Kansas Sides with KU in Trademark Dispute

Oct 23, 2009

A federal judge from the District of Kansas has denied a defendant sports apparel manufacturer’s bid for relief from a verdict favoring the University of Kansas in a trademark dispute.
The court’s decision was based on its firm belief that plaintiff KU “submitted sufficient evidence of national fame in order to satisfy the current incarnation of the Trademark Dilution Revision Act (TDRA),” as well as other reasons.
By way of background, the court noted that “KU does not manufacture apparel, but … licenses its trademarks to hundreds of different persons or entities and its marks appear on a wide variety of competing products with varying levels of quality. KU licenses its marks to businesses in Lawrence as well as nationally. The licensing of KU’s trademarks is managed by cross-claim defendant Collegiate Licensing Company of Atlanta, Georgia. KU’s licensees are provided with art slicks that are incorporated into all license agreements. The art slicks detail KU indicia, including trademarks, service marks, trade names, designs, logos, seals, and symbols. The license agreements make clear that KU owns and licenses additional trademarks that may not appear on the art slicks. An account representative for CLC routinely reviews KU licensees’ products in the retail marketplace to make sure that they comply with product and licensing standards. KU does not permit the use of offensive language or references to sex or alcohol on officially licensed products. KU monitors authorized uses of its color scheme and has set standards to instruct KU representatives and licensees as to how the crimson and blue color scheme is to be presented.” It went on to note that KU’s licensed products produce millions in sales each year.
The court then described how one of the defendants in the case, Victory Sportswear, pushed the envelope with its Joe-College.com subsidiary, selling KU-related merchandise, which was not licensed by the university. In fact, some of the merchandise included suggestive language, which could be deemed as offensive.
In a letter dated May 30, 2006, KU Athletic Director Lew Perkins requested that the defendant discontinue selling certain T-shirt designs sold by his company, and that it “cease production and sale of any other items that infringe on the university’s trademarks, including the term Kansas, and cease the use of designs that are closely identified with the university.”
Perkins went on to state that many of the designs sold and produced through the Joe-College.com business were offensive to the university, or disparaged the athletic programs or coaches.
KU ultimately sued, asserting trademark infringement, unfair competition under, trademark dilution, and trademark infringement claims, among others. The court ruled for KU, sparking the defendant’s motion for judgment as a matter of law and motion to alter or amend, for remittitur, and alternative motion for new trial.
Reviewing the defendant’s motion for judgment, the defendant argued that judgment “is appropriate on the dilution claims for two reasons: (1) there was insufficient evidence of actual dilution on the 11 T-shirts that the jury found diluting; and (2) the evidence shows plaintiffs’ marks have only achieved “niche fame,” and not the widespread fame required to sustain a dilution claim.”
The court noted at the outset that the plaintiffs must show actual dilution under the TDRA in order to recover monetary damages.
In denying the defendants’ motion, the court pointed to “Jim Marchiony’s testimony about being approached by anonymous KU fans complaining about the negative effect that defendants’ T-shirts have on the university’s reputation, and to web blog entries in the Lawrence Journal World that show that certain people in the Lawrence, Kansas community believed the T-shirts to be offensive.”
It continued: “Marchiony’s testimony is direct evidence that KU fans find many of defendants’ shirts offensive or inappropriate and, notably, believed that KU could ‘do something about it.’ A reasonable jury could infer that these fans believed that defendants’ irreverent T-shirts impaired the distinctiveness of plaintiffs’ marks.”
The court then turned to the defendants’ argument that there was no evidence at trial that plaintiffs’ marks enjoy widespread fame sufficient to support a finding of liability on the dilution claims. Defendants point to the language in the TDRA requiring the mark to be “widely recognized by the general consuming public of the United States.”
Defendants “rely entirely upon the analysis set forth in Bd. of Regents, the University of Texas System v. KST Electric, Ltd., which adopted the Magistrate Judge’s recommendation to grant summary judgment in favor of the defendant because the evidence failed to show that the University of Texas’s logo achieved widespread fame, as opposed to ‘niche fame.’ The mark at issue was the ‘longhorn silhouette logo.’ The court rejected the plaintiff’s circumstantial evidence of fame because it all related to the use of the logo at or concerning sporting events. The court explained that such evidence hardly equals presence with the general consuming public (nearly the entire population of the United States). Simply because UT athletics have achieved a level of national prominence does not necessarily mean that the longhorn logo is so ubiquitous and well-known to stand toe-to-toe with Buick or KODAK.
“Defendants argue that plaintiffs relied entirely on the national prominence of KU’s athletic programs in attempting to establish fame. Defendants contend that because the fame is only associated with athletics, as in University of Texas, they can only establish ‘niche fame,’ which is no longer acceptable under the TDRA.”
The Court disagreed, finding that the plaintiffs “submitted sufficient evidence of national fame in order to satisfy the current incarnation of the TDRA. First, the Court agrees with plaintiffs that the University of Texas decision does not stand for the proposition that no collegiate mascot nor word mark may enjoy national fame. Instead, that decision, in the posture of summary judgment, simply found that UT failed to present evidence of its logo outside the context of sporting events. Here, plaintiffs submitted an abundance of evidence on the use of the various marks both within and outside the context of sporting events. In addition to national media coverage and exposure of the athletic teams, plaintiff submitted evidence that KU has been referred to as ‘Kansas’ since the 1930s and that KU has used the crimson and blue color scheme and the Jayhawk mascot for over 100 years.
“Furthermore, Paul Vander Tuig testified that ‘the Phog’ has been used in media guides since 1988. He further testified that it has been used on licensed apparel since at least the early 1990s when he began working at KU. Vander Tuig also testified about ‘Rock Chalk Jayhawk.’ He explained that the phrase was first used by students in the 1880s and has been used for years at KU events as well as on licensed KU products since at least as early as he has worked for KU. When viewed in the light most favorable to plaintiffs, this evidence, along with evidence of advertising, unsolicited media references, brochures about the University, and substantial sales of KU’s licensed merchandise displaying the marks, supports the jury’s finding of national fame. Likewise, defendants’ evidence of third-party use of the marks does not require judgment in their favor as a matter of law. While the jury could certainly consider this evidence in making a determination of fame on the dilution claims, it was not required to weigh it more heavily than plaintiffs’ evidence of fame. Under the standard this Court must apply on a motion for judgment as a matter of law, there was sufficient evidence upon which the jury could have found fame despite the evidence of third-party use.”
University of Kansas and Kansas Athletics, Inc v. Larry Sinks et al.; D.Kan.; No. 06-2341-JAR, Slip Copy, 2009 WL 2252152; 7/28/09
Attorneys of Record: (for plaintiffs) Alicia Grahn Jones, Jerre B. Swann, R. Charles Henn, Jr., William H. Brewster, Kilpatrick Stockton LLP, Atlanta, GA, Douglas M. Greenwald, McAnany, Van Cleave & Phillips, P.A., Kansas City, KS,. (for defendants) Arthur E. Palmer, Cody G. Robertson, Goodell, Stratton, Edmonds & Palmer LLP, Topeka, KS, James W. Tilly, The Tilly Law Firm, Tulsa, OK


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