LOS ANGELES (CN) --- A trademark dispute over which city gets to host the annual college Rose Bowl football game has set the city of Pasadena against the nonprofit organization that oversees the New Year’s Day tournament.
Last February, the tournament organizers sued the city of Pasadena, California in federal court over a dispute on ownership of the Rose Bowl trade name.
On Friday, attorneys for the Pasadena Tournament of Roses Association and the city argued over the “force majeure” clause or extraordinary circumstances described as an act of God that moved the game out of the Golden State earlier this year.
In last 100 years, organizers moved the game out of Pasadena’s Rose Bowl stadium just two times. The first instance was during World War II weeks after the bombing of Pearl Harbor and the second time was earlier this year when Covid-19 health restrictions in the state of California prevented organizers from hosting the game in Pasadena.
This January, the Pasadena Tournament of Roses Association moved the game to Arlington, Texas. The nonprofit association argued the move was prompted by a “force majeure” clause of its contract. The whole situation was out of their control, the tournament organizers said. But following the decision, Pasadena Mayor Victor Gordo said in a New York Times article the city and the nonprofit shared ownership rights over the Rose Bowl name and that the tournament “belongs” to the city.
The nonprofit organization filed a federal lawsuit in the Central District of California asserting its exclusive trademark registration for the game. In an amended complaint, the nonprofit says the city admitted that it did not claim ownership of the trademark and the intellectual property. Pasadena wants to dismiss the remaining charges against them, including the trademark dispute.
On Friday, U.S. District Judge André Birotte Jr. asked the parties why the lawsuit should move forward if the city conceded that one point.
Attorney for the tournament A. John Mancini with Mayer Brown said the city pushed the issue and that could hurt ongoing negotiations for next year’s football game. Both parties want the game back in Pasadena, but the city sent a letter to the tournament arguing that they were in breach of their agreement by moving the game to another city in 2021.
Negotiations are ongoing for the 2022 game, but the exchange has fouled the relationship between the tournament and the city.
“But we can’t have a cloud over these negotiations. Be that if there is another force majeure event,” said Mancini. “Whether it be the pandemic --- or the pandemic resurfaces, or god forbid there’s an earthquake --- that somehow the tournament loses the ability to host one of the preeminent football games in the country.”
Kent Raygor from Sheppard Mullin for the city of Pasadena said the court should not be in the position of weighing a hypothetical situation that could force the game to move again in the future.
“It’s water under the bridge,” said Raygor.
“It doesn’t sound like water under the bridge,” Birotte said. “It sounds like a lot of mud.”
Despite a good relationship between the tournament organizers and the city of Pasadena over the last 100 years, the last year has seen that relationship fracture.
Mancini said the tournament organizers' lawsuit was in response to the threatening letter sent by the city after the tournament organizers announced the game would be moving to Texas.
The two parties have butted heads over who really owns the Rose Bowl game in the last year and that has boiled down to how the city uses the iconic football game in their social media. One example the tournament pointed to is an Instagram post from a Rose Bowl game from over 60 years ago. The post used a unique design that used the tournament’s trademark. The tournament organization argues the city’s unauthorized use of the trademark could confuse consumers because the tournament negotiates sponsorship deals for the game.
Raygor said the parties have agreements how the parties can use the trademarks and the tournament organizers have only pointed to a few examples, including the Instagram post.
“We should be talking… to work that out,” said Raygor. “It shouldn’t be this major piece of litigation.”
He argued Gordo’s statement in the New York Times article was not an advertisement and did not disparage the tournament’s reputation.
Throwing a little humor into the argument Birotte asked, “What are we fighting for here? Perhaps it’s beyond the four corners of my job, but what are we doing here?”
Birotte likened the situation to two millionaires fighting outside a McDonald's over the price of a cheeseburger, but assured the parties that he’s willing to weigh the arguments. He took the arguments under submission but said in the upcoming days the Central District courts will resume in-person trials and that could delay his ruling on the matter.
Read the Top 8
Sign up for the Top 8, a roundup of the day's top stories delivered directly to your inbox Monday through Friday.