USA Law and Practice Contributed by: Irwin A. Kishner, Daniel A. Etna, Joel Wagman and Barry Werbin, Herrick, Feinstein LLP
US Berne Convention country copyright owners are exempt from the registration requirement as a pre- condition of suing for infringement, they cannot seek statutory damages or legal fees unless a US registra - tion is effective before an act of infringement begins. Common defences include lack of personal jurisdic - tion, statute of limitations, non-infringement due to lack of substantial similarity of copyright-protectible elements, public domain, scènes à faire and idea- expression merger doctrines, and statutory fair use. Databases Databases can be protected by copyright and/or trade secret laws under both state and federal laws. Trade secrets are typically protected by confidentiality and non-disclosure agreements. Copyright does not pro - tect facts, such that factual data within a database cannot be protected; however, the original structure, sequence and organisation of a database (ie, the schema) can be protected if it is original. Data plays a huge role in sports, including measuring the perfor - mance of teams and their athletes and analysing the performances of competitors. These databases are highly proprietary, and their content can be protected as trade secrets even where the factual data itself can - not be protected by copyright. 5.3 Recognising Personality/Image Rights There is legal recognition for NIL rights for individual athletes, but generally only at the state level under statutory and common law rights of publicity. As this is governed by the laws of 50 individual states, it is a complex area of US law. Some states do not rec - ognise a right of publicity, while many others recog - nise such right by statute and/or common law. Some states also recognise a post-mortem right of publicity, which extends beyond specified persons’ deaths and can be enforced by the heirs of deceased individuals. The rights of college athletes to be able to financially exploit their own NIL experienced a ground-breaking moment in 2021, when new state laws and National Collegiate Athletic Association (NCAA) rule changes provided such athletes, for the first time, with the right to profit by licensing their NIL rights. In the past, NCAA rules prohibited college athletes from accepting any such compensation as a condition of being able
to compete as an “amateur”. Student athletes now have the opportunity to enter into endorsement and sponsorship deals, and to earn revenue from social media posts. However, universities are prohibited from compensating student athletes directly or offering NIL deals as recruiting incentives. A massive antitrust class action was previously brought by current and former Division I college ath - letes against the NCAA and five major college sports conferences. The plaintiffs challenged NCAA rules that limited or prohibited NIL compensation from third parties, compensation from schools derived from NIL rights and scholarship caps. The action settled in June 2025 for USD2.576 billion in damages, which will be distributed over ten years to compensate athletes harmed by past NCAA restrictions. The settlement also provides for future revenue-share payments to athletes, with schools permitted to share up to 22% of their athletic revenue, and allows college athletes to retain broad NIL rights with only limited restrictions on the sources of NIL payments from certain boosters or other entities. In addition to publicity rights, well-known and famous athletes (both professional and college) may develop trade mark rights in their names and persona, provid - ing additional IP protection under federal and state law. The concept of “passing off” is a form of trade mark infringement and unfair competition under the federal Trademark (Lanham) Act and state laws, regardless of whether an athlete’s rights are regis - tered. However, athletes would only have enforceable trade mark rights in their names or other aspects of their persona if such persona were in fact used as a brand to market and sell goods/services in the USA. Under new 2024 NCAA rules, universities may offer educational workshops to student athletes on protect - ing their IP rights and provide guidance on managing and exploiting those rights. 5.4 Protecting Personality/Image Rights See 5.3 Recognising Personality/Image Rights . Ath - letes who develop unregistered common law trade mark rights in their names and other slogans that are used to market goods or services can protect them - selves from unauthorised uses through state common law and unfair competition laws, as well as the federal
381 CHAMBERS.COM
Powered by FlippingBook