Cybersquatters in a Sticky Situation

When in 2015 word broke out that entertainment giant Warner Brothers had filed new trademarks for “Space Jam,” the possibility of a sequel to the 1996 original seemed around the corner. The original movie grew out of Nike’s “Hare Jordan” campaign, which featured basketball legend Michael Jordan facing off in a one-on-one with beloved cartoon character Bugs Bunny. Picked up by Warner Brothers, Space Jam hit theaters on November 10th, 1996, and became a smash hit. The past 25 years have seasoned the live-action animation to be regarded as a classic. Unsurprisingly, any word of a sequel was set to be a big deal — especially for basketball fans. The 2015 buzz was not unfounded. Soon thereafter, Warner Brothers announced a partnership with SpringHill Entertainment, a company founded by none other than Lebron James, making him an executive producer in upcoming ventures. The partnership between a basketball legend and Warner Brothers seemingly confirmed Space Jam’s sequel even before James officially announced a 2021 release on Twitter. As of now, Space Jam 2 is set to release on July 16th. 

Last week, James gave fans a first look into the updated Toon Squad adding momentum to the buzz as he shared exclusive pictures of him on set. The excitement for the film has been long standing. So much so that about a year ago, advertising creative Hunter Fine and commercial director Peter Marquis bought the domain and, in a very literal interpretation of the name, began to sell fruit jam that “looks like space.” Why number 2? The duo claim, “Our first recipe didn’t look like space enough, so we perfected it with space jam recipe #2.” However, it doesn’t take long to piece together that the domain owners may have other goals in mind. Firstly, the homepage displays two products: their jam for $12.99 and their website for a slightly larger price tag of $1,000,000. The duo even produced their own “Space Jam 2 Trailer”, which showcases visuals from the farm as a couple talks about what makes their jam special. One of the reasons being that “you can also buy our website.” 

Coupled with the site’s ostensibly veiled tone, it is clear that the duo hopes for a Warner Brothers payout. According to Front Office Sports, “the ruse became a quarantine project,” the aim of which is a payday with most proceeds going to a sports-related charity. However, several factors may block their plan. Among which is the existence of cybersquatting laws. Tamara Kurtzman, founder at TMK attorneys and contributor at ABA’s Business Law section, notes, “a viable domain name, is not simply a luxury in today’s economy, but rather a corporate necessity without which a business is unable to effectively compete in the marketplace. The inability of a company to acquire a meaningful domain can therefore directly influence the success or failure of that business.” 

To address these concerns, the 1999 Anticybersquatting Consumer Protection Act (ACPA), specifically prevents “cybersquatters” from registering internet domains containing trademarks later to sell the domain name to the trademark owner. To gain relief by the ACPA, the domain name and the registration of the domain must have been registered in ‘bad-faith’ and must be identical or “confusingly similar” to a well-known trademark. As for the question of whether the duo registered the domain in bad faith, the jam front seems to be an attempt to offer legitimacy to their domain registration and sway any allegation of cybersquatting away. However, their subsequent commentary pretty much gives their motivations away, “When Hunter told me he secured, it just felt like, ‘Oh, we can do something really fun with this rather than just a straight extortion model,”  

Kurtzman points out that a viable domain name is a “corporate necessity” in today’s economy, but given Warner Brothers’ established influence coupled with Lebron James’ star-power, how necessary to sequel’s success is the domain, really? Perhaps this is why Warner Brothers have not yet commented on the situation, nor have they proceeded with any legal action. However, if they were to choose to seek action and to attain the domain, the case can be less straightforward than at first glance. Fine and Marquis may be participating in “anticipatory cybersquatting”, which is the practice of registering domain names with minimal present value in the hopes that these names will become desirable, and consequently increasingly valuable, in the future. Again, the existence of a physical jam for sale may hinder the argument that the domain has minimal present value; however, the advertising duo clearly has motives involving a $1,000,000 payout. Importantly, the ACPA doesn’t directly address the anticipatory nature of the cybersquatting exhibited in the Space Jam 2 case, potentially because this practice only gained popularity in the 2000s. Here, it may be relevant to take a closer look at what trademark law says. 

A trademark is usually deemed to belong to a party that uses the mark first in commerce. In other words, the party that first uses the mark in an ordinary course of trade (e.g., placed on containers/displays/documents, and sold or transported in commerce and on services in more than one State or abroad). Fine and Marquis started selling their jam before the release of the anticipated Space Jam sequel. Not to mention, the sequel’s full title is “Space Jam: A New Legacy” as opposed to “Space Jam 2”. This detail is kind of incongruous for the current domain holders.On the one hand, it may help them avoid cybersquatting charges, but it also provides even less incentive for Warner Brothers to proceed with a payout.

 All in all, it seems unlikely that Warner Brothers or James would proceed with a payout since the squatters occupying the Space Jam 2 domain don’t seem to present an exceptionally high obstruction to potential business. Even without the domain, the influence of Lebron James and Space Jam’s secure status is likely to guarantee a financially fruitful sequel. Of course, nothing is for certain, so it will be interesting to see how/if Warner Brothers or James proceed and whether the advertising duo stays in the jam business.


NYU Sports Law Association’s 10th Annual Colloquium Preview

This Friday, March 5th, the Sports Law Association of NYU Law will be hosting its 10th annual Sports Law Colloquium. The flagship event has hosted industry leaders such as NBA Commissioner Adam Silver (University of Chicago Law ‘88), President of the New York Yankees, Randy Levine (Hofstra University School of Law ‘80), and NYU Law’s own Gary Bettman, Commissioner of the NHL (‘77). 

This year, SLA will be hosting a unique slate of panelists given the unprecedented nature of sports in 2020 – 2021. The keynote conversation will feature Big Ten Commissioner, Kevin Warren and distinguished Brooklyn Law and NYU Law professor, Jodi Balsam. This article will preview the panels and the brilliant panelists who will be speaking. Click here to register for the colloquium. Registration will close Wednesday night, March 3rd. 

This event has been approved for a maximum of 3.5 New York State CLE credits in the Areas of Professional Practice category. The credit is both transitional and nontransitional; it is appropriate for both experience and newly admitted attorneys.

Keynote Conversation
Kevin Warren (Panelist) is the Commissioner of the Big Ten Conference. Previously, Mr. Warren served as the Chief Operating Officer of the Minnesota Vikings and was the highest-ranking African-American executive working on the business side for an NFL team at the time. Warren played college basketball at the University of Pennsylvania, where he was a member of the 1981-82 Ivy League Championship team before transferring to Grand Canyon University. Warren later graduated from University of Notre Dame Law School. In 1992, Warren established his own sports and entertainment agency. Five years later, he joined the St. Louis Rams as a front office executive and earned a Super Bowl Ring following the Rams’ Super Bowl XXXIV victory. Warren went on to work for the Detroit Lions, Greenberg Traurig LLP, and then the Vikings for fourteen years before being named Big Ten Commissioner in 2019.

Jodi Balsam (Moderator) is an Associate Professor of Clinical Law and Director of Externship Programs at Brooklyn Law School, and an Adjunct Professor of Law at NYU School of Law. Professor Balsam is a graduate of NYU Law and previously served as Counsel for the National Football League. Balsam began her legal career at Simpson, Thacher & Bartlett LLP and clerked for The Honorable Dennis Jacobs as well as The Honorable Charles L Brieant. Professor Balsam is frequently published for her commentary on sports law about topics including the NFL players’ concussion lawsuit, Tom Brady’s “Deflategate” lawsuit, sports betting, and more.

The Sports World’s Pandemic Response
Ron Klempner (Panelist) is Senior Counsel, Collective Bargaining at the National Basketball Players Association and has served in this role for over two decades. Klempner began his legal career at Weil, Gotshal & Manges and clerked at the U.S. Court of Appeals for the Second Circuit. He is a graduate of the Maurice A. Deane School of Law at Hofstra University.

Michael Goldsholl (Panelist) is the Director of Operations for Business & Legal Affairs at Women’s National Basketball Players Association (WNBPA). Goldsholl began his career working with a talent agency as well as a sports marketing company. He is a graduate of Brooklyn Law School and also interned with the WNBPA as a law student. 

Vanish Grover (Panelist) is Counsel at Major League Baseball (MLB). He began his career as a labor relations intern with MLB before joining Davis Polk LLP. Grover then clerked for the U.S. District Court for the Eastern District of New York, before rejoining MLB in his current role. He is a graduate of NYU Law.

Dr. Daniel Kelly (Moderator) joined NYU’s School of Professional Studies in 2019 as the Academic Director of Graduate Programs and Clinical Assistant Professor for the Preston Robert Tisch Institute for Global Sport. Dr. Kelly has consulted on strategic leadership and global business initiatives with international sports organizations based in Spain, Argentina, Qatar, and elsewhere. He has also organized recruiting events with various professional teams such as the New York Mets, Boston Celtics, and many more.

The Next Generation of Sports Broadcasting Deals
David Pahl (Panelist) is a partner at DLA Piper and focuses his practice in the media, sport and entertainment sector. He previously served as the Chief Legal Officer at ESPN for over two decades and oversaw all legal affairs, including programming acquisitions for broadcasting rights. Pahl was responsible for ESPN’s first MLB and NBA package purchases as well as the NFL’s Monday Night Football addition. He has negotiated or overseen carriage and distribution agreements with all of the major MVPDs, including Comcast, DirecTV, Time Warner and Dish. Pahl is a graduate of University of Michigan Law School. 

Richard J. Birns (Panelist) is a partner at Gibson, Dunn & Crutcher LLP where he is Co-Chair of the Sports Law Practice Group. Birns regularly serves as a personal advisor to owners of sports franchises and sports industry leaders on “bet the company” matters. He is also recognized as a leading sports lawyer by The International Financial Law Review. Birns is a graduate of Columbia Law School.

Andrew Marchand (Panelist) is a senior sports writer for the New York Post. Marchand began his career as a reporter for the New York Post before becoming a regular contributor to ESPN programs such as Sportscenter, Baseball Tonight, ESPN News, and ESPN New York radio broadcasts. After 11 years with ESPN, Marchand rejoined the New York Post in 2018. 

Mark Conrad (Moderator) is an Associate Professor of Law and Ethics at Fordham University Gabelli School of Business. He also is the director of Fordham’s Sports Business Concentration. Professor Conrad has had multiple works published on various areas of sports law including the First Amendment rights and social media in sports, disparaging trademarks against the Washington Football Team, and many more. Professor Conrad is a graduate of New York Law School. 

Social Activism in Professional Sports
Pamela Wheeler (Panelist) is a Consultant to the National Football League for diversity and inclusion as well as executive leadership development. Ms. Wheeler previously served as Director to the WNBPA for more than 15 years. She then lectured at Columbia University on labor and employment law, as well as leadership and personnel management. She is a graduate of Boston University School of Law. 

Ben Meiselas (Panelist) is a partner at Geragos & Geragos. He is best known for representing former quarterback and civil rights activist Colin Kaepernick in his lawsuit against the National Football League and continues to represent Colin in all related endeavors. Meiselas has previously served as the General Counsel for the Big3 Basketball League, and currently serves as General Counsel for Colin Kaepernick’s “Know your Rights Camp,” Meiselas was awarded the 2019 Variety Impact Lawyer of the Year for his legal achievements. He is a graduate of Georgetown University Law Center. 

Charles Grantham (Panelist) is the Director of Center for Sport Management at Seton Hall University’s Stillman School of Business. Grantham has deep expertise in sports having formerly represented or advised NBA players including Charles Oakley, Amare Stoudemire, and Tobias harris. Grantham began his career with the NBPA as a former executive for almost two decades, then serving as the Union’s Vice President before being names its first Executive Director. Grantham was a consultant to the plaintiffs in the O’Bannon v. NCAA lawsuit. He earned his M.B.A. from The Wharton School of University of Pennsylvania. 

Cameron “Cammy” Myler (Moderator) is a Clinical Assistant Professor at NYU’s Tisch Institute for Global Sport. Myler is perhaps best known for her time as an American Olympian and competed in four Winter Olympic teams as a luge athlete. After retiring from luge, Myler earned her J.D. from Boston College Law School and began her legal career at Milbank LLP before moving to Frankfurt Kurnit Klein & Selz, P.C. In 2016, Myler created the Women in Sports Initiative, which provides students with an opportunity to meet with and learn from successful professionals in the sports industry.