Wcvb-Tv v. Boston Athletic Association
926 F.2d 42, 17 U.S.P.Q. 2d (BNA) 1688, 18 Media L. Rep. (BNA) 1710 (1991)
Rule of Law:
Trademark law prohibits unauthorized use of a mark only where it creates a likelihood of confusion regarding the origin or sponsorship of goods or services; descriptive use of a registered trademark to accurately identify an event or product being truthfully covered, without suggesting official endorsement, can constitute fair use.
Facts:
- The Boston Athletic Association (BAA) organizes and promotes the annual Boston Marathon event.
- The BAA has registered the words “Boston Marathon” as a trade or service mark in connection with the event.
- The BAA licensed WBZ-TV (Channel 4) for a fee to broadcast the Boston Marathon on television.
- WCVB-TV (Channel 5) broadcast the Boston Marathon in a prior year without a license from the BAA.
- WCVB-TV intended to broadcast the 1991 Boston Marathon by placing television cameras in the streets along the marathon route.
- WCVB-TV used the words “Boston Marathon” on the screen in large letters before, during, and after its broadcasts.
- WCVB-TV offered to broadcast any disclaimers the BAA might want to ensure no one thought the channel had any special broadcasting status.
Procedural Posture:
- The Boston Athletic Association (BAA), its licensing agent (ProServ), and WBZ-TV (Channel 4) sued WCVB-TV (Channel 5) in a United States District Court.
- The plaintiffs sought a preliminary injunction to prevent WCVB-TV from televising the Boston Marathon.
- The district court denied the motion for a preliminary injunction.
- The BAA, ProServ, and WBZ-TV (appellants) appealed the district court's refusal to grant the preliminary injunction to the United States Court of Appeals for the First Circuit.
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Issue:
Does a television station’s unauthorized broadcast of a public event, while using the event’s registered trademark as a descriptive identifier during the broadcast, create a likelihood of consumer confusion regarding official sponsorship or endorsement, thereby constituting trademark infringement?
Opinions:
Majority - Breyer, Chief Judge
No, a television station's unauthorized broadcast of a public event, using the event's registered trademark as a descriptive identifier during the broadcast, does not create a likelihood of consumer confusion regarding official sponsorship or endorsement when the use is primarily descriptive of the event being shown. The court affirmed the district court’s refusal to grant a preliminary injunction, finding insufficient evidence of relevant customer confusion. The court emphasized that trademark law's primary purpose is to prevent a 'likelihood of confusion' about the origin of goods or services, not merely to prevent 'free riding' or unauthorized use of a mark. While acknowledging cases where unauthorized use of a mark on different goods (like a bulldog logo on beer mugs or 'Boston Marathon' on t-shirts) could suggest false sponsorship, the court distinguished these from WCVB-TV's use. In those cases, the mark's use lent a 'cachet' to a distinct product. Here, there was no persuasive evidence that WCVB-TV intended to suggest official sponsorship, and in fact, they offered to broadcast disclaimers. Crucially, the court found that WCVB-TV’s use of 'Boston Marathon' was primarily descriptive of the event it was broadcasting, falling under the 'fair use' doctrine (15 U.S.C. § 1115(b)(4)). Such use is permitted because it truthfully describes the subject matter and does not deceive the public about the origin or endorsement of the broadcast itself. The court cited Justice Holmes, stating, 'When the mark is used in a way that does not deceive the public we see no such sanctity in the word as to prevent its being used to tell the truth.'
Analysis:
This case significantly clarifies the limits of trademark protection, especially concerning media coverage of public events. It reinforces that the core requirement for trademark infringement is a 'likelihood of confusion' about source or sponsorship, not merely the unauthorized use of a mark or a perceived 'free ride' on goodwill. The decision provides a strong precedent for the 'fair use' defense, affirming that descriptive use of a trademark, even a famous one, is permissible when it truthfully identifies the subject matter of a broadcast or journalistic endeavor without implying official endorsement. Future cases involving similar disputes between event organizers and media outlets will likely rely on this ruling to balance trademark holders' rights against the public's interest in receiving factual information about public events.
