For the purposes of this article, I can use the phrase Super Bowl all I want.
Super Bowl. Super Bowl. Super Bowl.
Man, that feels good.
As a manager of several brands’ social media presence, it’s a different story this week. As much as we’d like to tout the best Super Bowl party recipes or ask fans of our cereal brands to show us photos of their “super bowls” of cereal, we can’t do it.
That’s because the NFL, as most people are aware, has trademarked the phrase Super Bowl. Similarly, the terms “Olympics” and “March Madness” are protected by trademark.
Ken Basin, of the Los Angeles law firm Greenberg Glusker Fields Claman & Machtinger, explained to PR Daily that the First Amendment gives journalists wide latitude to use “Super Bowl,” but it’s a different story for companies.
“Brands that want to use the ‘Super Bowl’ mark in commerce are much more at risk of violating the NFL’s trademark rights,” he said.
But can a brand really not use the term Super Bowl in something so insignificant as a Facebook post or a tweet?
It depends on how brave you are, and the size of your legal budget, because the NFL has proved time and again that it will go after people for using “Super Bowl.”
Of course, there are grey areas
David Oxenford notes in his Broadcast Law Blog, “Trademarked terms should not be used in commercial messages except by authorized advertisers.”
Brand-disseminated Facebook posts, tweets, Pinterest pins, Tumblr posts, and other forms of social media could be considered commercial messages. But the law, as you can imagine, contains much more grey area than that.
Without diving too deeply into trademark law, the question at play is “nominative fair use.” There are three parts to the nominative fair use test, which determines whether you can use something that’s been trademarked, which is dumbed down for guys like me on the nominative use Wikipedia page.
To put it in plain terms, in order for someone accused of trademark infringement to defend themselves with nominative fair use, they must show the following:
- The product or service cannot be readily identified without the trademark.
- He/she only uses as much of the mark as is necessary to identify the goods or services.
- He/she does nothing with the mark to suggest that the trademark holder has given his approval to the defendant.
What this means is that if your brand used the phrase Super Bowl in its Facebook post, it would be tough to prove trademark infringement in a court of law—that is, as long as you don’t label yourself an official sponsor.
So, let’s say you’re a social media community manager who wanted to post about the perfect Super Bowl dip recipe on your brand’s Facebook page. Common sense tells you to steer clear of using the phrase “Super Bowl.” The law, however, may be on your side.
Basin said a Super Bowl-themed recipe idea would likely fall within nominate fair use if it’s cast as the perfect dip recipe for Super Bowl Sunday.
He continued: “However, if the brand gets more aggressive and tries to characterize it, as say, ‘the official Super Bowl dip recipe,’ that kind of language could be read to imply a sponsorship or association with the NFL/Super Bowl, which would violate the NFL’s trademark rights.”
‘Official sponsor’ status is key
Judging by this year’s Super Bowl sponsors, nominative use as it pertains to the Super Bowl is not as simple as buying airtime to get the right to use the phrase whenever you want. You have to have “official sponsor” status, such as Papa John’s.
The pizza chain has a social media tie-in that encourages users to predict the outcome of the Super Bowl coin toss to win free pizza. It is allowed to toss around the phrase Super Bowl quite liberally.
Pizza Hut, on the other hand, has purchased airtime for the Super Bowl, but does not hold “official sponsor” status, according to Forbes. A quick spin around Pizza Hut’s social sites shows that it’s using phrases like “the be-all end-all of football games.” The company also has an in-game tie-in where it will give away free samples of the chain’s “next big pizza innovation” if the phrase “hut” is uttered during the Super Bowl (which it is, on average, 90 times per game according to Stats, Inc.).
Pizza Hunt plans to announce the “innovation” during the official pre-game show on CBS. And yet, even in the company’s press release the phrase “Big Game” is used instead of Super Bowl.
How strict is the NFL about protecting its trademark?
It’s very strict.
In 2006, when the Indianapolis Colts played the Chicago Bears in the Super Bowl, the NFL sent a letter to the Fall Creek Baptist Church informing congregants they were in violation of trademark laws. Their offense? According to WTHR, they had printed fliers advertising their Super Bowl party and the size of the TV they were going to use to broadcast the game was more than 55 inches.
It’s such a common issue with churches that a couple years ago the Church Law Group put out this video that gives tips on having a legal Super Bowl viewing party at a place of worship.
The NFL struck again when it strong armed Roy Fox, who tried to trademark “Harbowl” in anticipation that the San Francisco 49ers and Baltimore Ravens, coached by brothers Jim and John Harbaugh, respectively, would make the Super Bowl. Fox told Fox News that he abandoned the trademarks in October after the NFL threatened to force him to pay the league’s legal bills it would incur when it followed through with plans to oppose his filing.
That’s like Ravens linebacker and future hall of famer Ray Lewis fighting some random guy on the street outside a bar. And we all know what happens then.
Is the NFL going too far in in punishing even unassuming transgressors?
“The NFL takes advantage of its superior resources to over-enforce its ‘Super Bowl’ trademark,” Basin told PR Daily. “Many of the uses of the ‘Super Bowl,’ which people are afraid to make (such as referring to ‘Super Bowl sales’ and ‘Super Bowl parties’) are probably permissible because they are simply factual references to the game, and not trademark-type (that is, source-identifying) uses of the ‘Super Bowl’ mark.”
In a comprehensive piece on his blog, Basin writes that, yes, the NFL does go too far in protecting its trademark. He says it “hasn’t been worth anybody’s time and money to fight them on it.” He continues:
“If you’re a small business owner, you don’t have the time, the resources, or the inclination (especially the resources) to be the legal test case/martyr and fight the good fight for harassed business owners everywhere. It’s just easier to use some ‘Big Game’-like euphemism and spare yourself the headache.”
Still, beating up on the little guy can’t be serving the league well. The NFL is in the midst of an unprecedented PR crisis, between its frequently concussed (not to mention incarcerated) players. Lawsuits (class-action and wrongful death among them) have been filed by scores of former players and their families claiming that the league was negligent in protecting its employees on the field.
So, why would the league be so eager for more negative press by going after every poor bar owner who wants to advertise half-price appetizers during the Super Bowl (as opposed to the Big Game)? At some point, the league has to realize that its relentless pursuit isn’t helping to preserve the brand, it’s actually doing to the brand what the sport has been doing to players’ brains for decades.
Some might say, at least we can say “Big Game,” and that’s enough for me. Not so fast. The NFL tried to trademark that game as well. Fortunately, that effort was tossed in 2007 when reps from University of California and Stanford reminded the league that they’ve been playing “The Big Game” for decades.
What does it all mean for your brand?
Well, if you’re a deep-pocketed church that wants to throw a Super Bowl party, and possesses the will to take on the NFL juggernaut, the law may be on your side.
“Assuming that the copyright pitfalls could be avoided, I do think that a church that fought the NFL for the right to refer to/advertise its ‘Super Bowl party’ would probably win,” Basin said.
Still, the ultimate question is: Can I use the phrase Super Bowl in my brand’s Facebook post?
It depends. How’s your legal budget looking this quarter?
Despite nominative use laws, there is the possibility that you could provoke the NFL. As we’ve seen, the league is not afraid to take on the little guy. So, for the next several days, you might be better off using “Big Game” or something similar.