Quarterly International Ip Law Update

• Jurisdiction: United States,Federal
• Author: David Tseng, Mariana Noli, Leaf Williams
• Publication year: 2021
• Citation: Vol. 46 No. 3

QUARTERLY INTERNATIONAL IP LAW UPDATE

AUTHORS

David Tseng

TSMC

Mariana Noli

Noli IP Solutions PC

Leaf Williams

Reichman Jorgensen LLP

IP GAMES AND THE OLIVE CROWN

As the "largest and most complex sporting event in the world"¹ the Olympic Games provide fertile ground for intellectual property disputes as well as unique international and national legislation designed to capitalize upon and protect the Olympic properties. Maintaining the wholesome image of the Olympics often requires diligent enforcement against those who seek to exploit that image. From the IP perspective, exploitation typically comes in two forms. One form is "ambush marketing," the practice of using an event to advertise products and services, often when the event already has licensed sponsors. The other form is counterfeit goods. The limited duration and frequency of the Olympic games create a frenzy market for souvenirs and other memorabilia. This creates an incentive for the unauthorized distribution and sale of those goods. On the other hand, Olympics IP sponsors and rightsholders have also been frequently criticized for overzealous enforcement of their rights. The business side of the Olympics—generating revenue from licensing to fund the games and support the athletes—can sour the Olympic experience for local businesses and others who seek to use the Olympics name in good faith. Understanding how the Olympics marks are tightly policed requires the knowledge that Olympics-based IP are given extra protection in the host countries.

The International Olympics Committee ("IOC") is the nonprofit organization in charge of supervising the Olympic games. Based in Switzerland, the IOC allows countries around the world to form national governing bodies that manage Olympics-related activity within each country. According to the Olympic Charter, the Olympic symbol, flag, motto, and anthem are all IP that is exclusively owned by the IOC. The IOC utilizes multiple international IP treaties, including the Nairobi Treaty, to oblige member states to protect the Olympic properties and generate revenue through licensing activities.² Any state that has signed the treaty has in turn its own national governing body that is dedicated to the Olympic activities, such as the U.S. Olympic and Paralympic Committee ("USOPC").

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In the United States, the USOPC receives significant leeway regarding the protection and enforcement of Olympic-based IP. For example, the Ted Stevens Act³ provides the USOPC with the right to charge sponsorship fees in exchange for a license to use USOPC owned trademarks. Further, the Act grants the USOPC a statutory right to enforce its marks. In 1987, the Supreme Court held in favor of the USOPC by prohibiting the San Francisco Arts and Athletics, Inc. ("SFAA") from using the word "Olympics" in the promotion of the "Gay Olympic Games" in San Francisco.⁴ In the case, the Supreme Court expressly held that SFAA did not have a First Amendment right to use the word "Olympic" because the SFAA's "expressive use of the word cannot be divorced from the value the USOC's efforts have given to it."⁵ The Court also found that the Olympic legislation granted the USOPC the exclusive right to use the word "Olympic" and that the Act itself does not incorporate defenses under the Lanham Act.⁶

The ruling emboldened the USOPC to aggressively pursue its trademark rights. For example, the USOPC recently filed a complaint against German apparel maker Puma in the District of Colorado for trademark infringement. Puma had filed trademark applications for clothing and sports apparel that combined its own brand name with...