A federal judge from the Southern District of Ohio has granted the Ohio State University’s request for a preliminary injunction in a case in which the school alleged that a publisher of various sports publications and other marketing vehicles was engaging in trademark infringement and unfair competition in violation of the Lanham Act.
The defendants, Keith Antonio Thomas and GDS Marketing, LLC, publish a website at www.buckeyeillustrated.com and publish two electronic magazines: “Buckeye Gameday” and “Ohio State Buckeyes E-Book.” They also publish numerous print publications in which they sell advertising. These publications “are each replete with infringing uses of Ohio State’s exclusive trademarks,” according to the court.
After Ohio State filed for injunctive relief, the court considered the following four factors:
“(1) whether the movant has a ‘strong’ likelihood of success on the merits; (2) whether the movant would otherwise suffer irreparable injury; (3) whether issuance of a preliminary injunction would cause substantial harm to others; and (4) whether the public interest would be served by issuance of a preliminary injunction.”
Leary v. Daeschner, 228 F.3d 729, 736 (6th Cir.2000) (citing McPherson v. Michigan High Sch. Athletic Ass’n, 119 F.3d 453, 459 (6th Cir. 1997) (en banc), quoting Sandison v. Michigan High Sch. Athletic Ass’n, 64 F.3d 1026, 1030 (6th Cir. 1995)).
Addressing the first element, the court found that Ohio State had demonstrated that the defendants’ allegedly infringing website and publications are “highly likely to result in consumer confusion.”
While the defendants had argued that any proof of consumer confusion is rebutted by a disclaimer at the bottom of the landing page on the website that states that “this website is an unofficial and independently operated source of news and information not affiliated with any school or team,” the argument was unavailing.
“The Sixth Circuit has specifically stated that ‘such a disclaimer does not absolve [the defendant] of liability for his unlawful use of marks identical to [the plaintiff]’s trademarks.’ Audi AG, 469 F.3d at 546 (citing Ford Motor Co. v. Lloyd Design Corp., 184 F. Supp. 2d 665, 673-74 (E.D. Mich. 2002).
Moving on to the “irreparable injury” element, the court noted that “once a moving party has demonstrated a likelihood of confusion, a finding of irreparable injury ordinarily follows. Wynn Oil II, 943 F.2d at 608. Ohio State has already demonstrated that there is a high likelihood that consumers will associate the defendants’ website and publications with Ohio State.”
Similarly, on the third element, the court agreed that “because Ohio State has shown a strong likelihood of success on the merits, the harm to others element also favors Ohio State. The defendants cannot claim a loss of profits on their infringing activities as harm. Thus, the balance of harms favors granting Ohio State’s motion for emergency injunctive relief.
“The court concludes that the public interest favors issuing a preliminary injunction. In trademark cases, public policy concerns may weigh in favor of preliminary injunctive relief because an injunction would halt confusion in the marketplace. See Worthington Foods, 732 F. Supp. at 1463. See also P&G v. Georgia-Pacific Consumer Prods. LP, No. 1:09-cv-318, 2009 U.S. Dist. LEXIS 72052 (S.D. Ohio August 3, 2009). Further, the court finds persuasive Ohio State’s argument that the Ohio State University is a public institution, funded by the public who has an interest in ensuring that is marks are used properly and under the quality control of Ohio State, thereby ensuring that Ohio State can maximize its own revenue associated with the use of its name, reputation, goodwill, and intellectual property.”
The Ohio State University v. Keith Antonio Thomas, et al.; S.D. Ohio; Case No. 2:10-cv-753, 2010 U.S. Dist. LEXIS 96478; 8/27/10
Attorneys of Record: (for plaintiff) Joseph Richard Dreitler, LEAD ATTORNEY, Daniel C Gibson, Mary R True, Bricker & Eckler, LLP, Columbus, OH. (for defendants) Reed Cornia, LEAD ATTORNEY, Madison, WI.
