[DISCLAIMER: It is not long after someone meets me that they learn I’m from West Virginia. I am fiercely proud of my home state, and a loyal Mountaineer fan. (In fact, way back when, I got married on West Virginia’s birthday. On purpose.) So, I am delighted to write a post about two of my favorite things: West Virginia and trademarks.]
West Virginia University has requested a preliminary injunction to stop MivaMan, LLC/Fastees.com from producing allegedly infringing t-shirts. WVU strictly polices the production and licensing of apparel containing its registered and common law trademarks. It is unclear, however, which trademarks are being used in these shirts. And likelihood of confusion or actionable dilution seems a bigger question.
From the WVU press release, the list of WVU marks linked above, and local news accounts (here and here), it appears that WVU claims Fastees is infringing trademark rights in the words “West Virginia” in connection with the University, and in the slogan “Let’s go Mountaineers!”, as well as by using the official colors and typeface of the University. Indeed, many shirts do contain the words “West Virginia” and a couple of them reference the common law mark “Let’s Go Mountaineers!” through the language “Let’s Go! Drink Some Beers!”* The shirts also use blue and gold, which are the University colors. Those colors are also the official colors of the state of West Virginia, as adopted by the State Legislature in 1963.
Without having seen the Complaint or being privy to the underlying facts, it is not clear to me that Fastees is using WVU’s marks. And whether any of this is done in a way likely to be confusing to consumers, or actionably diluting by tarnishment, is further in doubt. In the WVU Statement, Becky Lofstead, vice president of communications, is quoted as saying, “It is WVU’s responsibility to protect the reputation, integrity, image, and goodwill of the University through the proper use of our federally registered marks.” While some of the t-shirts sold by Fastees are certainly less than classy, I’m not sure trademark law is the best way to protect the WVU image here.
*The middle exclamation mark is a reference to the stadium chant by fans at football games. One half of the stadium yells, “Let’s Go!” and the other side follows with a resounding, “Mountaineers!”
First of all “Lets go Mountaineers” is a common law mark. Meaning it is not registered with either the State or Federal Governments. Therefore not enforceable in the court of law. In addition “Lets go! Drink some Beers” is clearly a parody of “Lets go Mountaineers.” Parodies are protected by the Lanham Act.
Fastees, we could have a debate about whether “Let’s go! Drink some beers!” parodies “Let’s go Mountaineers!” Registration, however, is not a prerequisite to trademark protection. A mark used in commerce qualifies for common law protection, and an action for trademark infringement can be brought in federal court, even if the mark in question is a common law mark. See for example 15 U.S.C. s 1125(a).
Mr Linford,
I beg to differ, but let’s get right to the roots of this case.
I am of the opinion that WVU BOG has a bigger agenda than just eliminating the West Fuckin Virginia Shirt. While they are at it, why not roll in the restriction to print the words “West Virginia” at all. That is my reason for resisting.
You would have to agree that it should be public domain to print a publicly held geographic location on anything for resale.
For example, let’s consider a design that states “Wild Wonderful West Virginia”. Ok, let’s put it on a navy t-shirt. Let’s use gold and blue ink. Let’s sell it online to the world market and let’s target people connected to the state of WV. Now, is that copyright infringement? I don’t think so.
Ok, let’s sell a design that states “West By God Virginia” on blue shirts with blue and gold ink. Let’s include the words “The State of”, the outline of the state and the established date of the state. Is that any different?
Another argument is whether the designs are confusing the general public into thinking that they are buying an officially licensed WVU T-shirt. Well if you look at the designs that are included in this claim, it is quite obvious that the school would never endorse the content. In addition, the products themselves are void of all the official packaging, labels, hang tags and stickers. The locations to purchase the products (Fastees Store and fastees.com) sells no officially licensed products. This further eliminates to possibility of confusion.
The point of origin of the designs in question is obviously the State of West Virginia and not West Virginia University. In addition, the designs using the words “West Virginia” contain obvious design elements to further clarify the fact, such as, the words “the state of, the graphic of the state outline and or the established date of the state.
Another argument is the location issue. This is an easy point to argue. If the business is located in West Virginia and West Virginia’s official colors are gold and blue, the obvious choice of shirt colors to produce and sell would be gold and blue, right? To further this assumption, if the business is located in a college town, the obvious subject matter and design themes would be collegiate related, right? It would not make good business sense to offer purple and green shirts as the primary shirt color to offer.
You’d have to agree that offering shirts with the words “Pennsylvania” or “New York”, at at retail location in Morgantown WV would not be a fast mover. This doesn’t seem to make sense either, right?
I hope you will consider my arguments and please give me your thoughts.
K
fastees
Jake can chime in again if he wishes, but Fastees, I think that you’re agreeing with him: You’re having a debate about whether your marks parody / infringe the WVU marks, and that’s exactly what Jake said is possible. Jake’s statement of underlying trademark law is obviously correct.
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