Crossing the Line: The Collegiate Licensing Company's Overindulgent Attempt to Limit Small Businesses

Journal of Intellectual Property Law Volume 19 | Issue 2 Article 12 March 2012 Crossing the Line: The Collegiate Licensing Company's Overindulgent Attempt to Limit Small Businesses' Online Marketing Techniques Based on Frivolous Claims of Trademark Infringement Lauren T. Warbington Follow this and additional works at: https://digitalcommons.law.uga.edu/jipl Part of the Intellectual Property Law Commons Recommended Citation Lauren T. Warbington, Crossing the Line: The Collegiate Licensing Company's Overindulgent Attempt to Limit Small Businesses' Online Marketing Techniques Based on Frivolous Claims of Trademark Infringement, 19 J. Intell. Prop. L. 517 (2012). Available at: https://digitalcommons.law.uga.edu/jipl/vol19/iss2/12 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 . Warbington: Crossing the Line: The Collegiate Licensing Company's Overindulge CROSSING THE LINE: THE COLLEGIATE LICENSING COMPANY'S OVERINDULGENT ATTEMPT TO LIMIT SMALL BUSINESSES' ONLINE MARKETING TECHNIQUES BASED ON FRIVOLOUS CLAIMS OF TRADEMARK INFRINGEMENT Lauren T Warbington* TABLE OF CONTENTS I. INTRODUCTION II. B ACK G RO UN D ............................................................................................. A. HISTORY OF THE LANHAM ACT......................................................... B. TRAD EM ARK LAW ................................................................................ ........................................... 1. Trademarks Generally .............................. 2. GeographicalTerms.......................................................................... 3. Trademark Infringement................................................................... 4. Trademarks and the Internet............................................................ C. D. 519 520 520 521 521 524 527 529 FAIR U SE ................................................................................................ 532 IMPORTANT TRADEMARK CASES DISCUSSING COLLEGIATE COLORS AND MARKS....................... .................. 534 1. University of Georgia Athletic Association v. Laite............... 534 2. Board of Supervisors for Louisiana State University Agricultural & Mechanical College v. Smack Apparel............ 534 E. MARKETING TECHNIQUES USED BY BOUTIQUES.......................... 536 J.D. Candidate 2013, University of Georgia School of Law. First and foremost, the author wishes to thank God for blessing her with the opportunity and ability to write this Note. The author would also like to thank her parents, Teel and Jeanie Warbington, to whom this Note is lovingly dedicated and whose patience, guidance, and wisdom were invaluable throughout the writing of this Note. Additionally, she wishes to thank all of her friends and family for their eternal love and support. Finally, the author wishes to thank her fellow joarnal members for their invaluable suggestions and edits. 517 Published by Digital Commons @ Georgia Law, 2012 1 Journal of Intellectual Property Law, Vol. 19, Iss. 2 [2012], Art. 12 518 J. INTELL PROP. L III. ................................................. ANALYSIS A. CLC 0; BOUTIQUES 1-PURE MARKETING USE VIA THE ................................................... INTERNET 537 1. Goals of Trademark Law................................................................. 2. Trademarks and the Internet........................ 538 539 B. C. IV. [Vol. 19:517 538 540 CLC 0; BOUTIQUES 2-FAIR USE DEFENSE...................................... GAME OVER: CLC 0; BOUTIQUES 3-CLEAR DISTINCTION FROM 542 ........................................... PRECEDENT CONCLUSION .......................................................................... https://digitalcommons.law.uga.edu/jipl/vol19/iss2/12 543 2 Warbington: Crossing the Line: The Collegiate Licensing Company's Overindulge 2012] CROSSING THE LINE 519 I. INTRODUCTION Picture this: it is Saturday in Athens, Georgia, on a cool, fall day, and the University of Georgia's Bulldogs have just run onto the field in beautiful Sanford Stadium. While the Bulldogs are preparing for kickoff, over 90,000 fans dressed in their finest red and black ensembles swarm around the stadium, ready to cheer on their favorite team. As any true Bulldog fan knows, wearing red and black on game day is practically a religious experience in Athens, Georgia. Those symbolic colors represent a time-honored tradition of showing school spirit at Sanford Stadium. Local boutiques recognize the importance of wearing team colors on Saturdays in Athens, and with that understanding, those native businesses facilitate this sea of red and black by planning months in advance to offer a multitude of fashionable game day options to keep the Bulldog faithful looking their best for upcoming football games. How do the small business owners of local boutiques raise awareness about their fashion selections for fans of college football teams in surrounding areas? Many boutique owners have answered this question by utilizing their store's website to group select pieces together according to school colors and to market them based on a short, collegiate identifier that links fans to the school of their choice. Unfortunately, this option is being deemed unacceptable by the Collegiate Licensing Company (CLC), which is "the nation's leading collegiate trademark licensing and marketing company, assisting collegiate institutions in protecting, managing and developing their brands."' By clustering a variety of dresses, skirts, blouses, pants, and shirts together on their website based on collegiate colors and presenting those clusters to consumers in the form of a drop down menu or sidebar that lists an abbreviated version of each institution (for example, the University of Georgia would be simply denoted by the term Georgia), boutiques and stores afford their customers a unique opportunity to view all potential game day options available at a particular establishment together in one concise place: on the boutique or store's website. 2 This clever and efficient marketing scheme is being targeted by the CLC and is being challenged as trademark infringement via the issuance of strongly worded cease and desist letters. To fully evaluate all of the nuances associated with the above-mentioned set of facts, this Note begins with a deeper look into trademark law and how it 1 About CLC, CLC.coM, http://www.clc.com/clcweb/publishing.nsf/Content/aboutclc.html (last visited Apr. 12, 2012). 2 See general# Kickoff Cutie, THE RED DRESS BOUTIQUE, http://www.reddressboutique.com/ki ckoffcutie/ (last visited Apr. 12, 2012); DRESS U, http://www.shopdressu.com/shop/index. php/gameday-dresses-accessories.html ( (...truncated)