Thursday, April 2, 2009
How 'Bout Them Cowboys: Dallas Cowboys Win Summary Judgment In Trademark Action Against America's Team Property, Inc.
Who is America's Team? Well, I did a Google search, and the first thing that came up was the Wikipedia entry for America's Team, which starts with the sentence, "The term America's Team is a popular nickname in American sports that most often refers the Dallas Cowboys of the National Football League." The second thing that comes up is the official website of the Dallas Cowboys. And now, unsurpisingly, a judge in the United States District Court for the Northern District of Texas has (partially) agreed.
In Dallas Cowboys Football Club, Ltd. v. America's Team Property, Inc., 2009 WL 819394 (N.D. Tex. 2009), a Minnesota company called America's Team Properties owned rights to a 1990 registered trademark covering the use of the phrase "America's Team" on clothing. In 1999, the company began nudging the Cowboys to buy the registered mark. It ran an ad in USA Today, claiming it planned to hold an auction to sell the mark, with bids beginning at $500,000. It later contacted the Cowboys in 2003, offering to sell the mark for $400,000 and began sending cease and desist letters to Cowboys licensees. The Cowboys and NFL Properties, LLC responded, not by buying the mark, but by bringing an action alleging that the defendant's actions infringed their common law rights in the trademark and their state trademark registration.
[t]he Cowboys assert[ed] the team has used "America's Team" as a service mark and trademark since 1979. The term was first used in commerce that year as the title of the Dallas Cowboys' 1978 season highlight film. The term was coined by Bob Ryan, an executive at NFL Films, working with Doug Todd, the Cowboys' public relations director. The name stuck, and the Cowboys actively encouraged its use to promote the team. The Cowboys allow sponsors, promoters, and charities to use the term in promotions.
Thus, the plaintiffs claimed that “America's Team” was a protectable mark and that the team had priority over the defendant, "a bad-faith infringer whose increasingly aggressive and harassing activities pose a significant threat to the business concerns of the Dallas Cowboys." Of course, in order to win, the plaintiffs had to show a likelihood of confusion between their mark and the defendant's mark, and the best evidence of likelihood of confusion is provided by evidence of actual confusion." And the plaintiffs had such evidence. They presented the court with
a survey by Gabriel Gelb...demonstrating that 19 percent of respondents nationwide believed that the Cowboys produced Defendant's "America's Team" cap or that Defendant needed the Cowboys' permission or approval to make the cap. In the Dallas area, that number jumped to 39 percent of respondents, reflecting the football team's strength in its home market. These percentages [we]re within the range accepted by courts-generally 15 percent-in assessing likelihood of confusion.
The defendant, however, had a competing survey by James Berger, which "found only 6.8 percent of respondents associated “America's Team” with the Dallas Cowboys and determined a net likelihood of confusion of less than 1 percent." Each side objected to the other's expert report as based upon unreliable or inadmissible information, but the court overruled each objection finding that "[t]o show actual confusion, a plaintiff may rely on anecdotal instances of consumer confusion or consumer surveys." Both surveys were thus admissible under Federal Rule of Evidence 703, which states in relevant part that:
The facts or data in the particular case upon which an expert bases an opinion or inference may be those perceived by or made known to the expert at or before the hearing. If of a type reasonably relied upon by experts in the particular field in forming opinions or inferences upon the subject, the facts or data need not be admissible in evidence in order for the opinion or inference to be admitted.
The problem for both parties was that the court found the survey data to be "conflicting, inconclusive and ultimately unilluminating." Ouch. But the court was still able to grant the plaintiffs' motion for summary judgment because of, inter alia, the "strong inference...that ATP [wa]s effectively squatting, akin to so-called 'cybersquatters' who register a domain name on the World Wide Web in the hope of selling it at an inflated price to a legitimate business by the same name."
Perhaps in an attempt to avoid the appearance that he is such a big Cowboys homer that he even thinks that Wade Phillips is a good coach, presiding judge Ed Kinkeade noted in dicta:
To be clear, the Court does not hold that the Dallas Cowboys are "America's Team" or that the organization necessarily has any more claim to the title than the Pittsburgh Steelers, Green Bay Packers, New York Yankees, Atlanta Braves, Notre Dame Fighting Irish, 1980 Olympic hockey team, or any other broadly popular team. The Court does find, however, that the Dallas Cowboys have trademark priority over Defendant with respect to the term "America's Team."