Throughout the NFL playoff games these past few weeks, there have been many injuries sustained by players - even some that may impact this weekend’s championship game (think Carolina Panther Thomas Davis’s broken forearm). But, none stick out more than the grizzly hit that left Antonio Brown with a concussion and forced him to miss the AFC divisional game. When I saw that hit, I immediately thought of all the commercials I had seen for the movie Concussion and how much bad press the topic of concussions is generating for the league. That got me thinking, “I wonder if the NFL signed off on all the league’s and team’s logos used throughout the film.”
In case you have not seen Concussion, it details one doctor’s discovery of neurological deterioration suffered by many football players, which he names chronic traumatic encephalopathy or more commonly referred to as CTE. The doctor tries to raise awareness of CTE to the public and the NFL, who at the time was trying to suppress his research due to the negative impact it would have on the league. Throughout the movie, the NFL logo and other team logos are widely and prominently used. Many are probably wondering if and why the NFL approved the use of these marks given the sensitive nature of the subject matter. The likely answer is that they didn’t.
In a series of interviews on sports talk radio, Sony President Tom Rothsman, confirmed that Sony did not receive express authorization from NFL to use its marks. So if the NFL didn’t give approval, how was Sony able to use these logos throughout their movie without being subject to a challenge by the NFL, who is notoriously aggressive about asserting their intellectual property rights? Sony’s use of the NFL logos can best be described as trademark fair use, more specifically, nominative fair use. Fair use is a defense that can be used in a trademark litigation proceeding by a defendant accused of infringement by the trademark holder.
To claim protection under nominative fair use, a defendant must refer to a product of the plaintiff that cannot be easily identified without using the trademark, utilize the mark only in a manner that is reasonably necessary to identify the product, and refrain from doing anything in connection with using the trademark to suggest that plaintiff sponsored or endorsed defendant or its product. In other words, nominative fair use occurs when a defendant uses a plaintiff mark to fairly identify the plaintiff’s goods or services. Sounds easy enough, so let’s have some fun.
Applying that to the Concussion movie, it would appear Sony’s use of the NFL logos would fall under the nominative fair use defense. Keep in mind that the movie is based on a true story that involves real players who played in the NFL. In order to tell the story, Sony can argue that it was necessary to use NFL trademarks to accurately tell the true story. Without the logos, the movie may come across as fiction, which would reduce the impact of its message.
That affects the first element of nominative fair use analysis: Sony could not easily identify the real football league and the real teams without using the NFL logos and team logos. As for the second element, Sony only used NFL marks to identify teams that the main character actually played for in the league. Additionally, the marks are used verbally, in the background of scenes, and only used the mark enough for the audience to be able to identify the team or league being referenced or portrayed throughout the film. Lastly, Sony did not use the marks in a way that suggested the NFL endorsed or sponsored the movie. Similarly, Sony did not falsely misrepresent the NFL or its products and services or make it appears as if the NFL had endorsed the movie. Of course, you may have thought otherwise when you saw the movie and I’d love to hear your take in the comment section.
For anyone thinking about using another party’s trademark first consider whether the use may be considered fair use under trademark law. It is also advised to consult an attorney prior to use of the mark to ensure you understand the potential liabilities of using another party’s mark. Upon further review, it is unlikely any challenge by the NFL would succeed in overturning Sony’s call to use the logos.
ABOUT THE AUTHOR – TRAVIS STEGEMOLLER
Travis Stegemoller was previously an attorney at Gutwein Law. Travis earned his undergraduate degree from Purdue University and his JD from Valparaiso University Law School. He focused primarily in trademark and franchise law. He currently sits on the Board of Directors for the Venture Club of Indiana, serves on the Advisory Board of the Fight For Life Foundation, and is an ambassador for Purdue’s FoundryX.