I have written on this blog, and in Harvard’s Journal of Law & Technology, about the phenomenon I have dubbed “trademark rights accretion in higher education.” Simply stated, colleges and universities are amassing large portfolios of federally registered trademarks, often of questionable value or necessity to the institution. While the response in some quarters to this trend has been “so what?”, I argue that amassing trademarks is different than amassing office supplies. Each registration confers an exclusive right that encumbers a word, symbol, or phrase that other for-profit and non-profit entities may have a legitimate interest or need to use (for more on these chilling effects, see here). Trademark registrations inescapably are commercial tools, and thus ownership of them drag colleges and universities into more questions of which pieces of intellectual property they should enforce, against whom, and at what cost.
A recent article by Michelle Gallagher in the Trademark Reporter adds yet another cautionary story to this emergent narrative [a link to download her article is available at this blog]. She begins her article by examining in detail the trademark doctrines that permit applicants to register color alone as a federal trademark. Think, for example, of the distinct shade of blue used on boxes of jewelry sold by Tiffany & Co. Tiffany does not own that eggshell-blue color outright, and could not prevent a manufacturer of bird seed from using it on its packaging. Tiffany does enjoy certain rights in the color’s use, however, and thus could prevent a competing jewelry store from using the color on its packaging. In trademark parlance, trademark rights in the color are possible because it is “non-functional” – that is to say, there is no competitive need to use the color on jewelry packaging (unlike, say, the color orange on a road barrier), and permitting Tiffany exclusive rights in the color for that use does not put competitors at what courts call ‘a significant, non-reputation-related disadvantage.’
Ms. Gallagher analyzes whether the same could be said of U.S. Trademark Reg. No. 3,707,623, owned by Boise State University for “the color blue” as used on artificial turf in stadiums in connection with “entertainment services, namely the presentation of intercollegiate sporting events and sports exhibitions rendered through a stadium, and through the media of radio and television broadcasts and the global communications network.” Boise State has owned this trademark registration since November 10, 2009. Turf on the university’s football field at Albertsons Stadium has been blue since 1986.
Ms. Gallagher’s engaging article raises several concerns about Boise State’s trademark registration that bear on the uses and abuses of intellectual property in higher education. Those concerns are (1) that the university’s trademark registration is invalid because the claimed trademark is functional, which “allows Boise State to control and curtail legitimate competition” (p. 799); (2) that the university’s aggressive yet unregulated licensing of its trademark to other colleges and universities has led to the university’s effective abandonment of its rights in the mark; and (3) that the university’s position concerning the breadth of its rights in the trademark is unfounded and injurious to the public good. Elaboration on each of these points follows:
First, the color blue as used on football fields was not an arbitrary choice for Boise State, but instead was driven by the color’s functional attributes. Ms. Gallagher presents evidence that suggests that television viewers find blue an attractive color for viewing sports broadcasts. Indeed, promoters responsible for the U.S. Open and Australian Open tennis tournaments chose to use blue as the primary color on those playing surfaces because of the color’s telegenic benefits. Additionally, Boise State’s trademark registration effectively depletes the stock of available colors that other colleges and universities could use on their playing fields. Despite Boise State’s contention that the color blue has become synonymous with Boise State, as Ms. Gallagher notes, “it is probably safe to say that fans of Notre Dame, Penn State, University of Michigan, and other schools that use blue in their color schemes would disagree” (p. 799). For these reasons, she argues, the mark is functional and should never have received federal trademark protection.
Second, Boise State arguably has lost or risks losing its rights in its trademark because of its licensing practices. The university takes the bold position that any college, university, or high school wishing to use a colored field, of any color other than green, is only permitted to do so via a trademark license from Boise State, which the university issues for free. The standard license has no quality control provisions, and in fact states that users/licensees of the non-green-colored fields should do nothing to suggest an affiliation or endorsement by Boise State. This type of no-strings-attached license is known to trademark lawyers as an uncontrolled or “naked” license. Naked licenses destroy the value of the brand, and ultimately destroy trademark rights, as the mark owner cannot have it both ways: a trademark owner cannot demand that a commercial user take a license to the mark while simultaneously stating that the licensee’s use of the mark does not impact or inure to the benefit of the mark owner.
Third, and most problematic from a policy perspective, Boise State has taken an expansive and unfounded approach to licensing its trademark. Even though its registration only covers intercollegiate athletics, to date, Boise State has entered into licenses with 17 high schools and elementary schools with blue- or navy-colored fields in locations across the country, including in Barrow, Alaska (which is not connected by roads to any other town in Alaska). Additionally, even though Boise State’s registration only covers the color blue, the university has used it to demand licenses from any college or university using a non-green field (over 30 in all), and has even requested that turf manufacturers tell their clients to contact Boise State should they consider purchasing non-green colored turf for a new stadium for any sport. As Ms. Gallagher forcefully argues, “imbuing an exclusive proprietary interest in all color (besides green) on school playing fields, and denying other schools the right to use any color (besides green) on their sports fields without a license from Boise State is an inappropriate extension of trademark law” (pp. 807-808).
The silly and harmful practices by Boise State University that Ms. Gallagher’s article brings to light help illustrate the problems that come with trademark rights accretion in higher education. Trademark registrations – which colleges and universities should only obtain to protect core aspects of their identities – are powerful commercial tools that not every institution of higher education is prepared to wield in a manner that is consistent with the public interest. Registrations have a tendency to beget enforcement, often pursued as a matter of injudicious opportunity rather than reluctant necessity driven by the presence of actual confusion and market harm.
As Ms. Gallagher rightfully notes in concluding her article, “university colors should be recognized as conduits of school spirit shared by many, and the standards for protection of such colors as intellectual property must be viewed in such context” (p. 810). I would add that exclusive rights can hurt the public when the rights granted are inappropriately expansive, or when the public-serving entity that holds appropriately granted rights is not sure how to use them in furtherance of the public good. The solution for colleges and universities wishing to avoid these pitfalls and temptations is to not seek trademark protection over every associational aspect of the institution, particularly names, devices, and colors in common use by, or of common need to, others in higher education.