LSU and The Collegiate Licensing Company have teamed up with Ohio State University, University of Southern California and University of Oklahoma to end a dispute over a T-shirt manufacturer’s use of their school colors. The four universities and the licensing company challenged the legality of Smack Apparel’s football game day T-shirts in June 2004. “The case originated over some bowl games that involved these schools,” said Charlie Henn, an attorney with the Kilpatrick Stockton firm who represents the plaintiffs. “It’s the combination of the colors, the scores and the references to the city that makes it an infringement of LSU’s rights.” A new federal court decision prohibits unlicensed manufacturers from using university-trademarked color schemes with other identifiers that suggest a university approved of the product. “They may have not used our school logo, but they used our school colors in connection with things that referenced LSU – the scores of football games played that year for example,” said Staci Pepitone, assistant to the vice chancellor for finance and administrative services. Pepitone said another Smack Apparel T-shirt will make an appearance during the second phase of the case. The shirt reads “Baton Rouge: A Drinkin’ Town…With A Football Problem.” “It does not say LSU anywhere, but everybody assumes it’s an LSU shirt,” Pepitone said. “They used purple and gold and football imagery. It’s trying to create an association with LSU. We wouldn’t approve of a shirt like that. Because that specific shirt was not part of the original suit that shirt can still be sold.” Companies and universities use trademarks such as school color schemes to differentiate their approved licensed products from others. “Trademarks aren’t just ornamental or decorative designs used to make items appealing to customers,” said Lee Ann Lockridge, assistant law professor. “They are indications of the source or sponsorship of the goods. Trademarks are intended to provide protection both to consumers and to producers.” Lockridge said judges and juries test trademark infringement by determining its “likelihood of confusion.” “A judge or jury determines whether, as a result of the defendant’s use of a trademark that is similar to the plaintiff’s trademark, consumers were likely to be confused, make a mistake or be deceived as to an affiliation, connection or association between the defendant and the plaintiff,” Lockridge said. Michael Drucker, CLC vice president and associate general council, said trademark owners license the manufacturers rather than the retailers that sell the products to consumers. “When you can’t resolve it without litigation, trademark owners step up to the plate and do what’s in their best interest of their rights,” Drucker said. Henn said the court’s decision will give other schools the opportunity to seek royalties from companies that sell unlicensed products, but damages and financial issues will not be discussed until November. “Smack could have to turn over its profits from the shirts,” Henn said. “Smack could have to pay royalties on sold shirts, or they could have to reimburse the school for the attorney fees.” Because the University owns trademark rights to the purple and gold color scheme, new issues with the purple and gold Confederate flag may arise. “Trademark rights absolutely could affect the controversy,” Lockridge said. In a statement Chancellor Sean O’Keefe said, “The University has actively discouraged the sale of the flag by commercial establishments and is seeking options to prohibit the use of the University colors in this manner.” Lockridge said the options O’Keefe referred to were likely trademark claims. “Trademark law wouldn’t affect personal, non commercial display of flags that have already been sold, but trademark law might enable LSU to prohibit additional sales of flags in the future,” Lockridge said.
—–Contact Angelle Barbazon at [email protected]