IP Empowerment for All

– Howard University School of Law’s Intellectual Property Student Association

THE PROBLEM

“In a system where billions of dollars are generated in part due to the athletic success of student-athletes, the restrictions on non-game related NIL deals do not prevent exploitation— they are exploitative.” –  Professor Gabe Feldman, Tulane Law School; Director, Tulane Sports Law Program; Associate Provost for NCAA Compliance

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While O’Bannon’s decision and the subsequent law changes in California and Florida is great progress around name, image, and likeness (“NIL”) as it pertains to the NCAA and student athletes, it has also created some other issues.

Uniformity is one of those issues. With the absence of  federal legislation covering NIL standards for college athletes, California’s Fair Pay to Play Act has in essence created a “venue shopping” system where student athletes can choose a school to attend simply because it’s located in a state with more favorable NIL laws. In addition, large amounts of conflicting legislation can lead to mass confusion.

The other issue is that, in other states, students are dealing with the traditional harms of student athletes in the market for non-game NIL payments:

• Student athletes—just as other students—have property rights in their name, image and likeness. Many student athletes have created tremendous value in their NILs and, absent NCAA restrictions, would receive significant compensation for them in an open market. These men and women—often from socio-economically disadvantaged families—are deprived of the economic benefit the market would pay for their property.
• Some student athletes will actually have the most value to their NIL while they are in school. For example, some athletes are injured prior to professional drafts. Therefore, the NCAA’s policy prevents those athletes from properly capitalizing off of their image when it is most beneficial for them to do so.
• But most importantly, the stripping of an innate, legal right in consideration for the ability to play a sport (without any education about its existence) leaves the athletes less inclined to know how to properly use and commercialize their IP in the future.

 THE MISCONCEPTION

One of the most common complaints against “Fair Pay to Play” is the argument that athletes do not deserve to be paid for playing a sport. This usually comes from people with little understanding of NIL or the NCAA’s policy, and rests solely on the literal meaning of the phrase.

But it’s important not to confuse third-party NIL compensation with other types of compensation. Most importantly, the NCAA is not contemplating changes that would allow colleges to pay college athletes. The Board of Governors remains fiercely opposed to “pay for play” and other forms of university-to-athlete compensation outside of the grant-in-aid (tuition, fees, room and board, required course-related books etc.). Third-party compensation for NIL is also not compensation for the underlying labor of playing a sport. No college will be allowed to pay their athletes for their NIL or their labor. The legislation would merely allow for student athletes to have the same NIL rights as every other student-creator.

THE SOLUTION

Howard University School of Law’s Intellectual Property Student Association (“IPSA”) has held a long-standing devotion to the application of social justice in the area of IP. It naturally follows that we would like to support a federal bill that would give college athletes the opportunity to profit off of their image and likeness that they have worked hard to curate.

Currently IPSA and our IP Empowerment For All subcommittee is in the process of updating research on current legislative proposals regarding NIL. This research will be imputed into a one-pager that more thoroughly addresses the need for particular federal legislation in this area. Then, we can utilize the paper as a tool to persuade our peers and colleagues to sign a petition in support of the proposal. While the NCAA’s proposal to Congress is effective in addressing uniformity, the language of the proposal is still very restrictive for student athletes.

As a result, we are working diligently to ensure that the proposed bill we choose to endorse and share addresses concerns across our communities and reflects our mission of social justice.

We are confident that armed with the correct information, many people will see that this proposal is long overdue. Please continue to check this space for our selected proposal and link to our petition!

Trademarks and Black Lives Matter

Black Lives Matter. I Can’t Breathe. Say Her Name. George Floyd. Trayvon Martin. Breonna Taylor.  Unfortunately, the list of phrases and names goes on.  With each police involved killing, a new hashtag is born.  And after awhile we see it everywhere.  Used in connection with social media posts, on protest signs and t-shirts, and in connection with requests for donations to support change.

Whenever a death occurs, there is usually a slight influx of trademark applications submitted to the USPTO.  For example, there are 30 applications that have been filed with the phrase Black Lives Matter, 13 applications with the phrase I Can’t Breathe, and 3 that include the name Trayvon Martin.  Applications are filed by a variety of sources, including individuals, newly created foundations, the deceased’s estate, or other organizations.

Many of the applications have been abandoned after receiving one of two refusals for registration.  The first refusal these applications may receive is because they suggest a false connection with someone or their estate, and that individual is not connected to the trademark application.  For example, one application for the mark I Can’t Breathe was refused registration for a false connection with the estate of Eric Garner.  Those that can show connection to the individual or institution can overcome this refusal.

Another refusal these applications receive are because they are such a commonly used phrase that consumers will not recognize it as a trademark.  In other words, the term or phrase is used by so many that the public would not believe it is supposed to indicate one particular source.  Instead they would read the phrase as simply indicating support of the message or movement.  This refusal can be overcome by submitting evidence that the public will view the mark to indicate a single source.

If you see a trademark application in the USPTO records and have evidence that it is owned by a group other than those actually connected with the movement or individual, you can contact the USPTO through a letter of protest.  More information on submitting letters of protest can be found on the USPTO website at https://www.uspto.gov/trademark/trademark-updates-and-announcements/letter-protest-practice-tip .

Although many are unable to register these names and phrases with the USPTO, they may still use them in connection with their products and services.  Not all that are using the names and phrases are part of the movement.  Check out this NPR story about the Black Lives Matter foundation which has collected millions of dollars during the recent protests, but has no connection the well-known Black Lives Matter Global Network foundation: https://www.npr.org/2020/06/16/878852994/a-company-that-profits-off-of-the-black-lives-matter-movement.

As we choose groups to support through sharing information, purchasing products, or donating money to an organization, we should be sure to check the source that we are supporting.  Website and social media “about” pages or sections should give additional details about the organization to confirm whether it’s the group you actually want to support.

Recent Name/Image/Likeness Legislation Will Change the NCAA (or Not)

by Ronald S. Katz

INTRODUCTION

In a list of organizations creating inequities, the National Collegiate Athletic Association would certainly be included. For example, like professional sports, the NCAA is a multi-billion-dollar enterprise, but, unlike professional sports, it pays only a minuscule percentage of its revenues to its athletes, mainly in the form of athletic scholarships. In the field of intellectual property, those players have not been allowed to receive payments for their names, images and likenesses, even though every other student on campus has that right.

To remedy this latter injustice, California in September 2019 passed the Fair Pay to Play Act, allowing athletes rights regarding their names, images and likenesses similar to those enjoyed by all other students. Numerous other states are considering NIL legislation similar to California’s.

Because college sports receive much public attention, the California law, which does not come into effect until 2023, has generated numerous opinions about its potential effect. The extremes of those opinions range from those who say that the law will end intercollegiate sport as we know it to those who say that the law will have no effect. The NCAA has now also weighed in, stating, opaquely, that it will at some unknown point “permit” college athletes “the opportunity to benefit” from their name/image/likeness “in a manner consistent with the collegiate model.”

In fact, at this juncture, no one can really say what the effect, if any, of the law will be. That point was driven home by an order rendered on January 6, 2020, by the federal appellate court with jurisdiction over California, the Ninth Circuit Court of Appeals. Pursuant to that order, in  the pending appeal (No. 19-15566) of In re: National Collegiate Athletic Association Athletic Grant-in-Aid Cap Antitrust Litigation, a case concerning the payment of college athletes, “The parties are directed to file…briefs…on the impact, if any, of California’s Fair Pay to Play Act…on this case.”

If the judges of the Ninth Circuit do not yet know the effect of the NIL law, it is fair to say that no one else does either. In my opinion, the best that can be done at this point, as below, is to put the law into context by triangulating among the extreme opinions noted above and the NCAA’s position on the Fair Pay to Play Act.

EXTREME OPINION #1: NIL LEGISLATION WILL END INTERCOLLEGIATE SPORT AS WE KNOW IT

There is logic supporting this view. For example, there is no difference in economic effect if an athlete receives from an alumni booster of a university $10,000 under the table, which violates NCAA rules; $10,000 in salary, which violates NCAA rules; or $10,000 for name, image or likeness, which would be legal under the Fair Pay to Play Act and, possibly, under new NCAA regulations. Because money is fungible, it really does not matter, in an economic sense, for what reason it is purportedly paid. Therefore, payment for names, images and/or likenesses can completely undermine the NCAA principle that athletes should not be paid. The amounts paid, in theory, could be virtually unlimited.

EXTREME OPINION #2: NIL LEGISLATION WILL HAVE NO EFFECT

This extreme view has support in the law. Under the Commerce Clause of the U.S. Constitution, states cannot make laws that regulate interstate commerce, and intercollegiate sports clearly constitute interstate commerce, viz., the NATIONAL Collegiate Athletic Association. Indeed, a case decided by the Ninth Circuit Court of Appeals in 1993 (NCAA v. Miller, 10 F.3d 633) applied this principle to intercollegiate sports.

In that case, Nevada made a law that would have caused NCAA disciplinary proceedings to have rules in Nevada different from those that the NCAA applied nationally. Like the Fair Pay to Play Act, the Nevada law had been emulated in other states.

The court did not hesitate to invalidate the Nevada statute on the ground that it regulated interstate commerce in violation of the U.S. Constitution: “The statute directly regulates interstate commerce and runs afoul of the Commerce Clause both because it regulates a product in interstate commerce beyond Nevada’s state boundaries, and because it puts the NCAA…in jeopardy of being subjected to inconsistent legislation arising from the injection of Nevada’s regulatory scheme into the jurisdiction of other states.” It is difficult, if not impossible, to distinguish the judicial reasoning applied to this Nevada legislation from the judicial reasoning that would be applied to California’s Fair Pay to Play Act.

THE NCAA’S OPAQUE PRONOUNCEMENT

 As noted above, in October, 2019, after the California law passed, the NCAA issued a vague statement to the effect that It will study how college athletes may be paid for their names, images and/or likenesses “in a manner consistent with the collegiate model” at some unstated point in time. One problem with the NCAA’s statement is that the collegiate model is nowhere clearly defined.

Underscoring that fundamental problem is that the District Court decision being considered in the Ninth Circuit order mentioned above (In re Nat’l Collegiate Athletic Ass’n Athletic Grant-in­ Aid Cap Antitrust Litig., No. 14-MD-02541 CW, 2019 WL 1747780, (N.D. Cal. Mar. 8, 2019)) concluded that the NCAA rules “that permit, limit, or forbid student-athlete compensation and benefits do not follow any coherent definition of amateurism,” which is the core principle of the NCAA. This finding was based, among other things, on inconsistent definitions of amateurism given by different NCAA witnesses and on the fact that at trial, according to the court’s opinion, there was evidence of seventeen different ways-such as payment for post­ season bowl or championship play–that the NCAA permits athletes to be compensated.

Thus, whatever the NCAA’s definition of an amateur is, it does not comport with the dictionary definition: “a person who engages in a study, sport or other activity for pleasure rather than for financial benefit or professional reasons.” Given the above, it is difficult to divine how the NCAA will create a system of payment for athlete names, images and likenesses “consistent with the collegiate model.” It should be noted that payment for the names, images and/or likenesses of athletes rarely have a connection to education.

CONCLUSION

Intellectual property injustice is a symptom of the NCAA’s underlying problem, and the Fair Pay to Play Act is a reaction to that symptom. The fundamental problem of the NCAA is that its top levels are indistinguishable from professional sports, and the theory of amateurism-however that is defined–does not work in that context. Whether the Fair Pay to Play Act survives or not, the pressure will continue to bring the regulation of college sport in line with its reality.

Ronald S. Katz is a Senior Counsel at GCA Law Partners LLP. A co-author of Sport, Ethics and Leadership, he will be speaking on the subject covered above at the 2020 IP and Social Justice CLE this coming February 28.