For years I’ve been writing about the envelope-pushing in trademark by the business of collegiate sports. In a like vein, but very scholarly-like, here’s a very cool piece from the Brooklyn Law Review — even though it’s in a law review! — by Joshua Saltzman of the winners at Wolf Popper, entitled “Smack Apparel, College Color Schemes and the Muddying of Trademark Law.” An excerpt from the introduction:
In 2008, the collegiate licensing industry scored a major victory in its ongoing quest to secure revenue streams and to protect the brand images of universities. That victory, however, created major potential problems for trademark law. In Board of Supervisors for Louisiana State University Agricultural and Mechanical College v. Smack Apparel Co. (“Smack Apparel”), the Fifth Circuit held that a university’s color scheme, combined with “other identifying indicia” of the university, was entitled to trademark protection under section 43(a) of the Lanham Act, thus allowing universities to block certain unlicensed uses of their color schemes on products. The defendant, Smack Apparel—whose website boasts that its products are “licensed only by the First Amendment”—sold t-shirts that used the color schemes of Louisiana State University and other universities, including the other three plaintiff universities—Ohio State University, University of Southern California, and the University of Oklahoma. The shirts did not mention the universities by name or use their logos or other registered trademarks, but rather combined their respective color schemes with indirect references to the universities by using geography, bowl championships, and/or allusions to rival teams. . . .
Although the plaintiff universities did not possess registered trademarks in their color schemes, the words and phrases used on the offending shirts, or in any particular combinations thereof, they successfully sued Smack Apparel under section 43(a) of the Lanham Act,11 which protects unregistered trademarks that are used in commerce, and the Fifth Circuit affirmed the trial court’s findings. The Lanham Act defines a trademark as “any word, name, symbol, or device, or any combination thereof—(1) used by a person . . . to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods. . . .”
The Smack Apparel decision thus gave universities increasing opportunity to pursue not only unlicensed manufacturers who reproduced the universities’ logos and other registered trademarks, but also manufacturers who merely combined the universities’ color schemes with indirect references. Likewise, it also expanded the number of items for which manufacturers would have to seek licenses from the universities, presumably providing the universities with an expanded source of licensing revenue.
Courts have grown increasingly sympathetic to and protective of such interests in the context of trademark law. To a certain extent, this sympathy is understandable. Universities invest enormous amounts of money, time, and effort in building up their educational and sports brands. They hope to generate revenues that will fund athletic and academic programs and to improve their image with applicants and the general public.
But these motivations are not sufficient justifications in themselves for the Fifth Circuit’s holding, which not only distorts the letter of trademark law, but also the spirit of it. . . .
This note will argue that Smack Apparel fails to balance these concerns. First, the decision misreads and misapplies the Lanham Act by creating an unclear and open-ended “color plus other identifying indicia” framework that does not satisfy the definition of a “mark.” Second, it mistakes consumer association of color schemes with the universities for consumer confusion about the source of the products bearing the colors. Finally, it ignores the longstanding fan and community interest in showing support for colleges and their teams, and the longstanding traditional uses of college color schemes by fans and local businesses in ways that have not been pursued as trademark violations. The result trends toward a regime where anyone wishing to make reference to a university with a commercial product must seek permission of the university (which the university can deny), and must pay a royalty even if approved. In doing so, Smack Apparel continues and advances a troubling expansion of trademark law beyond its purpose of avoiding “source confusion” and toward a creation of a right to total control over one’s brand and exclusive right to profit.
Not your everyday fare at an INTA gathering, mind you, but my kind of eatin’. Color me purple!