LITIGATIONINTELLECTUAL PROPERTY >> ALERT

COURT FLAGS HISTORICAL USE OF NFL TEAM’S FORMER LOGO IN VIDEO GAME AS INFRINGINGCopyright law has long recognized that an artist’s right to protect his or her creation is somewhat limited by others’ rights to make fair use of a work in a reasonable manner. Courts frequently hold that copyrighted works can be used without liability, as “fair use,” in news reporting, critical commentary, and historical scholarship.

In the context of historical material, however, whether the inclusion of a copyrighted work is considered fair use may depend, at least in part, on the medium in which the copyrighted work was used. The United States District Court for the District of Maryland recently ruled that the display of a National Football League (NFL) team’s infringing former logo in a stadium and in documentaries were both fair use, but the court flagged the defendants for using that same logo in a video game. The ruling not only adds a chapter to an epic saga of litigation over this logo, but also joins a handful of recent interactive media-related decisions addressing the point at which using others’ intellectual property under the guise of historical reference goes out of bounds.

BACKGROUNDAfter the Cleveland Browns announced their intention to move to Baltimore for the 1996 NFL season, sports fan Frederick Bouchat drew a logo for the team based on one of the proposed names for the team – the “Ravens.” The logo consisted of a raven with

outstretched wings, clutching a shield bearing the name “Ravens” and a large letter “B.” Bouchat faxed copies of his “Shield Drawing” to the chairman of the Maryland Stadium Authority, whom Bouchat had recently met and who also shared an office suite with the team’s owner. A few months later, the team unveiled its new logo: a “Flying B” logo strikingly similar to Bouchat’s drawing.

In 1997, Bouchat launched a series of copyright infringement lawsuits over use of his Shield Drawing that has continued in one form or another for over fifteen years. Since proving in 1998 that the Flying B infringes his Shield Drawing, Bouchat’s numerous lawsuits against the team, the NFL,

and hundreds of licensees have yielded several legally significant rulings on a number of copyright issues.

The most recent decision concerns three similar uses of the infringing Flying B logo, all with a historical flavor:

>>>> First, the Ravens’ stadium includes several displays and videos highlighting moments in Baltimore sports history; these displays include players wearing the Flying B on their uniforms.

>>>> Second, video footage of players from the 1990s wearing the Flying B uniforms appears in a number of NFL-produced documentaries.

DECEMBER 2012

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THE BOTTOM LINE

The fair use doctrine cannot easily be reduced to a set of bright line rules – what is

and is not fair use must be evaluated on a case-by-case basis. Similar uses may

result in different outcomes; even the same facts might lead different courts to

different conclusions. It is clear, however, that one must tread carefully in borrowing

materials from others’ creative works, even where the borrowed material serves an

ostensibly factual or historical purpose.

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>> ALERT

DECEMBER 2012

LITIGATIONINTELLECTUAL PROPERTY

>>>> Third, Electronic Arts’ wildly popular Madden NFL Football video game allows gamers to outfit teams in historical “throwback” uniforms – including the Ravens’ throwback uniforms with the Flying B.

THE DECISIONIn evaluating whether a defendant’s use of a copyrighted work is a fair use, courts examine several factors, including:

>>>> whether the use is commercial or educational;

>>>> whether the use is a slavish copy or is transformative of the original;

>>>> the nature of the copyrighted work;

>>>> the amount and substantiality of the portion actually copied; and

>>>> the effect on the potential market for the copyrighted work.

Applying these factors, the court found that the stadium displays were only indirectly commercial, because they were not a significant part of the inducement to purchase tickets to the game. The court further found that the displays were transformative, in that they served to portray historical facts about the team. The court therefore held that the displays constituted a fair use. Similarly, although the NFL’s

production of the documentary videos had a commercial purpose, the court determined that the historical nature of the videos – which included commentary, criticism and historical facts – made this use of the logo sufficiently transformative to constitute fair use as well.

The video game, however, presented a different situation. Despite the historical flavor of this use, the court found that the game’s throwback uniforms served a commercial purpose, by seeking to augment game sales based on “nostalgia value.” The court also found that the game’s use was minimally transformative, likening it to the Ravens deciding to wear their old uniforms in a live game – an act that would not be entitled to fair use protection. Finding that a potential market existed for the Flying B logo – i.e., a license from Bouchat could be valuable to someone wishing to create and sell throwback apparel – the court held that the inclusion of the logo in the game was not a fair use.

This ruling became the latest in a series of sometimes conflicting rulings drawing fine lines around the use of names, likenesses and logos in interactive media and, in particular, Electronic Arts’ video football games.

FOR MORE INFORMATION Marc J. Rachman Partner 212.468.4890 mrachman@dglaw.com

David S. Greenberg Associate 212.468.4895 dgreenberg@dglaw.com

C. Andrew Keisner Associate 212.468.4845 akeisner@dglaw.com

or the D&G attorney with whom you have regular contact.

Davis & Gilbert LLPT: 212.468.48001740 Broadway, New York, NY 10019www.dglaw.com

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