Trademarks cannot be used without consent and using a logo without permission of the owner is not possible – most of the time.
The legal world has been abuzz following HBO’s decision to use intellectual property owned by NFL teams without the league’s consent, but it turns out that as long as logos are used properly, permission is not necessary.
Sports teams such as the Boston Blackjacks and Washington Sentinels have entered film history as alternatives to their real-world counterparts. No one wants a lawsuit for unauthorized appropriation of a trademark, and fake teams like the Blackjacks offer an easy way to avoid them. Depicting storylines around sports is extremely popular in film and television, but working around consent requirements can be costly. HBO, on the other hand, decided to skip the permission step and use real NFL team logos without the expressed, written consent of the league. Anyone who watches professional football regularly may know that the league is keen on warning others against using its trademarks without permission.
HBO’s legal right to use NFL logos
Why then, is it alright for HBO to depict Dwayne “The Rock” Johnson’s character in the new television show “Ballers,” in a realistic Miami Dolphins uniform? Because, the wrestler-turned-actor is shown doing what anyone would expect a professional football player to do: Playing professional football, entertainment lawyer Michael C. Donaldson told Business Insider’s Jason Guerrasio. As long as NFL logos are used in a way that does not stray from how they are used in the real world, then permission is not needed. If Johnson’s character had been playing soccer or yelling at police in a Miami Dolphins uniform, then the league would be more apt to take action against HBO, since these are not the ways that the trademark was intended to be used.
How are logos intended to be used?
If Johnson played for the Miami Manatees in the television show, then HBO could depict him doing just about anything in uniform. However, since the network has decided to use real NFL logos, it must do so in the way that they were intended to be used. So what about when one of the show’s characters is depicted beating a man in a nightclub? Surely, the NFL does not want to be associated with that sort of behavior?
Well, as Fox Sports explained, when the character – who plays for the Green Bay Packers in the television show – is shown assaulting the individual, there is not a Packers logo in sight. However, when the character is cut from the team by a group of executives, they are depicted sitting in a boardroom littered with Green Bay logos and colors. An NFL team would certainly cut an individual guilty of assault, so the famous “G” logo and associated colors are used appropriately in the scene.
It seems that as long as film and television production companies are careful about how they use trademarked logos such as that of the Miami Dolphins, they don’t need permission to do so. For guidance on whether a logo is being used the way it was intended to be, it would be helpful to contact an attorney with experience in sports and entertainment.
UPDATE February 17, 2023
Eight years ago, HBO was in hot water over the unauthorized use of third-party trademarks. Fast forward and HBO is again facing scrutiny for its allegedly unauthorized use of a sports logo. This time, the National Basketball Association (“NBA”) and the Los Angeles Lakers have expressed disapproval over the use of their trademarks and intellectual property in HBO’s new documentary “Winning Time: The Rise of the Lakers Dynasty.”
Sports Drama Chronicles Lakers Dynasty
“Winning Time” is based on a 2014 book by sportswriter Jeff Pearlman and chronicles the rise of the storied Lakers dynasty in the 1980s. The drama series doesn’t always portray the players or the organization in a flattering light, which may have contributed to the NBA’s objection to HBO’s trademark use.
“Clearances to use NBA trademarks were not sought or granted and the league objects to any unauthorized use of its intellectual property,” Mike Bass, the league’s chief communications officer, and an executive vice president, said in a press statement. Meanwhile, the Lakers organization stated, “The Lakers have no comment as we are not supporting nor involved with this project.”
Nominative and Descriptive Fair Use
Similar to HBO’s use of the Miami Dolphin’s logo in “Ballers,” HBO maintains that it doesn’t need permission to use either the Lakers or the NBA’s trademarks, purportedly relying on the doctrine of fair use, which is an affirmative defense to trademark infringement. The fair use doctrine allows a third-party to use another’s trademarks without violating trademark law if the third-party’s use is deemed a fair use. There are two types of fair use (a) descriptive fair use and (b) nominative fair use.
Nominative fair use occurs when a third-party uses another’s trademarks to refer to the trademark owner’s products in a manner that is neither deceptive nor which causes customer confusion. For example, car dealership may claim that it services certain car brands without incurring liability. At the end of the day, the question with respect to nominative fair use is whether a defendant’s use of another’s trademark causes confusion as to whether the trademark owner is sponsoring or endorsing the defendant.
Descriptive Fair Use is typically the good faith use of a term to describe its goods or services that does not constitute trademark infringement, meaning that the non-deceptive use of a term used to describe one’s own goods will not constitute trademark infringement although the term is used by another party as a trademark.
In defense of its use of the NBA trademark and Lakers trademarks, HBO could assert the same legal argument it asserted in the “Ballers” case, namely, that its use of the trademarks is necessary to convey the story and that it does not create confusion or suggest an endorsement of HBO by the NBA or the Lakers franchise. On the flipside, the NBA could argue that HBO’s use of its trademarks is likely to, or has, created customer confusion among viewers. It is plausible, for instance, that those watching the show could believe that the Lakers or the Laker’s players participated in the development, context, and occurrences that are portrayed in the series.
The NBA may also argue that HBO is acting in bad faith and that the arguably salacious content of the series tarnishes its trademarks. However, this argument undoubtedly involves a larger discussion and commentary over whether the events are factually accurate, which may be deemed embarrassing to the league, the players, or both. . There are , of course, always additional considerations and business reasons that may deter HBO or the Lakers franchise from bringing a lawsuit, including the fact that Warner Media owns HBO, TNT, and TBS and receives substantial yearly revenue from the broadcasting of NBA games. The fact remains that trademark use requires careful and thoughtful consideration because fair use defenses re highly case and fact specific. As such, seeking the advice of experienced counsel is paramount to avoid unexpected liability and costly lawsuits.
If you have questions, please contact us
If you have any questions or if you would like to discuss the matter further, please contact me, Albert J. Soler, or the Scarinci Hollenbeck attorney with whom you work, at 201-896-4100.
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How to Get Away with Using a Logo without Permission
Author: Scarinci Hollenbeck, LLC
Trademarks cannot be used without consent and using a logo without permission of the owner is not possible – most of the time.
The legal world has been abuzz following HBO’s decision to use intellectual property owned by NFL teams without the league’s consent, but it turns out that as long as logos are used properly, permission is not necessary.
Sports teams such as the Boston Blackjacks and Washington Sentinels have entered film history as alternatives to their real-world counterparts. No one wants a lawsuit for unauthorized appropriation of a trademark, and fake teams like the Blackjacks offer an easy way to avoid them. Depicting storylines around sports is extremely popular in film and television, but working around consent requirements can be costly. HBO, on the other hand, decided to skip the permission step and use real NFL team logos without the expressed, written consent of the league. Anyone who watches professional football regularly may know that the league is keen on warning others against using its trademarks without permission.
HBO’s legal right to use NFL logos
Why then, is it alright for HBO to depict Dwayne “The Rock” Johnson’s character in the new television show “Ballers,” in a realistic Miami Dolphins uniform? Because, the wrestler-turned-actor is shown doing what anyone would expect a professional football player to do: Playing professional football, entertainment lawyer Michael C. Donaldson told Business Insider’s Jason Guerrasio. As long as NFL logos are used in a way that does not stray from how they are used in the real world, then permission is not needed. If Johnson’s character had been playing soccer or yelling at police in a Miami Dolphins uniform, then the league would be more apt to take action against HBO, since these are not the ways that the trademark was intended to be used.
How are logos intended to be used?
If Johnson played for the Miami Manatees in the television show, then HBO could depict him doing just about anything in uniform. However, since the network has decided to use real NFL logos, it must do so in the way that they were intended to be used. So what about when one of the show’s characters is depicted beating a man in a nightclub? Surely, the NFL does not want to be associated with that sort of behavior?
Well, as Fox Sports explained, when the character – who plays for the Green Bay Packers in the television show – is shown assaulting the individual, there is not a Packers logo in sight. However, when the character is cut from the team by a group of executives, they are depicted sitting in a boardroom littered with Green Bay logos and colors. An NFL team would certainly cut an individual guilty of assault, so the famous “G” logo and associated colors are used appropriately in the scene.
It seems that as long as film and television production companies are careful about how they use trademarked logos such as that of the Miami Dolphins, they don’t need permission to do so. For guidance on whether a logo is being used the way it was intended to be, it would be helpful to contact an attorney with experience in sports and entertainment.
UPDATE February 17, 2023
Eight years ago, HBO was in hot water over the unauthorized use of third-party trademarks. Fast forward and HBO is again facing scrutiny for its allegedly unauthorized use of a sports logo. This time, the National Basketball Association (“NBA”) and the Los Angeles Lakers have expressed disapproval over the use of their trademarks and intellectual property in HBO’s new documentary “Winning Time: The Rise of the Lakers Dynasty.”
Sports Drama Chronicles Lakers Dynasty
“Winning Time” is based on a 2014 book by sportswriter Jeff Pearlman and chronicles the rise of the storied Lakers dynasty in the 1980s. The drama series doesn’t always portray the players or the organization in a flattering light, which may have contributed to the NBA’s objection to HBO’s trademark use.
“Clearances to use NBA trademarks were not sought or granted and the league objects to any unauthorized use of its intellectual property,” Mike Bass, the league’s chief communications officer, and an executive vice president, said in a press statement. Meanwhile, the Lakers organization stated, “The Lakers have no comment as we are not supporting nor involved with this project.”
Nominative and Descriptive Fair Use
Similar to HBO’s use of the Miami Dolphin’s logo in “Ballers,” HBO maintains that it doesn’t need permission to use either the Lakers or the NBA’s trademarks, purportedly relying on the doctrine of fair use, which is an affirmative defense to trademark infringement. The fair use doctrine allows a third-party to use another’s trademarks without violating trademark law if the third-party’s use is deemed a fair use. There are two types of fair use (a) descriptive fair use and (b) nominative fair use.
Nominative fair use occurs when a third-party uses another’s trademarks to refer to the trademark owner’s products in a manner that is neither deceptive nor which causes customer confusion. For example, car dealership may claim that it services certain car brands without incurring liability. At the end of the day, the question with respect to nominative fair use is whether a defendant’s use of another’s trademark causes confusion as to whether the trademark owner is sponsoring or endorsing the defendant.
Descriptive Fair Use is typically the good faith use of a term to describe its goods or services that does not constitute trademark infringement, meaning that the non-deceptive use of a term used to describe one’s own goods will not constitute trademark infringement although the term is used by another party as a trademark.
In defense of its use of the NBA trademark and Lakers trademarks, HBO could assert the same legal argument it asserted in the “Ballers” case, namely, that its use of the trademarks is necessary to convey the story and that it does not create confusion or suggest an endorsement of HBO by the NBA or the Lakers franchise. On the flipside, the NBA could argue that HBO’s use of its trademarks is likely to, or has, created customer confusion among viewers. It is plausible, for instance, that those watching the show could believe that the Lakers or the Laker’s players participated in the development, context, and occurrences that are portrayed in the series.
The NBA may also argue that HBO is acting in bad faith and that the arguably salacious content of the series tarnishes its trademarks. However, this argument undoubtedly involves a larger discussion and commentary over whether the events are factually accurate, which may be deemed embarrassing to the league, the players, or both. . There are , of course, always additional considerations and business reasons that may deter HBO or the Lakers franchise from bringing a lawsuit, including the fact that Warner Media owns HBO, TNT, and TBS and receives substantial yearly revenue from the broadcasting of NBA games. The fact remains that trademark use requires careful and thoughtful consideration because fair use defenses re highly case and fact specific. As such, seeking the advice of experienced counsel is paramount to avoid unexpected liability and costly lawsuits.
If you have questions, please contact us
If you have any questions or if you would like to discuss the matter further, please contact me, Albert J. Soler, or the Scarinci Hollenbeck attorney with whom you work, at 201-896-4100.
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