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Trade-Mark Madness, Part 1

Douglas Masters, the NCAA’s primary outside counsel for IP matters, talks about issues surrounding the tournament

Douglas Masters

They say that March comes in like a lion and goes out like a lamb. For some, it’s the month of green bagels and lots of beer. For others, it’s about spring break or religious observations. But, of all the annual March traditions, there is only one that consistently rises to the level of Madness: the National Collegiate Athletic Association (NCAA) basketball championship tournament. 

By now, terms like “March Madness” and “Final Four” have become part of the lexicon for many Americans—even ones who do not regularly follow sports but love the allure of brackets. These terms, though, represent valuable intellectual property, and the NCAA has taken steps to protect its IP, including leveraging the expertise of Douglas Masters.

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Masters is the managing partner of the Chicago office of Loeb & Loeb and co-chair of intellectual property protection for the firm. In this capacity, he has been working as the NCAA’s primary outside counsel for IP matters for 15 years. Masters first came to the NCAA’s attention by opposing them in court in a case that goes to the very origins of the term “March Madness” itself.

The term was first coined in 1939 in an essay about the Illinois state high school basketball championship penned by H. V. Porter. Porter used the term to refer to the feeling that overtook him and others during the Illinois high school basketball playoffs and didn’t start describing the NCAA tournament until the 1980s, when CBS broadcaster Brent Musburger, whose career had blossomed in the Chicago area, brought the term with him. It caught the imagination of sports fans—and marketers —around the country, and it stuck.

In the late 90s, however, the NCAA found itself in court, feuding with the Illinois High School Association (IHSA) over the rights to the term. Masters represented the IHSA and helped broker a deal that allowed the IHSA to use the term in reference to high school sports and gave the NCAA collegiate rights to it. After that case, the NCAA tapped Masters to work for them.

 

For the last 15 years, Masters has found himself dealing with a number of IP-related issues for the NCAA, many of which consist of straightforward trademark infringement issues concerning the terms “March Madness” and “Final Four.” 

“There are some general ambush issues as companies try to market around the tournament,” he explains. “We try to ensure that the official sponsors get the full value of their investment in and relationship with the tournament and ensure that people aren’t misled into buying tickets or services based on a misunderstanding.” 

The March Madness tournament has millions of fans and dozens of sponsors, so there is an awful lot of chatter about it around water coolers, across social media platforms and elsewhere. Sifting through all of that noise could be a daunting challenge, but Masters says that material issues come to light without a lot of aggressive investigation. 

“We have a network of more than 1,200 schools that are part of the NCAA, as well as media partners and business partners in the marketplace, all activating around the tournament, so we see what competitors are doing,” he explains. “Material concerns bubble up and get on the radar of someone who has an official relationship with the tournament.”

The next step, then, would be to triage this information to determine which matters to pursue. “We set our priorities, targeting, for example, things that are offensive or dangerous or inappropriate like pornography, cigarettes or alcohol. We also look at businesses that are in competitive categories to ones that have an official relationship with the tournament, as we want to preserve the value that we sell to partners.” 

In part two of this series, Masters discusses the reactions of both fans and marketers who have been infringing on NCAA trademarks as well as the changes he has seen in his 15 years working in this capacity. No word on whether or not he thinks Kentucky will go all the way, however…

Senior Editor and Community Manager

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Rich Steeves

Richard P. Steeves is Senior Editor and Community Manager of InsideCounsel magazine, where he covers the intellectual property and compliance beats. Rich earned a B.A....

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