Am I an Ironman?
'Tis the season to see a flood of commercial references to the Hawaiian Ironman, just, often avoiding the term Hawaiian Ironman. "Kienle Takes Kona Crown" says an advertisement on Slowtwitch. "We Show You Limits," says another, showing a picture of Rinnie crossing the line in Kona, sans the Ironman-emblazoned tape, "And You Defeat Them."
Can't a company legitimately proclaim what happened? Probably not. Not in its ads. Not if it includes protected trade or service marks. Not if the company owning the marks has done its duty in protecting its intellectual property (IP).
But wait! Didn't we just infringe in the paragraph above? No, because Slowtwitch is media and is covered under the legal doctrine of Fair Use. Yes, Slowtwitch is a commercial enterprise, but its primary duty is to report news and cover the sport editorially.
What constitutes allowable use of Ironman's marks? The safest way to know you can use the marks without objection from Ironman is to be an Ironman partner. Heres a page of them. There is, as of this writing, only one footwear company listed as an Ironman partner and that's Newton. New Balance athletes, male and female, won this year's Hawaiian Ironman. New Balance will, one assumes, either have to join this list or buy a special use right before it can say in any prominent way that its athlete is the Hawaiian Ironman World Champion. (More on New Balance below.)
Remember one of the caveats above. A company must strenuously protect its IP to keep it. Ironman's owner for the first decade of its existence was its patron saint, Valerie Silk, and in the early years she was not only less ardent (than WTC is now) in the protection of these marks she was improving, she was often focused just on keeping the doors open and the lights on. A more IP-savvy operation bought the race from Ms. Silk in 1989 and it began to aggressively pursue infringers, a practice hard to fault. That new company, World Triathlon Corporation (WTC) had to unwind, rewind and codify a tangled intersection of similar and overlaying marks and I wrote about this on Slowtwitch in 2001. Its lawyers and licensors cleaned up the IP and establishing rigor and discipline in the use of it.
Is Ironman claiming more IP than in the past?
But the enforcement, and even what is claimed as IP, might not have remained precise and seamless over the past 25 years. Decades ago I remember David Yates, Ironman's CEO through much of its growth immediately after the sale to WTC, telling me that the term "Half-Ironman" was acceptable use if it was simply descriptive of a distance. I took that to mean races like Wildflower or Timberman or St. Croix could not have used the term Half-Ironman in their names but they could, in the description of their events, say that they were contested over the Half-Ironman distance. That seems not Ironman's posture today. If you look on its website it says the "generic distance term" should be "half distance triathlon."
Ironman is cracking down this year on the unauthorized use of its IP, as you would expect, but maybe harder than in years past. Tony Karklins ran Orbea's operation in the United States and I asked him what kind of use WTC objected to. "We used [the official race name] freely during the Crowie years [when Craig Alexander won the Ironman aboard an Orbea, in 2008 and 2009]. Towards the end, they complained about our use of photos, but never the usage of the event name."
WTC was sold again, as most observers know, to a private equity group, in 2008. Since that sale revenues at the Ironman corporation have increased tenfold. Halfway through this 6-year ownership stint Andrew Messick was hired and most of the growth has occurred under his leadership. Mr. Messick is a former NBA executive and he knows and understands licensing and IP. He wants the Ironman to operate as other similar leagues and sports do. That means tightening up how its IP is protected.
Mike Reilly called me an Ironman. Can I call myself one?
You might argue that Ironman isn't the NBA. Okay, debatable, but what about other organizations? I checked with the person most immediately responsible at the USOC for protecting Olympic trade names and marks, Carol Gross, to see how that organization approaches the policing of its marks. You might think an athlete who's earned medals can use the accomplishment without restriction. Not so. This is where the lines between Fair Use and infringement blur. An athlete – or a company sponsoring the athlete – can use the accomplishment in a bio, if that bio includes all similar and relevant accomplishments. Let's take ROKA athlete Javier Gomez. According to Ms. Gross, if ROKA simply referred to Mr. Gomez as Olympic Silver Medalist, she'd ask ROKA to list additional accomplishments. In fact, ROKA lists for Mr. Gomez also "4x ITU World Champion" and "Xterra World Champion" – exactly the kind of thing Ms. Gross told us she wants to see.
Let's say Javier Gomez opened up a coffee bar where he now lives in Pontevedra, in Spain. He could not invite customers with an ad saying, "Join Olympian Javier Gomez for a Caffe Latte." Not only would he be precluded from the use of Olympic or Olympian in the name of his coffee bar, he could not refer to his own accomplishment in that way, because he would be leveraging the power of a protected mark to sell cappuccinos. He could, under the ABOUT US tab of his coffee bar's website, refer to his Olympic silver medal accomplishment. "It depends on the context," said Ms. Gross, and when you add the concept of context this makes it a little harder to know, as a user of the mark, if you're infringing according to the holder of the mark – do all mark owners view context the same way?
The USOC publishes guidelines for the use of its marks. The Ironman corporation does as well, though its page is not a list of dos and don'ts so much as a list of dont's. I asked Ironman for a deeper dive into what is and isn't allowed and it sent me 2 lines of boilerplate. This is typical, in my experience, when you ask companies for guidance on their IP, because these companies don't want to help you avoid buying a license. They'd rather help you buy a license. Even the USOC says, "If you think you may have infringed the USOCs rights, or you are proposing to do something which you think may infringe the USOC's rights, we recommend that you seek independent legal counsel."
Have you read the Red Bull Gazette this morning?
Some companies seem to try to get around the need to license through appropriating the Fair Use principle described above. Oakley "reports the news" that "Kienle, Carfrae Crowned 2014 Ironman World Champions." Red Bull announces that "Sebastian Kienle crowned Hawaii Ironman king." Stories follow these headlines and they are similar in style and appearance to news. The USOC is onto this. On its guidelines page you'll read,
"Commercial entities whose primary purpose is the sale of goods or services unrelated to disseminating the news cannot use USOC trademarks under the pretext of editorial content. For example, a soft drink company might post "current news" on its website; however, it is not a media company and its primary business is selling soft drinks. Therefore, it may not use USOC trademarks or report on the Games without permission from the USOC."
This isn't to say that these companies' news pages are just attempts to end-run the need to buy licenses or partnerships. Many manufacturing companies today employ "staff journalists" on the payroll, including Felt and SRAM, each of which outfitted Hawaiian Ironman champions last week (SRAM was used by both winners, Felt by Ms. Carfrae). Red Bull and Oakley might be Ironman partners even though they aren't listed as such or might have paid for the right to use these trademarks (Red Bull product has been liberally available at Ironman races this year; Oakley always seems to be proximate to Ironman, so, maybe there's a relationship there). Maybe Ironman doesn't want to go after Oakley and Red Bull legally because they'd much rather court them as sponsors (shrewd). Maybe Ironman isn't as stringent as the USOC on "news" stories. Or maybe Ironman just hasn't read The Oakley Intelligencer and Red Bull Gazette yet.
Ironman went too far back in 2010, according to professional photographers and their customers, in its attempt to control and own (and sell) all non-news images at its iconic race. Specialized jumped in a chartered helicopter in 2010 to get its own shots of the race, to make sure that it got the photos it wanted and to circumvent a policy almost universally decried outside Ironman's own corporate bubble. The economics of covering Ironman editorially clash with Ironman's attempt – similar to F1 and Moto GP – to own all imaging at the race venue. "Most photographers simply cannot afford to make the trip and cover the Hawaiian Ironman unless they can sell their photos to commercial clients such as bike, component and run companies," said one media executive whose publication covers triathlon alongside Slowtwitch, and who preferred not to be named.
As for New Balance, what we see on its home page right now, as of this writing, are the finisher images of Mirinda Carfrae and Sebastian Kienle, replete with Ironman logos. We must assume Ironman's team mobilized to protect its IP. As would the NBA, and as would the USOC. And, as we would expect it to. As it has every right to. That Ironman has valid and enforceable marks is undeniable. The one complication for Mr. Messick is at least a perceived shift in enforcement, or what it considers proper use, of Ironman's IP over the arc of its history.
