By Jacqueline Sudano, Esq.
Typically, a trademark is a “use it or lose it” deal – if a university has registered a trademark, it has a duty to police the usage of the mark. If it does not, it forfeits its right to complain of unauthorized use in the future. Recently, several universities around the country have been involved in trademark disputes with local high schools who have adopted the universities’ logos, some who had done so more than 50 years ago.
While most casual observers believe that it’s about money, some universities claim that the integrity of the school’s brand is at stake in these cases. Scott Andresen, attorney and owner of Andresen & Associates, P.C., noted: “These schools need to be careful of not abandoning or reducing their rights via a ‘naked license’ in which the IP owner doesn’t exert sufficient control over the licensee’s use of the marks.”
Douglas Masters, an intellectual property attorney and partner at Loeb & Loeb, explained, “You find in the trademark realm sometimes that people are being motivated to take actions against uses that they don’t particularly care about from a business point of view.” He continued, “There’s more policing and I think that there’s greater attention being paid to the potential for revenue streams from universities’ intellectual property. I don’t think that most universities view the use by high schools to be a revenue issue from a commercial point of view and that people are going to buy high school merchandise instead of their merchandise; the actions they’re taking are more out of a desire to maintain trademark protection. “
What follows is a survey of the current legal landscape when it comes to high schools using university and pro team logos for their athletic programs, with or without permission.
Georgia Southern University Eagles
The Washington Post reported last week that Freedom-South Riding High in Loudoun County, Virginia was singled out by Georgia Southern University after a GSU alum glimpsed the high school’s use of the Eagle logo in its gymnasium during a CNN telecast during the 2008 presidential campaign. The alum alerted the university’s athletic department, where Lee Davis, Georgia Southern’s associate vice president for legal affairs, compared the high school’s logo with its own. Seeing the two as identical, GSU contacted Freedom-South Riding and insisted that it cease using the logo. The two parties have worked out a licensing deal where the high school will pay $1 per year to the University for the next ten years on items too costly to replace quickly, and the school has already retired the team uniforms, helmets, and other gear featuring GSU’s logo.
Florida State University Seminoles
FSU recently faced a PR nightmare after it gave permission for its licensing company, Collegiate Licensing Co. (CLC), to issue a cease-and-desist letter to Bradenton, Florida’s Southeast High School in late August, after Southeast had used the Seminoles’ logo and nickname since 1981. The school’s teams have been known as the Seminoles for 51 years. Following plunging public opinion of the logo battle, it has been reported that Kirby Kemper, vice president for research for FSU, wrote in an August 26 email obtained by public records request: “The article about us going after a high school to get them to drop Seminole in today’s paper is getting tremendous negative publicity for us …I would suggest that once we get the licensee to back off[,] that one or both of you call the school and tell them we love having them called the Seminoles.”
While the CLC and Southeast have yet to reach an agreement, it has been reported that the CLC and FSU have offered to license the Seminoles mark to Southeast for five years at the cost of $1. Reports have suggested that FSU is entertaining ideas of inviting Southeast representatives to Tallahassee for a football game in order to restore its previously amicable relationship. After all, FSU football hall of famer Peter Warrick is a Southeast grad, and former FSU football coach Bobby Bowden visited Southeast on numerous recruiting trips.
Andresen identified how FSU went wrong. “In any event, the PR move was incredibly bad on FSU’s part. Everyone loves rooting for the underdog and 99 percent of the general public would have no idea or concern about who owned what IP rights in the matter- they would just see big FSU picking on a little high school. Ultimately, it looks like FSU granted the high school a license to use the marks for $1 year….this is what should have been offered in the first place.”
Two other Florida high schools have reportedly used the Seminoles logo, but have not yet been targeted by FSU. The Santaluces High Chiefs and Jupiter High Warriors use the Seminoles’ spear on their helmets, according to the Palm Beach Post. It is likely that public backlash against the university may sway its legal team to be more lenient on high schools using the Seminoles logo in the wake of the Southeast scandal. In the alternative, the Seminoles may look to handle these issues more sensitively in the future.
“One of the challenges here for the rights holders who decide that they want to do something is the sensitivity around how they approach the issues,” said Masters. “There are less confrontational approaches to be taken and those that are less likely to develop into PR issues. Along with the increased opportunities for marketing, there are increased opportunities for people to communicate their displeasure with receiving demands or criticism,” he explained. “Schools may need to become more sensitive to how they communicate these things, like trying to reach out by phone to explain the situation and get more information, as opposed to sending what could be perceived as a threatening letter. If you’re willing to reach out to someone and take the time to talk to them and express your concerns… sometimes it gets received a little better. “
University of Florida Gators
And then there was the eerie foreshadowing: “Can you imagine what we’d be saying if UF had sent the same message to the Everglades High School Gators or the Island Coast Gators?” wrote Tallahassee consultant Derek Whitis to the Tampa Tribune on September 16, 2010, commenting on the FSU logo battle. The Island Coast Gators, however, do not use the exact Gator head logo, and the school’s colors are green and gold. The school football team’s helmets have “IC” on the side, and not a Gator head. Island Coast Athletic Director Joe Bowen told the Ft. Myers News Press, “[t]hinking that we may have a problem one day, we changed things on the Gator.” Although the Gator head logo is on the school’s website, Bowen noted, “Even so, our gator is a lot different. It has less teeth and more humps. We made sure we didn’t violate their trademark.”
While the two schools mentioned by Whitis remain off the university’s radar, UF didn’t remain silent in defending its Gator logo against other schools.
This past summer, CLC was also busy sending cease-and-desist letters to high schools, informing them that they were in violation of UF’s Gator trademarks and demanding that the high schools remove all Gators logos and scriptmarks from their uniforms, helmets, and campus. UF and CLC targeted Florida high schools Palm Beach Gardens and Glades Day School, Mississippi high school Vicksburg High, and Arkansas high school Ola High School in the crackdown.
Now, Glades Day, a school with a secondary-level enrollment of less than 250 students, must spend over $50,000 to remove the Gators logo from its uniforms, helmets, gym floor, and any place else that the logo appears on campus and student-athletes. Robert Egley, head of the school and UF alum, told the Tampa Tribune, “They have us over the barrel. We just don’t have the money or the time to fight this. It hurts our hearts. We don’t make any money off their logo or their marks. We would think they would be proud we would want to use their marks.”
However, UF doesn’t demand that these high schools abandon all things Gator. “The university does not object to high schools using the term ‘Gators’ or creating a Gator mascot of their own,” Janine Sikes, spokeswoman for the university, wrote in an e-mail to the Tampa Tribune. “We have an obligation to protect the rights established in our registered trademarks… When an issue is identified we work with the school on creating a phase-out plan according to the school’s comfort level.” This includes letting the schools replace their uniforms over time. “We’re not telling anyone to throw away their uniforms … When their uniforms wear out in normal fashion, we expect their uniforms to be replaced,” Sikes told the Gainesville Sun. It’s been reported that the schools who received letters are now looking into alternative, unique Gator logos and designs for their athletic programs.
Other Schools: Playing Nice
The University of Miami in the 1990s licensed the use of its trademarked “U” to a high school in Oklahoma for $1,000 a year. This is at the high end of what some high schools have had to pay to license the university’s logo; some high schools have paid as little as $1.
Kansas State runs a program which licenses its “Powercat” logo for $1 every two years, and Arizona State licenses its “Sun Devil” mark for only $1 a year when notified by a high school of its intention to use the logo. Centreville High in Clifton, Virginia took advantage of the former’s licensing deal, paying $1 every other year to KSU, changing its logo from Ohio State’s bobcat design to KSU’s “Powercat.” Jimmy Sanabria, Centreville’s athletic director, told The Washington Post, “We did it officially because, God forbid, we do something, some alumni sees something and some attorney sends us a cease-and-desist letter.”
KSU’s licensing program is innovative in the field of college trademark licensing. The school allows 94 schools in 28 states to use whatever color it wants with the logo, except red and blue, which are the colors of Kansas, KSU’s rival school. Additionally, schools are allowed to use the Powercat logo on uniforms, signs and stationary, but if the school wishes to sell apparel with the logo on it, it must use one of the university-licensed vendors, with ten percent royalty going to KSU.
But why are schools feeling the heat more and more lately from universities who, before now, have not policed their trademarks? Masters hypothesized: “I think the two factors that have probably driven this trend, if there is a trend, would be a focus on schools exploring other forms of revenue generation… I think high schools have become increasingly savvy and focused on their opportunities to do marketing; there are more consultants and third party companies now encouraging high schools to do more forms of online marketing and promotions… As the high schools and their activities become more commercial in nature, they tend to gain the attention of universities.”
Some teams gain university attention from having important games televised, which is what happened to Allen ISD in Texas three years ago. The Dallas Morning News reported this week that Allen AD Steve Williams received a call from the CSC three years ago after its game against Plano East was televised on Fox Sports Southwest. Williams was told that his school was using the Arizona “A” on its team’s helmets, and was asked to stop. In what could have turned into a messy legal battle, both sides were cooperative. Williams told the paper, “They allowed us to phase it out. There was nothing ugly about it.”
The NFL: Encouraging Inspiration
The NFL, by contrast, does not mind if a high school copies its trademarks at all. In fact, the league’s ethos encourages high schools to do so; NFL spokesman Brian McCarthy explained to the Palm Beach Post, “We think it’s great if a local team wants to use a logo of an NFL team. We think it’s a great opportunity to inspire kids to one day play in the NFL and wear the real helmet.”
For example, the Ward Melville High School Patriots in Setauket, NY use the logo of the New England Patriots, but the school’s colors are green and gold. Texas’ El Paso Andress Eagles use the same logo as the Philadelphia Eagles. Also in Texas, the Canyon Randall Raiders use the exact logo of the Oakland Raiders.
Andresen also noted, “When I was with the AFL, we freely allowed high school and amateur teams to use our names and logos so long as they did it under a license which protected our ownership rights in and to our marks. I am also aware that the NFL has a very similar program in place.”
What’s a high school to do when coming up with a new logo? How can a high school protect itself from infringement claims brought by trademark owners, then? How much change is “enough” to avoid an infringement claim? Are there any set legal standards that apply here? We asked Andresen, who is also former counsel with the AFL.
“Ultimately, there is no bright line as to what constitutes infringement and what doesn’t,” he said. “It comes down to a question of whether the allegedly infringing use is ‘confusingly similar’…which is a very fact-specific analysis based on the particulars of the situation. As far as schools or organizations taking a university’s logo and revising it for their use, I am sure this is probably somewhat common as logo designers are always taking ‘inspiration’ from existing logos. When I was reviewing proposed team logos for the AFL, there were many times when I would reject them as they were simply too close to logos in use by other sports/athletics entities. I didn’t use a bright line rule in these cases, just more of a ‘gut feel’ based on my experience in the area.”
And Andresen’s advice for universities? “I think that universities would be wise to strongly consider granting licenses to high schools in their state or region. First, it’s a good PR move that gives the university additional positive exposure. Second, one never knows when it might be a good recruiting move for the university for students and student-athletes.”
