Upon arriving at work one morning, with their to-do lists already filled with dozens of tasks to be completed, their email and voicemail inboxes overflowing with messages to be returned, and not a spare moment anticipated during the busy day ahead, the attorney for a school district and the athletic director for the district’s secondary school – Sports Powerhouse High (SPH) – find hard-copy letters in their incoming mail, both of which when opened reveal the following heading in a large, bold font: “CEASE AND DESIST.”
The letters are from the Collegiate Licensing Company (CLC), a firm that manages the trademark licensing programs for more than 200 large universities and assists those institutions with brand development, management and protection related to university marks, including sports team nicknames, logos, mascots, colors and other insignia used on apparel and merchandise sold by mark licensees. The letters were sent on behalf of one of CLC’s clients – Big State University (BSU) – after CLC brand enforcement personnel discovered that BSU’s sports nickname, the Broncos, along with its logo, a distinctive, swooping caricature of a horse’s head in the school colors of purple and gold, are being used by Sports Powerhouse High.
The cease-and-desist letter demands the cessation of use by SPH of the BSU nickname and logo. An addendum attached to the letter includes dozens of photographs of various uses of the bronco nickname and logo on the SPH campus, including on signage at the entrance to the driveways leading onto school property, on the outside of the school building, on walls and other surfaces throughout the high school, on the outer façade of its football stadium, on the field turf inside the stadium, on the stadium scoreboard and on signage throughout the stadium.
The addendum also states the nickname and logo are in similar usage in baseball, softball and soccer facilities; and on the walls, scoreboards and hardwood flooring in three SPH gymnasiums. Also included in the addendum are pictures of the BSU nickname and logo on SPH sports uniforms, warmup apparel, football helmets and other athletics equipment and apparel.
One photo is of the school’s mascot on the sideline of a football game – a student inside a custom-made horse costume – and another photo is of a statue of a bucking bronco outside the front doors to the school. Finally, the addendum contains screenshots of the BSU nickname and logo on the SPH website and official social media sites, along with snapshots of the nickname and logo appearing onscreen during broadcasts of SPH sports events online and on local television channels.
The school attorney and the SPH athletic director are surprised and confused by the letter. BSU is located more than 1,000 miles from SPH; the high school has been using the nickname, logo and mascot for more than 50 years with no prior communications during those decades from BSU regarding any alleged infringement; and an Internet search reveals that there are at least a dozen other universities and several hundred high schools nationwide using broncos, mustangs and other horse-related nicknames, logos and mascots.
How can SPH’s nickname, logos and mascot be causing any negative impact whatsoever on the brand of a university halfway across the country? Has any student at SPH or any fan at a SPH sports event ever jumped to the mistaken conclusion that the school is somehow affiliated with BSU? Has any consumer ever purchased an article of SPH-logoed apparel at a local grocery store or at a booster club fundraiser incorrectly thinking it was a BSU-logoed item or was licensed by BSU?
Although a university would certainly seem to have an interest in preventing the sale in its immediate geographic region of counterfeit, unlicensed products bearing marks identical to its own which are being sold for the sole purpose of stealing sales from the college, why would BSU expend time and effort harassing a distant educational institution such as SPH that has no such bad intent? Would BSU actually file a lawsuit against SPH and inflict the costs of litigation on a high school whose mission is focused on the betterment of the lives of young people? Wouldn’t the publicity attendant to such a suit, portraying a large university as a bully harassing a high school, do far more damage to the BSU brand than the incidental use of marks similar to its own by SPH?
Scope of the Issue
In the past five years, a flood of challenges have been made by universities to the use of nicknames, logos, colors, mascots and other insignia by high schools. Cease-and-desist letters have been sent by dozens of colleges to hundreds of school districts across the country, including ones from Penn State University to Buna High School (Texas), the University of Texas at Austin to Gardner Edgerton High School (Kansas), the University of Notre Dame to Cathedral High School (New Mexico), the University of Wisconsin to Woodlands High School (Texas), the University of Michigan to Round Lake High School (Illinois), the University of Arizona to Woodrow Wilson High School (Texas), West Virginia University to Waubonsie Valley High School (Illinois), the University of Florida to Glades Day School (Florida), the University of Pittsburgh to Whitmer High (Ohio), Florida State University to Southeast High School (Florida), Western Michigan University to Barrington High School (Illinois), the University of Missouri to Harrisburg High School (South Dakota), and Georgia Southern University to Freedom High School (Virginia). In some instances, a single university has sent cease-and-desist letters to as many as 50 high schools using nicknames, logos or mascots even remotely similar to those of the college.
The rise in concern by colleges over the use of their trademarks has been attributed to the increased revenues derived by universities from logoed apparel and merchandise, the increased visibility of high school marks on the Internet through school websites and social media, the increased monetization of high school marks through the sales of apparel and merchandise by national retailers and online stores, and the increased number of high school games broadcast nationally, locally and on the Internet and through which school nicknames, logos and mascots are viewed by larger audiences than at any time in the past.
The cost to school districts of responding to a university trademark challenge can be great. In cases where universities are willing to grant licenses to high schools, sometimes for as little as $1 per year with accompanying restrictions on the extent of intellectual property use by the school, the cost of responding to a cease-and-desist letter and negotiating a compromise may total only a few thousand dollars in legal fees. However, when colleges are unwilling to compromise and a school acquiesces to its demands, the process of transitioning from the use of old to redesigned nicknames, logos and mascots, and integrating them into school stationary, websites, signage, facilities, scoreboards, uniforms, equipment and additional forms of display, has been reported by schools to cost up to $100,000. And if a school would refuse to comply with a cease-and-desist letter, the process of fully litigating a trademark challenge could cost a school hundreds of thousands of dollars.
Trademark & Copyright Law
Trademark infringement claims generally are based on one of three legal theories. The first is a “likelihood of confusion” concept – the idea that the infringer, through the use of the senior holder’s marks, creates among consumers confusion over the origin of the goods or services in question. For a university to be successful in establishing such liability against a high school, it must prove that there is a significant likelihood of confusion between its marks and those used by the school being challenged. Applying the criteria used by courts in analyzing such claims (too lengthy of an evaluation to be included herein), it appears unlikely that colleges would prevail against high schools in most such lawsuits.
In fact, despite numerous successful suits against small businesses or individuals selling counterfeit, pirated merchandise bearing university marks, no college has ever attempted to litigate a likelihood-of-confusion trademark case against a school district. Most high schools simply acquiesce to the demands of universities set forth in cease-and-desist letters because of the unequal bargaining power inherent in the risk-reward downside of potentially high-cost litigation.
A second trademark infringement legal theory is a “dilution” concept – the idea that if the senior mark holder fails over time to take action to protect its intellectual property, the marks might become so commonplace as to be considered generic and therefore no longer protectable. Dilution is also premised on the idea that if widespread infringement of famous marks occurs, then the brand value of the famous marks will be diminished in value. Applying the criteria used by courts to evaluate dilution, it appears more likely that a university might succeed against a high school with a dilution argument than with a likelihood-of-confusion claim, although once again, no college has ever attempted to litigate a trademark dilution case against a school.
The third common trademark infringement legal theory is a “tarnishment” concept – the idea that the use of marks by an alleged infringer on inappropriate products or the involvement of the alleged infringer in a scandal of some sort might damage the value of the marks to the senior holder. For instance, if a high school athletics program using the nickname, logo and mascot of a university were to be involved in an incident of hazing, sexual harassment or other misconduct resulting in extensive media coverage, the university might be damaged by association. Again, however, no college has ever attempted to litigate a trademark tarnishment case against a school.
Finally, allegations of trademark infringement often include the related claim of copyright infringement for unlicensed reproduction of the artwork for the design of a logo or mascot. Proof of copyright infringement requires only a showing of access by the infringer to the original, copyrighted work and substantial similarity of the reproduction to the original. Again, however, despite numerous successful copyright suits against small businesses or individuals selling counterfeit, pirated merchandise bearing university-owned artwork, no college has ever attempted to litigate a copyright infringement lawsuit related to logos or mascots against a school district.
Lee Green is an attorney and a professor at Baker University in Baldwin City, Kansas, where he teaches courses in sports law, business law and constitutional law. He is a member of the High School Today Publications Committee. He may be contacted at Lee.Green@BakerU.Edu.