Demand for Olympic merchandise in the United States is resurrected every 4 years by the fervor of the televised Games. Officially, authorized and licensed gear is readily available in stores and on the Internet; however, every iteration of the Games brings with it a flood of counterfeit Olympic goods as well. The broadcasting of this year’s Olympics in Rio de Janeiro has, as expected, beckoned all sorts of counterfeit Olympic items to the U.S. market. From t-shirts illegally emblazoned with “Team USA”, to phony gold medals inscribed with the Olympic Rings. This blog post explores the laws that protect consumers and Olympics rights-holders in the United States from counterfeit Olympic goods.
Under 15 U.S.C. § 1127, a counterfeit is an article that includes unauthorized use of a logo, name, or other trademark that is “identical with, or substantially indistinguishable from” a registered trademark. The widely recognizable signs, symbols, and words affiliated with the Olympics, Paralympics, and Pan-American games are all registered trademarks. This includes, but is not limited to, the torch, the five interlocking rings, and the words “Team USA.”
As discussed in the first Golden Rules blog post, titled Wrestling with the Use of Trademarks, the United States Olympic Committee (USOC) is the organization that owns and protects Olympic trademarks in the United States. Pursuant to the Ted Stevens Amateur Sports Act (Ted Stevens Act), which is discussed in greater detail in the second Golden Rules blog post, titled, Lowering the Uneven Bars on the Likelihood of Confusion, the USOC protects its trademarks by utilizing the civil remedies in the Lanham Act (15 U.S.C. § 1051 et seq.). Furthermore, each Olympic sport’s national governing body (NGB) has rights to trademarks related to that sport. Thus, if a t-shirt includes the words “USA Swimming”, but without “Team USA” or the Olympic Rings, that shirt may still be considered a counterfeit article and subject to remedies under the Lanham Act.
Remedies for counterfeiting available to trademark owners include the right to seize counterfeit goods by ex parte application, and the right to collect attorney’s fees and wrongful profits. But the threat of civil action isn’t the only protection against counterfeits. Selling counterfeit goods (Olympic or otherwise) is a federal crime punishable by a fine of up to $5 million for a company (or $2 million for an individual), up to 10 years in prison, or both. 18 U.S.C. § 2320. In addition to federal law, many states have anti-counterfeiting laws that prescribe criminal punishment as well. In California, for example, an individual can face a fine of up to $10,000, 1 year in county jail, or both, for a first time counterfeiting offense. CPC § 350.
The U.S. Attorney General, or State Attorneys General may bring civil forfeiture or even criminal charges against counterfeiters; however, the chief enforcer of any trademark is generally the owner of the trademark. And thanks to the Ted Stevens Act (and case law interpreting it), the USOC is in a particularly advantageous position to enforce its trademark rights, as it has a much broader scope of protection than other trademark holders. For instance, in order to enjoin the use of a trademark, trademark holders must demonstrate that a counterfeit item creates a likelihood of confusion among consumers between the trademarked item and the counterfeit good. By contrast, the USOC needs to only show that the use of its marks will “tend to confuse” a consumer and protection of the word “Olympic” is near absolute (this is also discussed in our second Golden Rules blog post, mentioned above, and titled Lowering the Uneven Bars on the Likelihood of Confusion).
The ease with which the USOC can obtain an injunction becomes even more daunting for would-be counterfeiters when one considers the prospect that the USOC can use “John Doe Injunctions” to obstruct the distribution of counterfeit merchandise. When issued along with seizure orders, John Doe Injunctions imbue the owner of a trademark with the legal authority to use law enforcement officers to seize and sequester any counterfeit merchandise from anyone (within a certain timeframe) upon discovery. No prior notice to the vendor of counterfeit items is required.
While evidence of the USOC’s use of seizure orders and injunctions is not readily accessible, there is proof that the USOC filed at least one John Doe Injunction in a California court in 1984, just before the start of the Olympics in Los Angeles. United States Olympic Comm. v. Various John Does, No. 84-5515 (C.D. Cal. Filed July 26, 1984) (currently sealed). But if the use of these anti-counterfeit maneuvers by other sports-related organizations in the United States is any indication, then the USOC might just have a few seizure orders and injunctions out now. The NFL, for instance, has obtained ex parte seizure orders prior to every Super Bowl game since 1983 by simply submitting complaints recounting the popularity of the Super Bowl and the pervasiveness of bamboozling vendors who congregate around the stadium on Super Bowl Sunday each year. NFL Props., LLC v. Humphries, No. C 16-474 CRB, 2016 BL 147627 (N.D. Cal. May 06, 2016), Compl. ¶ 40.
Counterfeits tend to proliferate during the time of the Olympic Games as unauthorized producers and sellers take advantage of the inevitable burst of patriotic consumerism related to the Olympics. As this post illustrates, however, the USOC has a variety of tools available to tackle counterfeits, and those tools are even stronger than the tools available to holders of regular, non-Olympic trademarks.
*Ethan Mora is a Summer Associate and not yet admitted to the Bar.