LOS ANGELES — The Tournament of Roses' attempt to protect its ownership of the "Rose Bowl Game" and "Rose Bowl" trademarks from the city of Pasadena became costly Friday when a U.S. district judge ordered it to pay more than $400,000 of the city's attorney fees after its lawsuit had been dismissed with prejudice.
The conflict stemmed from the Tournament of Roses' decision in December 2020 to move the annual New Year's Day bowl game, known as the "Granddaddy of Them All," to AT&T Stadium in Arlington, Texas, because California's stringent COVID-19 protocols would not have allowed fans to attend the College Football Playoff semifinal game.
The master license agreement between the Tournament of Roses and Pasadena requires the game to be held in the Rose Bowl stadium except in the event of a force majeure that allows for the game to be moved.
The matchup between Alabama and Notre Dame was the first Rose Bowl played outside of Pasadena since 1941, when the game was held in Durham, N.C., because of World War II.
The Tournament of Roses used its Rose Bowl trademarks while staging the game in Texas. The break from tradition produced consternation among city leaders and vested parties throughout Pasadena, sparking the Tournament of Roses' filing of the lawsuit in February 2021.
The Tournament of Roses sought from the court "declaratory relief," stating the city "has no ownership interest in either the Rose Bowl Game mark or the Rose Bowl mark for use in connection with the Rose Bowl Game" and stating "if a force majeure event occurs under the MLA that prevents the Rose Bowl Game from being played at the Rose Bowl stadium on game day despite the parties' commercially reasonable efforts, then [the Tournament of Roses] can host its Rose Bowl Game anywhere without [Pasadena's] consent."
On July 12, 2021, Judge Andre Birotte Jr. dismissed the first request for relief because the city of Pasadena did not dispute that it has no ownership interest in the trademarks and dismissed the second because it "rests upon contingent future events that may not occur as anticipated."
The judge dismissed the rest of the case — which included accusations of trademark/unfair competition, false advertising and breach of contract — in its entirety.
The Tournament of Roses filed a notice of appeal to the 9th Circuit Court of Appeal, and Sheppard Mullin, the firm representing the city of Pasadena, moved for recovery of the city's attorney's fees. Friday the court granted the motion and awarded the city $408,923 to be paid by the Tournament of Roses.
"I am hopeful that now the parties can move beyond this litigation, shift to celebrating the stadium's 100th anniversary this summer, and work together toward another 100 years of Rose Bowl games in the Rose Bowl stadium," said Steve Madison, who sits as the Pasadena City Council representative on the Rose Bowl Operating Co.
Despite having its case dismissed, the process did confirm for the Tournament of Roses that it has full ownership over the game's trademarks.
"Filing this lawsuit was not something we wanted to do, but protecting our brand, trademarks and intellectual property was important to the long-term viability of our Rose Bowl Game," the Tournament of Roses said in a statement. "The city's concession and the court's acknowledgment that we own all rights to the Rose Bowl Game and its marks accomplished this goal as we were successful in protecting that intellectual property.
"We look forward to putting this phase behind us and moving forward with our long-standing partnership with the city officials. At this time, our focus is solely on hosting the best Rose Parade and Rose Bowl Game on Jan. 2, 2023 … for the residents of Pasadena and the world."
