The National Football League is a multibillion-dollar business that captures the attention of hundreds of millions of fans on Sunday afternoons, and practically every other day of the week during its season.
This kingpin of American sports still found time, however, to engage in a legal battle with Phoenix, Ariz., pumper Steve Fanning over what appears now to be an unfortunate name choice for his small portable sanitation business.
Fanning has a long and successful history in the industry. He began working for someone else and then started his own pumping business, Johnny On The Spot.
When service giant Waste Management Inc. sought to expand in the Phoenix area, it bought Johnny On the Spot from Fanning and hired him to run the local branch. When the non-compete clause in Fanning’s contract with Waste Management expired, he decided to start another business and it needed a name.
What should he call the new business? While working in Denver in the mid-1980s, his competitor was named Super Bowl Waste Services. Fanning was well aware of the football game, but he liked how the name applied to portable sanitation. Certainly, there was a double meaning, just as other pumpers have capitalized on double meanings, taking names such as Royal Flush.
Fanning was familiar with the owner of the Denver company, so he called and asked if there were any issues over using the name. The owner replied, “Never been a problem.” This is where Fanning may have made a major mistake. Rather than call a portable sanitation company in Colorado, he probably should have called the offices of the NFL in New York.
PERIOD OF EXPANSION
So Fanning had a vacuum service truck built. Using white, orange and green, he came up with an attractive truck with the signage: Super Bowl Waste Services. The reference to the task of cleaning toilets was obvious. As time passed, he added more trucks to his fleet. The booming construction market and the growth in the Phoenix area kept Fanning on his toes. By the end of 2007, he had 17 vehicles in his fleet and 13 of those were portable restroom service trucks.
So how did a local pumper in Phoenix capture the attention of the NFL? Fanning’s home base was selected as the site of the 2008 Super Bowl.
In April 2007, Fanning received a letter from NFL Properties ordering him to “cease and desist’’ all operations under the Super Bowl Waste Services name. The letter said he must abandon the business name. He had 10 days to respond.
Fanning was dubious of the letter, but hired a well-known law firm in Denver that specialized in copyright and trademark infringement. The law firm responded to the NFL, arguing there was no reason Fanning should have to change the name. There were no copyrights or trademarks being infringed upon, so Fanning would not stop doing business under the Super Bowl name.
The NFL sent more letters, Fanning said, insisting that the name on his trucks and restrooms had to change. By June 2007, after a flurry of letters back and forth, things quieted down. Fanning figured his legal troubles were over.
About Thanksgiving, another set of letters came. Again the NFL demanded Fanning change all signage using Super Bowl. The league wanted a final answer in a few days, and one in which Fanning would agree to surrender his name.
Backed by the law firm Dorsey-Whitney, Fanning felt he had a chance to keep the business name. The NFL learned from the law firm’s response that Fanning wasn’t about to give up the fight.
A meeting with the legal teams for the NFL and Fanning was arranged for January, a few weeks before the Super Bowl. Fanning’s lawyers believed the name Super Bowl was exempted from legal ownership because of a common “famous names” status.
NOT RELATED TO FOOTBALL
His attorneys explained the difference to Fanning like this: You can buy all the apples you want and you can use the name “apple” any way you want until you associate it with computers. Then you have problems. Then you’re “living off” the “famous name.” From that standpoint, Fanning’s lawyers believed that Super Bowl Waste Services didn’t interfere with or profit by the football game’s notoriety. There were no goalposts or footballs included in Fanning’s truck or restroom signage. No symbols or references to the big game were used in Fanning’s advertising, invoices or contracts.
According to Fanning, the NFL introduced a study proving that the general public often associated the pumping company with the NFL’s marquee game. The football league conducted a survey in which people were shown photos of Fanning’s restrooms and asked what they thought about when they saw the images. Roughly 30 percent said they thought of the football game. Fanning’s attorneys told him it only takes 16 percent recognition to support the NFL’s contention that his business profited from its association with the Super Bowl.
The NFL wasn’t going to take no for an answer.
Fanning said his lawyers estimated he had a good chance of winning if he fought in court to maintain the name. But if the NFL wanted to keep the case going, it could cost Fanning $300,000 to $500,000 to maintain his company name. The bill had already reached $25,000.
Time to settle.
The NFL presented Fanning with a 25-page written settlement agreement. Part of the settlement reads: “Super Bowl Waste Services shall not operate any aspect of its business under the name Super Bowl including displaying any portable toilets, signage or trucks with the phrase Super Bowl or the words Super or Bowl within 10 miles of the Super Bowl XLII Championship Game.” They also added that Super Bowl Waste not be any closer than five miles from a Super Bowl-related event for 14 days prior to the Super Bowl.
NO TIME TO CHANGE LABELS
Fanning responded that he already had restrooms on jobsites close to the stadium and he had commitments to service them. The NFL told him to get new stickers with a different name. Fanning argued it was impossible in the time frame they were requesting. So they negotiated how long they would let Fanning take to complete the name change. First, they told Fanning to have the name change done before kickoff. Fanning told them he wanted two years. The NFL offered to allow five months. That didn’t fly either. They ended up compromising and giving Fanning one year to change signage, and allowed 10 percent of his units to remain unchanged.
Also, according to Fanning, the NFL refused his request to cover his legal fees and costs associated with changing his company name.
Fanning reported the changeover will cost him more than $100,000. Super Bowl Waste Services will soon be history. Fanning has changed out his first truck. One by one, the old signage is being removed from the trucks and the restrooms and a new name, Elite Waste Services, is being added.
NOT A BIG FAN
Fanning had always enjoyed NFL games, but the legal battle has dampened his enthusiasm.
“The NFL is a business. They claimed we were diluting the name Super Bowl. That’s what it was all about for them,’’ Fanning said. “They said we were using their name for our personal gain. And I thought we were just pumping and cleaning toilets.”
A spokesman for the NFL, Brian McCarthy, said the league is justified in its pursuit of companies it believes are capitalizing on the Super Bowl name.
“We have many federal and state trademark registrations for the Super Bowl trademark. These registrations have been on file for decades. Registered trademarks that are considered ‘famous’ are afforded the greatest level of protection. The Super Bowl is registered and famous.”
McCarthy explained it’s standard procedure for the NFL to send “cease and desist” letters to any business using the Super Bowl name. Businesses that don’t abide by the orders are contacted by legal counsel of the NFL. McCarthy said he could produce 50 letters similar to the one Fanning received.
McCarthy said the NFL will continue to search out other businesses that use the league’s famous name. It plans to eliminate any and all references from the championship game by outside sources, even though the meaning of the words Super Bowl may have nothing to do with a football game.
