Penn State Trademark Suit

[TwiceHorn 31472]

So, a couple of years back, PSU sued this outfit, https://vintagebrand.com/, for trademark infringement.  Vintage's business model seems to avoid licensing by using outdated "logo marks" that still may use word marks like "Penn State" or PSU or whatever.

Vintage actually defended this on the ground that trademarks are not property interests per se, but only so long as the trademark prevents consumer confusion as to the source or sponsorship of goods.  Most of this type of infringer can't afford or commit to defending this kind of suit.

Clearly, no one is confused that Penn State, or any other university, is in the clothing business.  Sponsorship or association is a bit more murky, less so if the clothing is shitty and unlicensed (as opposed to shitty and licensed. e.g. 287 Longhorn gear).  This has ground my gears for a long time.

Anyway, the judge bought Vintage's arguments to a degree, but still sent it to a jury, who found for Pedo State.  Vintage seems sure to appeal and may change the game a bit for trademark licensing by entities that aren't in the core business that they're licensing to.

[NWBuck 8568]

As long as no one tries to take this away from us...

[Dahobbs 17534]

3 hours ago, TwiceHorn said:

Clearly, no one is confused that Penn State, or any other university, is in the clothing business.  

We aren't? I thought that was like half the reason we had the co-op. 

[Celery Man 20950]

Yeah I'm confused by that as well - what does it mean to be "in the clothing business"? My assumption is that every Longhorn I see on a piece of clothing sold... not on temu or whatever resulted in some licensing money going back to the school.  My assumption is that that is a big business, and the revenue for the school is not insignificant. How is UT or Penn State not in the clothing business?

[tx 3 putt 76958]

they printed up ‘culture of rape’ tshirts ?

[Firemans4Horn 18050]

4 minutes ago, tx 3 putt said:

they printed up ‘culture of rape’ tshirts ?

Baylor has that trademarked. 

[TwiceHorn 31472]

3 hours ago, Celery Man said:

Yeah I'm confused by that as well - what does it mean to be "in the clothing business"? My assumption is that every Longhorn I see on a piece of clothing sold... not on temu or whatever resulted in some licensing money going back to the school.  My assumption is that that is a big business, and the revenue for the school is not insignificant. How is UT or Penn State not in the clothing business?

Because neither Penn State nor UT has ever sold an item of clothing.  That's not and never has been a product or service of any educational institution, unless it's a school of weaving or something.

They're in the licensing business and it's huge.

Trademarks are intended to help consumers identify the SOURCE of goods.  Trademark infringement is established by showing a likelihood of confusion as to the source of products or services.  They originated as the "hallmarks" applied by metalsmiths and others to identify the origin of their goods before people were literate.

People buy college stuff because it has the college logo or name on it, not because they believe the college sells quality gear.  They don't much give a shit where it comes from.

You can't have a trademark in a generic term because that term serves a purpose in the language.  Similarly, you can't have a trademark in descriptive terms.  Nor can you have a trademark in something that is "utilitarian" functional or purely ornamental.  University names and logos are closer to the latter category than anything else.

The Co-Op doesn't make and sell clothing, it sells clothing made and sold to them by someone else, duly licensed.

Now, a bunch of us educated sports geeks know about the licensing deals and that sales of authorized goods kick back to the University; and maybe that gives us an incentive to want to buy duly licensed stuff.  But that's getting pretty far afield from the original purpose of trademarks:  to give people a shorthand way of knowing they're buying quality, or at least familiarity.

To change the law on this would upset a lot of apple carts and destroy huge revenue streams.  It should have never developed this way.

Edited 13 hours ago by TwiceHorn

[TwiceHorn 31472]

Ironically, I suppose, the law first went wrong in the early 70s right here in Texas, but over Boston Bruins patches.  https://casetext.com/case/boston-pro-hockey-assn-v-dallas-cap-e#p1013

The district court there got it right.

[TwiceHorn 31472]

Kind of a similar problem presented here on a much smaller scale. https://fordauthority.com/2024/11/unauthorized-ford-bronco-conversions-prompt-the-blue-oval-to-sue/

They're imitating the look of OG Broncos, using 6G running gear.  No one is confused.  Post-sale confusion has been held irrelevant in countless conventional trademark cases.

[Celery Man 20950]

1 hour ago, TwiceHorn said:

Because neither Penn State nor UT has ever sold an item of clothing.  That's not and never has been a product or service of any educational institution, unless it's a school of weaving or something.

They're in the licensing business and it's huge.

Trademarks are intended to help consumers identify the SOURCE of goods.  Trademark infringement is established by showing a likelihood of confusion as to the source of products or services.  They originated as the "hallmarks" applied by metalsmiths and others to identify the origin of their goods before people were literate.

People buy college stuff because it has the college logo or name on it, not because they believe the college sells quality gear.  They don't much give a shit where it comes from.

You can't have a trademark in a generic term because that term serves a purpose in the language.  Similarly, you can't have a trademark in descriptive terms.  Nor can you have a trademark in something that is "utilitarian" functional or purely ornamental.  University names and logos are closer to the latter category than anything else.

The Co-Op doesn't make and sell clothing, it sells clothing made and sold to them by someone else, duly licensed.

Now, a bunch of us educated sports geeks know about the licensing deals and that sales of authorized goods kick back to the University; and maybe that gives us an incentive to want to buy duly licensed stuff.  But that's getting pretty far afield from the original purpose of trademarks:  to give people a shorthand way of knowing they're buying quality, or at least familiarity.

To change the law on this would upset a lot of apple carts and destroy huge revenue streams.  It should have never developed this way.

does the licensing business run on something different than the concept of the trademark? I guess intelllectual property? Is brand not that, and are the words and slogans and logos and etc associated with the brand not... that? I guess, if the idea that trademark is meant to identify SOURCE OF GOODS means that it doesn't protect the value of the brand of an institution being applied to clothes and sold, then wouldn't that have enormous ramifications outside of the realm peddling t shirts for pederasts?

[TwiceHorn 31472]

19 minutes ago, Celery Man said:

does the licensing business run on something different than the concept of the trademark? I guess intelllectual property? Is brand not that, and are the words and slogans and logos and etc associated with the brand not... that? I guess, if the idea that trademark is meant to identify SOURCE OF GOODS means that it doesn't protect the value of the brand of an institution being applied to clothes and sold, then wouldn't that have enormous ramifications outside of the realm peddling t shirts for pederasts?

No, it's only trademark.

Our other IP properties, patents and copyrights, are premised on two things:  a quid pro quo of disclosing/publishing innovations and artistic works in return for a limited-term monopoly; and incentivizing the production of and investment in those things by grant of the monopoly.  

Patents and copyrights are provided for in the Constitution.  As a result, any legal regime in this country that protects rights similarly is preempted.  Quite a few laws (boat hull design protections) have fallen to this concept.  It also poses a limitation on trademark law.

The trademark owner gives little or nothing of value in return for the trademark rights. It should not have a property right apart from the right to stop consumer confusion resulting from infringement.

 

Edited 12 hours ago by TwiceHorn

[Celery Man 20950]

2 minutes ago, TwiceHorn said:

No, it's only trademark.

Our other IP properties, patents and copyrights, are premised on two things:  a quid pro quo of disclosing/publishing innovations and artistic works in return for a limited-term monopoly; and incentivizing the production of and investment in those things by grant of the monopoly.

The trademark owner gives little or nothing of value in return for the trademark rights. It should not have a property right apart from the right to stop consumer confusion resulting from infringement.

So, I played in a band for a lot of years. We wrote and recorded music, which was ostensibly our business along with live performances. We’d get $500-$1k/night in our two main cities but we could only really play there once a month or two. We’d spend say 12 grand recording an album and another 3 on manufacturing a thousand or two copies of the CDs which we’d sell for $12, and I’m not going to do the math but it doesn’t work out. We sold t shirts that cost us a couple bucks to make for $15-20 and that’s how we actually paid for everything.

 

Is the idea because we weren’t in the clothing business, someone else could just make shirts with our logo and name and whatever on them and sell them and keep all the money? I get why we don’t want people to just call dibs on everything but if you… create the value of a brand I don’t get why someone should be able to just take that and take your business?

[TwiceHorn 31472]

14 minutes ago, Celery Man said:

So, I played in a band for a lot of years. We wrote and recorded music, which was ostensibly our business along with live performances. We’d get $500-$1k/night in our two main cities but we could only really play there once a month or two. We’d spend say 12 grand recording an album and another 3 on manufacturing a thousand or two copies of the CDs which we’d sell for $12, and I’m not going to do the math but it doesn’t work out. We sold t shirts that cost us a couple bucks to make for $15-20 and that’s how we actually paid for everything.

 

Is the idea because we weren’t in the clothing business, someone else could just make shirts with our logo and name and whatever on them and sell them and keep all the money? I get why we don’t want people to just call dibs on everything but if you… create the value of a brand I don’t get why someone should be able to just take that and take your business?

Well, you actually were in the clothing business. 

And, your logos and artwork would be subject of copyright.

But, lets say you licensed your band name/logo to, I dunno, a software company  . . .  or an educational institution . . . . it starts to get kind of fishy.

Trademarks aren't really intended to make a business money, they're intended to stop a business from losing money through free-riders.

Edited 11 hours ago by TwiceHorn

[Celery Man 20950]

3 minutes ago, TwiceHorn said:

Well, you actually were in the clothing business.

What if we got bigger and started licensing out the clothes, and making more on performance royalties?

what if I went out and started selling white t-shirts with the Ford logo on it, or.. Arnold&Porter or whatever?

[Celery Man 20950]

brb opening a storefront selling Donald Trump branded foam mattresses

[TwiceHorn 31472]

1 minute ago, Celery Man said:

brb opening a storefront selling Donald Trump branded foam mattresses

Do it! 

Trademark licensing is kind of sus, too.  Originally you couldn't do it because the goodwill the trademark represents and protects is yours and yours alone.  In another legal/doctrinal error, licensing is permitted if you exercise quality control over the licensed goods.  That originally meant that you insured they were to the same standard as those you sold.  Now it means you have some words about it in the license agreement that nobody pays any attention to unless it becomes a convenient excuse to terminate the license agreement.

[jimmyjazz 45957]

5 minutes ago, TwiceHorn said:

In another legal/doctrinal error, licensing is permitted if you exercise quality control over the licensed goods.

You're still talking about trademarks, right?  I have a hard time seeing how that would be enforceable in the patent/copyright world.

[TwiceHorn 31472]

7 minutes ago, jimmyjazz said:

You're still talking about trademarks, right?  I have a hard time seeing how that would be enforceable in the patent/copyright world.

Only trademarks, because of their unique status.  Patents and copyrights are affirmative property rights that can be freely licensed.

You have to actually enforce trademarks or you will lose them because if they are wholesale infringed, they stop preventing consumer confusion.

Failure to enforce patents or copyrights has no negative effect on the patent or copyright itself, because they are actual property rights, while trademarks only resemble property rights.

Edited 11 hours ago by TwiceHorn

[SL Xpress 7515]

One of the great joys in life I receive is knowing Texas is paid money for every piece of official merchandise with an upside down Horns logo sold to an OU or A&M fan.

I don't want to live in a world where that goes away. 

[TwiceHorn 31472]

9 hours ago, Celery Man said:

what if I went out and started selling white t-shirts with the Ford logo on it, or.. Arnold&Porter or whatever?

Well, on the Arnold & Porter shirts, you'd probably go broke, because the only people that may want Arnold & Porter tshirts are A&P employees.  They don't want the shirts because A&P has a great reputation for quality tshirts, they want it for the ornamentation, without regard to source.  Same is true of Ford.

[TwiceHorn 31472]

Kind of a related note.  Big League Chew was "invented" by a battered bastard of baseball as shredded bubble gum akin to chewing tobacco.  He made and sold the first batches himself.

He then licensed the Big League Chew trademark to Wrigley until 2010.  Then licensed it to an outfit called Ford Gum, that makes gumballs among other things.  N.B. I have less of a problem with this because the originator was actually in the business, but licensed the trademark in order to scale it up.

In a real dick move, Ford Gum has applied for a trademark for the appearance of shredded gum:

Their intention would seem to be to leverage against the licensor of Big League Chew, who may have trouble licensing the word mark to any other entity so long as Ford owns this registration.  Somewhat astonishingly, the USPTO has indicated allowance of this registration.

This is a similar situation to university sports logos.  People don't give a rats ass who makes the gum, as long as it takes that form.  It's not something that is really capable of performing the source-identifying function of a trademark.

University logo and word marks are actually traditional trademarks/service marks, at least as applied to educational services.  But outside that context, they run into the same type of problem.

[Celery Man 20950]

So, in the example of the band that makes money on clothing as part of their core business - it seems like that is also part of the core business or at least a major part of the business of almost every sports team and organization. Can they protect their logo and branding in that use, and how would a university athletics department be different?

[Celery Man 20950]

I think the brand thing is why this doesn’t make sense to me - a brand is a thing. It has value, it has to be created in order to have that value. If I create a brand and do whatever it was that made the brand valuable, other people shouldn’t be able to harvest that value. And especially in cases (most of them) where the brand has reputational value and misusing it could damage that value. Patagonia is synonymous with durability and quality and environmental consciousness - what if I just took their brand and applied it to some completely different business making plastic garbage? OK? I’m not confusing their customers or harming Patagonia’s business?

[TwiceHorn 31472]

9 minutes ago, Celery Man said:

So, in the example of the band that makes money on clothing as part of their core business - it seems like that is also part of the core business or at least a major part of the business of almost every sports team and organization. Can they protect their logo and branding in that use, and how would a university athletics department be different?

Your focus is on "protecting the brand," rather than protecting consumers from confusion.  Trademarks were never intended to "protect the brand" except to the extent consumers are confused or deceived into purchasing the wrong product.  Brand "protection" is an incidental effect of that.

[TwiceHorn 31472]

9 minutes ago, Celery Man said:

I think the brand thing is why this doesn’t make sense to me - a brand is a thing. It has value, it has to be created in order to have that value. If I create a brand and do whatever it was that made the brand valuable, other people shouldn’t be able to harvest that value. And especially in cases (most of them) where the brand has reputational value and misusing it could damage that value. Patagonia is synonymous with durability and quality and environmental consciousness - what if I just took their brand and applied it to some completely different business making plastic garbage? OK? I’m not confusing their customers or harming Patagonia’s business?

Put Patagonia on cars.  Does that somehow hurt Patagonia's image?  Possibly.  

But almost no consumer is going to be confused into believing Patagonia vehicles are sourced by the clothing company.

Yes, a brand is a thing, a thing sometimes of considerable value.  But trademarks have never been about protecting brands per se.

Sometimes I think we just have to put feels aside and admit that things don't deserve certain types of protection.  Mickey Mouse is going into the public domain shortly, and that's as it should be.  Despite Congress' feels that it should be protected forever because it belongs to Disney.

Edited 1 hour ago by TwiceHorn

[Celery Man 20950]

If I saw a car with Patagonia branding on it I would absolutely assume that Patagonia approved. I for sure assume that the Eddie Bauer Fords of the late 90s were a collab. There are lots of cross brand collaborations, check out this guitar I just bought -

Regardless of the intent of the law, it *feels* like you should be able to protect the use of a brand after you create it and make it commercially valuable.

[TwiceHorn 31472]

Lets put the shoe on the other foot with less popular or worthwhile brands.

Trump and the Kardashians have made a shitload of money off their brand by licensing it into fields in which they've never been in actual business.

Not so appetizing now, is it?

And, there are other sources of protection for things like Hello Kitty.  It's copyright artwork that belongs exclusively to Hello Kitty for a set term.

It's funny, people question the value and legitimacy of copyright and patent laws all the time, but rarely do so in the case of trademarks, which lock up more ephemeral property rights, potentially forever.

Edited 1 hour ago by TwiceHorn

[Celery Man 20950]

IMO if someone wants to make money selling Trump branded garbage to his legion of rubes I think he should probably be able to wet his beak.

For sure Hello Kitty would have some protection as artwork, but where is the line between that and the iconic longhorn logo? What about the Eddie Bauer trucks? I think in 2024 people assume a brand belongs to an entity and it’s use is protected and therefore blessed by the entity when it appears (temu aside).

[TwiceHorn 31472]

3 minutes ago, Celery Man said:

IMO if someone wants to make money selling Trump branded garbage to his legion of rubes I think he should probably be able to wet his beak.

For sure Hello Kitty would have some protection as artwork, but where is the line between that and the iconic longhorn logo? What about the Eddie Bauer trucks? I think in 2024 people assume a brand belongs to an entity and it’s use is protected and therefore blessed by the entity when it appears (temu aside).

Well right, you have expectations now based basically on bad law.

I'm not opposed to trademarks at all, but I think it's gotten out of hand.

 

[Celery Man 20950]

11 minutes ago, TwiceHorn said:

 

It's funny, people question the value and legitimacy of copyright and patent laws all the time, but rarely do so in the case of trademarks, which lock up more ephemeral property rights, potentially forever.

I mean, maybe fairness isn’t the goal or what matters legally, but with someone inventing insulin you have fairness vs good. How much do they need to profit for inventing insulin, which is fair, before the good of allowing people to benefit should outweigh the fairness of them profiting on their invention. With something completely ephemeral like a brand, there is literally no good - it’s only fairness.

[TwiceHorn 31472]

3 minutes ago, Celery Man said:

I mean, maybe fairness isn’t the goal or what matters legally, but with someone inventing insulin you have fairness vs good. How much do they need to profit for inventing insulin, which is fair, before the good of allowing people to benefit should outweigh the fairness of them profiting on their invention. With something completely ephemeral like a brand, there is literally no good - it’s only fairness.

Are you God?

Robert W. Hamilton, Minerva House Drysdale Regents Chair in Law, The University of Texas School of Law.  RIP.

But more substantively, patents on insulin and its various forms are time limited, as are copyrights.  Trademarks are not.

Edited 51 minutes ago by TwiceHorn

[Celery Man 20950]

4 minutes ago, TwiceHorn said:

Are you God?

Robert W. Hamilton, Minerva House Drysdale Regents Chair in Law, The University of Texas School of Law.  RIP.

Not a lawyer, I don’t understand the reference, are you trying to tell me that brands aren’t people, with rights?

[SL Xpress 7515]

My guess from context is this is a question posed to classes on a regular basis by aforementioned professor Hamilton when students debated the merits of various legal positions. 

[TwiceHorn 31472]

22 minutes ago, Celery Man said:

Not a lawyer, I don’t understand the reference, are you trying to tell me that brands aren’t people, with rights?

Haha no.  Hamilton was a first-year contracts professor that roughly 1/4 of UT law students encountered in that class for about 40 years (also taught corporations and corporate finance).

In contracts, especially in the Uniform Commercial Code, we have rules just for the sake of having a rule that creates expectations, like an offer is accepted when the acceptance is mailed, notwithstanding that the offeror doesn't actually receive the acceptance for several days.

In class, Hamilton would drive students to defend a rule that may be entirely arbitrary, as in the case of the "mailbox rule" above.

When they would say something like "it's just fair" or "it would be unfair not to," Hamilton would ask the student "Are you God?"  The point being that fairness is an extremely malleable concept that generally has no place in evaluating laws.  And often "fairness" is an expectation created by the law itself, rather than a first-principles justification for the law.

Edited 25 minutes ago by TwiceHorn

[Celery Man 20950]

Yeah that makes sense, although I would assume there’s some lawyerly discourse about the feeling of fairness and how that might be a smoke test for concepts that are more cromulent in defining law. With insulin, if people weren’t allowed to fairly profit from their r&d, it would disincentivize the r&d work that creates new drugs, harming the public good - the “fairness” should be reasonably protected. Why would I ever give a fuck about someone trying to draft off of the work someone else has put into creating a brand? It’s parasitism, fuck’em. Is there a case where it would not be?

[TwiceHorn 31472]

5 minutes ago, Celery Man said:

Yeah that makes sense, although I would assume there’s some lawyerly discourse about the feeling of fairness and how that might be a smoke test for concepts that are more cromulent in defining law. With insulin, if people weren’t allowed to fairly profit from their r&d, it would disincentivize the r&d work that creates new drugs, harming the public good - the “fairness” should be reasonably protected. Why would I ever give a fuck about someone trying to draft off of the work someone else has put into creating a brand? It’s parasitism, fuck’em. Is there a case where it would not be?

Well a lot of free market concepts rely on "parasitism."  Is it parasitism to copy a formerly patented invention once that patent expires?  In some abstract sense, perhaps, but free market economies generally like imitation and increased competition.

The social good promoted by trademarks is elimination or reduction of consumer confusion and deception, not accrual of profit to businesses.  Should we tolerate that monopoly-ish when consumers aren't being confused or deceived?

Edited 14 minutes ago by TwiceHorn

[Celery Man 20950]

9 minutes ago, TwiceHorn said:

Well a lot of free market concepts rely on "parasitism."  Is it parasitism to copy a formerly patented invention once that patent expires?  In some abstract sense, perhaps, but free market economies generally like imitation and increased competition.

The social good promoted by trademarks is elimination or reduction of consumer confusion and deception, not accrual of profit to businesses.  Should we tolerate that monopoly-ish when consumers aren't being confused or deceived?

I think this is part of my point (in addition to my assertion that it would cause consumer confusion in this world where many businesses/brands are pretty diversely commercialized) - allowing other people to take and improve some novel idea, or manufacture and sell more cheaply a product once it’s patent has expired - there’s at least some kind of benefit to that. I don’t see that being the case with allowing a business to co-opt another business’s brand. It’s not over the counter insulin or an improvement on the yeti cooler, it’s just slapping a yeti logo on something and hoping someone pays me for the yeti logo.