The Stanley Cup is perhaps the most iconic trophy in all of sports. It’s been called hockey’s “Holy Grail” and has a rich history dating back to Lord Stanley of Preston. The Cup is treated like a priceless item by those who guard it and every year it is carefully updated to include newly engraved names of the NHL champion’s roster.
And, yes, it’s occasionally used to drink beer.
The reference to beer has taken on legal significance. In a case to watch in 2019, the NHL has sued the makers of the “Stanley Stein 25 oz. Hockey Beer Cup Mug,” The mug costs a little over $40 in Amazon and has been marketed as follows:
Now This is a Hockey Fan's Way to Drink Beer
We've all dreamed about drinking from "The Cup." Now you can with your very own 25 ounce Hockey Cup™
Tough as the Game....made from a clear, break-resistant plexiglass blend, similar to "The Glass" at hockey arenas.
So lace 'em up, light the lamp and hoist "The Cup."
The NHL filed its complaint in the U.S. District Court for the Southern District of New York back in July 2018, but the merits of the case won’t be determined until later in 2019 or beyond. At its core, the case is about a professional sports league trying to protect its brand and a merchandise company trying to sell a product that it claims is sufficiently distinct from any property of the league.
With that overarching context in mind, the NHL asserts that The Hockey Cup LLC and three co-defendants are engaged in a “flagrant attempt to free-ride on the fame, goodwill, and commercial value of the National Hockey League and its Member Clubs.” The league argues that the plastic beer stein is an unauthorized replica of the Stanley Cup and infringes on the league’s intellectual property. The league also objects to the defendants producing what it terms “counterfeit hockey jerseys.” Such jerseys bear the NHL mark as well as the NHL’s shield design.
The NHL thus contends that makers of the “Stanley Stein” are acting in bad faith. As depicted by the NHL, the defendants are attempting to deceive consumers into believing that the NHL is somehow affiliated with their products. The defendants allegedly do so by creating a “false impression.” To that end, the NHL draws attention to the obvious similarity in names—the plastic beer stein has been marketed as both “The Hockey Cup” and “The Stanley Stein,” both of which bear more than a passing resemblance to “The Stanley Cup.” Further, the league highlights how images of the plastic stein are paired with NHL trademarks. Likewise, packaging for the Stanley Stein references the “city names, color combinations, and logos” of the original six NHL teams.
The NHL demands that the court permanently enjoin the defendants from using any of its intellectual property. The league also insists all “counterfeit materials” be seized, impounded and/or destroyed. Further, to offset what the league describes as continuing harm to the NHL’s brand, it requests that the court order the defendants to pay it monetary damages. Such proposed damages would include any profits gained by the defendants in the sale of the plastic stein as well as attorneys’ fees incurred by the NHL.
The Hockey Cup and its founder, entrepreneur Roger Dewey, firmly reject the NHL’s assertions. From their vantagepoint, Dewey never intended to copy the Stanley Cup. Instead, Dewey’s idea for the Stanley Stein—which the defendants describe as an “independent artistic creation”—came about after Dewey unsuccessfully “attempted to purchase a beer stein shaped like a sports trophy.” After failing to find such a product, his research into sports trophies identified several hockey “cups,” including—but not exclusively—the Stanley Cup. The idea of a “hockey trophy inspired beer stain” then naturally came to mind.
The defendants also insist there are at least 15 “visual differences” between the Stanley Stein and the Stanley Cup, which the defendants maintain should enable a reasonable consumer to “easily differentiate” between the two and thus not surmise that any relationship exists between the Stanley Stein and the NHL. Such purported differences include:
• The Stanley Stein includes a handle whereas the Stanley Cup does not.
• The Stanley Stein displays two pairs of hockey sticks on its exterior whereas the Stanley Cup does not.
• The Stanley Cup features “numerous engravings with various teams’ names” whereas the Stanley Stein does not.
• The Stanley Stein and the Stanley Cup use different types of tiers.
• The Stanley Stein features a “pronounced lip” about its bowl and the Stanley Cup doesn’t.
• The diameter of the Stanley Stein’s body portion is slightly larger than that of the Stanley Cup.
• The Stanley Stein is transparent whereas the Stanley Cup is opaque.
The NHL is represented by attorneys Anthony Dreyer and Jordan Feirman of Skadden, Arps, Slate, Meagher & Flom and the firm’s sports law practice group. The Hockey Cup and its associated entities are primarily represented by Illinois attorneys Konrad Sherinian and Edward Bi, with New York attorney John Mugno also serving as counsel to The Hockey Cup. Judge Denise Cote is presiding over the litigation.
The NHL’s legal claims and The Hockey Cup’s defenses
In its complaint, the league raises several claims under federal law and New York law.
One key claim is for trademark infringement under the Lanham Act, which is the primary federal law for trademarks. Trademark infringement arises when there is an unauthorized commercial use of a word, phrase, symbol, design or other mark. A mark can receive legal protection when it distinguishes a product or service from those produced by competitors. For example, assume that a new professional hockey league is launched. Then assume this league organizes a franchise in Boston and names it the “Boston Brewins.” By using a name so obviously similar to that of the Boston Bruins, the league would have likely infringed on the NHL and Bruins’ marks.
Along those lines, a successful trademark infringement claim is one that shows the defendant’s usage of a mark probably causes consumer confusion about its source. As a trademark litigation advances, both sides usually offer survey data and other empirical evidence to prove or disprove consumer confusion.
Here, the NHL stresses that it has registered numerous marks related to the words “Stanley Cup,” the design of the Stanley Cup and accompanying logos, and other league and team imagery. It contends that the Stanley Stein blatantly disregards those registrations. The NHL depicts the defendants as trying to dupe consumers into believing that the NHL is either the maker of the Stein or that the league sponsors, endorses or approves it. The league acknowledges that there are visual differences between the Stanley Stein and the Stanley Cup, but insists that they are “immaterial” when weighed against numerous visual similarities. The NHL also emphasizes that packaging for the Stanley Stein—which is shipped in a box allegedly intended to “resemble the widely-recognized and publicized travel case or trunk of the Stanley Cup trophy” and that “bears travel stickers corresponding to the cities where the NHL’s ‘Original Six’ Clubs are located”—only adds to consumer confusion.
The defendants aggressively challenge these points. They contend that consumer confusion is unlikely, not likely. To that end, they note that the NHL has possibly acquiesced to the sale of other hockey cups that resemble the Stanley Cup, including the Quest Awards Champion Hockey Cup and the Hockey Trophy Stanley Cup Replica Urn. Such supposed acquiescence, the defendants charge, ought to constitute abandonment by the NHL of its marks. The defendants also insist that while the NHL claims trademark rights in the name “Stanley Cup” and its accompanying image, the league (according to the defendants) makes no such claim to the “three-dimensional appearance of the Stanley Cup.”
Further, the defendants invoke the First Amendment to the U.S. Constitution as a relevant defense. As it has been interpreted by courts, the First Amendment generally permits parodies of protected marks and such parodies usually do not cause infringement. This is because a parody communicates that it must—since it’s a parody, after all—be different from an original, protected mark. With that in mind, the defendants argue the Stanley Stein is clearly a parody of a trophy since it is used not to denote winning a championship, but rather to drink beer.
The NHL’s complaint also includes a claim for trademark dilution That is, the NHL argues that defendants have diluted the strength of the league’s trademarks.
Dilution is different from infringement in that even if consumers aren’t confused into believing the NHL has produced or endorsed the Stanley Stein, consumers may nonetheless associate the Stanley Stein with the NHL and thus come to regard the NHL’s marks as no longer signifying official NHL products. The NHL expresses worry that the Stanley Stein has diluted NHL protected marks—including, of course, the Stanley Cup. If so, NHL marks may have lost some of their “distinctiveness” and thus suffered a diminished ability to distinguish NHL’s products and services from those provided by other businesses. The NHL argues this especially damaging since, in its view, the Stanley Stein and other products produced by the defendants are “poorly designed and of low quality.” Put more bluntly, the NHL doesn’t want consumers to believe it has anything to do with (from the clearly not neutral vantagepoint of NHL) slipshod retail items. Should that occur, the league fears, its own marks will become tarnished.
The defendants categorically dispute this account. They reiterate that, in their view, the Stanley Stein is “noticeably dissimilar” to the Stanley Cup and that “numerous” non-NHL products of a similar appearance to the Stanley Cup continue to be sold without NHL intervention. For this reason, the defendants charge, its products do not blur protected marks. Likewise, the defendants reject the idea that the Stanley Stein could tarnish the NHL’s brand. In a letter sent by one of the defendant’s attorneys to the NHL, the attorney argues, “the Stanley Stein is not a sex shop dealing in disgusting pornography or some disreputable drug culture product. Rather, it is a beautifully designed high-quality beer stein, which has been used by numerous beer drinkers to tastefully enjoy their favorite beer.”
The NHL also raises a claim for copyright infringement. A copyright is the exclusive right to reproduce, publish or sell an original work of authorship. Here, the NHL contends the defendants “willfully copied, displayed, distributed, and/or made derivative works of the NHL Shield logo,” which the NHL registered with the U.S. Copyright Office in 2006. The league argues that counterfeit jerseys with the NHL Shield logo were sold by the defendants. One such jersey also allegedly contained the marks of the Chicago Blackhawks.
The defendants’ attorneys take issue with such a claim. They stress that Dewey is not responsible for jersey sales, which they contend were made by co-defendant A&R Collectibles and that this entity issued refunds to consumers who had purchased those jerseys. The NHL, however, argues such defense is inapplicable since, in its view, “Dewey has dominated the operations of (the co-defendants), commingled the revenues and funds of those entities, not observed corporate formalities, and in various other ways treated the entities as mere alter egos of each other.” Dewey nonetheless asserts that any control he had over those entities was not used to commit fraud or a wrongdoing and thus he should not be tied to sales of jerseys.
What to look out for in the Stanley Cup case in 2019
As the Stanley Cup litigation advances in 2019, other pro sports leagues will closely follow it. For those leagues, the case is about the extent to which a league ought to have legal protection for properties that are similar, but clearly not identical, to the league’s properties. The impact of the case could go well beyond the Stanley Cup and into other kinds of sports trophies, merchandise and apparel traditionally marketed by leagues.
Yet it could be many months before the litigation is resolved. Currently, the defendants seek to have the case dismissed or moved to the U.S. District Court for the Northern District of Illinois. The defendants would prefer to litigate in a forum closer to where they are located and where they argue the “locus of facts” exist. The NHL would rather litigate in New York, where the league filed its lawsuit and its business and legal operations are headquartered.
In the meantime, it is possible that the two sides could reach a settlement. The NHL wants to protect its brand and not be associated with products that it views as inferior. If the defendants agree to pay for a license to use what the NHL regards as protected intellectual property and if the defendants make explicitly clear on its products and shipping boxes that their products are not, in any way, associated with the NHL, perhaps the two sides can strike a deal.
If they are unable to resolve their differences out of court, the litigation could move to pretrial discovery. In that phase of the litigation, the two sides would be required to share sensitive evidence and provide sworn testimony. The case would then progress towards a trial that would put the Stanley Cup against the Stanley Stein. SI will keep you updated on major litigation developments.
Michael McCann is SI’s legal analyst. He is also Associate Dean of the University of New Hampshire School of Law and editor and co-author of The Oxford Handbook of American Sports Law and Court Justice: The Inside Story of My Battle Against the NCAA.