The NCAA has had great success in enforcing its trademark rights in MARCH MADNESS, a mark that has a contentious history of ownership. In 2003, the NCAA successfully stopped a sports marketing group from using the mark, and fended off allegations that the mark is generic. The present case involves Intersport, a Chicago-based company that, at one time, co-owned the mark with the Illinois High School Association (IHSA). In 1995, however, the IHSA was involved in a dispute with the NCAA over use of the term, at which time Intersport assigned its share of the rights in MARCH MADNESS to IHSA, in return for royalties. In that same arrangement, Intersport was licensed to use the mark in connection with the broadcast of its coaches' shows. Specifically, the license was granted for use (1) "in connection with entertainment services, namely the presentation of athletic and entertainment personalities in a panel forum; and" (2) "to advertise, promote, and sell publications, videos and media broadcasts in connection with" item (1). Eventually, MARCH MADNESS became co-owned by the IHSA and NCAA, through the entity March Madness Athletic Association (MMAA). The license agreement with Intersport was also assigned to the MMAA.
In recent years, Intersport sought to use the mark on mobile phone programming, which would include analysis, scores and highlights related to the NCAA tournament, as well as coaches' shows. The NCAA objected to Intersport's intended use of the mark on mobile programming and asked Intersport to limit its use to television shows, stating that NCAA would consider airing shows on wireless devices to be outside the scope of the licensing agreement. Intersport responded by filing suit and requesting judgment on its right to use the mark on mobile programming, pursuant to the terms of its licensing agreement. (Intersport, Inc. vs. National Collegiate Athletic Association and March Madness Athletic Association, L.L.C.) Intersport's CEO, Charles Besser, has expressed that the intent was to confirm that the license included the right to distribute content using the mark MARCH MADNESS on any platform, not just on shows produced on television networks. The NCAA, in turn, claimed that Intersport actually had a very narrow license extending only to a specific range of broadcast distribution as it would have been defined at the time the agreement was executed in 1995, and not extending to distribution on mobile devices. The Circuit Court ruled for Intersport, finding that the license agreement was unambiguous. Although federal law clearly defines "media broadcasts" as those requiring distribution by television or radio, the wording "video" includes any type of visual production and is not limited to specific platforms of distribution.
On appeal the NCAA argued that Intersport's shows still do not qualify as "selling videos" as defined in the licensing agreement, and that videos should be construed as defined in 1995, which requires "a physical object in the hand of the end user." These arguments were unsuccessful, and the Appellate Court affirmed the Circuit Court's ruling. The test is whether or not the use could "reasonably be said to fall within the medium as described in the license." This test dictates that if the new use is not "completely unknown" at the time the license was executed, the burden is on the licensor to ensure the exclusion. Following this test, the appeals court found that the definition of "video" has evolved since inception and does not mandate storage in a physical device. Furthermore, it was foreseeable in 1995 that video could be distributed on mobile wireless devices and it was incumbent on the licensor to explicitly limit "video" if intended. Furthermore, as the license is "perpetual" but has no clause on future technology, the terms should be interpreted broadly. The decision certainly raises questions on extent of the overlap between video and broadcast programming and mobile phone technology, and whether they are moving toward melding into one and the same.
Vol. 53, June 2010