The baseball blog and podcast world was shaken up early in May with news that several baseball fan podcasts had been removed from iTunes for trademark reasons. Major League Baseball (MLB), which owns the trademarks associated with the various teams, was accused of having betrayed its diehard fans in the interest of locking down its intellectual property. What really happened, and is it OK to use the name or logo of a team in your blog or podcast?
hardballtalk.nbcsports.com reported on May 7 that
…multiple baseball podcasts had been removed from iTunes, at the request of Major League Baseball and/or Major League Baseball Advanced Media on intellectual property grounds.
Multiple podcasts, including Twins podcast “Gleeman and the Geek” (hosted by HardballTalk’s own Aaron Gleeman), another Twins podcast “Talk to Contact,” Pirates podcast “Pirates Prospects,” Mets podcast “Mets Musings,” Cubs podcast “Bleacher Nation,” Yankees podcast “It’s About the Yankees, Stupid,” Rangers Podcast “Rangers Podcast in Arlington” and several others were removed from iTunes.
MLB released a statement shortly thereafter:
As we have done in the past, yesterday we notified Apple about certain podcasts on the iTunes Store whose titles and/or thumbnails include infringing uses of trademarks of Major League Baseball and certain Clubs. And, as we have done in the past, we asked Apple to have these trademarks removed from the podcast titles and thumbnails. Although we did not ask for or seek to have any podcast removed from the Store, it has come to our attention that Apple removed them. Given our many years of experience in notifying Apple about trademark issues on the Store, we trust that removing the podcasts was an oversight, and ask that you please look into this matter as soon as possible.
Thank you for your cooperation.
As of this writing, the podcasts are back up, so either MLB was telling the truth, and the podcasts were taken down in error, or they scrambled to get them back up. I’m certainly willing to believe the former. Reporting by TechCrunch corroborated the mistake angle.
OK, so what about my blog or podcast?
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This comes down to the old “Should we call it the Super Bowl or the Big Game?” discussion, which I waded into in this blog post a few years ago. Use of MLB team names or logos may be permissible under the theory of Nominative Fair Use.
There are three factors to determine if use of a mark is nominative fair use:
- The mark must not be readily identifiable in any other way.
- The mark can only be used to the extent necessary to identify it.
- The mark can’t be used in such a way as to suggest a false connection or sponsorship arrangement.
Let’s say I wanted to start my own baseball podcast, Padres Palaver. (Note: the primary reason I don’t have a Padres podcast is because the best name I could come up with was “Padres Palaver.”) Would my use of the MLB-owned trademark PADRES fall under the nominative fair use defense? Taking the factors one at a time:
Factor 1: The mark must not be readily identifiable in any other way.
Well, I could identify the club as “The San Diego Professional Baseball Club that Plays Downtown,” but I don’t know if that would be “readily” identifiable, as everyone would have stopped reading the title halfway through.
Factor 2: The mark can only be used to the extent necessary to identify it.
This would depend on how I actually used the mark. That said, it seems as though using the mark once in the title, to identify the subject of the podcast, would satisfy this requirement.
Factor 3: The mark can’t be used in such a way as to suggest a false connection or sponsorship arrangement.
This one seems pretty easy to meet. First of all, anyone searching for a fan-created podcast would be aware that MLB wasn’t directly involved in its creation. Second, it would be simple to put a disclaimer in the blog’s description – something along the lines of, “This is a podcast created by fans of the San Diego Padres. Neither the Padres nor MLB have anything to do with this podcast. They have way better things to do, like run a baseball team.”
I’d argue that use of the team name (or similar words that would identify the team, like “Friars” for “Padres”) would pretty easily satisfy these three factors. Use of team logos, on the other hand, would be harder to justify. A consumer is more likely to assume that the presence of a logo suggests that MLB is the source of the services, or that there’s an endorsement or sponsorship deal in place. Factor 1 would also be harder to satisfy, as the team could be readily identified by its name without use of the logo.
In reality, this falls under the golden rule: whoever has the gold makes the rules. If MLB doesn’t want you to be able to use their team name or logo to identify your podcast, and Apple agrees, there’s not much you can do about it. Podcasters (and bloggers, etc.) would be well advised to keep up with how these things are playing out, and to avoid violating the terms of service of the platform in question – in this case, the iTunes store.
Thanks to my fellow baseball fan Eitan Altman for alerting me to this story.
