Alleging sponsorship/endorsement confusion can't defeat clear nominative fair use

Pasadena Tournament of Roses Ass’n v. City of Pasadena, 2021 WL 3553499, No. 2:21-CV-01051-AB-JEMx (C.D. Cal. Jul. 12, 2021)

For over a century, PTRA has hosted the Rose Parade and Rose Bowl Game as part of its annual New Year’s Day Celebration. It does so at the Rose Bowl Stadium under three contracts with Pasadena, including a Master License Agreement, Trademark Agreement, and Trademark Consent Agreement. Under these agreements, PTRA is the exclusive owner of the Rose Bowl Game trademark and owns the mark for use in connection with the annual game. For many years, the parties worked together behind the scenes to help ensure the success of the annual game. PTRA alleged that Pasadena disrupted that relationship by interfering with its trademark rights in statements made in news articles and via an Instagram post:

IG post using #RoseBowl and 1956 Rose Bowl program image

The pandemic led the 2021 Rose Bowl Game to be played in Texas. Pasadena objected that, in the event of a force majeure, the MLA gave it the right to restrict PTRA from hosting the Rose Bowl Game in a venue other than Rose Bowl Stadium. The parties strongly disagree about this issue and PTRA sought declaratory judgment concerning the parties’ rights with respect to the Rose Bowl Game and its related intellectual property.

There was no controversy as to whether Pasadena had an “ownership” interest in the relevant trademarks. And there wasn’t a sufficient possibility of future harm that would justify a declaratory judgment interpreting the contract such that PTRA could host the Rose Bowl elsewhere if a force majeure event occurred.

Trademark/unfair competition claims: these were all based on  alleged use of the “Rose Bowl” mark in an Instagram post made on the Rose Bowl Stadium’s official Instagram account, together with an image of the official program from the 1956 iteration of the Rose Bowl Game. Pasadena said this was (1) nominative fair use and (2) an expressive work protected by the First Amendment.

The Instagram post was before the court and was NFU. The Rose Bowl game wasn’t readily identifiable without “Rose Bowl.” The IG post used “#RoseBowl” in plain text to describe the 1956 Rose Bowl Game program depicted in the post.

PTRA argued that, because Pasadena has referred to the Rose Bowl Game as “the game” in the past, the Rose Bowl Game was readily identifiable without using the term. But those past posts included video clips that used “Rose Bowl” to identify “the game.”

And Pasadena used only so much of the mark as was necessary. The term was used twice, but that’s not per se unreasonable. The question here was not whether it was necessary to use “Rose Bowl” at all, but whether it used only so much of the mark as is reasonably necessary to identify the Rose Bowl Game.

Finally, the post had nothing to suggest association or sponsorship by PTRA. Pasadena posted from its Instagram account, @rosebowlstadium. “It did not use any express or implied language of sponsorship or endorsement or ‘tag’ Plaintiff’s accounts.” Conclusory allegations of possible confusion “are insufficient to plead there was a suggestion of association or sponsorship.”

The court noted that the parties had been partners for decades. “Plaintiff has consistently benefitted from Defendant’s promotion of Plaintiff’s game and its history and likely encourages such promotion. … [T]hat this claim is being brought now is puzzling to the Court and it is clear that this claim is not the crux of the parties’ conflict.”

False advertising: Pasadena’s mayor allegedly gave an interview to the New York Times and stated that “the city [ ] shares a trademark on the name of the game with the Tournament of Roses Assocation [...]” and that “The football game belongs to the City of Pasadena and the people of Pasadena.” But the only statement at issue is the second, which was the only one actually attributed to the Mayor.

This was not “a representation of fact with respect to who owns the marks,” but rather “appears to reflect Defendant’s pride for the nearly 100-year-old annual football game held in Defendant’s Rose Bowl Stadium.” Expressing an opinion of its own, the court found that PTRA “cannot reasonably dispute that, separate and apart from intellectual property ownership, the heart and soul of the Rose Bowl Game belongs to the people of Pasadena.” Thus, this was merely opinion or puffery and not the type of statement “reasonably interpreted as a statement of objective fact” surrounding the intellectual property ownership.

This also got rid of the breach of contract claim, which was based on the alleged trademark infringement and false advertising.