The Ohio State University has had back-to-back victories in federal court concerning two trademark infringement disputes occurring in late 2010. The US District Court for the Southern District of Ohio affirmed on November 8 a previous ruling granting The Ohio State University a permanent injunction against defendants Keith Antonio Thomas and GDS Marketing, LLC. Additionally, a settlement was reached in the same court between the University and Maple Street Press, LLC, where the parties agreed to a permanent injunction against the publisher, filed on November 16.
As reported in an earlier edition of Sports Litigation Alert, the defendants in the first case, 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’s previous ruling. 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.
The federal court found that Thomas’ and GDS Marketing, LLC,’s “unauthorized use of the Ohio of the Ohio State Trademarks is commercial in nature and is intended to, and will, directly compete with the lawful publication, distribution and advertising commercial activities of Ohio State and its licensees to the detriment of Ohio State.”
In finding for the University and granting the permanent injunction, the court decreed that “[the defendants] are permanently enjoined from infringing or falsely designating the origin of the Ohio State Trademarks, from using the Ohio State Trademarks in commerce in any way, and from injuring Ohio State’s reputation…” The court ordered the defendants to assign and transfer its domain name www.buckeyeillustrated.com to the University, as well as disclose to the Court and the University the names of all persons and entities “to whom Defendants has[sic] supplied copies of any print publication that includes any of the Ohio State Trademarks…and that Defendants are further ordered to take all legal and equitable measures to regain possession of all copies of any publications containing any of the Ohio State Trademarks…”
Turning to the second case, Maple Street Press, LLC publishes a magazine devoted to Ohio State football, called “Buckeye Battle Cry,” which uses many of the Ohio State trademarks without the University’s permission. The settlement between the publisher and the university requires Maple Street Press to no longer use the Ohio State trademarks, “to permanently refrain from producing, advertising, selling or giving away the publication ‘Buckeye Battle Cry’ whether print or electronic”, and to make a diligent effort to recover all copies of “Buckeye Battle Cry” previously distributed.
The Ohio State University v. Keith Antonio Thomas and GDS Marketing, LLC; S.D. Ohio, Case No. 2:10cv-753, Nov. 8, 2010.
The Ohio State University v. Maple Street Press, LLC; S.D. Ohio, Case No. 2:10-CV-00890, Nov. 16, 2010.
