This is a guest post by Austin-based attorney Brian A. Hall of Traverse Legal, PLC. It’s Masters week, one of the most exciting weeks of the year for golfers, avid and amateur alike. Questions abound, including: (1) what will it be like without Arnold Palmer since he passed away last September?; (2) who will win the first major of the year and don the coveted Green Jacket?; (3) could Danny Willett repeat or will Dustin Johnson continue to roll?; and (4) who will emerge victorious from the Drive, Chip and Putt National Finals?
While golf fans will watch for answers to these questions, the Masters also serves as a reminder of all the Intellectual Property questions inherent in the game of golf. So, whatever your handicap, here is a list of 5 IP questions and thoughts to ponder related to the same.
1. Is Arnold Palmer generic for the iced drink that includes lemonade and iced tea?
Arnold Palmer Enterprises, Inc. owns a trademark registration, albeit in stylized form, for ARNOLD PALMER. However, the question becomes whether it has become the generic name for, or synonymous with, the general class of product, albeit against the intentions of Arnold Palmer’s entity. A Wikipedia page dedicated to the drink along with what assuredly will be countless orders for it this week alone would make for an interesting debate, if not dispute. The same could be said for its boozy brethren, the John Daly.
2. Is use of anything “Masters” off limits?
Augusta National, Inc. owns countless trademarks, including AUGUSTA NATIONAL GOLF CLUB, MASTERS TOURNAMENT, AMEN CORNER, GREEN JACKET and others in connections with various goods and services. They have recently filed a trademark application with the United States Patent and Trademark Office for A TRADITION LIKE ANY OTHER (I can hear Jim Nantz say it as I write it). The entity has been active in its claim of rights and enforcement efforts, including a dispute over the domain name masters.com, which it now owns and uses as its primary website. While the doctrine of fair use, both traditional and nominal fair use, may apply, one would be well served knowing what could be considered in the fairway or out of bounds when it comes to use of the claimed IP.
3. Besides trademarks, where else does the law and golf intersect?
One need look no further than a lawsuit in 1996 involving a Houston-area golf course’s use of the name “Masters” and “Amen Corner” in connection with its replicas of Augusta National Golf Club’s 11th, 12th and 13th golf holes. Although Augusta National did not join the other golf course operators (e.g. Pebble Beach), the lawsuit claimed that the Defendant, Tour 18, had not only violated federal trademark law but also committed trade-dress infringement, unfair competition and false advertising based upon copying of holes from the courses and use of the brands in promotional materials. While the Court confirmed that the hole designs were protectable, as were the trademarks, the relief ultimately provided by the Court of Appeals only required modifications and did not preclude all use. Needless to say, anything distinctive or that acquires secondary meaning as emanating from Augusta National may be protectable IP. Just like you need to know the rules of golf, you need to know the laws when it comes to IP.
4. How much IP law is there really in golf?
The short answer … probably a multiple of the number of range balls hit each day by your weekend warrior golfers. Thousands of patents on golf-related inventions exist, as confirmed by the USPTO. Whether it is a putter or a golf ball, entities try to secure exclusivity and file patent infringement lawsuits to protect their rights. Manufacturers and designers know that the golf equipment market, approximately $2.5 billion in the United States alone, warrants efforts to obtain and enforce patents. Moreover, when a company goes on to make claims about the efficacy of its product (i.e. shave 5 strokes off your game or add 20 yards to your drive), truth in advertising and related laws become important.
5. Can golfers make more from publicity rights than actually golfing?
Sure, making the cut and winning golf tournaments leads to a successful career and a comfortable lifestyle. However, licensing the use of one’s name and likeness, including through sponsorship, can monetarily trump winning. Just ask Rory McIlroy, who recently inked a $100 million Nike contract extension. Golfers capitalize off of apparel, equipment and other opportunities to monetize their fame. As a result, unauthorized use of one’s name or likeness will typically lead to a lawsuit. Tiger Woods, is but one example of a golfer enforcing his rights, sued a yacht manufacturer that used his name and photos of him on promotional materials in connection with yacht sales, a case that was ultimately settled. Since there are no mulligans when it comes to a civil action, getting permission from the golfer may be your best option.
So, as you watch the Masters this week, think about the IP (perhaps instead of thinking about how much work your game needs in comparison to these professionals). Regardless of your business type, doing so may help avoid rounds of legal battles and allow you to play more rounds on the course.
