I. REVIEW

II. MARKETING MGMT I Trademarks Copyrights

III. WRAP-UP

REGULATING PARTICIPATION

Private clubs: “Truly private” test

Schools: Must comply Title IX

Drug testing: 4th AM search & seizure

Only state actors are subject to 4th Amendment

NCAA may be conduct drug testing without considering 4th AM challenge

MARKETING MGMT: GENERAL

Communication b/w org. & consumers

Intellectual property law: For intangible values

Trademarks* Copyrights* Patent Trade secret Right of publicity* Unfair trade practice law (FTC & states)*

EXAMPLES

WHY TRADEMARK LAW? (POLICY)

To protect consumers from confusion & deception

To encourage consistent product & service quality

To protect owners’ property rights

HOW TO CREATE TRADEMARK RIGHT

Right from use: Under common law

Used in commerce to identify a product or service

Only within a limited geographical area Different from right under Lanham Act

(below)

Right from registration: Under Lanham Act File TM registration with USPTO Can maintain enhanced TM rights (e.g.,

nationwide TM right)

DISTINCTIVENESS

To be protected by law, a mark must be “distinctive”

3 levels of marks

Inherently distinctive marks (OK) Descriptive marks (OK only if it has 2nd

meaning) Generic marks (Never become TM)

INHERENTLY DISTINCTIVE MARK (OK)

Fanciful mark

No meaning at all by itself Examples: “Xerox,” “Google,” “Pro V1”

Arbitrary mark

Has a meaning but not describing the product Examples: “BGSU Falcons,” “New York

Yankees,” “Blue Diamonds (nuts)”

INHERENTLY DISTINCTIVE MARK (OK)

Suggestive mark

“Indirectly” describes product at issue

Consumer must engage in mental process in order to associate the mark with the description of the product

Examples: “Nike,” “Under Armour,” “Titleist,” “Greyhound”

DESCRIPTIVE MARK (ONLY IF IT HAS 2nd MEANING)

Describes product or service, geographical location, or a person’s surname

No TM right granted w/o secondary meaning

No secondary meaning: “Aerobics (fitness club),” “Lone Star State (salsa),” “Dixie (BBQ),” “Chang (Chinese)”

Has secondary meaning: “McDonalds,” “Zamboni”

DESCRIPTIVE MARK (ONLY IF…)

Requirement of secondary meaning

Consumer must recognize the mark as an indication of its source in addition to the primary meaning

Lanham Act § 1052: Exclusive & continuous use for 5 years presumed to have secondary meaning

DESCRIPTIVE MARK (ONLY IF…)

How to determine suggestive or descriptive

Amount of imagination consumer must exercise

Whether competitors must use the term to describe the product (e.g., “Undershield”)

GENERIC MARK (NO WAY!)

Never become TM even if investing $$$ & time

Examples “Biggest Game Pizza” “Arena” “King Size Bed”

LIKELIHOOD OF CONFUSION CLAIM UNDER LANHAM ACT 43(a)

False designation of origin in connection with goods, services, or their containers

That are likely to cause confusion in the market

As to the affiliation, connection, or association of [the producer or seller] with another person OR

As to the origin, sponsorship, or approval of his or her goods, services, or commercial activities

LIKELIHOOD OF CONFUSION: FACTORS CONSIDERED BY COURT

Strength of plaintiff’s mark

Similarity of the marks

Similarity of products or services

Similarity of target markets

LIKELIHOOD OF CONFUSION: FACTORS CONSIDERED BY COURT

Similarity of marketing channels

Sophistication of purchasers

Evidence of actual confusion

Defendant’s intent (i.e., good faith use?)

Univ. OF Georgia V. LAITE

REMEDY

Injunction: May not use the mark anymore

Monetary recovery

In case of counterfeit (≠ likelihood of confusion)

Intentionally use others’ mark Same as larceny All civil damages + criminal prosecution

SUBJECT MATTER: EXAMPLES

Literary works (e.g., SI) Musical works (e.g., team logo song) Dramatic works (e.g., movie) Choreographic works (e.g., cheerleading) Graphic works (e.g., player illustrations) Sound recordings (e.g., radio broadcast) Architectural works (e.g., Fenway Park)

PURPOSE OF COPYRIGHTS

Two competing interests

Giving limited monopoly to encourage creative works

Limiting the exclusive right for public use

Duration of copyrights

Created before 01/01/1976: 95 yrs from creation

Created after 01/01/1976: Life of author + 70 yrs

REQUIREMENTS (ORIGINALITY + FIXATION)

Originality: Must have minimal originality

Collection of data (e.g., phone book) No Live sport event (e.g., NBA v. Motorola) No Game rules in public domain (e.g., tic-tac-toe)

No

Fixation: Must be put into tangible form

Event plan (idea) for U.S. v. worldwide HS BB No

When sport games are recorded OK

NBA V. MOTOROLA

Fact: Pager displays NBA games in progress (recorded game facts & transmit to customers)

Rule: Sport game itself is not copyrightable

Rationale Games are not “authored” Copyrights on tactics will stifle sports But once creative labor is added,

copyrightable Here Motorola used only facts

TRADEMARKS: CREATION

Inherently distinctive marks (OK) Fanciful Arbitrary Suggestive

Descriptive marks: (OK only if 2nd meaning)

Generic marks (Never)

TRADEMARKS: INFRINGEMENT

Lanham Act 43(a): No false designation of origin

Likelihood of confusion claim 8 factors Injunction or $$$ Counterfeit criminal prosecution

COPYRIGHTS

Creation of copyright (2 requirements) Originality: Must have some creativity Fixation: Idea must be put into a tangible form

Copyright infringement (NBA v. Motorola) Sport game itself is not copyrightable But once creative labor is added, it is

copyrightable