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Ohio State tries to screen out Skreened in lawsuit

Ohio State University has filed a trademark infringement lawsuit against a Columbus-based T-shirt company, citing nine OSU-owned words or designs the company was passing off as its own.
In the lawsuit filed last month, the university accused owner Daniel Fox and his company, Skreened Ltd., of selling T-shirts with OSU-registered trademarks both online and at its Columbus store, and if found guilty, Skreened could pay significantly in damages. While the T-shirts specified in the lawsuit have been removed from the company’s website, one OSU official called other remaining designs “indeed problematic” in violating OSU’s trademark guidelines.
Fox could not be immediately reached for comment.
The custom T-shirt company allows individuals to submit their own designs, which are then printed onto T-shirts. According to the lawsuit, a handful of the designs were trademarked by OSU.
The university has 13 registered trademarks, including the words “Ohio State University,” “Ohio State,” “OSU,” “Buckeyes,” “The Shoe,” “O” and “Scarlet & Gray.” The university’s trademarks also include designs like the stylized buckeye leaf, the gold pants (representing a charm given to players and coaches since 1934 for defeating Michigan) and Brutus.
In May, first-year football coach Urban Meyer gave over his rights of persona and trademark to the university, and on June 4, the university applied for a trademark of “Urban Meyer.” The trademark, if approved, would include the name, voice, signature, image and likeness of the first-year football coach. The trademark of “Urban Meyer” would not be unprecedented. The university trademarked “Jim Tressel” when he coached at OSU, according to the lawsuit filed on July 23.
With about 500 authorized licensees for products bearing OSU’s 13 trademarks, the university has earned $35 million in royalties in the past five years, making it the most profitable licensing program of any university.
Skreened, however, is not an authorized licensee. According to the lawsuit pleadings, the company has been selling T-shirt designs with OSU-trademarked items for at least three years. The university’s first contact with the company was a letter sent in January 2009, and subsequent letters were mailed in July and December 2011 when the first letter received no reply.
Rob Cleveland, the director of Trademark and Licensing at OSU, said the most recent letter did receive a reply from Fox, the owner of the company. He confirmed that “our lawyer is working with their lawyer to get this matter resolved.”
Skreened’s infringing designs include “Script Ohio,” with a green leaf dotting the “i” in “Ohio,” “This is Our House,” which shows a depiction of The ‘Shoe, “Block ‘O’,” “Go Bucks!” with a green leaf, “Scarlet & Gray,” “Gold Pants Class,” with a depiction of gold pants, “Urban Meyer” and a design representing Meyer’s likeness.
The university said in the lawsuit that its “consumer goodwill is of enormous value, and Ohio State is suffering and will continue to suffer irreparable harm if (the) Defendant’s (Fox and Skreened’s) unfair competition and passing off as to the infringing merchandise is allowed to continue.”
A search on Skreened’s online site for the aforementioned designs yielded no results. But Cleveland said the problem with the infringing designs would not just be resolved by the company removing them from its website; there remains the issue of past merchandise sold.
Guy Rub, an assistant professor of law at Moritz College of Law, said the costs Skreened owes could be substantial.
“If OSU wins, the remedies can be quite substantial and include injunctions as well as damages based on the defendant’s profits, the damage to OSU and the legal costs. Those damages can be multiplied by three in some cases,” Rub said in an email.
According to the pleadings document, the company would be expected to pay attorney fees, surrender merchandise and pay three times the amount due in revenues of past merchandise sold.
While the designs listed in the lawsuit were not found on the website, potential infringing designs continue to appear on the site for purchase. Those designs include “O-H-I-O,” “The World’s 8th Wonder,” which shows a depiction of Ohio Stadium, and variations of the designs “Urban Renewal” and “Urban Legend.”
Cleveland said in an email that these other designs were “indeed problematic” and possible trademark infringements.
Cleveland said OSU did not file a lawsuit three years ago when the infringing designs were initially discovered, explaining that “we don’t want to be in court. Ninety-five to 96 percent of the time when we send out a cease and desist, it turns out they will be resolved.”
Cleveland estimated that over the last two to three years, OSU has sent out 150 cease and desist letters to many companies for trademark infringement. Skreened issues a user agreement statement that says a user cannot “upload, download, post, email or otherwise transmit any content that may infringe any patent, trademark, trade secret, copyright, trade dress or other intellectual or proprietary right of any party.” As a general rule, it continues, users should submit original work.
Rub said having users agree to this statement does not make the company any less liable if a design is found to be in violation of a trademark.
He said in an email that while copyright laws can provide website owners with a shield against liability, “trademark law does not have similar arrangements and therefore it is possible that the defendant in this case will be exposed to liability.”

 

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