Tech Law Letter - Winter 2014

WINTER 2014

IN THIS ISSUE
No Penalty Flag for Use of Baltimore Ravens Logo
Registration Refused for “Lakota” Herbal Remedies

No Penalty Flag for Use of Baltimore Ravens Logo

Timothy J. Lockhart

The U.S. Court of Appeals for the Fourth Circuit ruled in December that use of the Baltimore Ravens professional football team’s original logo in documentary films and historical displays qualifies as “fair use” under U.S.  copyright law and therefore does not infringe the logo creator’s copyright. Bouchat v. Baltimore Ravens L.P., 737 F.3d 932 (4th Cir. 2013).

Shortly before beginning their inaugural season in 1996, the Baltimore Ravens unveiled a team logo that featured a gold shield with a purple “B” at its center and purple wings extending from either side (the “Flying B” logo). Frederick Bouchat, an amateur artist, noticed that the Flying B logo closely resembled a sketch he had drawn months earlier and provided to the chairman of the Maryland Stadium Authority to be passed on to the Ravens. When he saw that the Ravens were using the Flying B logo, Bouchat registered the copyright in his drawing but did raise the matter with the Ravens.

                                         
Bouchat's original sketch                        Flying B logo                  Ravens Profile logo

After the Ravens had played their first season, Bouchat filed a copyright-infringement lawsuit against the team. He won that case, and after their third season the Ravens adopted the current “Raven Profile” logo and no longer featured the Flying B logo on their uniforms and merchandise. Over the next several years Bouchat filed three more lawsuits for use of the Flying B logo, obtaining mixed results but no damages.

In 2012, Bouchat filed the lawsuits that led to this appeal. He alleged infringement in three National Football League (NFL) documentary videos that included fleeting and infrequent footage of the Flying B logo, and in the use of the logo in historical displays exhibited on the “Club Level” of the Ravens’ stadium.

The first video is Top Ten: Draft Classes, which analyzes the 10 best NFL draft classes of all time. The video features a four-minute segment on the Ravens’ 1996 draft class, rated number six by the show, in which the Flying B logo is visible for less than one second. The second is Top Ten: Draft Busts, which showcases unsuccessful draft picks, including the number-eight “bust” Lawrence Phillips. At the end of the Phillips segment the Flying B logo is visible on a defensive player’s helmet for a fraction of a second. The third is Sound FX: Ray Lewis, a 24-minute summary of Lewis’s career in which the Flying B logo is visible in three places for a total of less than 10 seconds.

The challenged displays about Baltimore football history consist of a timeline, a highlight reel, and a significant plays exhibit. The Court of Appeals noted that, overall, the displays “document more than one hundred years of history preceding the advent of the Flying B logo and many significant historical events post-dating it,” and said that the “Flying B logo plays an incidental role in only a fraction of the historical depictions featured in the displays.”

At trial the district court applied the four-part test for fair use set forth in the U.S. copyright statute: (1) “the purpose and character of the use”; (2) “the nature of the copyrighted work”; (3) “the amount and substantiality of the portion used”; and (4) “the effect of the use upon the potential market for the copyrighted work.” 17 U.S.C. § 107. The district court held that under these factors, especially the first, the challenged uses of the Flying B logo are fair, primarily because each use is “transformative,” which the U.S. Supreme Court has described as a use that “adds something new, with a further purpose or different character, altering the first with new expression, meaning, or message.” Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 579 (1994).

The Court of Appeals agreed. The use of the Flying B logo in the videos is transformative, the Court said, because the logo is not being used, as it originally was, “as the brand symbol for the team, its on-field identifier, and the principal thrust of its promotional efforts,” but rather “as part of the historical record to tell stories of past drafts, major events in Ravens history, and player careers.” The Court added that this “finding of transformative use is reinforced by the exceptionally insubstantial presence of the Flying B logo in these videos.” Moreover, the Court said, the transformative nature of the use “renders its commercial nature largely insignificant.” The Court of Appeals also agreed with the district court that the three “remaining fair use factors are largely neutral, providing compelling arguments neither for nor against fair use” and that “[c]onsequently, in the aggregate, the four factors point in favor of a fair use finding.”

For similar reasons, the Court of Appeals held that the use of the Flying B logo in the Club Level historical displays is fair. According to the Court, the “use of a logo as an incidental element in a historical exhibit is simply not the type of commercial use frowned upon by § 107.” As the Court noted, “If Baltimore’s football history is to be accurately depicted, some incidental reproduction of the logo would seem almost unavoidable.”

In affirming the district court’s finding of fair use, the Court of Appeals acknowledged that, because of the highly commercial nature of the NFL, this fair-use case is not typical of the cases Congress apparently had in mind when it enacted § 107. But, the Court said,

Timothy J. Lockhart

The U.S. Trademark Trial Appeal Board (TTAB) recently held that, because the trademark LAKOTA falsely suggests a connection with the Native American Lakota people, the mark is unregisterable for use with, among other things, medicinal herbal remedies. In re Kent Pedersen, 109 USPQ2d 1185 (TTAB 2013) [precedential].

Canadian citizen Kent Pedersen applied to register LAKOTA with the U.S. Patent and Trademark Office (USPTO) for use with a variety of medicinal herbal remedies and other medicinal preparations. The USPTO examining attorney assigned to the application issued a final refusal to register the mark, claiming that, in violation of § 2(a) of the Trademark Act, 15 U.S.C. § 1052(a), LAKOTA falsely suggests a connection with persons or an institution, and Pedersen appealed to the TTAB.

In its opinion, the TTAB noted that a trademark falsely suggests a connection with a person or an institution if:

(1) the mark is the same as, or a close approximation of, the name or identity previously used by another person or institution;

(2) the mark would be recognized as such, in that it points uniquely and unmistakably to that person or institution;

(3) the person or institution named by the mark is not connected with the activities performed by the applicant under the mark; and

(4) the fame or reputation of the person or institution is such that, when the mark is used with the applicant’s goods or services, a connection with the person or institution would be presumed. (Citations omitted.)

Beginning its analysis under that four-part test, the TTAB discussed the meaning of LAKOTA. The TTAB cited the examining attorney’s evidence that the Lakota people are part of the Sioux Indian tribe and commented that in 1876 “the Lakota, led by Chief and Medicine Man Sitting Bull and by Crazy Horse, a warrior committed to preserving the Lakota way of life, joined with the Arapaho and Cheyenne nations to defeat General George Armstrong Custer and the Seventh U.S. Calvary” at the Battle of the Little Big Horn—i.e., “Custer’s Last Stand.” The TTAB found that LAKOTA identifies both the people “known as the western Sioux” and their language.

Next the TTAB considered whether LAKOTA identifies a person or institution as contemplated by § 2(a). The TTAB said that the section “has been held to apply to commercial juristic persons, as well as natural persons” and that under it the word “institutions” has been construed broadly. Citing the Harjo cases seeking to cancel the REDSKINS registrations associated with the Washington, D.C., professional football team, the TTAB held that “persons and institutions as contemplated in § 2(a) may include groups of persons and individual members of a group such as the members of an Indian tribe having a common heritage and/or speaking a common language.” The TTAB found that “LAKOTA identifies a historic people who speak the Lakota language and share a single Native American heritage” and that, therefore, LAKOTA points to persons or institutions as contemplated by § 2(a).

Pedersen claimed that third-party uses of LAKOTA show the mark is not necessarily associated with the Lakota people, but the TTAB found that several of those uses do point to the Lakota—for example, the owners of the Lakota Coffee Company and the Lakota Bakery chose their business names to suggest the western Sioux. In any event, the TTAB said, the issue is not whether all trademark uses of LAKOTA point to the Lakota people but rather whether Pedersen’s use does so. The TTAB declined to give any weight to Pedersen’s evidence of his four Canadian registrations for LAKOTA marks (“[r]egistration in a foreign country does not ensure registerability in the United States”) or the cancelled U.S. registration for LAKOTA that had been owned by Pedersen’s predecessor (“[t]he Board is not bound by the prior decisions of examining attorneys”).

With respect to the third prong—whether the Lakota people are connected with activities performed under the mark—Pedersen submitted evidence that his Canadian licensee sponsors two organizations dedicated to teaching and preserving the Lakota language. The TTAB held that such sponsorship does not show that either organization has authorized Pedersen to use the LAKOTA mark or that there is a connection between those organizations and the Lakota people.  

Regarding the fame or reputation of the Lakota people, the TTAB, after surveying their various activities, found that “the Lakota people are of sufficient renown for their business, tourism and cultural enterprises such that they would be well known not only among residents of the Dakotas, but also to visitors to that area.” Moreover, the TTAB said, “Lakota tribal members were herbal healers,” and Pedersen and his licensee used advertising to make a connection between their products and the Lakota.

For example, the TTAB said, the licensee’s website “prominently features a photograph of a Native American next to the name ‘LAKOTA™’ with the slogan ‘Legendary Native American Formulas’ directly underneath,” and several other references on the website and the LAKOTA products themselves “invite purchasers to make a connection between applicant’s products and the Native American Lakota people.” Thus, the TTAB said, Pedersen was “consciously or otherwise . . . forging a false connection between his products and Native Americans, and specifically members of the Lakota Nation.” Based on its analysis, the TTAB affirmed the examining attorney’s refusal under § 2(a) to register LAKOTA for the goods listed in the application.

Screen capture from website of Pedersen’s licensee

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