By Steve McKelvey, J.D. and Anita Moorman, J.D.
There has been an avalanche of endorsement deals for college athletes since NCAA bylaws restricting promotional activities were relaxed in June 2021. Almost 30 states now have enacted specific legislation preventing educational institutions and amateur athletic organizations from enforcing rules that limit athletes’ ability to use their name, image, and likeness (NIL).[1] In addition, now most universities have adopted institutional NIL policies describing how NIL activities should be conducted by their athletes. Some legislation and NIL policies expressly permit athletes to use institutional intellectual property (school IP) with written permission or through existing licensing partners; while others expressly prohibit any use of school IP by athletes in their NIL activities.
As athletes enter into endorsement agreements with companies (NIL deals), they may be featured in advertising or engage as a brand influencer through social media. In so doing, they must carefully navigate the school NIL policy and the use of school IP. Even if they do not use official school IP, how they represent their affiliation with their respective universities can still create challenges. One way in which their affiliation may be recognized or acknowledged is from the apparel they wear in their advertising and social media posts.
NIL Deals and University Intellectual Property
While in one of the earliest national NIL deals, Dr. Pepper saw it advantageous or necessary to feature Clemson QB D.J. Uiagalelei in a generic “Clemson” orange football jersey[2], other companies and brands may find that there is a genuine appeal to aligning with student-athletes without incorporating any school colors or uniforms in their advertisements. However, a large part of an NIL deal is the opportunity for a brand to align with both the athlete and the school.
However, if use of school IP is not permitted, or if the company cannot afford an official sponsorship or licensing arrangement, or if a competitor has exclusivity for a sponsorship category, the company can choose to feature the athlete in what we affectionately refer to as “pajama-wear” – generic uniforms void of school IP but showing the school color or color combination. One such example is Chris Rodriguez, Jr., University of Kentucky football player, who was featured on a billboard and festival signage in Lexington, Kentucky promoting Bluegrass Roofing & Consulting. Rodriguez is featured fully clad in a blue and white football uniform (including the checkerboard design on the shoulder) and helmet but without any official marks or logos of the University of Kentucky.[3]
In scenarios such as this, might a university have a potential cause of action against an advertiser for use of their university colors or uniform color schemes? For color to meet the legal requirements of a trademark, it must possess those basic legal requirements of distinctiveness, source identification, and non-functionality. The color or color combination must have acquired what is referred to as “secondary meaning”: a mental association in the mind of the consumer that links the color(s) with a single source.[4] Think the iconic Tiffany blue for Tiffany & Co. and the combination of green-and-yellow on John Deere tractors.
University Color Schemes and Trademark Infringement
The Fifth Circuit’s decision in 2008 in Board of Supervisors of LSU, et. al. v. Smack Apparel Company[5] provides some guidance for a Lanham Act claim for trademark infringement based on uniform color schemes. In Smack, LSU, Oklahoma, Ohio State, and USC sued an apparel company for using the schools’ colors on t-shirts. The universities asserted that their color combinations functioned as source identifiers, were distinctive colors used to represent their universities, and thus had acquired the requisite secondary meaning to warrant trademark protection. The Fifth Circuit affirmed the trial court’s finding that the universities had established secondary meaning in their color schemes and designs. One important fact to note though is that, in addition to using the color combinations, Smack Apparel also included references to the universities’ athletic achievements that further reinforced the connection between the t-shirt and the respective universities (i.e.,“Bourbon Street or Bust” referring to a team’s upcoming appearance in the Sugar Bowl).
Having established that the schools had protectable trademarks in their color schemes, the next step was to assess whether Smack’s unauthorized usage violated § 1125 of the Lanham Act. Section 1125 prohibits false or misleading representations that are “likely to cause confusion” as to the origin, sponsorship, or approval of the goods, services or commercial activity.[6]
In assessing “likely to cause confusion,” the court applied the so-called “digits of confusion” which include 1) the type of mark, 2) similarity of the marks, 3) similarity of the products or services, 4) the identity of the retail outlets and purchasers, 5) the identity of the advertising media used, 6) the defendant’s intent, 7) evidence of actual confusion and 8) sophistication of the buyer.[7] In this particular case, virtually every factor weighed in favor of the plaintiff universities, particularly given that both plaintiffs and defendants were selling the same product (t-shirts) in the same retail environments to the same consumers. The court also placed strong weight on the intent of the defendant (digit 6); in fact, the defendant admitted as much that they “used the school colors and ‘other indicia’ with the intent of identifying the university plaintiffs as the subject of the message expressed in the shirt design.”[8] On the heels of the universities’ victory in Smack Apparel at the trial court level, this precedential case was followed by a similar decision in Texas Tech University v. Spiegelberg[9] (use of red and black color scheme on T-shirts found to cause consumer confusion).
Applying Smack to NIL deals
Turning now to the unauthorized use of university color schemes in NIL advertising campaigns, we now ask to what extent Smack Apparel might apply and support a university’s cause of action?
The initial step in this inquiry requires the university to establish that its color scheme has in fact acquired secondary meaning such that it has a valid trademark to protect in the first place. While Smack Apparel and Spiegelberg provide precedent, it is by no means a slam dunk. There has been a myriad of non-sport cases, as well as one college case in particular (University of Kansas and Kansas Athletics v. Sinks)[10] refusing to acknowledge that a color or color scheme has acquired secondary meaning. Similarly, the Trademark Trial and Appeal Board (TTAB) determined that the University of Alabama’s houndstooth pattern lacked acquired distinctiveness to function as a source or sponsorship indicator.[11] Even though this decision was later vacated due to a settlement between the parties, the TTAB analysis suggests universities may have challenges to establish secondary meaning in their color schemes or uniform designs/patterns.
Let’s assume however, for purposes of this discussion, that the university has successfully established secondary meaning in its color scheme and hence brings a cause of action against an advertiser using an athlete adorned in its color scheme? The next hurdle would be to establish a “likelihood of confusion” amongst the relevant consumers. This, too, is no chip shot! As noted in Smack Apparel, likelihood of confusion “is synonymous with a probability of confusion, which is more than a mere possibility of confusion.”[12]
The type and similarity of the mark (digits 1 and 2) are typically going to squarely favor the university. However, the first major hurdle arises related to the nature of the product, method of advertising, and distribution channels (digits 3-5). Smack involved a tangible product (t-shirts) offered for sale through retail outlets to local sport fans. Hence, in seeking to apply digits 3-5 in that case, there was strong overlap between the university’s product, advertising, and distribution and that of Smack. The university was selling t-shirts in the same retail locations to the same consumers, and hence it is also much easier to grasp the economic harm or loss here for the university.
The NIL activities in scenarios such as Bluegrass Roofing is not as clean a comparison and the similarities not as stark when you consider the use of a color scheme in a billboard advertisement for roofing services. Bluegrass is by and large marketing a different service, in a different place, to a different consumer. The much closer analogy to Smack Apparel would be if a company were providing educational services or sport entertainment services and thus creating more likelihood of confusion with what the University of Kentucky does. And even more dubious example would be a company that is providing products or services similar to an official university partners’ products or services, but dissimilar to any products or services of the university.
Another important factor in Smack Apparel was that the court reasoned that it was not only the color scheme that created the likelihood of confusion, but it was the color scheme in concert with the other messaging that solidified the association between the products and the universities. One argument could be that the mere identification or recognition of the athlete as an athlete at a particular university in connection with that athlete’s NIL activities is sufficient “other indicia of the university” to trigger a potential trademark infringement claim if the athlete incorporates the university colors and color schemes in their promotional activities. Conversely, one could argue that so long as the athlete was not using official school IP or promoting similar commercial products as the university produces, such as, t-shirts, apparel, souvenirs, caps, etc. – the mere fact that the athlete’s association with the university is recognizable would not satisfy the likelihood of confusion standard for proving trademark infringement.
Finally, the court in Smack Apparel placed a heavy weight on the defendant’s intent to cause consumer confusion. This construct has always been at the core of traditional “ambush marketing” as well (an intentional effort to confuse consumers as to who is the property’s official sponsor), but it is also difficult to establish this digit of confusion (absent an admission from the defendant).
Conclusion
In sum, it will be an uphill battle from a legal standpoint for universities bringing trademark infringement claims based on the unauthorized use of a university’s color scheme in athlete NIL advertising. The burden is on the university to establish acquired distinctiveness for their color schemes and to prevail on the digits of confusion analysis. Additionally, the use of color schemes in advertising (e.g. a social media post) is far different than on tangible products (e.g. t-shirts/jerseys). Even though the legal path may be difficult, the university is not without leverage. Obviously most athletes would not want to risk the university’s ire for partnering with an advertiser who engages in potentially questionable or disruptive marketing practices. However, preparing and litigating these types of cases (often requiring robust consumer surveys) is both time-consuming and costly. Most universities are reticent so sue local businesses … especially when that lawsuit would implicate that university’s own student-athlete. Conversely, at a time when universities are actively engaged in lucrative licensing programs dependent upon the value of their intellectual property, and the potential importance of asserting trademark protection for color and color schemes to that overall value proposition, it is not a good time to be acquiescing when infringing activities occur. We suspect that, as the NIL marketplace continues to expand, there will arise “the perfect storm” scenario where we’ll get to see Smack Apparel put to use![13]
Professor Steve McKelvey, J.D., is Department Chair of the Mark H. McCormack Department of Sport Management in the Isenberg School of Management at the University of Massachusetts Amherst. Anita Moorman, J.D. is a Professor in the Sport Administration Program at the University of Louisville. This article has been adapted from a presentation made at the 36th Annual Sport and Recreation Law Association (SRLA) Conference in Atlanta last month.
[1] Tracker: Name, image and likeness legislation by state. (2022, March 10). Business of College Sports. https://businessofcollegesports.com/tracker-name-image-and-likeness-legislation-by-state/
[2] South Carolina’s NIL state law was thought to prohibit athletes from using institutional trademarks, but Clemson’s NIL policy at the time expressly permitted athletes to wear clothing in advertising featuring Clemson’s purple and orange colors so long as school IP was not used. Clemson University. (2021). Clemson compliance: Student-athlete education – eligibility edition. https://clemsontigers.com/nilinfo/
[3] Bluegrass Roofing & Consulting. (2021a, July 27). https://www.facebook.com/bluegrassroofingandconsulting/photos/170978881765605. UK’s NIL policy only permits student athletes to use the university’s trademark consistent with its licensing program.
[4]Wal-Mart Stores, Inc. v. Samara Bros. Inc., 529 U.S. 205 (2000).
[5] 550 F.3d 465 (5th Cir. 2008).
[6] Lanham Act, 25 U.S.C. § 1125
[7] Westchester Media v. PRL USA Holdings, Inc., 214 F. 3d 658, 663 (5th Cir. 2000)
[8] Smack Apparel, at 661. See also, Univ. of Ga. Athletic Ass’n v. Laite, 756 F.2d 1535 (11th Cir. 1985), on extra weight afforded defendant intent: “[T]here can be no doubt that Laite hoped to sell ‘Battlin Bulldog Beer’ not because the beer tastes great, but because the cans would catch the attention of University of Georgia football fans.” Id. at 1545.
[9] Texas Tech University v. Spiegelberg, 461 F. Supp. 2d 510 (N.D. Tex. 2006).
[10] 2008 U.S. Dist. LEXIS 23765 (D. Kan 2008), jury verdict, Case No. 06-2341-JAR (D. Kan. 2008) (in addressing the issue of protection of Kansas’s color scheme as used the t-shirts, the court held that “…the distinctiveness acquired by plaintiff’s for its mark does not dictate a finding of liability against defendants for every blue and red shirt it produces with a possible reference to KU on it.”).
[11] Board of Trustees of the University of Alabama v. Pitts, 2013 TTAB LEXIS 370 (TTAB 2013). https://ttabvue.uspto.gov/ttabvue/ttabvue-91187103-OPP-71.pdf
[12] Smack Apparel at 478, citing Westchester Media v. PRL USA Holdings, Inc.,214 F.3d 658, 663-64 (5th Cir. 2000).
[13] See, generally, John Grady and Steve McKelvey. Trademark Protection of School Colors: Smack Apparel and Sink decisions trigger color-ful legal debate for the collegiate licensing industry. Journal of Legal Aspects of Sport, 18(1), 207-242.
