For immediate release
APPEALS COURT RULES IN FAVOR OF COLLEGE COLORS
LSU, OHIO STATE, OKLAHOMA, USC, AND THE COLLEGIATE LICENSING COMPANY WIN AGAIN
ATLANTA, Ga., (December 8, 2008) – The protectability of college and university colors as trademarks was confirmed by a recent sweeping opinion from the Fifth Circuit Court of Appeals affirming the Louisiana federal district court’s decision.
The court’s ruling affirmed a 2006 decision in favor of plaintiffs Louisiana State University, The Ohio State University, the University of Oklahoma, the University of Southern California and The Collegiate Licensing Company (CLC), an IMG company, holding Defendant Smack Apparel liable for intentional trademark infringement based on its use of the recognizable and historic colors of some of the nation’s most powerful collegiate athletic teams.
The four universities and CLC filed suit against Smack Apparel for selling T-shirts featuring school color schemes along with designs and word content obviously referring to the athletic successes of particular teams, or with verbiage taunting rival teams. Smack’s designs used the school colors and other contextual references making obvious reference to the various collegiate institutions, but not necessarily by name.
The Court of Appeals, affirming the District Court’s decision in its entirety, held that the schools own strong trademark rights in their color schemes and other indicia, and that Smack’s use of those colors and indicia constitutes trademark infringement, even if actual names and logos were not used.
“This is a big win for colleges and sports licensing in general,” stated Bruce Siegal, Senior Vice President and General Counsel for CLC. “The case confirms the broad scope of protection that collegiate institutions have established in their names, colors, and other identifying indicia, and does so emphatically.”
The original ruling ordered Smack Apparel to cease using LSU’s purple and gold and Oklahoma’s crimson and cream, Ohio State’s scarlet and gray, and USC’s cardinal and gold in producing apparel that refers, but not necessarily by name, to those universities. Smack was also ordered to pay the universities royalties and damages on the infringing merchandise it sold prior to the ruling.
"Our fans associate purple and gold with LSU, especially when used with identifying collegiate indicia on a t-shirt," said Staci Pepitone, LSU's Assistant to the Vice Chancellor of Finance & Administrative Services. "We are pleased that the court concurred and ruled in our favor."
While other courts, including the Supreme Court, have confirmed that color schemes can serve as stand-alone trademarks, this decision is one of the few to apply to goods in this context, namely clothing and other licensed items that make up so much of the market for collegiate licensing.
“We work hard to protect the Ohio State brand, which includes our 128-year use of scarlet and gray, ” said Rob Cleveland, Assistant Director of Trademark & Licensing Services, The Ohio State University. “This decision helps strengthen our position in the marketplace and protects our legitimate licensing partners who follow our licensing guidelines.”
The plaintiffs were represented by Kilpatrick Stockton LLP.
ABOUT THE COLLEGIATE LICENSING COMPANY
CLC is a division of a division of global sports and entertainment company IMG. Founded in 1981, CLC is the oldest and largest collegiate licensing agency in the U.S. and currently represents nearly 200 colleges, universities, bowl games, athletic conferences, The Heisman Trophy and the NCAA. The mission of CLC is to be the guiding force in collegiate trademark licensing and one of the top sports licensing firms in the country. CLC is dedicated to being a center of excellence in providing licensing services of the highest quality to its member institutions, licensees, retailers and consumers. Headquartered in Atlanta (Ga.), CLC is a full-service licensing representative, which employs a staff of more than 80 licensing professionals who provide full-service capabilities in brand protection, brand management, and brand development. For more information on CLC, visit: www.clc.com or imgworld.com.
Contacts:
The Collegiate Licensing Company
Tammy Purves, Director, Corporate Communications
770-799-3275, mailto:tpurves@clc.com
Louisiana State University
Staci Pepitone, Assistant to the Vice Chancellor
225-578-1127, mailto:spepitone@lsu.edu
The Ohio State University
Rick Van Brimmer, Director of Trademark & Licensing Services
614-292-1562, mailto:vanbrimmer.1@osu.edu
The University of Oklahoma
Kenny Mossman, Senior Associate AD, Communications
405-325-8228, mailto:kmossman@ou.edu
University of Southern California
James Grant, Executive Director, Media Relations
213-740-6156, mailto:grantjr@usc.edu
Kilpatrick Stockton
John Page, Director of Public Relations
404-815-6500, mailto:jpage@kilpatrickstockton.com