Friday, April 11, 2008

Rock Chalk Champions and T-Shirt Trademark Issues

My hometown team, the Kansas Jayhawks, won the National Championship on Monday. Having grown up about two blocks from campus, my parents started taking me to basketball games when I was a small child, and I was ecstatic with their win.

In honor of their victory, the American Lawyer conducted an interview with KU's general counsel, available here. He discusses how he got the job, the game, and celebrations after the game, accurately stating: "It was just a tremendous, unbelievable game."

Among the legal issues currently being litigated by KU (though not discussed in the interview) is one lawsuit against a Lawrence, Kansas retailer that sells T-shirts – Many of the Joe College T-shirts have silly or irreverent slogans related to Kansas athletics, such as "Super Mario 15," Moody Maniacs," "Kansas," "Muck Fizzou," "Our Coach is Phat," or "Hawk KUTIE."

The university sued the retail store for trademark infringement and dilution, and unfair competition, alleging that over 140 shirts were in violation of the trademark laws. On a motion for summary judgment, the court ruled (download ruling as pdf) that a few of the shirts presented a likelihood of confusion with the licensed shirts as a matter of law, based on the color of the shirts, the font type, and the use of terms such as "KU" or "Kansas." For the remaining shirts, the court found that there remained factual issues for trial, which is set for June, as reported in the KC Star.

In setting forth a list of non-exhaustive factors in determining trademark infringement, the court listed: the degree of similarity between the marks, the intent of the alleged infringer, evidence of actual confusion, similarity of products and manner of marketing, the degree of care likely to be exercised by purchasers, and the strength or weakness of the marks.

By selling a product that is very similar to a popular brand, a retailer may increase the demand for its product. If the product is too similar, however, the retailer may open itself to potential liability. Most retailers try to steer well clear of potential liability. For Joe College, its business model of pushing the envelope on trademark law seems to have been successful in terms of sales, but if the jury finds that it has pushed a little too far, it will likely be forced to change its model.

Update 7/08 -- The jury found that some T-shirts infringed, while others did not, and it was unclear where they drew the line. A discussion of the decision and a link to the jury verdict is available here (LJW) and here (KC Star).


The Law Firm of Kotchen & Low LLP - Civil Litigation, Counseling, and Representation Before Government Agencies

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