Trademark Issues to Consider When Covering the Upcoming 2012 Olympic Games

DWT Media Law June 18, 2012 Comments Off on Trademark Issues to Consider When Covering the Upcoming 2012 Olympic Games
Trademark Issues to Consider When Covering the Upcoming 2012 Olympic Games

By Maya Yamazaki

As excitement mounts for the upcoming Summer Olympics, many media outlets are planning special coverage, such as extra pages in their sports sections, special advertising sections, and promotional spots.  For those who may not have looked into this before, the following is offered as a brief primer on the use of Olympic-related words and symbols.

Federal law gives the U.S. Olympic Committee (USOC) exclusive rights to certain uses of trademarks associated with the Olympics.  Media reporting on the Olympic Games usually is not a problem, but there could be some exposure under this law if these trademarks are used in a non-reporting context.

The Olympic and Amateur Sports Act

Federal law gives the USOC exclusive rights to the symbol of five interlocking rings and to the words: “Olympic,” “Olympiad,” “Citius Altius Fortius,” “Paralympic,” Paralympiad,” “Pan-American,” “America Espirito Sport Fraternite,” or any combination thereof.  36 U.S.C.S. § 220506(a)(4) (2009).  It also prohibits the use of names, marks, or symbols that falsely represent association with the USOC.  36 U.S.C.S. § 220506(c)(4).  The statute, therefore, extends to simulations of those words that connote the Olympic Games, such as the word “Olympik.”  U.S. Olympic Comm. v. Tobyhanna Camp Corp., 3:10-CV-162, 2010 U.S. Dist. LEXIS 117650, *7 (M.D. Pa. Nov. 4, 2010).  The USOC’s rights, however, are limited to situations where these words or symbol are used: (1) to offer goods or services for sale or (2) to promote a theatrical exhibition, athletic performance, or competition.  36 U.S.C.S. § 220506(c) (2009).

Congress enacted this law to promote the country’s presence in the Olympic Games by granting the USOC exclusive rights to control its image.  In particular, this right allows the USOC to raise money to support the country’s Olympic teams by licensing the use of these words and symbol to authorized sponsors.  U.S. Olympic Comm. v. Intelicense Corp., 737 F.2d 263, 266 (2d Cir. 1984).  The statute goes beyond traditional trademark law; the USOC does not need to prove that unauthorized use of the words and/or symbol caused confusion, and statutory defenses under trademark law are generally unavailable.  San Francisco Arts & Athletics, Inc. v. U.S. Olympic Comm., 483 U.S. 522, 530 (1987).

Over the years, the USOC has developed a highly organized and aggressive program to license and enforce these rights.  As a result, there are very few published cases involving rights to use the Olympics trademarks, but those few cases do provide useful insight into what the media can and cannot do.

Commercial Uses

The statute specifically prohibits the use of Olympic-related words and symbols “to induce the sale of any goods or services.”  36 U.S.C.S. § 220506(c) (2009).  Most media uses do not fall into this category.  Courts have held that media reporting, even special sections that promote the games, are not commercial in nature and therefore do not violate the USOC’s exclusive rights.  U.S. Olympic Comm. v. American. Media, Inc., 156 F. Supp. 2d 1200, 1207 (D. Colo. 2001).

In that case, American Media produced a preview magazine for the Sydney Olympics that featured specific Olympic events and included photographs of Olympic athletes and Olympic symbols.  The court considered three factors in determining whether the magazine was commercial: (1) whether it was an advertisement; (2) whether it referenced a specific product; and (3) whether it was motivated by economic interest.  With regard to the third factor, the court stated that the fact that magazines are motivated by profit is not sufficient to make it commercial for purposes of the statute.  Otherwise, the court reasoned, all books, newspapers, and magazines would be considered commercial in nature, and such a conclusion conflicts with the traditional constitutional protections under the First Amendment.  The court noted that there is a strong presumption against characterizing media publications as commercial speech.

Promotional Uses

The second area that can give rise to liability is the promotion of a theatrical exhibition, athletic performance, or competition.  For instance, courts have prohibited efforts to promote the “Gay Olympic Games” and the “Mr. Olympia” bodybuilding competition.  S.F. Arts, 483 U.S. 522; U.S. Olympic Comm. v. Int’l Fed’n of Bodybuilders, No. 81-0969, 1982 U.S. Dist. LEXIS 10278 (D.D.C. Dec. 1, 1982).  This section applies whether or not the activity is commercial or for profit.

Although this is not likely to be a problem for the media, caution should be exercised in creating or sponsoring any kind of competitions that use Olympic words or symbols.  For example a photo competition entitled “Best Olympic Shots” might draw the attention of the USOC.

Pre-existing and Regional Exceptions

The federal law has a general grandfather clause permitting continued uses of the Olympic words, symbols, and any combination thereof that predated passage of the statute in 1950 and a narrow exception for geographic references.  36 U.S.C.S. § 220506(d) (2009).  Courts have interpreted this grandfather clause to protect the rights of prior users from diminution, but to prohibit any enlargement of the right to other related goods or services.  O-M Bread, Inc. v. U.S. Olympic Comm., 65 F.3d 933, 937 (Fed. Cir. 1995).

The geographic exception allows use of “Olympic” to identify a business, product, or service if the use refers to the Olympic mountains or geographical region and was named before February 6, 1998.  In addition, the business’ operations, sales, and marketing must be within Western Washington and cannot have any substantial presence outside of the region.  36 U.S.C.S. § 220506(d) (2009).

General Trademark Considerations

In addition to the exclusive statutory rights discussed above, the USOC also holds traditional trademark rights to Olympic-related words and symbols.  The media, therefore, must also be cautious that their activities do not infringe on traditional trademark law, including possible claims of false endorsement or affiliation.  These traditional trademark infringement actions, codified by the Lanham Act, operate separately from the USOC’s exclusive statutory rights.

General trademark law prohibits the unauthorized use of a trademark, with infringement generally based on whether the use creates a likelihood of confusion.  There are, however, certain exceptions to infringement based on fair use.

Furthermore, Section 43(a) of the Lanham Act prohibits the use of trademarks when they: (1) are likely to deceive or create a false impression of affiliation or endorsement; or (2) misrepresent in advertising certain aspects of the product.  Here, the media must be careful that their coverage does not falsely imply any endorsement by or affiliation with the USOC or event organizers.

Because analysis of traditional trademark law is highly fact-intensive, the media should consult with counsel if trademark infringement concerns arise.

Conclusion

Most activities undertaken by the media in covering the Olympics will not run afoul of the USOC Olympic trademark statute.  News reporting activities simply are not considered commercial for purposes of this law.  The media should, however, be cautious about competitions, contests, sponsorships, and other creative promotions that use the exclusive Olympic words or symbol or imply endorsement or affiliation with the USOC or event organizers.

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