Hardcore baseball fans were aghast last week when they learned that some of their favorite podcasts had been removed from iTunes, without notice. NBC Sports blogger Aaron Gleeman broke the news on Twitter, saying that “MLB requested several team-related podcasts be removed.”
Why would Major League Baseball want to remove a source of free marketing? The answer lies in the trademarks.
An incomplete list of podcasts removed include: “Mets Musings,” “Pirates Prospects,” “It’s About the Yankees, Stupid,” “Rangers Podcast in Arlington,” and “Orioles Spastics.” MLB’s reasoning should be apparent at this point. All of those podcasts use MLB registered trademarks in their titles.
Yet the list goes on to include “Gleeman and the Geek,” “Bird’s Eye View,” “Bleacher Nation,” and “Talk to Contact.” Those names seem perfectly benign. Unfortunately, all three used team names in their full iTunes titles. (E.g., “Gleeman and The Geek – Minnesota Twins Podcast.”) Therefore, they also used MLB registered trademarks to promote their products.
Is MLB right to remove these podcasts?
While the podcasts in question did use MLB’s registered trademarks to promote their products, mere usage does not necessarily represent infringement. Since the podcasts use the team names as informational reference points, they might have a case in their favors.
The precedent comes from a case involving New Kids On The Block (NKOTB), which I wrote about in a post about trademark disputes involving famous musicians. In that case, NKOTB sued a publishing company for running a poll through a toll-based 900 number. They cited misappropriation, since the publishing company profited from use of the NKOTB mark.
The U.S. Court of Appeals for the Ninth Circuit not only ruled in favor of the publishing companies, but created the nominative fair use exemption from federal trademark laws. Since these teams are referred to primarily by their team names, then use of them by third parties, to describe information related to the teams, could fall under that exemption.
It takes two parties to remove content from iTunes, the trademark owner and Apple. In order to have trademarked material removed from iTunes or the App Store, trademark owners can follow a simple takedown procedure. The matter then rests in Apple’s hands.
Just how discerning is Apple with trademark removal requests? Without actually seeing their process at work it’s impossible to say. We do have some examples, though. Earlier this year, King.com received trademark rights in the EU for the word “CANDY”. Shortly thereafter it submitted takedown requests to Apple, and Apple quickly complied.
When a large corporation such as Major League Baseball comes to Apple with takedown requests, does Apple look deeply into the matter or simply acquiesce to the corporation’s demands? Again, impossible to answer. But if some of the allegedly infringing content falls under the nominative fair use exemption, Apple should be more discerning when reviewing these cases.
A matter of confusion?
Shortly after the fiasco appeared on several blogs, MLB’s media subsidiary, MLB Advanced Media (MLBAM), publicly released the letter it sent to Apple/iTunes.
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 NBC Sports blogger, and former attorney, Craig Calcaterra notes, it appears that both Apple and MLBAM passed the buck to the other. He doesn’t buy that the removal was a matter of oversight, but it very well could be. If MLB sent an unclear notice to Apple, or if Apple misinterpreted MLB’s intent, the resulting mistake would make sense.
MLB’s history of C&Ds
Although this is the first time MLB and MLBAM have, to public knowledge, had content removed from iTunes, they do have a history of sending cease and desist letters. In 2010 they demanded that Cubscast.com cease operations and transfer the domain name to MLBAM. Owner Andrew Figgins describes the situation in an open letter. The show eventually did cease operation, although according to the Whois record, Figgins still owns the domain.
While not MLB directly, one of its teams, the New York Yankees, sent out a cease and desist letter to a blog in 2009. TheYankeeUniverse.com had operated as a blog for a few years, but had never placed ads on the site. Once they did, the Yankees sent the C&D letter.
While the C&D letter cited use of the “Yankees Marks”, there was another issue at play. “YANKEES UNIVERSE” at the time was a registered trademark of a New York Yankees partnership. (Though at the time it only covered t-shirts.) It was also the name of a charity partnership between the New York Yankees and and Memorial Sloan-Kettering Cancer Center.
In both of these cases, MLB dealt directly with the allegedly infringing entities. In the podcasting case, however, they forwent that route and used Apple’s takedown system instead. Note that they did not demand that these shows cease operation. They merely had them removed from iTunes. This could signal that there was indeed a mistake, made by one party or both, along the way.
Mistake or not, the podcasts in question do seem justified in using the team names in their titles. The NKOTB case set a precedent in that matter. As long as the podcasts don’t suggest that they represent MLB or their respective teams in any way, it would seem that they belong in iTunes with the rest of the baseball-related podcasts.