Payment for NIL is Here to Stay: Things to Consider and Understand for Student-Athletes and those Educating Student-AthletesJuly 9, 2021
House v. NCAA: District Court Denies Motion to DismissJuly 29, 2021
A dispute arose between the Pasadena Tournament of Roses Association (“Plaintiff”) and the City of Pasadena (“Defendant”) regarding an Instagram post that stated “#TBT to 1956 when @UCLAFootball was in the #RoseBowl….” The Instagram account was associated with Defendant, but the Rose Bowl trademark is owned by Plaintiff. The relationship of the parties was strained as a result of the 2021 Rose Bowl being played in Dallas, Texas rather than its normal location in Pasadena, California. The annual game was moved due to the COVID-19 pandemic.
Plaintiff filed suit against Defendant as a result of the above-referenced Instagram post wherein Plaintiff set forth claims for declaratory relief, trademark/unfair competition, false advertising, and breach of contract. Defendant filed an Anti-SLAPP motion to strike and also a motion to dismiss in accordance with 12(b)(1) and 12(b)(6) of the Federal Rules of Civil Procedure. Judge Andre Birotte, Jr., District Judge of the United States District Court for the Central District of California, denied the motion to strike, but granted the motion to dismiss with prejudice. As a result of granting the motion to dismiss with prejudice, Plaintiff is not permitted to re-plead its claims.
Plaintiff set forth claims for trademark infringement, unfair competition, false association, false endorsement, and false designation of origin under Sections 32 and 43(a)(1)(A) of the Lanham Act, unfair competition under Cal. Bus. & Prof. Code § 17200, and trademark infringement under California common law. Each claim arises out of Defendant’s alleged use of the “Rose Bowl” mark in the above-referenced Instagram post made on the Rose Bowl Stadium’s official Instagram account together with an image of the official program from the 1956 Rose Bowl Game.
Defendant argued that the Instagram post referenced above is an expressive work protected by the First Amendment. The Court, however, first considered the nominative fair use defense because the entirety of the Instagram post at issue was before the Court and its contents were not disputed. Where a defendant uses a trademark to describe plaintiff’s product rather than its own product, that defendant is entitled to the nominative fair use defense. Nominative fair use is appropriate in the class of cases where the use of the trademark does not attempt to capitalize on consumer confusion or to appropriate the cachet of one product for a different one. Such nominative use of a mark—where the only word reasonably available to describe a particular thing is pressed into service—lies outside the strictures of trademark law, because it does not implicate the source identification function that is the purpose of trademark, it does not constitute unfair competition; such use is fair because it does not imply sponsorship or endorsement by the trademark holder. Thus, to invoke such a defense, a defendant must meet the following three requirements: (1) the product or service in question must be one not readily identifiable without use of the trademark; (2) only so much of the mark or marks may be used as reasonable necessary to identify the product or service; and (3) the user must do nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder. Plaintiff bears the burden of establishing that Defendant’s use of “Rose Bowl” was not a nominative fair use.
The Court stated while Defendant certainly could have called it the “game played on New Year’s Day in Pasadena,” parties need not vaguely describe a mark as opposed to using the trademark itself. The Court found that the Plaintiff did not show that the Rose Bowl Game is readily identifiable without using the term “Rose Bowl.” Plaintiff, however, argued that it was unnecessary for Defendant to use Plaintiff’s mark at all and again points to Defendant’s other posts where it did not use the term “Rose Bowl.” However, the question is not whether it is necessary for Defendant to use the “Rose Bowl” mark, but whether it used only so much of the mark as is reasonably necessary to identify the Rose Bowl Game.
Defendant argued that it does nothing to suggest association or sponsorship by Plaintiff to which the Court agreed. Defendant posted from its Instagram account, @rosebowlstadium. It did not use any express or implied language of sponsorship or endorsement or “tag” Plaintiff’s accounts. Plaintiff did not allege that Defendant used language suggesting that Plaintiff sponsored or endorsed the post’s content. Instead, Plaintiff merely contended that Defendant cannot use the term “Rose Bowl” to refer to the game because of the possibility of confusion. The Court stated such conclusory allegations of likelihood of confusion are insufficient to plead there was a suggestion of association or sponsorship.
With all three requirements pointing toward Defendant, the Court found Plaintiff did not met its burden of proving Defendant’s use of the Rose Bowl mark is not a nominative fair use. Ultimately, the Court does not find that Defendant is attempting to capitalize on consumer confusion or to appropriate the Rose Bowl Game via this Instagram post. Plaintiff and Defendant have been business partners for decades. Due to this mutually beneficial relationship, Plaintiff has consistently benefitted from Defendant’s promotion of Plaintiff’s game and its history and likely encouraged such promotion. The Court stated it was puzzling that this claim was not being brought and it was clear that this claim is not the crux of the parties’ conflict. Accordingly, the Court found that Defendant prevailed on its nominative fair use defense, thus the Court did not evaluate the expressive work argument. The Court dismissed Plaintiff’s trademark claims in addition to its claims for false advertising, breach of contract, and declaratory agreement.