That’s what the roller derby team presumably wants: a deal.
Let me confess first that I know nothing about the sport. When I hear “roller derby,” the image that pops into my head is a battered but victorious James Caan skating around the track as delirious fans chant “Jonathan! Jonathan!” But roller derby — described by Smithsonian Magazine as “a family-oriented fellowship of friends who like to beat each other up while wearing skates” — is popular, with more than 1,200 teams nationwide.
That popularity matters. Trademark law rewards a company for creating an association between a particular mark and the company’s goods or services. A plaintiff must show, however, that allowing someone else to use a similar mark will confuse consumers.
In the Cleveland suit, the plaintiff’s claim is that its investment in the “Guardians” mark in the local community will be lost if the (richer, better-known) local baseball team uses the same mark.
Professional sport has long been a hotbed for trademark lawsuits, and the plaintiffs do not always win. In 2006, for example, a federal court rejected a request by a Cincinnati-based sports training organization called Ignition Athletic Performance Group for an injunction to prevent Detroit’s new professional soccer team (now defunct) from using the name Ignition. The plaintiff lost even though it sponsored a soccer team called the Kings whose uniforms bore the Ignition logo. The court found no likelihood that the public would confuse the two marks, an outcome dictated largely by the distinct geographic markets in which the parties operated.
To be sure, when the big boys of professional sports sue to protect their marks, they tend to prevail.(1) After the Baltimore Colts of the National Football League moved to Indianapolis, for example, a start-up Canadian Football League franchise back in Baltimore wanted to call itself the Colts. The NFL team sued and, in the courts at least, beat the CFL team. The courts concluded that by using the name, defendants would be trading on the plaintiffs’ residual goodwill. But the injunction was narrow. “If they want to use ‘Colts’ in conjunction with anything besides a Baltimore football team,” wrote a federal appellate court, “there is nothing in this lawsuit to prevent them.”
Now, nobody would claim that the Cleveland Guardians of roller derby fame enjoy anything like the name recognition enjoyed by the old Baltimore Colts. Moreover, the two Guardians teams would be playing entirely separate sports.
Still, the complaint alleges harm aplenty: The roller derby team’s website crashed as fans rushed to purchase what they thought was baseball memorabilia. Social media accused the roller derby team of stealing the baseball team’s intellectual property. Dealers stopped filling the original Guardians’ orders for branded products, under the mistaken belief that the roller derby team was planning to sell counterfeit baseball paraphernalia.
None of these harms are trivial. They might even turn out to have been foreseeable.
Why then did the baseball team pick Guardians as its new name? Maybe because its decisionmakers were genuinely unaware of the roller derby team’s prior use.(2) Maybe because they thought the team would prevail in a lawsuit. Or maybe because all the good names were taken.
I’d prefer to think they picked the name knowing that they’d sooner or later have to buy out the rights to the name held by the pre-existing Guardians. I used to teach a case from 1968 called Burger King v. Hoots. The national fast-food chain was awarded rights to the name throughout the country, except for a small area in Illinois where the defendant had used the name first, and where locals presumably associated the name with his restaurant. I explained to the students why the court had found the efficient solution: The local restaurant had created local value, and the national chain needed national value. Thus the parties would bargain and find a price at which Burger King would buy out Hoots’s rights.
Unlike in Burger King, there’s no effective way to create a carve-out for the roller derby Guardians. The two teams would be operating in the same metropolitan area of about 2 million people. Thus publicity for the baseball team will inevitably swamp the roller derby team’s brand. But the efficient solution would still seem to be that the baseball team should buy out the roller derby team’s rights in the name.(3)
That’s not to say that I’m sure the court will rule in favor of the plaintiffs. But I can predict with confidence that the parties will settle. By spring, there will be only one Guardians sports team in Cleveland.
(1) Some have argued that a local seller producing apparel bearing the team name should not be within the reach of trademark law, but the courts have routinely held otherwise.
(2) The complaint alleges that the baseball team’s lawyer was aware.
(3) The complaint alleges that buyout negotiations had broken down.
This column does not necessarily reflect the opinion of the editorial board or Bloomberg LP and its owners.
Stephen L. Carter is a Bloomberg Opinion columnist. He is a professor of law at Yale University and was a clerk to U.S. Supreme Court Justice Thurgood Marshall. His novels include “The Emperor of Ocean Park,” and his latest nonfiction book is “Invisible: The Forgotten Story of the Black Woman Lawyer Who Took Down America’s Most Powerful Mobster.”
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