful eye of the NFL

The NFL sent Dan Rugh, owner of CommonWealth Press on the South Side and the Web site where the shirts were sold, a cease-and-desist order Wednesday stating use of the Lombardi Trophy design violates an NFL registered trademark and copyrighted design.

The NFL also objected to the use of a new trademark, SIXBURGH, even though the NFL has not used the mark, and it includes only the “mashing” of “Pittsburgh” and “six.”

“We have also learned that your company is producing and offering for sale SIX BURGH shirts using the colors of the Pittsburgh Steelers Club,” the NFL’s letter stated. “These elements, particularly in combination, clearly misappropriate the goodwill enjoyed by the Pittsburgh Steelers Club, which now has won six NFL Championships.”

The NFL objects to the use of the team colors or any other indication or likeness of the Pittsburgh Steelers, including the designation Sixburgh, “as that’s likely to confuse consumers who might mistakenly believe that the shirts were authorized by the Steelers or the NFL,” NFL spokesman Dan Masonson said.

[…]

In an interesting twist, the NFL could receive a cease-and-desist order of its own. The NFL Shop at http://www.nflshop.com has been selling “Six-Burgh” T-shirts.

SmartArt, LLC of Queenstown, Md., applied for the trademark to the term “SixBurgh” on Jan. 14 for T-shirts, sweatshirts, caps and jackets and the company didn’t license the term’s use to the NFL. SmartArt has been marketing SIXBURGH T-shirts featuring James Harrison’s signature.

“We’ve done well with it,” said Fred Fillah, SmartArt’s marketing director. “I did a lot of research on ‘SixBurgh.’ Prior to us trademarking it, there wasn’t anything. I couldn’t find it anywhere. I did due diligence. You’ve got to respect other people’s rights and what’s considered fair.”

Mr. Fillah said his attorney will be investigating whether the NFL has violated his trademark.

“To the extent the term SixBurgh is being used in a context that refers to the Pittsburgh Steelers, only the team or its authorized representative, in this case NFL Properties, may use it,” the NFL spokesman, Mr. Masonson said.

The NFL is great at arguing that it has rights to trademarks that it hadn”t used (or necessarily thought of).  It won a case when the L.A. Rams moved to St. Louis against a person who attempted to register “ST LOUIS RAMS” before the NFL and then hold the NFL hostage for trademark licensing rights. (I’ll look for the citation.)  The Court found that the early announcements of the team’s move and other uses gave the NFL priority.  But it would seem to me that this is a different situation, particuarly if the applicant for SIXBURGH did not attempt to hold the NFL hostage when it filed its application. After all, SIXBURGH can refer to nothing more than the city that houses the team that has won six NFL national championships, not necessarily the team that actually won the championships.  How ironic it would be if discovery showed that the NFL marketing guys “discovered” the SIXBURGH application and then “suddenly,” beliving the mark to be owned by the NFL through some sort of doctrine of implication, created merchandise with the mark.

If SmartArt has some money to spend and has the smarts to get an experienced trademark firm, this may be an interesting case.

“Stripper Idol” Update — The Docs

Here are the filings with the United States District Court, Western District of Texas, in Fremantle v. Benelux Corp. and Athanases Stamatopoulous, Civil Action A08-CA-908LY. (Blogged here and here).

The Complaint (pdf)

The Exhibits (pdf).

Note that Fremantle’s proof of infringement comes from an ad placed in the Austin Chronicle.  It’s blurry, it’s in black and white, but it does look like the same font that American Idol uses.

Also interesting, as Gene at IPWatchdog noted, that the Complaint contains Counts I (Federal trademark infringement and unfair competition), II (trademark infringement and unfair competition under Texas law) and IV (trademark dilution under Texas law).  Conspicuously absent is Count III, which Gene hypothsized may have been a claim for federal trademark dilution.  The questions arise:  Was the omission of the federal dilution claim intentional, or an oversight? If it was intentional (perhaps a decision made at the last minute) was it because Fremantle was concerned about a finding that AMERICAN IDOL is not famous, or that something like STRIPPER IDOL does not dilute it?  Or did they believe that relief under the Texas law (which appears to require a lower threshold of fame than the Lanham Act) would provide all the remedies they needed (after all, the strip club is not going to offer these services outside of Texas, so if you shut them down in Texas, that wins the case)?

This would be a fun one to follow, although my guess is that the case will be settled quickly and confidentially.

“Stripper Idol” Part Deux

Gene Quinn at IP Watchdog has written this post about the ongoing “Stripper Idol” lawsuit (blogged by yours truly here).  In the post, he argues that the commentators on Fox News covering the story argued on the Bill O’Reilly program that because no one would confuse a strip club with American Idol, there’d be no likelihood of confusion as to source of the services, and therefore the strip club wins.  Gene writes:

While I do enjoy O’Reilly, the fact of the matter is that his legal correspondents were dead wrong, as are most legal correspondents when the attempt to pontificate about matters relating to patents, trademarks or copyrights.

He then states that a trademark dilution theory is most likely to be successful, as “likelihood of confusion” need not be proven.  While I agree with him that the O’Reilly commentators were “dead wrong” in their assessment of the merits of the suit, I respectfully disagree that dilution is the best theory for FremantleMedia to pursue.

First, dilution is sticky because you have to prove that your mark is “famous.”  Under the Texas dilution statute, which may be more liberal than the Section 43(c) of  the Lanham Act, fame may be easier to prove.  But it’s still a significant threshold of proof that the plaintiffs must overcome.

Second, a number of recent federal decisions have noted that for a junior mark to dilute a senior mark, the junior mark must be nearly identical to the senior mark.  In other words, if we’re not going to look at consumer confusion, you have to prove a very close nexus between the allegedy famous mark and the allegedly diluted mark.  While STRIPPER IDOL and Design may be close the AMERICAN IDOL and Design design, it’s a hard burden to show that the more risque mark actually dilutes the distinctive quality of AMERICAN IDOL or tarnishes its image.

My continuing belief is that the best theory revolves around likelihood of confusion, not as to source of the goods, but as to sponsorship or affiliation. A typical survey question used to support Plaintiff’s case may ask something like “Do you believe this strip club had to get permission from anyone to use this logo? If so, who?”  I wouldn’t be surprised if a good percentage of people would respond “Yes; American Idol.”  That’s confusion as to sponsorship or affiliation.

Dilution is a good idea, too, particularly under Texas law (which may be more lenient than the federal standards), and I can’t wait to see how the case unfolds.

“Stripper Idol” competition strips trademark law to its bare bones

As reported by the Houston Chronicle, the Dallas Morning News, and the local Austin TV station KVUE, FremantleMedia, owner of the popular FOX television program American Idol, has sued local Austin strip club Palazio Men’s Club (reasonably safe for work) for the Club’s creation of a weekly amateur special called “Stripper Idol.”

An ad taken from the club's Myspace page.

FremantleMedia, which owns the country’s most-watched TV show, says Palazio’s weekly amateur stripping contest is a trademark violation, one that tarnishes the company brand and could lead the public to believe the TV show is sponsoring the event.

[…]

Palazio managers, who first thought the lawsuit was a joke, say they have no intention of ending the Thursday night strip-off.

They say the contest – where girls have 60 seconds to dance topless, then are ranked by audience applause to win $500 – bears no resemblance to the hit TV show.

[…]

FremantleMedia’s lawsuit takes issue more with the club’s marketing than with the contest itself. The suit notes that Palazio uses the word “idol” in the contest name – a direct link to American Idol, which starts its new season Tuesday. And it has designed a contest logo that uses a “color scheme, design and font” mirroring that of the TV show. In addition to using the logo in advertisements, the club has waitresses wear T-shirts emblazoned with it – T-shirts cut, tied and tailored in revealing ways.

[…]

The suit’s claims are hogwash, said “Kinky” Kelly Jones, a club manager and the show’s emcee. Fremantle can’t lay claims to the word “idol,” he said.

“That word is biblical,” he said, “and has been around for thousands of years.”

And while Stevenson said the club would alter the logo if necessary, he added that he thought the whole suit was a bum deal.

“I didn’t know you could copyright an oval,” he said.

This is seriously a hard case.  “Kinky” is probably right–it will be a stretch for Fremantle to say that any entertainment service featuring a contest in the United States cannot use the word “Idol” in its title.  What Kinky doesn’t realize, though, is that the Lanham Trademark Act protects a junior trademark user from using any mark likely to cause consumer confusion or mistake not only as to the source of goods or services (that is, who provides the service or produces goods) but also “as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person.”  In other words, if Kinky markets his stripper competition in such a way that a customer is likely to be confused or deceived that Stripper Idol is been sponsored by, or is affiliated with, American Idol, then American Idol can win its lawsuit. Most courts use a multi-factor test to determine likelihood of confusion, which usually includes balancing the fame and distinctiveness of the senior user’s mark, the similarities of the trademarks, the care of the consumers, the channels in which the  products are marketed, any instances of actual confusion, and the intent of the junior user in adopting the mark.  If you examine the STRIPPER IDOL advertisement above, there are certainly similarities with the well-known (and perhaps famous) AMERICAN IDOL and Design logo that is used on the TV show:

The TV show's logo

The consumers of both American Idol and Stripper Idol are not particularly careful (just look at the voting on the show!) or “sophisticated”, and while stripping and musical talent aren’t exactly the same, one could argue that the goods and services are “related” enough (just look at the promo for the new season, with the girl singing in a bikini and Simon allowing her to go on.) When you consider that Kinky probably didn’t just “come up” with the “Stripper Idol” name on his own, but rather likely intended his prospective customers to at least think of the Fox show, it would appear that many of the factors would favor Fremantle.

Kinky’s quote also illustrates a common misconception (and confusion) among Americans. Fremantle doesn’t have a “copyright” on an “oval,” (you likely cannot copyright the shape of an oval, as it lacks minimal creativity) but that is a design element of its trademark, which can be used to determine whether confusion is likely.

I haven’t even addressed the issue of “trademark dilution,” the concept that regardless of competition, a “famous” trademark’s market power and presence can be “diluted” by a similar (usually identical) use by a junior user.  Trademark dilution comes in two flavors — dilution by blurring (blurring the unique distinctiveness of the mark) or dilution by tarnishment (a connection that causes harm to the reputation of the senior user).  Associating an amateur strip contest with American Idol just may fall into that latter category.

On the other hand, I’m sure Fremantle’s attorneys thought long and hard about filing suit in this case.  Because rather than shutting down a potential (embarassing) infringer, it has made the club (and its amateur strip competition) more famous and more popular.  On the one hand, trademark owners have to police their rights, or otherwise the marks will become “diluted” and unprotectable (and perhaps even generic–like aspirin and almost Xerox).  On the other hand, fighting needless battles against small proprietors delivering unrelated goods and services just creates negative goodwill.   My guess is that they saw a rather unsympathetic defendant using a very similar logo to create a knock-off competition and believed this could be a prime case to “set an example” to prophylactically prevent others from using the IDOL trademarks or trade dress in simiar ventures.

I’m not sure that stuffing a few smelly singles into Fremantle’s g-string alone will put a smile on this media giant’s face. But it wil be a fun one to watch.

(All puns, intended.)

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UPDATE: Conde Nast Portfolio.com has posted a similar story, except that the author contends that it’s a case of “copyright infringement.”  Indeed, there is sometimes some crossover between articles that are copyrighted and articles that may be entitled to trademark protection– the characters Mickey Mouse or Popeye may be examples.  But, alas, it appears that the Conde Nast journalist is just as clueless as strip club owner Kinky on the differences between copyright and trademark.  I’ll blog on this more soon, but for now, here’s a handy primer from the PHOSITA blog.

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UPDATE No. 2:

This story continues to grow legs, now being picked up by the Boston Globe and the New York Daily News.