KU Secures Victory in Trademark Infraction Case

May 9, 2008

A federal judge has granted, in part, a summary judgment motion brought by the University of Kansas in a trademark infraction case, finding some clothing merchandise being sold by a retailer is so similar to KU’s licensed merchandise that there would be confusion.
The court also rendered numerous evidentiary rulings in the lengthy opinion, which are not addressed in this summary.
As background for its summary judgment rulings, 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 by some to be in bad taste.
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 the following claims: (1) Federal trademark infringement under 15 U.S.C. § 1114, (2) federal unfair competition under 15 U.S.C. § 1125(a), (3) federal trademark dilution, (4) trademark infringement under K.S.A. § 81-213, (5) trademark dilution under K.S.A. § 81-214, and (6) common law trademark infringement and unfair competition.
After reviewing an extensive series of factors, the court found that summary judgment “is only appropriate as to the few T-shirts that the Court has singled out as displaying marks that are overwhelmingly similar to KU’s marks. These striking similarities trigger a presumption that defendants intended to infringe. These two factors weigh so heavily in favor of a likelihood of confusion that no reasonable jury could find otherwise.
“Additionally, it is uncontroverted that no disclaimers were present at the Joe-College.com store or website during the time these T-shirt designs were offered for sale. Accordingly, summary judgment on the trademark infringement claims is granted in favor of plaintiffs with regard to these specific T-shirt designs.”
University Of Kansas et al. v. Larry Sinks et al.; D. Kan.; Case No. 06-2341-JAR, 2008 U.S. Dist. LEXIS 23765; 3/19/08
Attorneys of record: (for plaintiffs) Alicia Grahn Jones, Jerre B. Swann, R. Charles Henn, Jr., William H. Brewster, LEAD ATTORNEYS, PRO HAC VICE, Kilpatrick Stockton LLP – Atlanta, Atlanta, GA; Douglas M. Greenwald, LEAD ATTORNEY, McAnany, Van Cleave & Phillips, P.A. — KCK, Kansas City, KS. (for defendants) Mark T. Emert, William J. Skepnek, LEAD ATTORNEYS, Skepnek Fagan Meyer & Davis PA, Lawrence, KS., Charles T. Schimmel, LEAD ATTORNEY, Hill, Beam-Ward, Kruse, Wilson & Wright, LLC, Overland Park, KS; Mark T. Emert, William J. Skepnek, LEAD ATTORNEYS, Skepnek Fagan Meyer & Davis PA, Lawrence, KS.


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