Tackling HBO’s Unauthorized Use of NFL Trademarks in Ballers
The new HBO show Ballers depicts the life of a former Miami Dolphins player (played by Dwayne “The Rock” Johnson) embracing a new career as a financial analyst. Almost every episode references the NFL and some of the League’s prominent teams. In fact, some scenes involve authentic uniforms and logos to maintain a realistic setting for the series. Yet HBO never acquired any licensed rights from the NFL. When confronted on this topic, HBO claimed, “there is no legal requirement to obtain their [the NFL’s] consent.” [1] Shockingly, lawyers agree with HBO’s statement, finding that the NFL often pressures filmmakers into paying fees that are not legally required.
This conflict involves a balance between HBO’s First Amendment right to artistic expression against the NFL’s possessory rights in its name and imagery. The Second Circuit discussed the importance of protecting artistic expression in Rogers v. Grimaldi. [2] In this case, famous actress Ginger Rogers attempted to prevent an Italian film director from entitling his film “Ginger and Fred.” The film’s plot revolved around a television reunion of fictional Italian cabaret singers, who imitated Ginger Rogers and Fred Astaire. After a short run in American cinemas with mixed reviews, Rogers brought a suit claiming that the film gave a false impression of her endorsement, violated her right of publicity, and defamed her by depicting her in a negative light. The district court granted summary judgment to the filmmaker defendant, holding that the use of Rogers’ first name was merely an exercise of “artistic expression rather than commercial speech.”
The Second Circuit affirmed the decision, but clarified the district court’s narrow application of the Lanham Act. The court concluded that the Lanham Act “should be construed to apply to artistic works only where the public interest in avoiding consumer confusion outweighs the public interest in free expression.” Instead of a simplistic analysis of commercial viability, the court analyzed the artistic relevance and possible misleading nature of the expression. The court concluded that the “Ginger and Fred” title could lead to consumer confusion, but in context, the irony of the title is a central element of the film. Therefore, the court held that the filmmaker did not violate the Lanham Act, stating that a contrary decision would suppress artistic expression.
Interestingly, courts still utilize the Rogers test twenty-five years after the landmark decision. For instance, in Virag, S.R.L. v. Sony Computer Entertainment America LLC, a California district court dismissed an Italian floor manufacturer’s claim that the Gran Turismo games infringed the manufacturer’s trademark by using the VIRAG® mark within the game.[3] Even though Sony utilized an unauthorized mark, the Rogers balancing test led the court to conclude that the game comprised an “expressive work” that should receive First Amendment protections. Sony’s use of the VIRAG® mark enhanced a realistic simulation of certain European racetracks, which the Virag manufacturer sponsored in reality. Furthermore, the use of the mark did not create any confusion around Virag’s sponsorship of the game, because Sony never made an explicit claim concerning Virag’s support.
Still, an unauthorized use of a trademark, which greatly disparages the brand and causes consumer confusion, will outweigh any First Amendment right to expression.
For example, the Second Circuit ruled against a production company that made a sexually explicit film, involving an actress in a Dallas Cowboys cheerleader uniform.[4] Undoubtedly, consumers could confuse the unsavory product with the Dallas Cowboys brand, so the court upheld the infringement claim.
Thus, a potential lawsuit by the NFL for HBO’s use of the NFL trademark within Ballers will revolve around the no artistic relevance and explicitly misleading test from Rogers. In application, HBO has a very strong defense to an infringement claim. The NFL logos, including the Miami Dolphins name and uniforms, characterize the background of an expressive work. The marks merely drive the artistic endeavor forward.
In order to win a lawsuit, the NFL must rely on the second prong of the Rogers test, arguing that Ballers will mislead viewers in regards to the professional conduct of the NFL’s athletes. However, in context, Ballers merely attempts to portray a realistic piece of fiction mirroring the recent crazy events of the NFL. For example, in Ballers’ season premiere, a star running back has an altercation at a night club, which leads to his eventual release from the Green Bay Packers. Despite this scene, HBO has nothing to legally fear, because NFL players have been the source of a myriad of scandals, ranging from domestic violence to murder. HBO’s main legal concern involves the show’s depiction of the NFL’s reaction to certain events. Future seasons will likely explore controversial issues that could significantly harm the NFL.
Still, the NFL may initiate a lawsuit in order to continue forcing other filmmakers to pay for authorization. Lawsuits cost time and money, which many independent filmmakers cannot afford. While HBO and Sony have the resources to battle trademark infringement lawsuits, most artists will settle out of court to save both sides costly fees.
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