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NCAA’s IP Playbook Is a Slam Dunk
April 2, 2018

By Michael F. Snyder and Emily A. Denisco

March’s arrival signals the onset of Spring and college basketball bracket battles. The three-week basketball tournament gradually whittles 64 teams down to two for a final showdown. It may come as a surprise to fans to learn that the tournament has not always been known as “March Madness” and the National College Athletic Association (NCAA) is not the first organization to use the term. This is particularly surprising given that “March Madness” is the NCAA’s biggest money maker, reaping 85 percent of the organization’s yearly budget.[1] That revenue is made possible by the NCAA’s Corporate Champions, top tier sponsors who pay an estimated $20-30 million to be associated with the tournament and its intellectual property.[2] While the tournament reaches its final stage, the activity off the court to protect the NCAA’s IP makes for an equally intriguing story.

The term “March Madness” was originally coined in 1939 by Henry V. Porter when describing an Illinois high school basketball tournament in the Illinois High School Association’s (IHSA) in-house magazine.[3] More than 40 years later, in 1982, CBS broadcaster Brent Musburger covered the NCAA tournament and referred to it as “March Madness.” The phrase quickly caught on with regards to the college basketball tournament. Seven years later, the IHSA applied to trademark “March Madness” and learned that Intersport, an Illinois-based corporation that produces sports programs, had already registered the phrase as a service mark.[4] Intersport and IHSA formed March Madness LLC which held the trademark rights.[5] In July of 1995, Intersport assigned the registered service mark to the IHSA.[6]

Meanwhile, as the NCAA tournament became increasingly known as “March Madness” across the country, the NCAA started treating the phrase as a common-law trademark. The NCAA granted a trademark license to GTE Vantage Inc., a maker of computer games, to use “March Madness” in conjunction with a new game. In 1996, upon learning of the license, the IHSA sued GTE Vantage Inc. under the Lanham Act and requested that Vantage be enjoined from using the term “March Madness.”[7] The IHSA argued that they had a service mark on the phrase, while Vantage argued that the NCAA had a common-law trademark. The district court denied the IHSA’s request for a preliminary injunction, which prompted the IHSA to appeal to the Seventh Circuit Court of Appeals.

On appeal, Judge Posner ruled that the preliminary injunction was properly denied and that on remand the district court should enter a judgment in favor of the defendant. The court found that both associations had a right to the mark. However, the decision failed to acknowledge the scope of those rights beyond simply finding that “IHSA’s rights do not extend to the NCAA tournament and to merchandise such as Vantage’s game that is sold in connection with that tournament.”[8] The decision left the two organizations unsure as to how to further proceed, as the full scope of each party’s rights was uncertain.

Based on this uncertainty, the NCAA and IHSA entered into years of negotiations, the outcome of which founded the March Madness Athletic Association (MMAA). Both the NCAA and the IHSA assigned all rights, including pending trademark applications at the PTO, to the MMAA. In return, the NCAA received an exclusive, perpetual license for use of the phrase in relation to both the men’s and women’s collegiate basketball tournaments and goods or services associated with the tournament. Additionally, the IHSA received the same type of license for reference to the annual boys’ and girls’ high school basketball championship and any goods or services associated with the tournament.

Since forming the MMAA, the NCAA has a less than traditional approach to protecting “March Madness.” The organization attempts to focus only on infringers who can cause commercial or reputational damage. To control the use of its marks, the NCAA sends out hundreds of cease and desist letters a year for its marks including “March Madness,” “Sweet Sixteen,”[9] “Elite Eight” and “Final Four.” However, counsel for the NCAA says that most people don’t realize that their use of one of the marks violates subsisting trademark rights and cease use once they receive a letter.[10] On occasion, special circumstances warrant special consideration.  For example, a charitable organization applied to register a derivative slogan using “March Madness” and started using the slogan for its business. Instead of sending a cease and desist letter, the NCAA’s counsel worked with the organization to assign the applied mark to the NCAA and in return the charitable organization received an exclusive license to the mark.

However, some contend that the use of “March Madness” when referring to the tournament and the related brackets is a fair use that does not constitute trademark infringement. The argument stems from the New Kids on the Block v. News America Publishing, Inc. decision on nominative fair use, where the court determined that there may be no way to reference a thing (in this case, a boy band) without referring to the name of that thing.[11]  This type of nominative fair use is what allows broadcasters and commenters to refer to the tournament as “March Madness” without violating any trademark rights. But the argument has yet to prove successful otherwise.

The NCAA does pursue those it believes violate trademark rights in “March Madness.” The NCAA recently sued the sweepstakes app provider Kizzang LLC and its owner/founder for infringing its “FINAL FOUR” and “MARCH MADNESS” marks when Kizzang applied for trademarks of FINAL 3 and APRIL MADNESS.[12] The parties agreed to a stipulated order that Kizzang was forbidden from using the FINAL 3 and APRIL MADNESS. Subsequently, Kizzang failed to file a response to the trademark infringement suit and the NCAA requested that a default judgment be entered. The court entered the judgment and permanently enjoined Kizzang and its principal from using the two marks as well as “Final Four” and “March Madness” for entertainment services.

Instead of adopting a harsh strategy that enjoins all non-sanctioned use of “March Madness,” the NCAA playbook adopts a discerning approach and only pursues violations that trade on the goodwill established in the related tournament. As the NCAA’s tournament remains a slam dunk for fans, broadcasters and advertisers alike, the NCAA can be expected to blow the whistle on trademark violations.

[1]  https://www.gerbenlaw.com/blog/ncaa-increasingly-protective-over-march-madness-trademarks/

[2] Id.

[3]  http://www.slate.com/articles/news_and_politics/explainer/2004/03/why_is_it_called_march_madness.html

[4] March Madness Athletic Ass’n, LLC v. Netfire, Inc., 310 F. Supp. 2d 786, 795-96  (N.D. Tex. 2003)

[5] 310 F. Supp. 2d at 796

[6] Id.

[7] Ill. High Sch. Ass’n v. GTE Vantage Inc., 99 F.3d 244, 245-46 (7th Cir. 1996)

[8] Id. at 248

[9] The Kentucky High School Athletic Association owns the mark “Sweet Sixteen” and grants the NCAA a license to use the mark. http://www.slate.com/articles/news_and_politics/explainer/2004/03/why_is_it_called_march_madness.html

[10] https://www.law360.com/articles/554928/bracket-brand-how-ncaa-s-tm-atty-guards-march-madness

[11] https://www.bizjournals.com/philadelphia/blog/guest-comment/2015/03/why-using-march-madness-to-promote-your-business.html

[12] https://www.lexology.com/library/detail.aspx?g=23a2a413-c461-41ca-a653-23f47470200d