Yeezy seeks damages from Walmart’s unjust enrichment derived from consumers confused into believing the “imitation” shoe sold by Walmart is affiliated with Yeezy. In a similar case, Walmart is accusing Yeezy of an attempt to confuse users with a pending trademark.
On April 21, 2021, Walmart filed an opposition pleading with the United States Patent and Trademark Office’s (“USPTO”) Trademark Trial and Appeal Board (“TTAB”) against Yeezy for a logo that Walmart alleges “resembles” its own mark, which was registered with the USPTO in 2008. Yeezy’s trademark application was filed on January 3, 2020.
However, in Walmart’s opposition pleading, it was alleged that Yeezy’s logo would create “confusion” among customers and promote a “false suggestion of a connection” between Yeezy and the Walmart brand. The opposition report alleges that Yeezy’s mark is “likely to cause confusion and lead to consumer deception.” The TTAB set a deadline for a discovery conference and the start of discovery for August 29, 2021.
The Lanham Act’s “likelihood of confusion” standard prohibits the use of the mark in a way that is likely to deceive or cause confusion about the nature or origin of a product or service. 15 U.S.C. § 1125(a)(1).
To prove likelihood of confusion, there does not have to be actual confusion from consumers for Walmart to prevail. “To decide whether there is a likelihood of confusion ... a court must ask whether consumers and specifically consumers who would use either product, would be likely to attribute them to a single source. Sorensen v. WD-40 Co., 792 F.3d 712, 726 (7th Cir. 2015).
There is no question that Yeezy and Walmart are not fans of one another. Maybe the two giants will come to some sort of settlement; if not, it will be interesting to see how both of these cases turn out.
NCAA’s New NIL Era
Like a sprinter jumping off the starting blocks, the name, image, and likeness (“NIL”) era of college athletics took after a July 1st shotgun start. Many within the NCAA inner circle believed the ability for collegiate athletes to be compensated for their NIL would be the demise of their business model. Over a month into the NIL era and the NCAA brain trust seems to be unreservedly incorrect. This brief note will review the launch of the NIL era, federal legislation seemingly at a standstill, and proceedings related to NIL currently being litigated.
With the threat of twelve states having laws or executive orders going into effect on July 1st that would allow collegiate athletes attending institutions within the state to be compensated for their NIL, the NCAA adopted an interim policy less than 12 hours beforehand on June 30th. Under the interim policy, student-athletes in every state across the country can be compensated for their NIL. If an institution is located in a state with a NIL law, the athletic department must adhere to that state law. To date, twenty-seven states have some form of NIL authority governing their athletes’ NIL activities. However, if there is no state law where the institution is located, the institution shall create its NIL policy for student-athletes to adhere to. Institutions in all other states have adopted athletic department-specific NIL policies to allow their student-athletes to be compensated for their NIL. If a state law is enacted and becomes effective after an institution creates its policy, the state law will supersede the institution’s policy. Of course, a federal NIL law would supersede each institution’s NIL policy and preempt all enacted state laws.
Unfortunately, for those seeking uniform authority across all fifty states, a federal NIL law does not seem to be coming over the horizon any time soon. On June 9th, 2021, Senator Maria Cantwell (D-WA), Chairwoman of the Senate Committee on Commerce, Science, and Transportation held a hearing related to NCAA Athlete NIL rights. The hearing was headlined by college sports law experts including NCAA President Dr. Mark Emmert. During the hearing, Senator Marsha Blackburn (R-TN) lambasted Emmert for his inefficiencies in resolving the NIL issue sooner. Senator Blackburn’s comments echoed a resounding, bipartisan sentiment that the NCAA was incapable of rectifying the situation on its own, and swift, targeted federal legislation was needed to provide college athletes with rights every other American can enjoy.
These bipartisan efforts came to a screeching halt during the second commerce committee hearing on June 17th where ranking member Senator Roger Wicker (R-MS) was not even in attendance. The second NIL hearing witness panel consisted entirely of current and former college athletes or their family providing their insight on the NIL issue to Congress for the first time. While some NIL issues were discussed, the vast majority of the hearing was spent discussing collegiate athlete’s health, requirements for athletic departments to reserve greater funds for athlete resources, and athlete’s status as employees with an ability to collectively bargain under the FLSA. All of these somewhat bipartisan issues have a difficult path forward to the 60 votes required in a Senate with a 50/50 split. That being said, whatever proposal comes out of the Senate Committee on Commerce has a much better opportunity to pass than Congress’s current partisan bills being stalled in the legislature.
Another path forward for uniform authority related to student-athletes being compensated for their NIL is through the courts. On June 15th, 2020, Arizona State swimmer Grant House and Oregon basketball player Sedona Prince filed antitrust lawsuits in the Northern District of California against the NCAA and Power Five Conferences. The respective complaints state the NCAA and conferences violated antitrust laws by forcing student-athletes to adhere to NCAA rules preventing college athletes from receiving compensation for their NIL in TV broadcasts. The lawsuits were consolidated as House v. NCAA and certified as class actions on behalf of current Division I college athletes. A week before July 1st, Judge Claudia Wilken denied the NCAA’s motion to dismiss based on the Supreme Court’s decision in NCAA v. Alston. On July 26th, the plaintiffs in House filed an amended complaint which broadened the scope of damages to all potential earnings that were lost from the NCAA’s denial of NIL rights to past student-athletes and added new admissions from the NCAA that providing NIL rights to student-athletes is actually beneficial for collegiate athletics. The amended complaint states “thousands of student-athletes have already taken advantage of the NIL opportunities available to them since July 1” and quotes from several agents of the defendants stating they “believe that the name, image, and likeness is a very good thing.” The NCAA’s response to the House amended complaint and the case’s outcome is something all sports attorneys representing college athletes should keep a close eye on.
Whatever the result of the NIL era is, sports law is in a much better place now that collegiate athletes can enjoy the same legal rights and privileges that other students at their university can enjoy. If a social media influencer at USC can command a six-figure salary for promoting brands on their media channels, college athletes grinding all week for their athletic reputation should enjoy these same rights as well. As it currently stands, the NCAA has not been negatively impacted by NIL but it will be interesting to see where the NIL era takes the association several years down the road. One thing is for sure: the NIL era is here to stay. Sports law professionals should keep a close eye on how the NIL market progresses in the future.
Will the Ninth Circuit Unblur the Lines Surrounding Music Copyright Infringement? Stay Tuned.
Within the past three years, the Ninth Circuit Court of Appeals has delivered two competing opinions on the topic of music copyright infringement. First, in Williams v. Gaye, the Ninth Circuit held that the song “Blurred Lines” recorded by Pharrell Williams and Robin Thicke infringed on Marvin Gaye’s song “Got to Give it Up.” Williams v. Gaye, 895 F.3d 1106, 1138 (9th Cir. 2018). Then, in Skidmore v. Led Zeppelin, the Ninth Circuit changed its tune and held that Led Zeppelin’s song “Stairway to Heaven” did not infringe on the band Spirit’s song “Taurus.” Skidmore v. Led Zeppelin, 952 F.3d 1051, 1079 (9th Cir. 2020). Now, the Ninth Circuit is faced with another lawsuit involving a similar question about the song “Dark Horse” recorded by Katy Perry and Juicy J and the song “Joyful Noise,” by Marcus Gray.
Christian rapper Marcus Gray, filed a copyright infringement lawsuit against Katy Perry and Juicy J, alleging that their song “Dark Horse” infringed his song “Joyful Noise” by using a similar eight-note ostinato. Gray v. Perry, 2020 WL 1275221, at *1 (C.D. Cal. Mar. 16, 2020). Initially, on September 11, 2019, the district court entered a judgment for $2.8 million in accordance with the jury verdict, holding Katy Perry and Juicy J liable for copyright infringement. Id. However, on March 16, 2020, Judge Christina A. Snyder vacated the jury verdict and granted judgment as a matter of law in favor of Katy Perry and Juicy J because Gray failed to show that the eight-note ostinato at issue was subject to copyright protection. Id. at *18.
Shortly thereafter, on April 15, 2020, Gray appealed the decision to the Ninth Circuit. Record of Petitioner’s Appeal to the Ninth Circuit Court of Appeals, Gray v. Hudson, 2020 WL 20-55401. Perry’s legal team is relying on the Skidmore v. Led Zeppelin decision to persuade the Ninth Circuit to reject the appeal. Bill Donohue, Katy Perry Cites Zeppelin At 9th Circ. In Copyright Fight, Law 360 (March 31, 2021), https://www.law360.com/articles/1354179/katy-perry-cites-zeppelin-at-9th-circ-in-copyright-fight. Perry’s attorneys assert that the eight-note ostinato at issue is “too basic for any one artist to monopolize” and point out that the Led Zeppelin decision already recognized that “it is critical to preserve . . . the use of the basic building blocks of music, and not allow improper monopolization to form the basis of an infringement claim.” Id.
Katy Perry and Juicy J have a strong argument that the “Joyful Noise” ostinato is not sufficient to warrant copyright protection, and therefore, that “Dark Horse” is not infringing. The Led Zeppelin decision is strong Ninth Circuit precedent that weighs in their favor because it is analogous to this case. In Led Zeppelin, the court held that the opening sequence in the band Spirit’s song “Taurus” was not sufficient to warrant copyright protection, and therefore, “Stairway to Heaven” was not infringing. Led Zeppelin, 952 F.3d at 1079. The Ninth Circuit has the opportunity to emphasize the precedent it set in the Led Zeppelin decision and clarify its jurisprudence in the area of music copyright infringement by rejecting Gray’s appeal. Only time will tell how it will proceed.