The Ohio State Buckeyes are 1 and 0 on the football field. Now they are 1 and 0 in the courtroom too.
A federal district court judge in Ohio has issued a temporary restraining order and preliminary injunction against Keith Antonio Thomas and GDS Marketing, LLC, shutting down a Buckeye fansite (www.buckeyeillustrated.com) and two electronic magazines — Buckeye Gameday and Ohio State Buckeyes E-Book. The court held that these online fansite ventures are likely to infringe “Buckeyes,” “Ohio State,” “OSU,” and other Ohio State University federal and common law trademarks. (The official OSU site is www.ohiostatebuckeyes.com .) The judge’s ruling came only 7 days after OSU filed the suit.
According to the decision, the defendants’ site cast itself as the “#1 Fan Site for Buckeye News and Information.” The court noted that the site contained the trademark “Buckeye” in the domain name and throughout the pages of the Web site and that it used Ohio State school colors. The electronic magazines also deployed the marks “Ohio State” and “Buckeye” in their titles. The allegedly infringing fansite took advertising from a number of leading brands that also advertised with the University.
Ohio State’s claims were for trademark infringement and unfair competition under section 32 and section 43 of the Lanham Act. The hallmark of these claims is, of course, a finding of “likelihood of confusion.” The court dutifully applied the 6th Circuit’s eight-factor test for likelihood of confusion, analyzing : the strength of OSU’s marks; the “relatedness” of the goods or services; similarity of the marks; evidence of actual confusion; marketing channels used; the likely degree of care by the purchaser; intent of the defendant in choosing to use the marks; and the likelihood of expansion of the product lines.
The court found the OSU marks to be “quite strong”; that the defendants were “competing directly” with the plaintiffs; and that, over all, seven out of the eight factors favored OSU — leading to the conclusion that the fansite and publications were “highly likely to result in consumer confusion.”
Significantly, the court rejected the defendants’ claim that they are a news source akin to the local newspaper — the Columbus Dispatch. The court also turned aside a ”fair use” affirmative defense, holding that the terms, logos, and marks defendants chose did not describe their goods and services but, rather, were used as trademarks. Nor did the website disclaimer (“This website is an unofficial and independently operated source of news and information not affiliated with any school or team“ ) — help defendants’ cause. Quoting the decision again: “a disclaimer disavowing affiliation with the trademark owner read by a consumer after reaching the Web site comes too late.”
It’s always a tough call when a sports or entertainment rights holder has to sue its own fans, and we were not surprised to find at least one group disagreeing strongly with the decision. On the other hand, as the decision notes, OSU’s licensing program is the most profitable collegiate licensing program in the US — generating royalties of $35 million in the past five years. That’s a significant revenue stream that’s worth protecting.