Showing Your School Spirit: Why University Color Schemes and Indicia Do Not Deserve Trademark Protection
2012; Oxford University Press; Volume: 92; Issue: 1 Linguagem: Inglês
ISSN
0006-8047
Autores Tópico(s)Intellectual Property Law
ResumoINTRODUCTIONIf you went to college, chances are that you own a shirt or two1 bearing the school's name or logo. The shirt probably bears at least some of the school's colors. Universities have registered their marks for decades - for example, in 1982, Louisiana State University (LSU) filed for registration of the mark LSU with the Patent & Trademark Office for use on shirts, hats, accessories, and Christmas tree ornaments.2 The University of Texas registered several trademarks in the early 1980s as well.3 More recently, universities have started to file for registration of picture marks.4 Universities then license their marks to manufacturers and other entities for use on merchandise. In 2010, the University of Texas - the Collegiate Licensing Company's (CLC) top earner since 20055 - made $10.1 million in merchandising royalties.6 CLC estimates that the retail industry for collegiate products is worth $2.7 billion.7 With standard university royalty rates estimated at 7.5% to 8%,8 schools can make a lot of money offof two or three letters.But what about a purple and gold shirt that says Bleed Purple and Gold? Or one that says Maravich Maniacs? Or Beat 'Bama!? Should a manufacturer have to pay a licensing fee to the university if the manufacturer does not use a registered mark? And should customers have to pay more? One might answer, yes, the manufacturer is getting a free ride at the university's expense; the manufacturer is only making money by referring to the wellknown university, and it should have to pay for that reference. Another reason to say yes is that the phrases are trademarks, even if they are not registered. Both arguments have been successful in universities' attempts to prohibit the sale of these and other unlicensed shirts.9This Note explores the implications of granting protection to universities' unregistered color schemes and indicia10 and ultimately concludes that manufacturers should be able to sell merchandise bearing these marks without paying licensing fees to the universities. Part I introduces trademark law and precedent. Part II explains why trademark precedent in merchandising cases does not adhere to trademark policy. Part III presents arguments that universities have offered for why they should receive protection over these marks. Part IV refutes these arguments and shows instead why trademark law should not grant universities exclusive rights over color schemes and indicia. Finally, Part V offers other possible theories that universities might use to protect the revenue that they derive from their marks.I. THE STARTING LINE-UP: TRADEMARK LAW, POLICY, AND PRECEDENTTrademark law has a rich and exciting history in the context of sports merchandising. In this Part, I provide a brief introduction to trademark law and discuss several major cases that established a property right in athletic teams' trademarks. I then analyze the more recent cases to show how courts have expanded the subject matter of trademark rights to colors and other unregistered indicia.A. The Offensive Line: Trademark Law and the Lanham ActAnglo-American trademark law, as it evolved at common law, gave mark owners narrow rights; the law's immediate purpose was to protect the consuming public from the fraudulent use of a manufacturer's mark by a competitor.11 As a corollary, the law also protected the manufacturer's business from injury.12 The first modern federal trademark law, passed in 1905, remained narrow and was tempered by countervailing rights, as the right to use one's name.13 Additionally, trademark law prohibited the defendant's use of the mark on competing goods only if the use confused customers to the point that it diverted customers away from and harmed the plaintiff.14Current trademark law, embodied in the Lanham Act of 1946,15 gives to trademark holders two vehicles with which to bring infringement actions. First, § 32 allows recovery for use of a copy of a registered mark when such use is likely to cause confusion. …
Referência(s)