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Ohio State University Seeing Scarlet in Trademark Suit against Online Marketplace

Ohio State University ("Ohio State," "University," or "OSU") recently threw the proverbial yellow flag and filed a complaint in the Ohio federal district court against online print-on-demand marketplace CafePress, Inc. ("CafePress") for allegedly selling unlicensed clothing and merchandise, asserting claims of trademark infringement, unfair competition, passing off and counterfeiting under the Lanham Act, in addition to violation of the rights of publicity assigned to the University by Urban Meyer, the head coach of the school's football program. (The Ohio State University v. CafePress, Inc., No. 16-01052 (S.D. Ohio Nov. 3, 2016)). When it comes to knockoffs of University-branded t-shirts and novelties, OSU prepares for such alleged infringements like a Bowl game and has a successful track record of protecting its rights in court.

In its Complaint, Ohio State claims that CafePress offered 1,100 "Ohio State Buckeyes" designs available on 67,300 products. Those products ranged from t-shirts saying "Let's Go Buckeyes!" to decals with images of the "O-H-I-O" chant spelled out by fans' posed arms. The University owns federally registered trademarks for, among other things, "OSU," "BUCKEYES," "SCARLET & GRAY" (the school's colors), the Buckeye design, and the "O" logo. Ohio State University is a public institution, founded in 1870, and boasts one of the largest intercollegiate athletics programs in the country. It is one of the top ten universities in combined NCAA Division I team and individual national championships. According to the University, the fame of the school's athletics programs has resulted in trademarks with "strong secondary meaning" and "favorable national recognition" that have become "assets of significant value as symbols pointing only to Ohio State, its services, products and goodwill."

Meyer, who accepted the role as head football coach in 2011 and is currently under contract with the OSU Buckeyes until 2020, is a well-known public figure among NCAA football coaches. As recently as 2015, he led Ohio State to victory in the College Football Playoff National Championship game over the Oregon Ducks, becoming the second college football head coach ever to win a national championship at two different schools. According to the Complaint, Urban Meyer assigned his rights of persona and trademark to the University in May 2012 and those rights apply to the various Ohio State-licensed products with Meyer's name or likeness on them, including t-shirts with photos of the coach or with the slogan "Urban Meyer Knows."

CafePress, Inc., founded in 1999, is a publicly traded online retailer of stock goods and user-customized on-demand goods, including t-shirts, bags, mugs and many other types of products. With respect to user-customized products, CafePress' User Agreement states in its representations and warranties that users' designs shall not "infringe the rights of any third-party including, but not limited to, copyrights, trademarks, patents, trade secrets, and rights of privacy and publicity." As of the date of this edition of Three Point Shot, CafePress has yet to file an Answer to Ohio State's allegations. Unfortunately for CafePress, certain well-known legal protections available in other contexts (e.g., the DMCA safe harbor, which protects certain service providers from copyright liability, and Section 230 of the Communications Decency Act, which protects many websites and services from publisher liability for third-party content) do not apply to trademark infringement.

Ohio State seeks a permanent injunction against CafePress, as well as any available remedies under the Lanham Act—including, but not limited to, statutory damages, disgorgement of profits, and/or costs and attorneys' fees. Both the University and CafePress have reasons for wanting to maintain (and expand) their respective shares of the close-to-$4 billion collegiate merchandise marketAccording to the school, to date, OSU's licensing program has generated over $130 million in royalty revenue from approximately $1.3 billion in licensed retail sales—one of the most profitable collegiate licensing programs in the country.

Three Point Shot previously covered two similar trademark lawsuits brought by Ohio State in the Southern District of Ohio against Teespring, Inc. and Skreened Ltd.—both web-based user-customized shirt printing services. The court ruled in favor of Ohio State in the case against Skreened in April 2014, and Teespring agreed to a stipulated final consent judgment and permanent injunction in May 2016. With two established entities in play, it seems more likely than not that the parties will come to some mutual agreement as to the handling of OSU merchandise. However, another Ohio State victory may have far-reaching implications for similar online producers of on-demand goods, as leagues and teams—both professional and collegiate—continue to blitz alleged trademark offenders to protect their licensing programs. The play clock is running for CafePress, and this dispute over Ohio State's registered trademarks has plenty of yards to go.

© 2019 Proskauer Rose LLP.

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