Sine Qua Non: Trademark Infringement, Likelihood of Confusion, and the Business of Collegiate Licensing

Journal of Intellectual Property Law Volume 11 | Issue 2 Article 8 March 2004 Sine Qua Non: Trademark Infringement, Likelihood of Confusion, and the Business of Collegiate Licensing C. Knox Withers Follow this and additional works at: https://digitalcommons.law.uga.edu/jipl Part of the Intellectual Property Law Commons Recommended Citation C. Knox Withers, Sine Qua Non: Trademark Infringement, Likelihood of Confusion, and the Business of Collegiate Licensing, 11 J. Intell. Prop. L. 421 (2004). Available at: https://digitalcommons.law.uga.edu/jipl/vol11/iss2/8 This Notes is brought to you for free and open access by Digital Commons @ Georgia Law. It has been accepted for inclusion in Journal of Intellectual Property Law by an authorized editor of Digital Commons @ Georgia Law. Please share how you have benefited from this access For more information, please contact . Withers: Sine Qua Non: Trademark Infringement, Likelihood of Confusion, an SINE QUA NON: TRADEMARK INFRINGEMENT, LIKELIHOOD OF CONFUSION, AND THE BUSINESS OF COLLEGIATE LICENSING I. INTRODUCTION Growing up, I thought that college football was the greatest game on earth. I based my reasoning primarily on the fact that college athletes played for the love of the game, not the motivation of a weekly paycheck. I now realize, however, that my earlier perspective was naive; what I have seen on television and read in the daily sports section has taught me otherwise. Though I still consider college football to be the world's greatest sport, the truth is that money makes the world go 'round, and college athletics are not immune from this reality. In fact, in the world of college sports, money plays an especially important role. Take football as an example. A romantic purist often fails to consider the incredible costs associated with fielding a top-notch team. Upon careful examination, however, even the most idealistic fan cannot ignore the tremendous sums expended annually for luxuries-nowadays necessities-such as travel expenses, facility improvements, coaches' salaries, and of course, the scholarships which permit outstanding athletes to perform for the nation's entertainment. How do institutions of higher learning afford these costs? Ticket sales, concession proceeds, booster donations, and television revenues are the obvious answers. One of the largest and most often-overlooked sources of revenue available to these institutions, however, is the sale of officially licensed collegiate merchandise. For many years, the sale of collegiate products was an untapped gold mine; colleges and universities have only recently begun to realize the extensive financial benefits of licensing programs.' The increased popularity of collegiate merchandise resulted from the advent of televised college sports during the 1970s and its growth in that medium during the 1980s.2 Indeed, the ubiquity of collegiate ' Robert Lattinville, Logo Cops: The Law and Budness of ColftiateiJcnn, 5 KAN. J.L & PUB. POL'Y 81, 81 n.4 (1996) (citing Harvard University's application for a trademark of its name 355 years after its founding as evidence of the "recency of universities' awakening to the benefits of licensing"); see alro Bd. of Trs. of Univ. of Ark. v. Profl Therapy Servs., Inc., 873 F. Supp. 1280, 1283-84, 34 U.S.P.Q.2d (BNA) 1241, 1242 (W.D. Ark. 1995) (noting that local merchants were responsible for most of the unauthorized use of college marks prior to the 1970s, but that during the 1980s many institutions began instituting licensing programs to protect their marks). 2 Id at 81 (noting that by the mid-1980s, increased television coverage of college sports motivated many colleges and universities to establish licensing programs in order to exercise control over their marks); see also Bd of Trs. of Univ. of Ark., 873 F. Supp. at 1284 (stating that television coverage of collegiate sporting events "led to an enormous boom in the production and sale of goods bearing collegiate marks"). Published by Digital Commons @ Georgia Law, 2004 1 Journal of Intellectual Property Law, Vol. 11, Iss. 2 [2004], Art. 8 J. IA'7TLL PROP.L [Vol. 11:421 merchandise in modem American culture evidences the popularity of college athletics. For example, many people affix collegiate license plates, spare tire covers, and bumper stickers to their automobiles or hang flags from their front porches announcing their allegiance to a particular school. Nowadays, more and more schools are turning to these programs as a valuable source of revenue. Professional sports leagues began to establish profitable licensing programs years ago, and colleges have followed their lead, surpassing most of their professional counterparts in licensing revenue in recent years. In 1995, sales of collegiate licensed merchandise exceeded $2.5 billion, eclipsing the revenues of every major professional sports league except the NFL.' In 1999, that figure climbed to $2.7 billion.4 Despite the tremendous revenue that licensed collegiate merchandise provides, it nevertheless engenders problems. The focus of the aforementioned statistics was the sale of licensed merchandise, but there is also a market for the sale of unlicensedcollegiate products. Every sale of these unlicensed products deprives the licensing college or university of revenue because colleges and universities own valuable assets in their trademarked names, logos, and other materials.' Imagine that you are tailgating one Saturday morning before your school's big game. A merchant approaches and asks if you are interested in purchasing that week's "game shirt" featuring your school's official logo on the front and a picture of your mascot trampling, swatting, beating, or otherwise harassing your opponent's mascot on the back. Is that product licensed by your school? Does it matter? And perhaps most importantly, should it matter? This Note explores the legal implications of collegiate licensing. Part II examines trademark law as it applies to college and university names, logos, and symbols and considers the applicable case law that forms the history of collegiate trademark protection. Part III provides a brief discussion of the business of collegiate licensing and the enforcement of trademark rights. Part IV discusses the decisive issue of "likelihood of confusion" in two different lines of cases. Moreover, it argues that in many situations where obvious violations of trademark rights appear to have occurred, the essential element of "likelihood of confusion" is actually lacking, and thus, colleges and universities have no remedy against the unlicensed users of their marks. Finally, Part V addresses the reasons why, in many cases, it should not matter that a particular item bearing a collegiate Michael Hiestand, College MerchandiseSaks Near Head of Class,USA TODAY, July 25, 1995, at 3C. ' Robin Hardin & Steven McClung, Collegiate Sports Information: A Profile of the Profession, PUB. REL. Q., July 1, 2002, at 35. See, e. (...truncated)