The Kenneth J. Germeshausen Center, created in 1985 through the generosity of Kenneth J. and Pauline Germeshausen, is the umbrella organization for Pierce Law's intellectual property specializations. Today the Germeshausen Center is a driving force in the study of international and national intellectual property law and the transfer of technology. It acts as a resource to business as well as scientific, legal and governmental interests in patent, trademark, trade secret, licensing, copyright, computer law and related fields.

The Center bears the name of its benefactor Kenneth J. Germeshausen, one of New England's pioneering inventors and professor of electrical engineering at Massachusetts Institute of Technology. Germeshausen was also co-founder of the international high technology firm of EG&G.

'It's America's favorite 'Big Game,' but think twice before you call it the Super Bowl - Catherine L. Roehl

            There is no doubt about it, Americans love the Super Bowl.  Whether a die-hard football fan that never misses a game, or occasionally pressured into watching by friends or family, we all watch football at one point.  Come January or early February, football fans, party planners, shopaholics, and friends alike all have something to look forward to: the Super Bowl!  In fact, the Super Bowl has been glorified in this country to the point that the game day has been celebrated as that of a de facto holiday, commonly referred to as 'Super Bowl Sunday.[i]  It has been reported that this year's game was the most watched Super Bowl in history, with an average of 98.7 million viewers, which topped last year's average of 97.5 million viewers.[ii]  If the ratings don't give you an idea of just how many people tune in to watch this game every year, consider the fact that the United States Department of Agriculture has previously issued food safety advice articles for Super Bowl parties and that advertisers during the 2009 Super Bowl paid up to a reported $3 million dollars for a 30-second commercial, despite the current tough economic situation.[iii] 

            But wait; can we still call it the 'Super Bowl?  Technically the term 'Super Bowl is the formal name for the National Football League's (NFL) professional football end of the year championship game.  But, we've all heard the radio commercials or seen the advertisements that refer to the Super Bowl not actually as the 'Super Bowl, which is the actual event's name, but rather as the 'Big Game or as the 'Game Day.  But aren't these titles the same thing?  We all know what event the advertisers are referring to right?  So why can't business owners or advertisers call the game what it is: the 'Super Bowl?  Well, it's simple.  Here in the United States, we rightfully afford federal trademark protection rights to trademark owners who have obtained federal registrations on their marks.  The NFL is the owner of trademark registrations to numerous marks including 'NFL, 'Super Bowl and 'Super Sunday.[iv]  The mark 'Super Bowl was first used in 1967 and was registered in 1969.[v]  It follows then that if the NFL wants to limit the use of the term 'Super Bowl for products and/or services that are not associated with or sponsored by the NFL they validly can.  But where do we draw the line? After all, when dealing with intellectual property, sometimes overprotection can actually 'stifle[] the very creative forces it's supposed to nurture.[vi] 

            The NFL has aggressively protected its trademarks.[vii]  This is arguably a good thing because with the privileges afforded to federal trademark protection comes the responsibility of trademark owners to effectively police the use of their marks to ensure consumer protection.  Federal registration also requires trademark owners to properly maintain the 'good will associated with their marks.  However, the NFL 'sends out thousands of letters to global advertising giants each year, reminding them not to state or imply that their products are associated with [the Super Bowl].[viii]  Frequently, these letters indicate that the terms 'Super Bowl, 'Super Sunday, and 'NFL are prohibited from use within advertisements.[ix]  While the Super Bowl is the perfect opportunity for advertisers to use ambush marketing or piggybacking strategies, these techniques are generally legal so long as the ads do not infringe on copyrights and trademark rights.  This follows the idea that 'intellectual property law is full of careful balances between what's set aside for the owner and what's left in the public domain for the rest of us.[x]  But, not only does the NFL customarily send out warnings and cease-and-desist letters to those using the NFL's marks, it also files oppositions against pending trademark registrations—such as the NFL's successful opposition of Jasper Alliance's registration of the mark 'Super Bowl for greeting cards.[xi]  The NFL also aggressively files lawsuits against companies, such as the suit to stop Coors Brewing from promoting Coors Light as the 'The Official Beer of NFL Players.[xii]  Here, even though Coors promoted the beer as the official beer of NFL players and not the NFL itself, the court upheld the NFL's preliminary injunction and ordered Coors to alter or remove NFL players from their campaign.[xiii]  Coors has since reconciled with the NFL and in 2001 the company paid a reported $240 million to become the league's official beer.[xiv]  When the NFL stands to earn $240 million from licensing agreements with companies such as Coors, it's easy to see why the NFL is so attentive to trademark infringement.  Claiming to be the NFL's official beer, however, is on completely different level from advertising a Super Bowl special at your local grocery store.  Therefore, it is difficult to see how such limited promotion harms the goodwill of the NFL's mark.  Additionally, some of the ways in which small advertisers reference the Super Bowl may constitute fair use because even though 'it may seem unfair that much of the fruit of a creator's labor may be used by others without compensation . . . this is not some unforeseen byproduct of our intellectual property system; it is the system's very essence.[xv]  In essence, here in the U.S. the '[i]ntellectual property law assures authors the right to their original expression, but encourages others to build freely on the ideas that underlie it.[xvi]

            Unfortunately the NFL is not content with only going after the bigger fish like Coors.  In fact, the NFL attempted to obtain a federal registration for the mark 'The Big Game, to keep advertisers from using this term to get around infringing on the NFL's established marks like the 'Super Bowl.[xvii]  However, the University of California at Berkeley and Stanford University fans are probably very familiar with the term 'The Big Game, as this refers to the annual football game played between the two rival universities.[xviii]  Consequently, the NFL was threatened with severe opposition during its publication period with the USPTO.[xix]  Because of the universities' longstanding use of the term 'The Big Game and because of the widespread opposition the NFL faced, the NFL eventually abandoned their registration for the term.[xx]

            This scenario begs the question of whether is it fair for the NFL to prohibit advertisers from using the terms 'Super Bowl and 'Super Sunday and afterward attempt to register a trademark for the alternative phrase advertisers were forced to come up with to avoid trademark infringement in the first place.  The point is that even if the NFL applied for a registration for every alternative name for the Super Bowl, creative advertisers will still come up with new substitutes to describe the game.  In addition, when the NFL attempts to register these additional marks through a §1(b) application, special attention should be paid to whether the NFL actually has a 'bona fide intent to use the mark in commerce in the future.  Additionally, when smaller advertisers only reference the NFL in such a way as to only promote, for instance, their 'buy-one-get-one free type promotions, in my opinion the NFL's guard dog approach towards their marks extends too far.  Let's face it; we all know what advertisers are referring to come Super Bowl time.  For example, I received an email from the restaurant T.G.I.Friday's before the Super Bowl.  It promoted their 'Big Game Eve Party, by using the phrase 'Come to the Game we Can't Name, for drink and food specials for the night before the Super Bowl.  It was pretty clever to use the phrase 'the Game we Can't Name—and, of course, I still immediately thought of the Super Bowl.  Unlike the situation in Coors Brewing, T.G.I. Friday's did not attempt to market themselves as the official restaurant of the NFL, nor did the event take place during the Super Bowl.  But even so, given the NFL's prior policing track record, one could envision the NFL taking issue with T.G.I. Friday's usage of this slogan. 

In addition to trademarks, the NFL is also on top of enforcing its copyright protections.  This goes as far as prohibiting churches from holding large Super Bowl viewing parties, claiming that this violates the NFL's copyrights.[xxi]  The NFL also bans 'public exhibitions of its games on TV sets or screens larger than 55 inches because smaller sets limit the audience size.  However, the NFL's enforcement is limited to some extent because '[t]he section of federal copyright law giving the NFL protection over the content of its programming exempts sports bars.[xxii]  The NFL's reason for this is that 'large Super Bowl gatherings around big-screen sets outside of homes shrink TV ratings and can affect advertising revenue.[xxiii]  For those of us who cannot afford the expenses associated with attending the Super Bowl game in person, the NFL has now managed to prohibit us from gathering with our churches or community groups to watch the game as well.

As we saw with the Coors Brewing case, licenses involving the NFL are costly.  A license agreement should not be necessary to ensure advertisers that no suits will be filed against them for indirect references to the NFL's championship game.  While the Super Bowl is a perfect opportunity for advertisers to use ambush marketing techniques, advertising is about creativity.  As shown, prohibiting use of one phrase merely forces advertisers to develop other phrases to describe the game.  At what point do we block resourceful advertising techniques for consumers in favor of a trademark owner's apparent right to exclude all references to their mark? Overprotecting intellectual property can be just as harmful as underprotecting it.[xxiv]  Sooner or later courts may realize that just because the NFL allows 300-pound linebackers to tackle players during the game, that doesn't mean that the NFL should be allowed to continue using similarly aggressive tactics in its trademark and copyright enforcement.  

 

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* Catherine L. Roehl (FPLC JD '09) is a staff attorney with Argy, Wiltse & Robinson, P.C. in McLean, Virginia.

***DISCLAIMER***

This article solely represents the opinion of the author, and does not necessarily represent the opinion of the University of New Hampshire School of Law, the Germeshausen Newsletter, or Argy, Wiltse & Robinson, P.C.

[i] See Laura Petrecca &Theresa Howard, Super Bowl commercials will still go for laughs in 2009, USA Today, Jan. 29, 2009, http://www.usatoday.com/money/advertising/adtrack/2009-01-18-super-bowl-....

[ii] Alex Weprin, Super Bowl Ratings: Most-Watched In History: Game averaged 98.7 million viewers, Broad. & Cable, Feb. 3, 2009, http://www.broadcastingcable.com/article/173576-Super_Bowl_Ratings_Most_....

[iii] Petrecca & Howard, supra; News Release, USDA Food Safety and Inspection Service, USDA Gives Food Safety Advice to Kick Off Your Super Bowl Party (Jan. 22, 2009), http://www.fsis.usda.gov/News_&_Events/ NR_012209_01/index.asp.

[iv] See, e.g., U.S. Trademark Reg. Nos. 1406345, 3286411, 3343714.

[v] NFL v. Jasper Alliance Corp., 16 U.S.P.Q. 2d 1212, 1214 (T.T.A.B. 1990).

[vi] White v. Samsung Elecs. Am., Inc., 989 F.2d 1512, 1513 (9th Cir. 1993) (denying rehearing) (Kozinski, A., dissenting) (citing Wendy J. Gordon, A Property Right in Self Expression: Equality and Individualism in the Natural Law of Intellectual Property, 102 Yale L.J. 1533 (1993)).

[vii] NFL v. Coors Brewing Co., No. 99-7921, 1999 U.S. App. LEXIS 32547, at *6 (2d Cir. Dec. 15, 1999).

[viii] Eriq Gardner, Protecting The Super Bowl Trademark Remains a Battle, AllBusiness.com, Feb. 2, 2007, http://www.allbusiness.com/services/motion-pictures/4926805-1.html. 

[ix] Id.

[x] White, 989 F.2d at 1516.

[xi] 16 U.S.P.Q. 2d at 1217.

[xii] Coors Brewing, 1999 U.S. App. LEXIS 32547, at *2.

[xiii] Id. at *1, *7.

[xiv] Paul Farhi, A Game by Any Other Name Sells as Sweet, The Washington Post, Jan. 31, 2006, http://www.washingtonpost.com/wp-dyn/content/article/2006/01/30/AR200601....

[xv] White, 989 F.2d at 1517 (citing Feist Publ'ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 349–50 (1991)).

[xvi] Id. 

[xvii] Craig S. Mende, On Watching 'The Big Game, Forbes, Feb. 1, 2008, http://www.forbes.com/2008/01/31/superbowl-nfl-trademark-oped-cx_csm_020...

[xviii] Id.

[xix] Id.

[xx] Id.

[xxi] Jacqueline L. Salmon, NFL Pulls Plug On Big-Screen Church Parties For Super Bowl, The Washington Post, Feb. 1, 2008, http://www.washingtonpost.com/wp-dyn/content/article/2008/01/31/AR200801...

topnews. 

[xxii] Id. 

[xxiii] Id.

[xxiv] See White, 989 F.2d at 1513.

Catherine L. Roehl (JD '09) is a staff attorney with Argy, Wiltse & Robinson, P.C. in McLean, Virginia.