Did the City of Pasadena Infringe on the Rose Bowl Trademark?
Last week, U.S. District Judge Andre Birotte dismissed a lawsuit on behalf of the Pasadena Tournament of Roses Association (The Association) against the City of Pasadena. The lawsuit included several claims:
- The Association sought a declaration that the City of Pasadena did not have an ownership interest in the ROSE BOWL GAME trademark or the ROSE BOWL trademark.
- The Association sought a declaration that if a force majeure event should occur under the Master License Agreement between the parties that prevents the Rose Bowl Game from being played at the Rose Bowl Stadium on Game Day despite the parties commercially reasonable efforts, then the Association can host the Game anywhere without Defendant City of Pasadena’s consent.
- Plus multiple allegations against the The City of Pasadena for trademark infringement, unfair competition, false association, false endorsement and false designation of origin based on an Instagram post in which the City allegedly used the “Rose Bowl” trademark
What puzzled the City and Judge the most about this lawsuit: it seemed to imply a competitive or detached nature in the parties’ relationship. The truth of their working bond could not be further from this.
For years, Pasadena and the Association have collaborated to enact and advertise the annual Rose Bowl game and its festivities. Most bystanders would not imagine them as competitors.
The City of Pasadena filed a Motion to Dismiss the Complaint. The first claim by the Association was dismissed since the City was not claiming ownership over the trademarks so there was no controversy at issue.
The second claim by the Association was dismissed because the claim rested upon contingent future events and therefore was not ripe for adjudication and not appropriated for declaratory relief.
The Associations multiple counts claiming the City of Pasadena infringed the ROSE BOWL and ROSE BOWL GAME trademarks in an Instagram post were reviewed by the Court in light of of the nominative fair use defense.
Understanding Nominative Fair Use
Nominative fair use denotes when a third party properly uses the trademark to name the product. For instance, if you were to write a blog post reviewing your favorite cake mixes, you might announce Duncan Hines as your favorite.
Even so, there would be no confusion on the reader’s part about whether or not you are Duncan Hines. Clearly, you are a person expressing an opinion about a product — in no way posing behind that trademark as if it were yours.
The judge employed similar reasoning to Pasadena’s Instagram post about the Rose Bowl. Notably, he said the city could have referenced “the game played on New Year’s Day in Pasadena.” What purpose would this vagueness serve, though? It is not infringement to call something by its mark. As reinforcement, the City of Pasadena asserted the self-expressive nature of a social media post, which would be protected by the First Amendment.
Ultimately, Judge Birotte dismissed with prejudice the entire lawsuit brought by the Pasadena Tournament of Roses Association against the City of Pasadena. Hopefully, the two parties learn how to get along again and produce a wonderful event in 2022.
Will Judge Birotte’s ruling bring about a re-examination of sporting event trademarks? The NFL has been far more guarded with its Super Bowl trademark, compelling many third parties to refer to it as the “Big Game,” but perhaps in the future this will no longer be necessary. Only time will tell.