The Sports Esquires Putting Sports on Trial
Dan Snyder and the Redskins managed to stay out of the headlines for a few days, as they were without a first round pick for the 25th time in 79 drafts. Perhaps this motivated the team to send LaVar Arrington a cease-and-desist letter about a flier for his football tackling camps that refers to him as a “Redskins Great” and includes a photo of him in a Redskins uniform.[i]
This is not the first time the team has taken issue with a seemingly benign use of its name. In 2011, at the request of the team, The Washington Post changed the name of its video webcast and blog about the team from “Redskins Insider” to “Football Insider.”
The Washington Redskins are policing their brand as any good business should do. However, in these two instances they have crossed the line and have no legal basis to ask Mr. Arrington to cease-and-desist the use of the Redskins trademark.
The crux of trademark law is the prevention of consumer confusion. At its most basic, trademark law is about ensuring that when you go to the supermarket to buy a Coke, you can be sure that what you are buying is indeed a Coke, and not a Pepsi Blue disguised in a Coke can.
Of course the law is more complicated and has been extended to situations beyond the previous example, but does trademark law give the Redskins the right to ask The Washington Post to change the name of its blog? Does trademark law give the Redskins the right to ask LaVar Arrington to cease from referring to himself as a “Redskins Great”?[ii]
The answer is no. A trademark is not a monopoly on any use of the underlying words and phrases and does not and should not extend to situations such as Mr. Arrington’s descriptive use. The Redskins cannot use trademark law to make these demands. They can of course exert pressure and throw around their considerable weight, but they have no legal ground on which to stand.
The reason is quite simple. Fair use. In trademark law there are two types of fair use: nominative fair use and classic fair use. Classic fair use is a defense to trademark infringement that is codified in the Lanham Act.[ii] Nominative fair use is a judicially created doctrine, originating from the Ninth Circuit.[iv]
To establish a classic fair use defense, a defendant must prove the following three elements: defendant’s use of the term (1) is not as a mark, (2) is done fairly and in good faith, and (3) is only to describe its good or services. Arrington’s use of the Redskins trademark fits squarely within this framework.
To establish a nominative fair use defense a defendant must prove the following three elements: (1) the plaintiff’s product or service must be one not readily identifiable without use of the trademark, (2) the defendant only uses so much of the mark as is reasonably necessary to identify the plaintiff’s product or service, and (3) the defendant does nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the mark holder. Arrington’s use of the Redskins trademark also fits squarely within this framework. However, if the Redskins were to sue Arrington, they would do so within the 4th Circuit which has not formally adopted nominative fair use.[v]
For the sake of argument though, let’s apply the test. First, the Washington Redskins football team cannot be readily identified without use “Redskins.” It is of course possible to call to mind the team without using its trademark. For example, one could refer to the team as the “Washington Indigenous Americans,” or the “Lower Potomac Basin Football Team.” But to refer to the team in this way clearly frustrates useful discourse and does not readily identify the team. Thus, the first element of the nominative use test is met. Second, Arrington only uses the text version of the team’s mark and a small picture of him containing the teams marks. Thus, Arrington clearly satisfies the second element since he has used only as much as is reasonably necessary. Finally, Arrington has done nothing to imply sponsorship by the Redskins. On the contrary, the Under Armour logo, “Powered By Under Armour,” and “Extreme Procision” clearly indicate the actual sponsors of the football camp.
If you remain unconvinced, consider the case of Terri Welles. Ms. Welles is the 1981 Playboy Playmate of the Year. She promoted herself as “Terri Welles—Playmate of the Year 1981,” used and used “playboy” and “playmate” in the metatags of her site. The Ninth Circuit found that this was permissible as a nominative fair use.[vi] The court noted that “there is no other way that Ms. Welles can identify or describe herself and her services without venturing into absurd descriptive phrases. To describe herself as the “nude model selected by Mr. Hefner’s magazine as its number-one prototypical woman for the year 1981” would be impractical as well as ineffectual.”
The Welles case and Mr. Arrington’s are nearly identical and so should be the legal outcome. Quite simply it just makes sense that an athlete should be able to refer to and describe themselves by using the name of the team they played for. Trademark law is not necessary in instances such as these and should absolutely give way so that we avoid the absurd result of referring to Lavar Arrington as “Lower Potomac Basin Football Team Great, LaVar Arrington.”
[i] The author is a lifelong, diehard Redskins fan (which is really the only way one could be a Redskins fan) and growing up, LaVar Arrington was one of his favorite players. I don’t think I’ve ever seen a player enjoy running, hitting, tacking and playing the game as much as Mr. Arrington. I will do my best to remain unbiased. [ii] 15 U.S.C. § 1115(b)(4). Proof of infringement is subject to the following defense: “That the use of the name, term, or device charged to be an infringement is a use, otherwise than as a mark … or of a term or device which is descriptive of and used fairly and in good faith only to describe the goods or services of such party, or their geographic origin.” [iii] In the summer of 2012, Arrington was named by the team as one of the 80 greatest Redskins. [iv] New Kids on the Block v. News Am. Pub., Inc., 971 F.2d 302 (9th Cir. 1992). [v] However, the 4th Circuit seems to recognize the value in the nominative fair use analysis. Rosetta Stone v. Google, 676 F.3d 144, 154 (4th Cir. 2012). [vi] Playboy Enterprises, Inc. v. Welles, 279 F. 3d 796 - Court of Appeals, 9th Circuit 2002.
