When Trademark Enforcement Goes Too Far
There was a time when school colors ran deep. A simpler time when you proudly wore your team’s name on a shirt, pinned a banner to your wall, or just shouted ROLL TIDE! when your team took the field. A time when Universities reveled in the support of their fan base and knew that a fan today was a fan for life.
Those times are quietly fading like so many memories from long ago.
This week the Wall Street Journal profiled an ongoing trademark battle between the University of Alabama and an artist who paints depictions of great moments in Alabama Football history. At the core of the dispute is the University of Alabama’s contention that it owns trademark and other intellectual property rights to all depictions of its famous crimson uniforms and any unlicensed depictions thereof must be ceased. In short, if you want to paint, portray, or depict the Alabama’s storied program you need to pay.
But before you think I’m throwing Alabama under the proverbial team bus by themselves, their stance in this high profile case is becoming less and less unique. For instance, awhile back I read a story from my home state about how the University of Florida had sent cease and desist letters to several Florida high schools demanding that they remove the University of Florida’s famous gator head design from gymnasium floors, locker rooms, and anywhere else the high schools had the logo. Mind you, these are high schools whose mascots are also the Gators, a somewhat familiar animal to all Floridians.
Let’s put aside for a moment that, in this author’s opinion, given recent on-field performance of the Florida Gators they should be honored by the fact that these high schools have not already voluntarily removed the logos as to avoid any association therewith (I mean seriously, knowing the rivalry between Florida and Georgia, Florida hires a former Georgia football player to be their coach? Really?) One must ask what is Florida thinking? These high schools are feeder programs for athletes to the University of Florida. From the time kids are in middle school they are Gators. They play for the Gators in seventh grade, eighth grade, and throughout high school. The best of the best then are predisposed to want to be a Gator in college. So what does the University of Florida do? Stop being Gators? Why?
Turning back to Alabama, would we all have those indelible images of the Bear if the university had insisted on a licensing fee for every picture, every depiction? Will the Crimson run deep 20 years from now as fewer and fewer people take pictures, paint artwork, and make banners because they have been pushed away by licensing fees?
Every business, be it a small mom and pop, a multi-national corporation, or even university—and make no mistake about it, they are businesses—must decide when to enforce their trademarks and their intellectual property. It is a fact of life. For some, the determination is simple: If you are a business and a specific infringement is causing you to loose revenues greater than what an enforcement action would cost you to enforce. In the alternative, if you spot suspected infringement that is not causing you any loss of revenues, reputation, or otherwise, and enforcement will be quite costly it may not be in your best interests to do so.
So when determining when, and if, to enforce your trademark against a particular infringer, consider these factors before moving forward:
How much is it going to cost you to have the infringement stopped? Enforcement efforts can range from a few hundred dollars for qualified non-litigation assistance to hundreds of thousands of dollars if it has to go to court.
What is your expected benefit from successful enforcement? If you are losing sales to the infringer will those be recaptured? If you are not losing sales are you experiencing any other negative effect on your brand? Dilution? A tarnished image?
Lastly, are there any intangibles you need to consider. Is the enforcement of your trademark going to alienate a relationship that is critical to your brand, your image? Is it going to otherwise harm or help you?
Once you weigh all of these factors you may then make a more informed determination as to whether you should enforce your trademark and not merely if you can.
In the case of the fans of the universities mentioned herein, I personally will miss chanting Go Gators when they start charging us to do the same. Roll Tide, not so much.