17.05 August/September 2005
Promotion & Publicity

Is Your Logo Safe?

As licensed merchandise becomes more lucrative, college and high school athletic departments are butting heads over who can use whose logo.

By Dennis Read

Dennis Read is an Associate Editor at Athletic Management and can be reached at: dr@momentummedia.com.

There's little reason to expect a major university in Oregon to have anything in common with a high school in Ohio. And until folks at Oregon State University got a look at the logo being used by the athletic teams at Riverside High School in Painesville, Ohio, the two schools had no connection whatsoever.

But all that changed last year when Riverside administrators received a letter from Oregon State officials claiming that the high school's beaver logo was too similar to the university's trademarked and copyrighted logo. Oregon State requested that the high school stop using it. George Bellios, Athletic Administrator at Riverside, says he was shocked. He had no idea that there was a problem with the school's logo.

A year later, and with the involvement of many lawyers, Riverside is in the process of phasing out its old beaver logo and implementing a new one. Both Oregon State and Riverside are satisfied with this outcome, but it has not been a painless experience for either school.

In today's world of sophisticated marketing and promotions, an athletic department's logo has become an important commodity. Whether you work at a small high school or a large university, understanding the nuances of copyrights and trademarks when it comes to your logo is critical to avoiding legal battles.

TRADEMARKS & COPYRIGHTS
Why would Oregon State care whether a high school in Ohio used a similar-looking beaver for its logo? There's little likelihood that Oregon State would have felt any direct impact from the Ohio school's use. And, by making the complaint, Oregon State faced some negative publicity—the story was picked up by newspapers across the country and many people saw it as a case of a big college picking on a small high school.

The problem for Oregon State is that if it doesn't control the use of its logo, it could eventually lose trademark rights to it. Under federal law, it is up to trademark holders to police their trademarks. If too many other entities are found using the logo, Oregon State might have a tough time justifying the claim that its beaver logo represents the school in the minds of the public and it could lose its trademark. This would allow others to use the logo without violating Oregon State's trademark rights.

"There is a doctrine in trademark law that says you don't own a trademark for all time, you own it for as long as you're using it and it refers to you," says Christine Haight Farley, an Associate Professor of Law at American University's Washington College of Law. "Once you stop using it, or allow too many others to use it without complaint, then you lose the rights and you don't get to enforce them."

A trademark—which can consist of words, symbols, or designs, or any combination of the three—can be registered nationally through the U.S. Patent and Trademark Office, as long as it's being used in interstate commerce. The "®" symbol can only be used after a trademark has been registered while a "™" symbol can be used to indicate a trademark claim that has not yet been okayed by the Patent and Trademark Office. In addition, many states offer similar trademark registration for entities not involved in interstate commerce.

Federal trademark registration establishes the holder as the presumptive owner of the mark, giving the holder the power to control its use. It also allows the holder to bring action in federal court against infringing users.

Many logos are also protected under copyright law, which offers another level of defense from unauthorized use. Copyright gives the owner of "original works of authorship" the right to control the use of their work. Logos do not have to carry the "©" symbol as a copyright is obtained once a piece is created, regardless of whether it is registered or published anywhere. However, greater protections can be obtained through registration with the U.S. Copyright Office.

In a nutshell, copyright law means you can't use someone else's creative work without their permission. This most often applies to stylized team and school logos. However, according to the U.S. Copyright Office, "familiar symbols or designs" cannot be copyrighted. Nor can "mere variations of typographic ornamentation, lettering, or coloring." This means no one entity controls the use of a beaver or the letter "M" in a logo. But the more stylized and distinctive a logo is, the more protection it has against copyright infringement.

"Oregon State can't stop high schools from being named the Beavers, and it can't stop them from depicting beavers in their logos," says Mark McKenna, Assistant Professor of Law at St. Louis University. "But it can stop them from depicting a beaver that looks too much like the Oregon State beaver."

CHANGING TIMES
One of the reasons universities are becoming more aggressive about policing the use of their logos is due to the increased amount of money brought in by the sale of licensed merchandise. If a school does not have trademark or copyright protection over its logo, anyone can sell merchandise with that logo on it, which can greatly dilute the school's revenue from such products. And as high schools begin to market their logos, with some gaining national exposure, universities feel they cannot ignore logo usage that infringes on their copyrights or trademarks.

Administrators at Union High School in Tulsa, Okla., found this out the hard way a couple of years ago when the University of Miami complained about the school's use of the split "U," which Miami had trademarked in 1992. Union had been using the split "U" for about 10 years and even had it trademarked in the state of Oklahoma.

"We put it on the side of our helmets and that was the only intention we had for it when we started using it," says Union Athletic Director and Football Coach Bill Blankenship. "It began to take off and some of the other sports teams put it on their T-shirts and sweatshirts and those kinds of things. We didn't think it was a huge issue."

In fact, Miami Head Football Coach Larry Coker had been Blankenship's position coach in college, and Blankenship thought the similar logos were a nice homage to his former mentor's program. "We used different colors than Miami, which we thought would make it okay," Blankenship says. "I know that Coach Coker didn't have a problem with it. We thought it was a matter of imitation being the sincerest form of flattery."

However, when a former Union student attending Miami garnered attention for having clothing with the "U" in different colors, Miami lawyers contacted the high school. "The lawyers told us that if they become aware of somebody infringing on their logo and they don't defend it, then they can lose it," Blankenship says.

The two schools eventually reached an agreement that allowed Union High School to use the split "U" in limited ways. "We already had it on a lot of our uniforms, and we had it imbedded in our stadium turf, so there would have been a pretty serious cost involved with replacing it," Blankenship says. "We wanted to keep using the logo if we could, so we came up with an agreement that limits our use—we use it only in the high school, not the junior high or grade schools. Only athletic teams themselves are allowed to use it. And we pay Miami $1,000 a year."

Blankenship ended up being a resource for Lauren West, Athletic Director at Bentonville (Ark.) High School, when her school found itself the recipient of a letter from the University of Missouri in the fall of 2004. About four years ago, a new coach at Bentonville started using a modified version of Mizzou's tiger logo. Unlike the University of Miami, the University of Missouri does not license its logo to outside groups, leaving West with little choice but to make wholesale changes. "We pulled the logo off our gym floor and we took it off all but one set of uniforms, which the university said we can use until we get new ones," West says.

The school now uses a new tiger logo and is in the process of obtaining copyright and trademark protection for it. "We're trying to protect our tiger logo, which we've had designed specifically for Bentonville High School," West says. "We don't want to lose this logo, given the problems that we had. For example, local vendors who make money off of it will have to sign an agreement with us and pay a nominal fee. But we're not looking at this as a way to bring in revenue, we just want to protect ourselves."

According to West, non-school teams that call themselves the Bentonville Tigers will not be among those allowed to license the new logo for their use. "I've gone through an awful lot of trouble, and we've spent a great deal of money trying to protect our logo," she says. "If we let everyone use it, then it will all be in vain."

Another recent case involved the University of Iowa and the University of Southern Mississippi. In 2004, Iowa claimed that the Southern Mississippi Golden Eagles logo, introduced in January 2003, was too similar to the Hawkeyes' Tiger Hawk logo, which has been in use since 1979. Southern Mississippi denied that there were any significant similarities and continues to use the logo.

However, the argument has created a difficult relationship between the two schools, with Southern Mississippi threatening to pull out of a men's basketball tournament at Iowa last December. The Golden Eagles did make the trip to Iowa City, but did not face the Hawkeyes in the tournament.

PROACTIVE SOLUTIONS
What should you do if you think your school may be using someone else's logo? Although you have no legal obligation to turn yourself in, people involved in similar cases suggest contacting the owner of the trademark or copyright and trying to reach an amiable resolution.

"Instead of thinking that what you don't know won't hurt you, always contact the school or team that has the rights to that logo," West says. "Sometimes it's just a matter of making a call to the university's marketing or licensing department to see what kind of deal you can make with them. For example, we use the Kansas State wildcat logo at one of our junior high schools for a dollar a year. But the bottom line is, you have to respect the decision of the school whether they let you use the logo or not."

In many cases, colleges and universities are more interested in protecting their trademark or copyright than they are in stopping a high school from using the logo completely. It's common for a school to license use of its logo to other schools as Miami did with Union High School.

"The majority of universities are willing to work with high schools as long as the logo use is controlled and they have an agreement that clearly keeps the rights to the college which is using that mark," says Dick Rademaker, President and CEO of the Licensing Resource Group, Inc. "I know some schools take a real hard line and won't license their logo to others. But to me that doesn't make as much sense as trying to work with the high schools and still protect the logo's usage. I think there's goodwill to be gained with both potential students and student-athletes by working with others."

If a licensing agreement is granted, it typically contains restrictions on what the high school can do with the logo. The most common addresses selling merchandise with the logo on it. "The colleges usually give the high school the right to use the logo on their uniforms, scoreboards, and various other locations, but they really don't want merchandise out there for sale with the logo on it," Rademaker says.

The cost of these licensing agreements is typically minimal. "I can only speak about the agreements that we've been involved with, but they've always been very nominal," Rademaker says. "We have quite a few that are as low as a dollar a year, and other times it's $50 or $100."

This can be a small price to pay when compared to the costs of reacting to an attorney's letter. "I would say we've already spent a couple of thousand dollars, and that's not including the cost of redoing the gym floor and pulling some uniforms out of rotation a year or two early," West says. "Plus, it's hard changing your logo and getting everyone to agree on a new one. We also suffered some negative publicity—the story was on the front page of the newspaper and it didn't reflect positively on us as a district or as a school."

Sidebar: Staring Anew
If you are in the process of creating a new logo, here are some guidelines to follow to make sure your design doesn't create legal hassles:

Create your own. The more distinctive and original a logo, the easier it is to establish it as your own and protect it from misuse by others. "If you have an opportunity to start from scratch with a new team name, consider something original," says Marty Schwimmer, a trademark attorney from Pleasantville, N.Y. "The advantage is that if someone were to rip you off, they could not plausibly prove that they came up with it independent of you. Plus it communicates that your team is innovative and original." This mindset is part of the reason you see minor league baseball teams with names such as the AquaSox and Diamond Jaxx.

Get the rights. If you have someone create a new logo for your teams, make sure you receive an assignment of rights—in writing—from the artist or designer so that you have control over how the logo is used. "You want to prevent the artist from selling something truly unique several times in the market," Schwimmer says. "If you commissioned and paid for a logo you'd really like all the rights to it. You might also want to consider getting an indemnification from the artist ensuring that it is in fact an original work—it would be a huge embarrassment to be hit with a public copyright suit for something you thought was original but was not."

Go generic. Just as truly unique logos are safe from copyright issues, so are generic ones. "If you use an off-the-shelf logo of a bear that no one has the rights to and get some sort of assurance in writing that you have the right to use it from the entity that provides the logo, then you should be fine," Schwimmer says.

Get protection. Registering a copyright or trademark provides extra protection from unauthorized use by others and can help fight off claims by other people that you are illegally using their intellectual property. Copyright applications can be submitted through the U.S. Copyright Office, and the basic registration fee is $30.

Trademark applications can be submitted through the U.S. Patent and Trademark Office Web site, and fees begin at $325. To receive a federal trademark, you must be involved in interstate commerce, but state trademarks may be available for those not involved in interstate commerce. Trademark law can be complex, and you may want to retain a trademark attorney to assist in your trademark registration efforts.

Do a search. To avoid infringing on someone else's trademark, a school can see if there are any similar trademarks registered with the U.S. Patent and Trademark Office by going to the office's Web site. But according to Christine Haight Farley, an Associate Professor of Law at American University's Washington College of Law, trademark searches are an inexact science, especially when logos are involved. "The search process is somewhat user friendly but if you don't do a professional search, it's easy to miss things," she says. "Most people who are about to embark on a new trademark will hire a professional who knows how to do a sophisticated search. All you have to do is miss one to have a future problem."

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