In July the Cleveland front office announced it was moving from the Indians branding and instead embracing the Guardians name, inspired by the helmets and wings of the Hope Memorial Bridge’s Guardian statues near Progressive Field. A problem: the existence of the Cleveland Guardians roller-derby team. According to attorneys for the roller-derby team, the Indians front office was aware of a possible conflict and sought to buy the derby team’s intellectual property rights, including its social media accounts and the clevelandguardians.com domain name, offering what derby officials deemed a “nominal” buyout. As a result, Guardians Roller Derby v. Cleveland Guardians Baseball Company LLC, was filed in the U.S. District Court for the Northern District of Ohio.
“Major League Baseball would never let someone name their lacrosse team the ‘Chicago Cubs’ if the team was in Chicago, or their soccer team the ‘New York Yankees’ if that team was in New York – nor should they,” said Christopher Pardo, a partner at Hunton Andrews Kurth LLP and lead attorney for the plaintiff. “The same laws that protect Major League Baseball from the brand confusion that would occur in those examples also operate in reverse to prevent what the Indians are trying to do here. By taking the name ‘Cleveland Guardians’ overnight, the Indians knowingly and willfully eviscerated the rights of the original owner of that name – the real Cleveland Guardians.”
There will be a whole lot of minutiae that will serve as red herrings for the Twitter attorneys. For instance, the Guardians derby team did not file trademarks for the name until July 21 and 23, well after they were notified by the Indians about the team’s plans. But there are common-law trademarks established by continuous use and don’t rely on a federal filing, so that timing may not be very important. Also, MLB and the Indians filed a trademark in the small island nation of Mauritius in to keep their plan secret in an attempt to receive World Trade Organization trademark protections. Whether those protections really. matter in the long term remains to be decided. IP and trademark law is a very technical field, so this case will not lend itself to hot Twitter takes.
“As a nonprofit organization that loves sports and the city of Cleveland, we are saddened that the Indians have forced us into having to protect the name we have used here for years,” said Gary Sweatt, the owner of Guardians Roller Derby. “We know we are in the right, however, and just like our athletes do on the track, we will put everything into this effort at the courthouse.”
According to a press release issued by the team attorneys, the derby Guardians have already suffered damages due to the name change: “Merchandise suppliers have refused to work with the team, believing it is the Guardians who are violating the Indians’ rights, and the team’s website www.clevelandguardians.com, which it uses in part to sell Cleveland Guardians-branded merchandise to support the team’s nonprofit purpose, has repeatedly crashed due to traffic from visitors who assume the site is associated with the baseball team. (Left unsaid: the derby team launched a merch store on August 3, 2021.)
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