CBS Interactive Inc. v. National Football League Players Association is the most recent case permitting the commercial use of professional athlete’s names and statistics without permission.

CBS Interactive operates the website CBSSports.com.  The NFL Player’s Association acts as the exclusive collective bargaining representative for active players in the NFL.  Among other things, the NFLPA has the right to license the use of the individual players’ names, signatures, facsimile, voices, pictures, photographs, likenesses, and biographical information in connection with “group licensing programs” involving six or more players (e.g., fantasy sports, video games, etc.).  NFLPA assigned this right to Players, Inc. in exchange for royalties.  Players, Inc. in turn licenses this right to companies like CBS to use in programs such as fantasy sports.  In fact, for several years CBS did just that, running both free and “pay for play” versions of its fantasy league under a license agreement with Player, Inc.

However, in 2008, CBS refused to renew its license after the Eighth Circuit in C.B.C Distribution and Marketing Inc v. Major Leage Baseball Advanced Media determined that use of baseball players’ names and statistics did not violate any right of publicity, but that even if it did, persons enjoyed a First Amendment right to use the players’ names and statistics that prevailed over any right of publicity.  When Players, Inc. threatened to sue, CBS brought an action for declaratory judgment that its use of player information was permissible under the CBC case.  The Minnesota District Court in the CBS case agreed.

The NFLPA and Players, Inc. attempted to distinguish CBS’s use of player information from the use in CBC case by claiming that they were used in such a way that users of the CBS fantasy football site might believe that the players endorsed the CBS site.  The Court rejected that theory because “the manner in which the player information is presented is akin to newspapers and magazines, which routinely display pictures and information about celebrities, including professional athletes.”  The Court also rejected the idea that the CBC case result stemmed from the unique place baseball holds as a “national pastime” since football arguably has a larger audience than even baseball.  The Court, therefore, found the CBC case controlling and granted CBS summary judgment.

–Matt

On Saturday, June 13, at 12:01 a.m. (EDT), Facebook, the venerable social networking site, started allowing users to create personalized usernames, otherwise known as “vanity URLs”.  Facebook has been announcing this feature for the last week or so, stating that it will make it easier for people to find users on the site.  Before, the URL for a user might read “www.facebook.com/id=23427602734″ but now can be personalized to read “www.facebook.com/mwbower.”  Twitter and YouTube have been offering this feature for some time.

As has been the case over at Twitter and YouTube, vanity URLs can cause problems for trademark owners when users “personalize” their URLs with famous brands (e.g., “facebook.com/[brand name here]“).  Some have suggested that this use of a trademark may not be actionable under federal law, since the use is not “in commerce” as required under the Lanham Act.

Facebook has, however, created some safeguards for trademark owners.  Prior to June 13, trademark owners could have enrolled their trademarks with Facebook to block users from submitting those trademarks as a personalized URL.  Now that username registration is open, trademark owners may still protect their rights by using Facebook’s existing infringement reporting process.  Facebook also reserves the right to reclaim any vanity URL for any reason.

If you are a trademark owner and missed your opportunity to block use of your brand as a URL, it may not be too late to register the URL yourself (new users may do so starting on Sunday, June 28).  Otherwise, you can still play defense by using Facebook’s IP infringement claims process here.

–Matt

“A 12-person jury deliberated six hours over two days in January before awarding [the plaintiff] $50,000 in compensatory damages.  The verdict made him the first plaintiff awarded damages in a libel suit against a blogger….The case is one of at least 50 similar suits filed in the past several years.” — Kansas City Daily News, October 26, 2006

“Social media – always fun until someone gets sued.” — FP Legal Post, March 16, 2009

What are blogs, wikis, and online forums?

Blogs, wikis, and online forums are part of the Web 2.0 social media explosion that are changing the way we do business and work with each other. Web 2.0 represents one of the greatest opportunities of our lifetime to share ideas and work collaboratively.

However, Web 2.0 also represents one of the newest legal threats to people and companies utilizing these tools.  Whether you are new to Web 2.0 or a relative old-timer, you have probably witnessed more and more stories every day about people and companies getting in trouble for what they or their users have posted online.

What legal liability issues can arise from my blog, wiki, or online forum?

Generally, you face the same liability issues as anyone making a publication available to the public. The main legal liability issues include:

• Defamation
• Intellectual Property (Copyright/Trademark)
• Trade Secret
• Right of Publicity
• Invasion of Privacy

Whenever you open the Web 2.0 door, inevitably someone will publish information or post content that others don’t want published.  Someone might, for example, publish something that someone considers defamatory or private, republish someone’s copyrighted content without permission, or misuse or tarnish someone’s trademark in a way that confuses consumers.

What can I do to protect yourself and my company?

• Understand your rights to link to information, quote from articles and blogs, or otherwise use someone else’s creative works.
• Understand how and when you can use the brand name of a good or service in your blog, wiki, or online forum.
• Develop and implement company policies and procedures for employees using Web 2.0 tools.
• Post clear and conspicuous terms and conditions for users.
• Implement a comprehensive and expeditious “notice-and-take-down” procedure for the removal of copyrighted material.
• Understand your rights and responsibilities under Section 230 of the Communication Decency Act of 1996.

–Matt

Intellectual property is divided into four generally accepted categories: copyrights, trademarks, patents, and trade secrets.  Given the ephemeral nature of intellectual property, many people (including some attorneys) often confuse these terms.  Here are thumbnail explanations of these terms, as defined by statutes and our court system:

Copyright:  A copyright is a form of protection granted by law for original works of authorship (including literary, dramatic, musical, and artistic works; such as poetry, novels, movies, songs, computer software, and architecture) fixed in a tangible medium of expression.  A copyright generally gives the copyright holder the exclusive right to reproduce the copyrighted work, to prepare derivative works, to distribute copies or phonorecords of the copyrighted work, to perform the copyrighted work publicly, or to display the copyrighted work publicly.  Copyright does not protect facts, ideas, systems, or methods of operation; although it can protect the way these things are expressed.  A work is under copyright protection the moment it is created and fixed in a tangible form, and lasts for the life of the author plus 70 years (or, in the case of a corporation, 100 years).  Although the registration of a copyright with the U.S. Copyright Office is not required, it can provide the copyright holder with additional rights and protections.

Trademark:  A trademark is a word, name, symbol or device which is used in trade with goods to identify the source of the goods and to distinguish them from the goods of others.  A servicemark is the same as a trademark except that it identifies and distinguishes the source of a “service” instead of a “product”.  The terms “trademark” and “mark” are commonly used to refer to both trademarks and servicemarks. Trademark rights may be used to prevent others from using a confusingly similar mark, but not to prevent others from making the same goods or selling the same goods or services under a clearly different mark. Trademark rights begin to attach as soon as a mark is used in interstate commerce, and last as long as the mark is used in interstate commerce.  However, unlike copyright law, trademarks and service marks must be registered with the Patent and Trademark Office to enjoy wide, federal protection.

Patent:  A patent is the grant made by the Patent and Trademark Office, which provides an inventor with a monopoly on his idea for a set period of time; generally 20 years from the date on which the application for the patent was filed in the United States.  The right conferred by the patent grant is, in the language of the statute and of the grant itself, “the right to exclude others from making, using, offering for sale, or selling” the invention in the United States or “importing” the invention into the United States.  What is granted is not the right to make, use, offer for sale, sell or import, but the right to exclude others from making, using, offering for sale, selling or importing the invention.

Trade Secret:  A trade secret is a process, method, plan, formula or other information unique to a business, which gives it an advantage over competitors, and is not generally known or readily ascertainable.  Unlike the other forms of intellectual property described here, trade secret law does not enjoy broad federal protection; it is different from state to state (although the adoption by many states of the Uniform Trade Secret Act is helping to create a more uniform body of law).  Accordingly, there is no registration of trade secrets and what constitutes a trade secret, and the degree of protection afforded to such a trade secret, can be different depending on the jurisdiction and the extent to which the owner protects its confidentiality.  In general, however, trade secret protection extends to information proved to have economic value and in which steps are taken to keep the information secret.  Companies that can support a claim to trade secret protection can be protected by court-ordered injunctions against those who use or reveal the secret (such as current or former employees), or seek damages against such people for improper use or disclosure.

–Matt

At Safford & Baker we do not file trademark applications.  We prefer to outsource that rather mechanical task to people dedicated to cost-effectively churning out such applications.  We do, however, advise clients on trademark issues affecting their businesses and, on occasion, engage in trademark litigation on their behalf.  Since we advise a lot of start-up businesses, we are invariably asked if a company must register its trademark.

The short answer: no.  You do not have to federally register your trademark to enjoy a minimum level of protection.  You begin establishing rights in your mark simply by using it in commerce.  You can even use the trademark symbols TM or SM with your mark to alert the public to your claim.  (The ® symbol, on the other hand, is reserve for registered marks only.)

Owning a federal trademark registration provides several advantages though.  The most important advantages are (1) a legal presumption that you, in fact, own the mark and (2) the exclusive right to use the mark nationwide in connection with the goods and/or services listed in the registration.  Absent a federal registration, your use of a mark may be limited geographically or limited to use with only certain goods.

The more difficult question then is if you should register your trademark and, if so, when.  I’ll attempt to address these questions in a later post.

–Matt