National Collegiate Athletic Association v. Kizzang LLC et al
Case number 1:17-cv-00712
U.S. District Court for the Southern District of Indiana
Filed: March 8, 2017
(Editor’s Note: This is an old case, but publishing for the sake of completeness, and as a reminder to others before this year’s March Madness starts up).
The National Collegiate Athletic Association originally filed suit against a Las Vegas game developer. An aggressive defender of its trademarks, the NCAA accused Kizzang along with its President and Founder Robert Alexander of infringing its “March Madness” trademark. The suit was filed less than a week before March Madness, the annual Division I Men’s Basketball Tournament. The NCAA accused Kizzang of infringing the trademark through its online fantasy games. One is entitled “April Madness,” and another is entitled “Final 3,” which infringes on “Final Four,” another one of NCAA’s trademarks. NCCA’s complaint explained that its trademarks are only permitted to be used by authorized businesses. Kizzang and the NCAA previously disputed over the trademarks in February 2015. During that time, the NCAA filed an opposition to Kizzang’s filing at the Trademark office after Kizzang tried to register its own trademark based on the “March Madness” trademark. Another block occurred against the “Final 3” trademark in December 2015. The Association claimed that Kizzang was planning to offer infringing uses of the trademarks in their gaming apps, and that the company planned to use the phrase “Final 3” for a 2017 NCAA Division I Men’s Basketball Championship bracket-predicting game.
On March 16, 2017, Kizzang and Alexander agreed to not use either “April Madness” or “Final 3” for its basketball gaming apps connected with service, promotion or contest during all of 2017. Chief Judge Jane Magnus-Stinson issued the order which resulted in the NCAA withdrawing its motion for a preliminary injunction. Kizzang was to answer the complaint by June 15. The NCAA released a statement explaining that the order would allow the Association to litigate the merits of the claims in order to obtain a judgment before March Madness 2018.
On November 7, 2017, the Court denied Kizzang’s Motion to Dismiss and granted the NCAA’s Request for Entry of Default based on Kizzang’s failure to timely answer or otherwise plead to the Complaint. Following this on January 18, 2018, the Court granted NCAA’s Motion for Default Judgment and Motion for Permanent Injunction. The Court found this to be an “exceptional case” which therefore entitled the NCAA to an award of its attorneys’ fees. On May 17, 2018, the Court adjusted the amount of attorney’s fees but otherwise granted the Motions and entered Final judgment in favor of the NCAA thereby ending this suit.
This is not the first trademark dispute over “March Madness.” Due to the popularity of the tournament, a number of businesses try and profit off of the event every year. The term was originally coined for a tournament held by the Illinois High School Association. The phrase was later adopted for the NCAA’s tournament after a CBS announcer started using it in the 1980s. The two groups initiated litigation, eventually agreeing to share the rights over the phrase. The NCAA is a fierce defender of its trademark rights, sending a substantial number of cease-and-desist letters annually. The association is particularly aggressive when it comes to March Madness. The NCAA even claims trademark rights to “images of brackets and marks consisting of or referring to the term ‘bracket.’” Even though a “bracket” is a common term used to describe an elimination tournament in athletics, the NCAA claims it has become so linked to March Madness that the Association has trademark rights in both the word and the image.
Anything involving news reporting and commentary on NCAA athletic events – such as newspapers, blogs, and radio – can use the NCAA’s trademarks for editorial coverage. There’s a case to be made that companies’ use of the term March Madness is merely conveying the name of the tournament to a consumer, which is so-called nominative fair use. However, it would be easier to avoid using such trademarks altogether. Instead of considering fair use, the NCAA’s legal team simply sends out demand letters, which places the burden on the receivers to determine whether they want to risk getting involved in a legal action.
Additional Research By: Rachel Johns & Alex Nealon
Edited By: Alex Nealon