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What Can You Do When Parody Goes Too Far?

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What Can You Do When Parody Goes Too Far? 01 TW cover 10.06 22/9/06 12:56 Page 1 Building trademark expertise since 1986 OCTOBER 2006 | Issue 191 | Trademark law for sports fans The 12th Man goes to court The Enforcer Enforcing judgments within the European Union NNOOjokejoke What can you do when parody goes too far? Daily news at www.ipworldonline.com 13-17 TW 10.06 22/9/06 13:48 Page 16 K CASE COMMENT Building trademark expertise since 1986 Trademark Law for sports fans THE CASE – Texas A&M University v. Seattle K Seahawks, Inc., et al. The 12th Man goes to court – Cause No. 06-000231-CV-85 – 85th Judicial, Brazos County, Texas Lisa Pearson of Kilpatrick Stockton reflects on the passions behind the recent tussle to win the right to the 12th Man. hat does it take to get American more use of Texas A&M’s ‘12th MAN’ marks football fans impassioned about with the upcoming Super Bowl game, with Wtrademark law? A pre-Super millions of [infringing] products…being sold Bowl dispute over a mark that, quite literally, and with over a billion viewers watching the signifies the good will of the fans improper use and dilution of Texas A&M’s themselves: THE 12th MAN. There are ‘12th MAN’ marks at the Super Bowl.” eleven players on a U.S. football team. The phrase “The 12th Man” refers to the team’s That same day, Judge J.D. Langley entered fans. the temporary restraining order ex parte, without notice to the Seahawks or requiring The fight A&M to post a bond. On 30 January 2006, Texas A&M University The fans of both teams went wild. The filed a complaint in its local state court in Seahawks obviously felt sandbagged. Sports Brazos County, Texas against Seattle commentators began sounding like legal Seahawks, Inc., Seattle Professional Football, correspondents and sports bloggers around Inc. and Football Northwest, LLC the country, confident in their trademark (collectively, the “Seahawks”) alleging law expertise, started arguing the merits of infringement and dilution of A&M’s the case. cherished 12th MAN mark under state common law and the Lanham Act, the federal A&M’s 12th MAN tradition trademark statute. Texas A&M University v. The 12th MAN dispute, and the resulting AUTHOR Seattle Seahawks, Inc., et al., Cause No. 06- hoopla, owes their origin to a great sports 000231-CV-85 (85th Judicial, Brazos County, legend, dating back to 2 January 1922. Every Lisa Pearson is a partner in the New Texas). The state university vehemently A&M student knows it by heart. According to York office of Kilpatrick Stockton LLP objected to the use of the 12th MAN mark by the school’s website, specializing in trademark, copyright the Seahawks, a professional football team and Internet litigation and counselling. “an underdog Aggie team was playing She has also designed and then on its way to the National Football Centre College, then the nation's top implemented comprehensive anti- League’s Championship Super Bowl game, to ranked team. As the hard fought game counterfeiting, policing and refer to Seahawks fans in advertisements, on wore on, and the Aggies dug deeply into enforcement programs for many well- the Seahawks website, and on merchandise their limited reserves, Coach Dana X. known rights owners. Lisa has such as shirts, towels, buttons and flags. In Bible remembered a squad man who was represented clients across a broad addition, A&M complained, the Seahawks not in uniform….His name was E. King spectrum of industries, including raised a 12th Man flag at their stadium Gill, and was a former football player who publishing, entertainment, consumer Qwest Field just before kick-offs, and similar was only playing basketball. Gill was products, fashion, advertising, hotel flags were hoisted on the Space Needle called from the stands, suited up, and stood and travel and many others. (Seattle’s most famous landmark) and office ready throughout the rest of the game, buildings in the area. which A&M finally won 22-14. When the A&M filed an application for a temporary game ended, E. King Gill was the only restraining order together with its man left standing on the sidelines for the complaint to prevent the Seahawks from Aggies. Gill later said, ‘I wish I could say continuing these activities until the court that I went in and ran for the winning touchdown, but I did not. I simply stood by could decide a preliminary injunction in case my team needed me.’” motion. A&M claimed: “there will be more and 16 | Trademark World #191 | October 2006 www.ipworldonline.com 13-17 TW 10.06 22/9/06 13:48 Page 17 Building trademark expertise since 1986 CASE COMMENT K According to A&M, the 12th Man is one of Hypothetical defence the Seahawks’ own 12th Man tradition, its most “revered, inviolate, and time- The Seahawks never presented which evidently predates the filing dates of honoured” traditions, and it not only their defences to A&M’s claims, A&M’s federal trademark applications. symbolizes the school and its football leaving plenty of room for (The filing of a federal trademark program, but A&M’s school spirit. The phrase commentary by trademark lawyers. application, establishes nationwide priority certainly garners enormous good will. Aggie Here are a few possible lines the team could by operation of law once the registration fans - the collective 12th Man – reportedly have pursued, depending on their game plan: issues.) The Seahawks reportedly retired stand throughout every A&M football game to their number 12 jersey in honour of their show their solidarity with their team. • To the extent that the Seahawks used the fans in 1984, and have evidently used the In 1990, A&M secured a federal trademark phrase “12th Man” to refer to fans and fan- number 12 and the phrase “12th Man” to registration for the 12th MAN mark for a related activities, they had plausible defences inspire fan loyalty since that date, if not variety of merchandise (claming use dating that the phrase has become generic and that earlier. In the U.S., common law trademark back to 1983) and college scholarship services their use was fair use. An Internet search rights generally arise from use or (claiming use dating back to 1965). In 1996, discloses that many other school and reputation in a particular geographic area A&M secured a second federal registration for professional teams use the phrase 12th Man and are protected on a territorial basis. “entertainment services, namely organizing in this manner. Further, the phrase has made Accordingly, multiple users of similar and conducting intercollegiate sporting its way into some dictionaries. Much of the marks may each acquire independent events” (claiming use dating back to 1922). In emotion over this case stems from Aggie common law trademark rights in separate addition, it owns a 1998 registration for 12th fans’ sense of ownership over the phrase, but geographic markets regardless of who first MANIA! for a variety of merchandise and fund U.S. trademark law does not give trademark used the mark in commerce. If the raising services. In its lawsuit, A&M also owners that kind of a monopoly. Seahawks could establish that they relied upon its common law trademark rights • Due to the undeveloped state of the record, developed common law rights in the arising from somewhat vaguely defined use of the nature and extent of the Seahawks’ use number 12 or the 12th MAN mark for the “12th MAN marks” since the momentous of A&M’s registered 12th MAN marks is far certain goods or services before A&M day when E. King Gill stood on the sidelines from clear. The Seahawks so-called “12th applied to register its marks, perhaps they ready to serve if called. Man flag”, for example, simply bore the could carve out a niche for such uses, at number 12, as did much of the least in the Pacific Northwest. Procedural skirmishing merchandise depicted in A&M’s On 2 February 2006, three days after A&M pleadings (with the exception of a button The return of the 12th Man obtained its temporary restraining order, the bearing the phrase “THANKS 12th MAN”). The Seahawks never tested their defences, real Seahawks removed the case to federal district Further, in their transfer motion, the or hypothetical, due to the settlement. A&M court in Houston, Texas based on the Seahawks argued that local media walked away from the dispute with stronger diversity of citizenship of the parties and the companies, businesses, and other third rights in its 12th MAN marks by converting fact that the case raised a federal question.1 parties not under the Seahawks’ control used the Seahawks allegedly unauthorized uses into Three days later, the Seahawks lost Super the phrase “12th Man” and the number 12 as licensed uses that inure to A&M’s benefit. But Bowl XL to the Pittsburgh Steelers, 21-10. pseudonyms for Seahawks fans. (A&M did that may not be the end of the story. They did not, however, lose the case. In fact, submit exhibits indicating that the Seahawks In late June 2006, the media reported that the Seahawks never even filed an answer to themselves referred to the Number 12 flag A&M was in another skirmish over the 12th the complaint or opposed A&M’s motion for a as the “12th Man flag” and carried on their Man. It sent a demand letter to Yahoo, the preliminary injunction. website a 12th Man advertisement for a local popular search engine, asking Yahoo to cease After removing the case to federal court in restaurant.) In a telling footnote in its brief using the 12th MAN marks on its World Texas, the Seahawks sought to gain another in opposition to the Seahawk’s transfer Cup Soccer fan page.
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