Passing Judgment – Fantasy Football in Real Court

There is no dispute that the worlds of professional football and fantasy football are now intertwined in many respects.  We know that NFL players themselves participate in fantasy leagues.  The NFL’s own website has its own fantasy products and content (www.fantasy.nfl.com).  There are several television, radio and internet programs and shows dedicated to fantasy content, statistics, and advice.  And when a person wins a fantasy football league, one of the awards they may receive is a trophy symbolizing their victory – much like the prestigious Vince Lombardi Trophy awarded to the Super Bowl champion.  However, there is a fine line that cannot be crossed before the conglomerate known as the National Football League turns fantasy football fun into a legal reality.

Titlecraft, Inc., a company that manufactures fantasy football league trophies, sought a declaration from the NFL that its trophies do not infringe the NFL’s rights in the Lombardi Trophy.  The NFL subsequently filed a counterclaim against Titlecraft asserting claims of copyright and trademark infringement.  The Lombardi Trophy, designed and manufactured for the NFL by Tiffany & Co., is made of sterling silver and consists of a replica football sitting at a downward angle atop a three-sided base with concave sides, which get smaller as they rise.  See Titlecraft, Inc. v. National Football League (U.S.D.C. – Dist. of Minnesota, Civ. No. 10-758).  There is no dispute that the NFL holds a valid copyright registration for this trophy.

Titlecraft’s trophies are similar to the Lombardi Trophy in that they consist of a football sitting at a downward angle atop a based with three tapered sides.  Despite the fact that the sides of Titlecraft’s trophies are not concave and are made of wood rather than silver, the NFL issued a cease-and-desist letter to Titlecraft in August 2009 informing them that they were infriging the NFL’s rights in the Lombardi Trophy.  The NFL demanded that Titlecraft “stop selling its trophies and account for all profits it had derived from its allegedly infringing products.”  In response, Titlecraft denied any infringement and continued to sell its trophies.

The prestigious Vince Lombardi Trophy awarded to the winner of the Super Bowl.

A Titlecraft trophy awarded to the winner of a fantasy football league.

On March 11, 2010, Titlecraft brought an action against the NFL seeking a declaration that its trophies do not violate any intellectual property rights of the NFL with regard to the Lombardi Trophy.  The NFL then sought summary judgment regarding Titlecraft’s liability for copyright infringement.  In order to establish a claim for copyright infringement without direct evidence of copying, the NFL must demonstrate that (1) it owns a valid copyright to the Lombardi Trophy; (2) Titlecraft had access to the trophy; and (3) Titlecraft’s trophies are the Lombardi Trophy are substantially similar.  Because there was no dispute that the NFL owned a valid copyright or that Titlecraft had access to the trophy, the only issue remaining for the court to consider was substantial similarity.  The requisite criteria for substantial similarity is that the works be similar in both ideas and expression.

The United States District Court for the District of Minnesota easily concluded that Titlecraft’s trophies were substantially similar in idea to the Lombardi Trophy.  There was no disputing the physical similarities between the trophies, including the downward-angled footballs atop tapered bases, the scale of the footballs to the bases, the lack of any other football-related adornments, the direction of the laces on the footballs, and the smooth surfaces of the footballs.  Additionally, Titlecraft conceded that their trophies, much like the Lombardi Trophy, correlate to performance where they represent the highest achievement with regard to success.  As for substantial similarity in expression, the standard is whether the concept and feel of the works is similar when viewed from an ordinary person’s perspective when observing the works together.  The mere fact that there are differences between the works is irrelevant because the analysis hinges on their similarities.  The court strongly determined that “no ordinary observer could conclude that Titlecraft’s trophies have anything but the same concept and feel as the Lombardi Trophy.”  In fact, the court went on to state that Titlecraft’s trophies are “appropriations” of the Lombardi Trophy because they are so similar in “shape, size, aesthetics, and feel” when viewing them side by side. 

In the end, the court ruled in favor of the NFL granting their motion for partial summary judgment against Titlecraft.  What this means is that a conclusive finding of liability for copyright infringement has been determined by the court.  Now it is just a matter of how much the damages will be.  The case will likely get resolved within the next few months through alternative dispute resolution or with the assistance of the Magistrate Judge. 

So what can we take away from this case?  It is quite clear how protective the NFL is of its intellectual property and marks.  I personally can attest to this as well.  I negotiated a contract with the NFL to have Fantasy Judgment’s (www.fantasyjudgment.com) services offered on the NFL.com fantasy football website this past season.  Part of the contract included me agreeing not to use, promote or advertise any of the NFL’s marks or logos on my website or through any forum when discussing Fantasy Judgment’s affiliation.  I exchanged several emails with the NFL’s legal team so that I completely understood what I was allowed to do in regard to advertising and promoting this partnership.  It was explained to me that there is significant value in the NFL’s marks, and they do not allow anyone to prosper from using these marks without appropriate compensation.  It actually does make a lot of sense.  While I can state on my website that Fantasy Judgment and the NFL have an agreement, I could not put the NFL logo or any other mark on the website along with that statement.  In the current case, the NFL has a protected proprietary interest in the Lombardi Trophy.  Any attempt to capitalize off of that intellectual property interest without just compensation is prohibited by the NFL and punishable by the courts.  The reality is that the NFL was not necessarily harmed by Titlecraft’s use of the Lombardi Trophy as the basis for their products.  The NFL is not in competition with Titlecraft selling replica trophies to fantasy football leagues.  It all comes down to money.  The NFL rightfully does not want anyone else to profit or gain off the use of its intellectual property.  The moral of the story is – don’t mess with the NFL. 

The fantasy sports industry has been continually growing over the last 20 years.  Now firmly entrenched online, the industry has reached new heights and has even been relatively insulated from the economic problems facing the United States and the rest of the world.  There are so many different niches within the fantasy sports universe, and this has promoted several entrepreneurs to capitalize on a thriving market.  One of these markets is the fantasy sports trophy business.  There clearly is a need and desire for such a product because people who play fantasy sports want to feel that sense of accomplishment when achieving victory.  What better way to do that then provide a trophy – especially one similar to the actual NFL championship trophy?  But again, there is a fine line between fantasy and reality.  Titlecraft crossed that line, and it is going to cost them an unspecified amount of money (and perhaps more) for trying to replicate the NFL experience in the fantasy universe. 

Please feel free to share your thoughts on this issue.  Leave a comment, drop me an email at michael.stein@fantasyjudgment.com, write on Fantasy Judgment’s wall on Facebook, or find me on Twitter at www.twitter.com/FantasyJudgment and send a tweet.