Sports, Trademarks and Where is the Line

After tinkering with the technology in secret through the preseason and the early parts of the 79th regular season, on September 27, 1998, Sportvision debuted its newly crafted virtual first down line.[1] Sportvision produced the yellow first down line using a visual effects technique known as chroma key and camera modeling technology.[2] By identifying specific pixels, the system could replace the green field with the now ever-popular yellow first down line regardless of whether the field was grass or synthetic or in the shade or sun.[3] The overwhelming response to the new technology was positive and maintains its positive reception today as modern commentaries view the invention as a revolution to the viewership of American football.[4]  

Labor-desert theory suggests that the sweat of the brow gives the right to the fruit it bore. While the Supreme Court replaced the Sweat of the Brow Doctrine with the "a modicum of creativity" test in Feist Publications v. Rural Telephone Service Co., the spirit of protecting ingenuity through the reward of exclusivity remains ever present in American Intellectual Property Law.[5]  Thus, the question became, in what manner would Sportvision's "magic" yellow line be rewarded with protection from those who wished to replicate and profit from it? Intellectual property law provided several avenues for said protection as Sportvision sought numerous patents, including for the novel color-blurring technology (US 6,229,550), image insertion in video streams (US 6,100,925), and methods for enhancing live broadcasts (US 5,917,553), along with a trademark for the yellow color used for the digitally enhanced first down line.[6] Why did Sportvision move for this multilayered protection? It wanted to protect the economic cash cow the yellow line had become. ESPN was the first to agree to pay for the yellow line services, and soon, every major sports broadcasting company was dishing out between $20,000 and $30,000 per game for the first down line.[7] In 2001, when Fox Sports attempted to cut the yellow first down due to cost, football fans rallied behind Sportvision.[8] A survey conducted by Sportvision showed that 92% of fans wanted the marker on every telecast, and the internet was flooded with comments of praise and support for the return of the yellow first down line.[9]   

Websites such as "LovetheLine.com" highlighted fan support as users such as "Bonnie" voiced their clear disdain against its removal:[10] 

"Lose the fancy broadcast desks, the fake field floor, the flying statistic graphics and the sound effects and bring back the line! ... $1,000,000 / a year? Come on - what's that? One more Superbowl ad? I'd be willing to watch another one and make the game another minute longer to save the line."[11]

After a mere few weeks of absence, the yellow line would return as Fox Sports relented to the harsh criticism.[12] 

The next challenge Sportvision would face would be a threat to its trademark of the yellow first down line as competitors began to emerge looking to partake in the market. The presumptive validity of the trademark would come into question when Sportvision filed suit in 2004 against Sportsmedia Tech for infringement of its yellow first down line trademark.[13] Sportmedia Tech had provided the yellow first down line to some college football broadcasts throughout 2003 despite Sportvision's demands to cease the infringement. Despite revolutionizing the viewership of football, the court would ultimately conclude that Sportvision had no valid trademark. But was this the proper conclusion?

First, we need to turn the clock back to the foundation of trademark law. Unlike copyright or patent, a trademark requires no novelty, invention, discovery, or any laborious work of the brain.[14] Trademark law was a response to the rise of counterfeits, giving senior users a mechanism to prevent junior users from using the same or similar marks where there was a likelihood of confusion.[15] The source of such a law did not have a seamless development. Congress's first attempt to enact federal trademark protection in 1870 was short-lived and stuck down by the Supreme Court, which found the use of legislative power improper. The Supreme Court stated the legislative power was to protect "inventions and discoveries in the arts, sciences, or with the writing of authors." In the eyes of the Supreme Court, trademark law lacked the "necessary relations to invention and discovery" as it failed to demonstrate "the fruits of intellectual labor."[16] While trademarks differ from the origin of law that supports patent and copyright, trademarks were able to carve their path through the Commerce Clause and, as time went on, expanded through the Lanham Act in 1946.[17]  

The Lanham Act provides that a trademark registration is "prima facie evidence of the validity of the registered mark and … of the registrant's exclusive right to use the registered mark."[18] Sportvision was awarded a trademark by the U.S. Patent and Trademark Office for the yellow first down line on September 24, 2002.[19] Therefore, the burden shifted to Sportsmedia Tech to introduce sufficient evidence to rebut the presumption of Sportvision's right to such protected use by the preponderance of the evidence.[20] Sportsmedia Tech raised the affirmative defense 15 U.S.C. § 1115(b)(8), which holds that a mark is invalid if it is found to be functional.[21] Then, the case hinged on whether the yellow color of the first downline was functional or a production indicator for Sportvision.

Yellow was not the only color that Sportvision's technology could produce. Networks had discretion and selected the color yellow for the first down line.[22] J.R. Gloudemans, who joined Sportvision when it was just a startup, recounted his time working on the prototype and stated he initially proposed using red because "it showed the least amount of movement."[23] When tested against a trademarked color, functionality asks whether the color is essential to the product's use or purpose or affects the cost or quality.[24] If the color serves a purpose other than identifying the product, then the trademark is invalid. The functionality doctrine highlighted in the case dealing with Owens-Corning's pink fiberglass insulation resulted in the court finding the color pink as able to be trademarked because depriving the public of using pink for insulation did not hinder competition and did not take from the goods something of substantial value; in reality, the use of pink was an additional cost the company took on despite providing no benefits other than identification against competition.[25] On the other hand, John Deere was defeated by the functionality doctrine because customers wanted their farm equipment to match.[26] 

Sportvision's yellow first down line became the victim of the theory that a "design would be considered de jure functional if it is 'the best or one of a few superior designs available.'"[27] Sportvision presented the networks with an array of colors which through testing they narrowed down to yellow, gold and orange as the colors were found best for viewership.[28] ESPN eventually decided yellow was the ultimate choice as it was visible, non-distracting, and did not bleed into other colors on the field like red did during ESPN's testing of the virtual first down line.[29] Why de jure functionality when there is a limited number of superior designs? Because trademark protection is potentially perpetual in duration, protecting a functional trademark would defeat the fundamental right to compete. In Sportsvision's case, the attempted trademark's functionality is evident from the fact that other networks also independently chose yellow.[30]

Football fans know that yellow is not the only color used to create virtual lines to help viewers orient themselves. A black or blue line is utilized to represent the line of scrimmage, a red line with white trim and white text is used for the field goal target line, and some networks capitalize on red's harsher connotation by using it for fourth down when a team must convert or turn the ball over..[31] Thus, one must ask whether yellow truly fell into the category of de jure functionality due to its superiority over other colors. In fact, Sportvision initially struggled to use yellow due to its instability. Yellow was not truly the "superior" color the court deemed it as given networks' use of various other colors.

So, did the court come to the correct conclusion when it determined Sportvision's yellow first down line trademark was invalid? Begrudgingly, yes, but not for the argument explored above.

Arguably, the conclusion would have been unsatisfactory if that de jure functionality was the only leg to stand on. However, the court in Sportvision v. Sportmedia Tech found two strong arguments that served as nails in the coffin to Sportvision's claim of validity, both arising out of the purpose of trademarks– identification. Sportvision never chose yellow to represent its product. Instead, it provided the networks with a handful of colors to select. Thus, yellow could never have served as an identifier for Sportvision's service of providing virtual first down lines, especially given that each network could have picked a different color. Yellow first down lines were never synonymous with Sportvision and its service. Additionally, the court rightfully argued that if the purpose of trademarks is to combat against counterfeit products and confusion when quickly viewed by the average consumer, then the offer of services to a network does not fall under the same conditions.[32] Networks are sophisticated buyers who deeply analyze the service before selecting the vendor. Trademark protections do not aptly seem fitting in such circumstances.

While the conclusion of invalidating the trademark was off-putting from the outset, the court ultimately arrived at the correct conclusion. However, one may now consider SportsMedia Tech's arguments from a different lens as SportsMedia Tech later came to acquire Sportvision.[33] A monopoly on the beloved yellow first down line might not seem so egregious now to SportsMedia Tech.

[1] Tom Taylor, Behind the NFL’s Yellow First Down Line, and What’s Next for Sports TV, SportsMEDIA Technology, https://smt.com/behind-the-nfls-yellow-first-down-line-and-whats-next-for-sports-tv/#:~:text=Everything%20started%20with%20a%20simple,the%20ball%20crossed%20the%20plane.

[2] Taylor, supra note 1.

[3] Id.

[4] See generally, The First-Down Marker: How Technology Changed the Game, SRI (Nov. 21, 1998), https://www.sri.com/press/story/the-first-down-marker-how-technology-changed-the-game/; The First Down Line: How One Simple Innovation Transformed Football Viewing, Touchdowns Without Borders (Sept. 10, 2024), https://www.touchdownswithoutborders.com/the-first-down-line-how-one-simple-innovation-transformed-football-viewing/#:~:text=The%20first%20down%20line%20revolutionized,go%20for%20a%20first%20down; Jacob Stern, A Fake Yellow Line Changed Football Forever, The Atlantic (Feb. 8, 2024), https://www.theatlantic.com/technology/archive/2024/02/football-virtual-yellow-line-augmented-reality/677384/.

[5] Feist Publications v. Rural Telephone Service, 499 U.S. 340, 342 (1991).

[6] Bryan Lemanski & Emily Dentinger, 1st and Ten: The Yellow Line That Changed the Game and Captured Our Hearts, Young Basile (Jan 30, 2025) https://youngbasile.com/yellow-line/.

[7] Joss Fong, et al., The NFL’s Virtual First-Down Line, Explained, Vox, (Jan 30, 2019) https://www.vox.com/2016/2/6/10919538/nfl-yellow-first-down-line-espn.

[8] Lee Prodica, How Creative Marketing Saved the NFL’s Yellow First Down Line, Braithwaite Communications (Feb. 2017), https://www.leeprocida.com/writing/Sportsvision-yellow-1st-down-line.

[9] Fong, et al., supra note 7.

[10] Id.

[11] Bonnie, A Chat Board about the Yellow First Down Line, LovetheLine.com, (Oct. 22, 2001), https://web.archive.org/web/20020109021758/http://www.lovetheline.com/display.asp?first=279. 

[12] Fong, et al., supra note 7.

[13] Sportvision, Inc. v. Sportsmedia Tech. Corp., No. C 04-03115 JW, 2005 U.S. Dist. LEXIS 22682, *5 (N.D. Cal. Aug. 4, 2005).

[14] Peter S. Menell et al., "Intellectual Property in the New Technological Age, Vol. II: Copyrights, Trademarks and State IP Protections" 931 (2023).

[15] Id. 

[16] Trade-Mark Cases, 100 U.S. 82, 93-94 (1879).

[17] See generally, Lanham Act, 15 U.S.C § 1051.

[18] Lanham Act, 15 U.S.C §1115(a).

[19] Sportvision, No. C 04-03115 JW, 2005 U.S. Dist. LEXIS 22682 at *4.

[20] See Vuitton et Fils S.A. v. J. Young Enters., Inc., 644 F.2d 769, 775-76 (9th Cir. 1981).

[21] Lanham Act, 15 U.S.C. § 1115(b)(8).

[22] Sportvision, No. C 04-03115 JW, 2005 U.S. Dist. LEXIS 22682 at *3.

[23] J.R Gloudemans, First-Hand:My Recollections: Development of Football's Virtual First Down Line, ETHW, https://ethw.org/First-Hand:My_Recollections:_Development_of_Football%27s_Virtual_First_Down_Line.

[24] TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23, 33, 149 L. Ed. 2d 164, 121 S. Ct. 1255 (2001).

[25] In re Owens-Corning Fiberglas Corp., 774 F.2d 1116 (Fed. Cir. 1985)(citing In re Mogen David Wine Corp., 51 C.C.P

.A. 1260, 328 F.2d 925, 140 U.S.P.Q. (BNA) 575 (CCPA 1964)).

[26] Deere & Co. v. Farmhand, Inc., 560 F. Supp. 85, 98 (S.D. Iowa 1982).

[27] In re Morton-Norwich Prods., 671 F.2d 1332, 1340 (C.C.P.A. 1982); Brunswick Corp. v. British Seagull Ltd., 35 F.3d 1527, 1531 (Fed. Cir. 1994).

[28] Sportvision, No. C 04-03115 JW, 2005 U.S. Dist. LEXIS 22682 at *16.

[29] Id. 

[30] Brunswick, 35 F.3d  at 153.

[31]The Many Color Options, First Down, Marker, https://firstdownmarker.weebly.com/color-options.html; The Bruins Blog, Decoding the Blue Line in American Football: Unveiling Its Impact and Future, Chat Sports, (Aug. 10, 2024) https://www.chatsports.com/boston-bruins/a/source/decoding-the-blue-line-in-american-football-unveiling-its-impact-and-future-17945568.

[32] Sportvision, No. C 04-03115 JW, 2005 U.S. Dist. LEXIS 22682 at *26-27.

[33] SMT Completes Acquisition of Sportvision, Inc., SMT, https://smt.com/smt-completes-acquisition-of-sportvision-inc/.