Tag Archives: NCAA

More, more, Moore!

Originally posted 2010-08-02 12:49:54. Republished by Blog Post Promoter

Joe CollegeOne of my favorite ever topics here on LOC has been the litigation brought by the University of Alabama against painter Daniel Moore for unauthorized artistic depiction of trademarks.  As I reported last November, after first writing about this emerging issue four years earlier:

U.S. District Court Judge Robert Propst said in an opinion that Moore did not violate trademark laws by painting scenes of Crimson Tide football without licensing the work through the university. He rejected UA’s argument that the football team’s uniform and colors are iconic enough to trump First Amendment rights in fine art.

‘This court concludes that the depiction of the uniforms in the paintings is incidental to the purpose and expression of the paintings; that is, to artistically depict and preserve notable football plays in the history of University of Alabama football,’ Propst wrote in his memorandum opinion.

As I said then,

You don’t have to go as far as I and praise the kinder, gentler world of the past when an ambitious entrepreneur could pay homage, and maybe pay the mortgage, by taking – yes, horrors! — “free rides” on significant popular culture phenomena that were unlikely to be deemed “affiliations” or “authorized merchandise” without doing the high-end brand equity any harm at all (and probably some good).

This campaign by Alabama, though, really does take the rent-grabbing aspect of this business model to truly offensive levels.  There’s no doubt that NCAA schools and other pro sports teams sell “official” sports art, but it is utterly, utterly meaningless to fans whether this art is “approved,” “official,” “endorsed” or anything else (much less “fine”).  The claim here is simply “The University of Alabama owns everything about the Crimson Tide, and no one is going to make a penny off fan enthusiasm for the team but us.  Period.”

Notwithstanding that, well, yes, the Lanham Act does by its terms protect “approved and endorsed” as well as “source of origin,” I stand by this argument — which is rather narrow, mainly that the NCAA schools and other pro sports leagues should acknowledge that none of this has anything to do with fans, quality or anything other than what may or may not be a legally-granted franchise on branded enthusiasm.

In any case, the decision could not be abided by Big Collegiate IP, which appealed the ruling to the Eleventh Circuit.  Last Friday Moore filed his brief as respondent.

The amicus brief (available here) filed by Big Collegiate IP demonstrates that the schools continue their goal-line defense of intellectual dishonesty in their the presentation of this issue.   Read More…

Best of 2013: A bunch of WHARTON business

Wharton logo

First published August 16, 2013.

Steve Baird — redoubtable Steve Baird — has a great post about a bunch of trademark business involving claims by the University of Pennsylvania’s Wharton School of Business over its trademark rights in the name WHARTON:

Earlier this week, Joseph N. DiStefano of Philly.com reported that the University of Pennsylvania filed suit in federal district court to protect its well-known federally-registered rights in the WHARTON name and mark. (Hat tip to guest blogger Dave Taylor of Taylor Brand Group).

For those who have not been paying attention to business for the past 132 years, The Wharton School is the world’s first collegiate business school, established in 1881, as part of the University of Pennsylvania. It has a remarkable reputation as one of the top business schools in the country.

It has one of the most published faculties and one of the largest and most influential alumni networks. And, we know how smart Wharton students are, as one of our talented guest bloggers,Nick Olson, is a UPenn law student who will graduate in 2014 with a J.D. and a Certificate in Business from the Wharton School. Remember his insightful blog posts on IP Valuation and Poetry in Slogans?

Not surprisingly, the lawsuit asserts pretty standard claims for federal trademark infringement, federal unfair competition, federal trademark dilution (blurring and tarnishment), federal cybersquatting (for registration in September 2012 and use of www.whartonadvisorscorp.com), Pennsylvania statutory unfair competition, and Pennsylvania common law unjust enrichment, against a financial consulting firm in New Jersey called Wharton Advisors Corp. Here is a copy of the complaint and exhibits.

Who else writes a thorough blog post like this any more?  That’s just the intro.  (Don’t worry, I will have some original thoughts on this too.  Sit down.)  Steve now takes a very nice little investigatory turn: Read More…

A bunch of WHARTON business

Wharton logoSteve Baird — redoubtable Steve Baird — has a great post about a bunch of trademark business involving claims by the University of Pennsylvania’s Wharton School of Business over its trademark rights in the name WHARTON:

Earlier this week, Joseph N. DiStefano of Philly.com reported that the University of Pennsylvania filed suit in federal district court to protect its well-known federally-registered rights in the WHARTON name and mark. (Hat tip to guest blogger Dave Taylor of Taylor Brand Group).

For those who have not been paying attention to business for the past 132 years, The Wharton School is the world’s first collegiate business school, established in 1881, as part of the University of Pennsylvania. It has a remarkable reputation as one of the top business schools in the country.

It has one of the most published faculties and one of the largest and most influential alumni networks. And, we know how smart Wharton students are, as one of our talented guest bloggers,Nick Olson, is a UPenn law student who will graduate in 2014 with a J.D. and a Certificate in Business from the Wharton School. Remember his insightful blog posts on IP Valuation and Poetry in Slogans?

Not surprisingly, the lawsuit asserts pretty standard claims for federal trademark infringement, federal unfair competition, federal trademark dilution (blurring and tarnishment), federal cybersquatting (for registration in September 2012 and use of www.whartonadvisorscorp.com), Pennsylvania statutory unfair competition, and Pennsylvania common law unjust enrichment, against a financial consulting firm in New Jersey called Wharton Advisors Corp. Here is a copy of the complaint and exhibits.

Who else writes a thorough blog post like this any more?  That’s just the intro.  (Don’t worry, I will have some original thoughts on this too.  Sit down.)  Steve now takes a very nice little investigatory turn: Read More…

Color my world

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!