Who Owns "Evil Empire"? The Yankees Launch A Proxy War For Control

Bridgehampton, N.Y., out on the East End of Long Island, is Red Sox territory. The bars along Main Street are decked out in red and will only show Yankees games if there's nothing else on. TVs receive the Hartford network affiliates. Carl Yastrzemski was born on a nearby potato farm and still holds a handful of records at the town's high school. Bridgehampton, you might say, sits beyond the Evil Empire's borders.

In 2008, Tracy and Kevin Carey began selling caps and t-shirts emblazoned with the phrase "Evil Empire" and demonic versions of the Yankees logo. The top hat was pierced by a pitchfork; the interlocking "NY" sported devil horns. The gear found a home in the Boston area, mostly in those second-rate stores that sell non-licensed merchandise. To reach a bigger audience, the Careys started a website.

"We had a good response in the Boston area, because of course Red Sox fans want to poke fun at the Yankees," says Tracy Carey. "But when we put it online, we were shocked to see how many Yankees fans were buying. They wear 'Evil Empire' as a badge of honor."

As they began to turn a profit, they checked to see if the phrase had been trademarked. It hadn't been. So the Careys (under their business Evil Enterprises Inc.) filed a trademark on the phrase "Baseball's Evil Empire."

That was in May of 2009, and the Careys didn't hear a thing for six months. Then, the Yankees won the World Series. Two weeks after that, the Yankees and MLB filed a notice with the US Patent and Trademark Office, announcing their intention to fight the Careys. The Evil Empire had come to Bridgehampton.

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The ubiquitous phrase almost never entered the public discourse. In 1982, Ronald Reagan was scheduled to speak before the British House of Commons. A nuclear freeze was the order of the day, with the Soviet Union and most of the international community favoring a mutual rollback of arms. Reagan's strategy was the opposite: he wanted the United States' arsenal to exceed the Soviets' by such a margin that it would cow them into submission.

The only way to justify an arms buildup would be to paint the Russians as irredeemably malign—and the phrase "Evil Empire," coined by chief speechwriter Anthony R. Dolan, can be seen in the first draft of Reagan's speech to Parliament. But cautious advisors thought better of it, and the Evil Empire wasn't to be so named until early 1983, when Reagan resurrected some of the excised material for a speech to the National Association of Evangelicals:

So in your discussions of the nuclear freeze proposals I urge you to beware the temptation of pride—the temptation to blithely declare yourselves above it all and label both sides equally at fault, to ignore the facts of history and the aggressive impulses of an evil empire, to simply call the arms race a giant misunderstanding and thereby remove yourself from the struggle between right and wrong and good and evil.

The uncompromisingly dualistic rhetoric struck a chord—perhaps because of the alliteration, perhaps because of the simplicity of the sentiment, or perhaps because Return of the Jedi hit theaters just two months later. In any case, it remained shorthand exclusively for the USSR until the dying days of the Cold War, when it first showed up in a sports context. Billy Tubbs's Sooners were known around the then-Big Eight as the "Evil Empire" as much for their winning ways as for the way they won: always big, often running up the score.

The term went the way of Chernenko until it was resurrected, fittingly, in a showdown involving a Cuban. In 2002, the Yankees and Red Sox were the favorites to land the services of defector Jose Contreras. It was a simple bidding war. The Yankees prevailed, offering Contreras $32 million over four years—a massive amount at the time. That's when Larry Lucchino, president of the Red Sox, uttered the equivalent of a 4-year-old's complaint that his older brother gets all the good toys:

''The Evil Empire extends its tentacles even into Latin America,'' Lucchino said, and a nickname was born. The Yankees aren't above co-opting a rival's phrase—see Yankees Universe, the late-to-the-party answer to Red Sox Nation—and fans have embraced the bad-guy role. But the Yankees themselves have never used the term "Evil Empire," and now they're seeing to it that no one else does, either.

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Can a 20-year-old phrase that wasn't originally about the Yankees be counted among their intellectual property? And if it can, do we have to credit the Yankees with restraint for not trying to make a buck off of it for this long?

In November 2009, the Yankees, through MLB's regular IP lawyer, filed what's known as a notice of opposition, which in IP circles is a little like speaking up at a wedding when asked if anyone has just cause why these people should not be wed.

"The renowned New York Yankees Major League Baseball Club," as the filing calls the team, lays out two general arguments against the Careys' attempt to trademark. First,

The term "evil empire" has a negative connotation because the word "evil" refers to that which is morally wrong or bad, immoral, wicked, harmful and/or injurious. The BASEBALLS EVIL EMPIRE mark will be understood to refer to the Club, and, upon information and belief, is clearly intended to do so, and thus may disparage Opposer[The Yankees], or bring Opposer into contempt or disrepute among a significant segment of the consuming public.

Second, and somewhat contradictorily, the Yankees hold that the phrase is so connected with the Yankees that people "are likely to believe that Applicant's goods, which are identical and/or closely related to the goods offered and services rendered in connection with the Club's marks, have their origin with Opposer and/or that such goods are approved, endorsed or sponsored by Opposer"—that the average fan, seeing shirts with the words "Evil Empire" and an altered logo, would assume the Yankees were selling the shirts. That's not an unreasonable assumption, since the team has sold stranger things than this. Jerry Dunne, the Careys' attorney, disagrees.

Who Owns "Evil Empire"? The Yankees Launch A Proxy War For Control

"Ridiculous," Dunne says from his Manhattan law offices. "It's very clear to any reasonable person that this is not the real thing. No one thinks the Yankees are actually updating their logo for 2011 to put devil horns on it."

Dunne says his defense is going to hinge on the freedom granted to parodies to incorporate much of the original subject. "You're allowed to make clear what you're parodying. It wouldn't work if it looked nothing like the original.

"The Yankees aren't in the business of spoofing themselves," he goes on. "If they were they'd have a better case." Still, he's convinced that the mere threat of legal action was supposed to be enough to spook the Careys into giving up their business.

Tracy Carey believes it's pretty clear she's going to be sued if she doesn't back down.

"Now they're making threats," she says. "In a correspondence with our attorney, they've indicated that if they lose this, they'll sue us in federal court. This is not funny anymore. Now it's about our life."

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That's also life at MLB Properties, the marketing pit bull for the owners. MLBP is responsible for policing two beats: counterfeit merchandise and all-around intellectual property infringement.

Intimidation by threat of lawsuit is just one of the tried-and-true tactics that the MLBP lawyers regularly use when dealing with what they consider trademark infringement. There are different carrots and sticks, each depending on the specific case, and trademark battles often end in a compromise before the trademark office panel rules. It's to both sides' advantage to wrap things up quickly, because of the expense and because MLBP deals with scores of cases every year. (It's fascinating to browse through some cases to see whom MLB's fighting. CBS Fantasy Baseball! Major League Chess!) Here's just a brief selection of trademarks the Yankees have recently opposed, with varying degrees of success:

The phrase "Bleacher Creatures," applied for by a group of bleacher season ticket holders
Reggaeton artist Daddy Yankee
T-shirts reading "Grandpa Hated Pinstripes"
The phrase "The House That Juice Built"
"Yankee Clipper," applied for by the estate of Joe DiMaggio

So "Baseball's Evil Empire" is just another day at the office for the ever-vigilant MLPB lawyers, and they've got the boilerplate media statement to prove it. Via Matt Bourne, MLB's VP of Business Public Relations:

The trademark application for "Baseball's Evil Empire" and the corresponding use of the Yankees' marks by the applicant are clearly another instance of someone trying to illegally cash in on and otherwise trade off the goodwill of an MLB team's identity for his or her own commercial gain without the Club's consent. As the Clubs' trademark enforcement arm, Major League Baseball Properties is compelled to act against these and other attempts to illegally capitalize on the popularity of Major League Baseball.

We expect MLB and the Yankees to be protective of their properties, but "Evil Empire" technically isn't among them. So while the Yankees have hesitantly gotten into the spirit—they now play the Imperial March from Star Wars before the players take the field—it should be noted that they had nine years to trademark "Evil Empire" and are instead settling for the block.

The deadline for both sides to submit evidence is next month, and the case should see a ruling by the end of the year. After that, perhaps, to court.

"They could have let this go," Carey says. "Instead they're doing more than our little company's t-shirts ever could to make them look like an evil empire."

Licensed merchandise sales are a multi-billion dollar business and account for roughly forty percent of MLB's total revenue. So if Evil Empire shirts aren't being sold in the Yankees clubhouse store or the MLB.com shop, that doesn't mean they won't be soon. Carey got his terms a little wrong. The Yankees aren't an empire. They're a client state. The real empire, the one with all the "aggressive impulses," is the one trying to expand its borders, not content with merely protecting the territory it already owns. MLB is the empire, and you can put that on a t-shirt.

Update, 2/23/12: A panel of judges sided with the Yankees and denied the Careys' trademark.