Sue-Per Bowl Shuffle 2014: The Year In NFL-Related Intellectual Property Litigation

Heading into this year's Super Bowl party season, there are two things every lawyer should be concerned about. First, why can't your team get it together? Second, what do you do if you are asked to explain to your friends and neighbors some NFL-related litigation that you haven't been following? We can't help you with the first problem (although, as an Iggles fan living in the heart of Patriots Nation, I feel your pain). As to the second problem, however, we've got you covered, at least when it comes to IP (and IPish) litigation. Laminate a copy of this handy summary, put it next to the guacamole dip, and you'll be able to field nearly any question that comes your way!

Blackhorse v. Pro-Football

If contentious trademark litigation were the stuff of championships, Washington and not Seattle would be headed to their second straight Super Bowl. After years of litigation over various "Washington Redskins" trademarks, in June the Trademark Trial and Appeal Board (TTAB) granted the petition of Amanda Blackhorse, a Navajo activist, to cancel certain registrations owned by the team. The TTAB held that these marks ran afoul of 15 USC §1052(a), which bars the registration of trademarks "which may disparage . . . persons, living or dead." Our summary of the decision is available here. See Blackhorse v. Pro-Football, Inc., 2014 TTAB LEXIS 231 (Trademark Trial and App. Bd. June 18, 2014).

A couple months later, the Washington team sought review in the Eastern District of Virginia, challenging the TTAB decision and arguing that the statute violates the First Amendment. After Blackhorse's motion to dismiss was denied, the Solicitor General of the United States moved to intervene in order to defend the constitutionality of the statute. See Pro-Football, Inc. v. Blackhorse, 2014 U.S. Dist. LEXIS 166889 (E.D. Va. Nov. 25, 2014).

Super Bowl Shuffle Litigation Continues

Back in January, members of the "Shufflin' Crew," which includes former Chicago Bears Richard Dent, Jim McMahon and other players who participated in the 1985 "Super Bowl Shuffle" song and music video, brought an action in Illinois state court for declaratory judgment and other relief against the assignee of the rights to the video. The former players alleged that the purported assignment to the defendant was invalid, and therefore their performances were being exploited without authorization. The defendant removed to federal court and argued that the plaintiffs' claims were preempted by the Copyright Act. The Court agreed with respect to the plaintiffs' declaratory judgment and conversion claims, and decided to exercise supplemental jurisdiction over the remaining counts. See Dent v. Renaissance Mktg. Corp., 2014 U.S. Dist. LEXIS 152448 (N.D. Ill. Oct. 28, 2014).

Meanwhile, Don Levey, the photographer who took the picture on the cover of the Super Bowl Shuffle album, has been busy with his own litigation. In 2013, the Chicago Tribune reprinted the photograph, but did not include a credit to Levey – which had been printed on the back of the original album sleeve. Levey alleged that this omission amounted to the unlawful removal of "Copyright Management Information" under Section 1202 of the Digital Millennium Copyright Act (DMCA). The Tribune argued that such an analog notation could not as a matter of law fall within the DMCA's definition of "Copyright Management Information," but the Court disagreed and denied the Tribune's motion to dismiss. See Leveyfilm, Inc. v. Fox Sports Interactive Media, LLC, 999 F.Supp.2d 1098 (N.D. Ill. 2014).

At the same time, Levey also brought copyright infringement claims against a Fox Sports-affiliated website that had used his photograph to illustrate a post about yet another lawsuit also...