The Heisman Trophy Trust, which presents that award to a top college football player each year, has filed a lawsuit in the U.S. district court for the southern district of New York against three Utah residents who operate HeismanWatch.com, other sites that redirect to it, and associated podcasts and social media accounts. The trust is alleging “willful infringement of Plaintiff’s registered copyright,” and they’re doing so on a couple of grounds.
Here’s more from Eriq Gardner of The Hollywood Reporter:
The lawsuit may be taking a page from the playbook of the Academy of Motion Picture Arts and Sciences, which once sued over OscarsWatch.com and got the site’s name changed to Awards Daily.
But this suit isn’t merely about use of the trademark “Heisman” for the website, the podcast and associated social media accounts.
The trophy itself is an original sculptural work entitled to copyright protection, asserts the plaintiff, which has licensing relationships with ESPN and the Collegiate Licensing Company, a division of IMG.
“As owners of the HEISMAN Copyright, the Trust has the exclusive right to (1) reproduce images of the Heisman Trophy® award, (2) publicly display the Heisman Trophy® award; and 3) distribute copies of the Heisman Trophy® award pursuant to Section 106 of the Copyright Act, 17 U.S.C. § 106,” states the complaint. “Upon information and belief, Defendants have for years willfully copied, displayed and distributed copies of the Heisman Trophy® award on a consistent and systematic basis, without the Trust’s authorization or consent… Defendants past and continuing copying, transmitting, displaying and distribution of images of the Heisman Trophy® award constitutes a willful, deliberate and ongoing infringement of the Trust’s copyrights, causing irreparable harm and damage to the Trust.”
Gardner has uploaded the full complaint here. There’s been no public response from the defendants yet, but if they do decide to fight this, there could be some interesting legal maneuvers ahead. First. there could be arguments about jurisdiction and venue; this was filed in a New York court because that’s where the Heisman Trust, and the plaintiffs claim Heisman Watch’s websites “regularly transact business in the State of New York,” but that could be up for debate.
Beyond that, there are fair use arguments for the defendants, especially when it comes to just using the Heisman name for discussion of who will win it; every media outlet does that. And while the lawsuit points out that the trust has a licensing relationship with ESPN (and interestingly enough, that that extends beyond just ESPN televising the trophy presentation each December; they say they license specific use of the trophy and Heisman marks on College GameDay and on a Heisman Watch column on ESPN.com, both of which seem like editorial uses where ESPN wouldn’t need to necessarily license that), they don’t have one with most of the media outlets that cover potential Heisman candidates.
In fact, the trust’s lawsuit even points out that their marks “have been and continue to be the subject of intense promotional coverage, much of that media coverage being entirely unsolicited.” So the HeismanWatch operators might be able to argue that their coverage fits in with that other media coverage that the trust does not specifically license (like, for example, USA Today’s “Heisman Watch” columns, or the similar columns or videos on most media sites that cover college football, some even with “Heisman Watch” graphics or images of the trophy), and that discussing who is likely to win the trophy is fair use.
Of course, there are counterarguments for the trust; they could claim that there’s a difference between general college football coverage and a specific site specifically about the Heisman and using its name, especially when it comes to potential confusion and a perceived affiliation with the trophy (an argument they advance in their lawsuit). And the OscarsWatch.com case does show that there have been some past successes in getting sites to change their names away from official awards.
What might get really interesting is the arguments about image use, though. If “displaying images of the Heisman Trophy” alone was a problem, every media outlet that’s ever run a photo of it would be in trouble. (And there are a whole lot of those.) And that might even extend to people who took photos of the trophy at an event and displayed them on their own social media or Flickr accounts. But wire services like USA Today Sports Images and Getty Images carry photos of the Heisman Trophy that are used by tons of outlets, and individual news outlets’ photographers have taken those too.
Now, a question may be if the Heisman Watch central trophy image (which has since been removed and replaced with the above generic crowd shot) was a legally-licensed image or not, and the size and placement of it could also be used for the aforementioned confusion/affiliation arguments. But it will definitely be worth keeping an eye on how this plays out, and what that winds up meaning for not just Heisman Watch, but for general coverage of the Heisman Trophy.