The term "ambush marketing" might conjure images of masked marketers lurking in the shadows, ready to smooth talk a consumer into buying an umbrella on a sunny day. In fact, ambush marketing refers to a company's attempt to capitalize on the popularity of a well-known property or event without the consent or authorization of the necessary parties. While today's small and mid-size business owners are increasingly aware of the importance of protecting their own trademarks[1]and other intellectual property, they may unknowingly engage in marketing activities that ambush the property of others.
THE STAKES
Ambush marketing occurs most frequently in connection with national or international events with broad appeal and recognition. For example, consider three recent events in the sports and entertainment industries that transcend their traditional markets and have become, to some extent, part of our collective cultural experience. The NFL's Super Bowl is regularly the year's most watched program in the United States television market. The Academy of Motion Picture Arts and Sciences' annual Academy Awards ceremony uses star power to tap into America's infatuation with fame and celebrity. As this article is being written, office workers throughout the country are participating in a rite of spring: "March Madness" bracket pools in conjunction with the NCAA's men's basketball tournament. These organizations, and others like them, let it be known publicly that they are serious about protecting their trademarks.
"We take these issues very seriously and aren't afraid to pursue infringements vigorously," said Anastasia Danias, the NFL's vice president of intellectual property.[2]
"We're aggressive in our efforts to eliminate the unauthorized uses of our intellectual property so our membership and consumers are not confused as to what promotions or products have been approved by the NCAA," said Greg Shaheen, vice president of Divison 1 men's basketball and championship strategies.[3]
The organizations' legal departments stand behind these words. Prior to each Super Bowl, the NFL sends out thousands of proactive "reminder" letters detailing what cannot be said in advertising materials. Less friendly letters inevitably follow. For example, the NFL sent cease and desist letters to Clear Channel radio stations in 2006, arguing that promotional campaigns giving away free Super Bowl tickets violated the NFL's trademarks.[4] Also in 2006, the NCAA successfully enforced a cease and desist demand against Liberty Mutual Insurance Company when Liberty Mutual used the registered March Madness trademark in print advertising without permission. In 2002, the Academy of Motion Picture Arts and Sciences settled a trademark infringement dispute with France Telecom related to the company's use of an imitation Oscar statuette on calling cards sold throughout France.
WHY ALL THE FUSS?
Not only must organizations protect and police trademarks if they wish to retain their rights under trademark law, they must also strive to keep their officially licensed sponsors happy. As noted by Tom Houseman, head of legal affairs at the FIFA affiliate handling marketing for the World Cup, "[S]ponsorship is worth hundreds of millions of dollars, and if we don't protect it, and our sponsors' exclusivity, there's a grave danger that sponsorship dollars will go elsewhere."[5]
So how does this discussion apply to your neighborhood restaurant's "Super Bowl" party or your local retailer's "March Madness" sale? If you think that organizations such as the NFL cannot be troubled by small-scale infringements of this sort, think again.
NO SMALL FISH
In the days leading up to Super Bowl XLI this past February, the NFL made headlines, and waves, when it sent a cease and desist letter to a church group in Indiana. The church group in question had advertised its Super Bowl party along with its intent to charge admission. Media reports and analysis focused on copyright elements of the issue related to the broadcast and exhibition of the programming. Left relatively unreported were the trademark violations cited by the NFL, specifically the church group's use of the term "Super Bowl" in connection with fee-based admission. While the wisdom of the NFL's efforts could be debated from a public relations perspective, its goals with respect to trademark enforcement were clearly met. The initial letter inspired several church groups around the country to curtail similarly planned activities.
The NFL is known as one of the most aggressive enforcers of its intellectual property rights, but organizations of all shapes and sizes are taking an increasingly active stance in protecting valuable trademarks. Harvard University, for example, employs a full time Director of its Harvard Trademark Program to coordinate worldwide licensing and enforcement of the Harvard marks and insignia. In the summer of 2006, Harvard's efforts took them closer to home when they required two students to change the name of their off-beat, for-profit tour of Harvard Square from "The Harvard Tour" to "The Unofficial Hahvahd Tour."[6]
CATCH US IF YOU CAN
Even given the above examples, some advertisers might ask, "How will they ever know?" Depending on the size of the marketing campaign, the remoteness of the location and other variables, actual likelihood of discovery may indeed be slim at best. However, consider the well-known case of Moseley v. Secret Catalogue, Inc., 537 U.S. 418 ( 2003). In Moseley, the international lingerie retailer, Victoria's Secret, sued a mom and pop novelty store located in Elizabethtown, Kentucky, doing business as "Victor's Little Secret," claiming trademark infringement, unfair competition, and dilution. Moseley is noteworthy not only because it was argued before the United States Supreme Court, but also because it was the Court's first opinion interpreting the Federal Trademark Dilution Act (incidentally, mom and pop prevailed). How did the Moseleys' little store come to the attention of Victoria's Secret to begin with? A local army colonel, offended by the Moseley's attempt to capitalize on a well-known company's name, sent a copy of the offending advertising to the larger entity.
PROCEED WITH CAUTION
Underlying all of these issues is the question of whether a particular ambush marketing campaign would ultimately constitute infringement in the eyes of the court. For example, some experts doubt that the NFL could actually meet the legal threshold necessary to shut down Super Bowl parties or sales advertised by localized businesses.[7] Nevertheless, case law remains scarce as few advertisers are willing, or financially able, to defend their uses in formal proceedings. Before any business sinks time and financial resources into a marketing campaign designed to piggy-back off of the notoriety of a well-known name or event, it is wise to consider what effect a friendly reminder (or not-so-friendly cease and desist letter) from the rights holder would have on its plans.
This article is intended to serve as a summary of the issues outlined herein. While it may include some general guidance, it is not intended as, nor is it a substitute for, legal advice. Your receipt of Good Company or any of its individual articles does not create an attorney-client relationship between you and Sheehan Phinney Bass + Green or the Sheehan Phinney Capitol Group. The opinions expressed in Good Company are those of the authors of the specific articles.
[1] For convenience purposes, the term trademark is used broadly to cover both trademarks and service marks.
[2] As quoted in Super Bowl, Super Trademarks: Protecting the NFL's IP, by Eriq Gardner, The Hollywood Reporter, Esq., January 29, 2007.
[3] As quoted in the NCAA official press release, Unauthorized Usage of March Madness in Advertising Campaign Acknowledged by Liberty Mutual Insurance Company, dated May 26, 2006. The "March Madness" trademark is actually held by March Madness Athletic Association, LLC and licensed to the NCAA on an exclusive basis for its use in connection with the Division I basketball championships.
[4] See Gardner, The Hollywood Reporter, Esq.
[5] As quoted in the online article, Forget Argentina and Brazil - This is the Real World Cup-Winning Team, by Ben Moshinsky, TheLawyer.com, May 29, 2006. The 2006 World Cup in Germany was the subject of numerous ambush marketing campaigns. Most notably, one match was attended by hundreds of Dutch fans clad in orange lederhosen bearing the logo of Bavaria beer, a Netherlands-based brewer and competitor of official sponsor Anheuser-Busch. The fans were required to remove their pants prior to entering the stadium.
[6] See The Harvard Crimson Online Edition, ‘Hahvahd' Tours Nearly Stopped by Administration, by Nicholas A. Ciani, July 7, 2006; and Marking Harvard Territory, by Alexander H. Greeley, May 3, 2005.
[7] Courts would consider several factors, including whether consumers would mistake the advertiser as having an official relationship with the event.
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