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Tuesday
Aug192014

Boise State's Trademark Blues

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.

Wednesday
Jul302014

This week's legal developments related to intercollegiate athletics

Though student-athletes are spending their summer break in classes or off-season drills, the courts are still in season as it relates to intercollegiate athletics. Two major developments have occurred this week that are worthy of note:

1. On Monday I was surprised to read an article from Inside Higher Ed reporting that a basketball player dismissed from two other institutions for allegations of sexual assault has been awarded an athletic scholarship by a Florida college. (The article also reminded us that many institutions allow athletics departments, and not the campus student conduct office, to handle sexual assault investigations involving student-athletes.) The basketball coach at the Florida college is quoted as saying that the institution has the "experience, support, and resources" to help this student-athlete be successful in and out of the classroom. Though I do not know much about this institution, nor its resources and "experience", I do contend that this symbolically reinforces the culture within some (not all) institutions that garnering a prize recruit is more valuable than seriously addressing sexual assault and hostile environments on their campus.

When I was a graduate student, I wrote and published a paper regarding potential liability institutions could face for the sexual crimes of student-athletes that were recruited despite lengthy criminal records. My interest in the topic was sparked when I learned of a case that occurred at the University of Georgia prior to my arrival as a student. Tiffany Williams, a female student at UGA, was raped by three student-athletes--one of whom had been dismissed from two other institutions amid allegations of sexual misconduct. In Williams v. Board of Regents of the University System of Georgia, the 11th Circuit allowed Ms. Williams to pursue claims not just against the university for its untimely response but also against the coaches, president, and athletic director. That case was settled out of court.

Similar instances happened at the University of Colorado and Oklahoma State University, to name a few. With the increased enforcement of Title IX and the enactment of the Campus SAVE Act, I think institutions need to look at how the issue of sexual assault is addressed not just among the student body but also within the athletics department. I applaud Florida State University's president Garnett Stokes for supporting the hiring of three full-time staff members to handle sexual assault cases and to work toward eliminating a hostile climate at FSU. (FSU received much criticism for its handling of the investigation into sexual assault charges against Heisman winner Jameis Winston.)

2. On Tuesday the NCAA announced a proposed settlement in a class-action lawsuit brough by former student-athletes who had suffered head injuries. $70 million will be spent on testing and diagnosis and $5 million will be used toward research. This settlement is somewhat different than the one the NFL entered into in September, which we reported on here.

 

Wednesday
Jul232014

Higher Education's Expanding Domains

Over the summer I have been working on a law review article concerning the history of the .EDU extension.  The project also involved collecting and analyzing data concerning college and university use of two specialized regulations – the Uniform Domain-Name Dispute-Resolution Policy (UDRP) and the Anticybersquatting Consumer Protection Act (ACPA) – to seek ownership and control of domain names that they believe infringe their trademark rights.

Some of the findings raise questions about institutions’ orientations toward brand protection and expansion, free speech and institutional reputation, and commercial involvement.  Data show that colleges and universities use the UDRP (which, as a form of arbitration, typically costs anywhere between $3,000 and $5,000 to pursue to completion) much more frequently than they do ACPA litigation (which, as a form of federal court litigation, is much costlier to pursue). 

One-hundred different institutions have brought at least one UDRP action, with Baylor University filing the most actions (62 of them) since the year 2000.  The graph displayed below shows the number of UDRP filings by colleges and universities by year.  Colleges and universities filed 233 UDRP actions, involving 373 different domain names, through the year 2013.  Most of these involved disputes over .COM domain names (75.9%), although disputes involving more exotic extensions – such as .INFO, .ME, .BIZ, .XXX, and .TV – also occurred.

Data reveal Baylor University to be an outlier in many respects.  Its 62 UDRP actions concerned 130 domain names – many, in my opinion, of questionable importance to the institution.  For example, Baylor filed UDRP actions to obtain transfer of the following: <baylorsucks.com>; <ihatebaylor.com>; <baylorbkstr.com>; and <justbuit.com>.

By far my favorite Baylor domain name dispute, though, occurred in November 2013 and involved the domain names <rg3baylor.com> and <rg3bu.com>, which a third-party had registered and begun using for his fantasy football league.  For those unfamiliar with the moniker, ‘RG3’ is the nickname of Washington Redskins quarterback Robert Griffin, III, who won the Heisman Trophy while playing for Baylor, from which he obtained his undergraduate degree in 2010.  The university owns no trademark in RG3’s legal name or nickname, yet felt aggrieved by the two domain name registrations.  Owning federal registrations for both the words BAYLOR and BU, the university asserted that the disputed domain names were confusingly similar to its trademarks; the arbitration panelist agreed, finding that the addition of the descriptive term ‘rg3’ – “likely meant as an allusion to Robert Griffin III, who achieved fame while playing for Complainant’s football team” – did not vitiate Baylor’s rights in the domains (p. 5).  The full text of the decision can be found here

One wonders whether RG3 – whose nickname as a professional athlete clearly has commercial value to him – prompted this enforcement activity, or even is aware of it.  Recent visits to the two domain names, whose transfer Baylor successfully achieved in December 2013, show that neither resolves to a Web page.  To what use these domain names will be put in the future, if any, will be interesting to watch.

The question of what institutions that win transfer of disputed domain names under the UDRP choose to do with those domains is one that interested me.  Surprisingly, my research revealed that nearly one-third (31.8%) of the domain names transferred to a college or university because of a UDRP decision were (a) available to register, or (b) no longer registered to the institution that had won transfer of the domain.  This finding challenges the natural assumption that higher education’s battles for cyberspace tend to concern “important” domain names that have some lasting value to the institution.  In many cases the data show that an institution no longer owns a domain name that it once deemed important enough to spend thousands of dollars to fight over, not even five years after receiving it.

To what uses do institutions put the domain names that they have won and still own?  I visited each of these 227 domain names to find out.  I was surprised to find that over half of them (56.8%) were not being used in any effective way.  That is to say, instead of displaying content, or redirecting visitors to another Web site affiliated with the institution, the majority of domain names that colleges and universities have fought to win display no meaningful information at all – either they do not resolve to a Web page (e.g., try visiting <tufts.mobi>), or they display a parked page upon visit (e.g., visit <universityofidaho.com>).  This finding further challenges any assumption that institutions only pursue transfer of domain names that they intend to use.  Admittedly, good reason exists why some of the domains are not used (e.g., Baylor understandably does not use <baylorgirls.xxx>), but why doesn’t Drexel use <drexel.org.>, if for no other purpose than to redirect visitors to <drexel.edu>?

The .EDU extension sets higher education apart from other industries, which never enjoyed their own unique domain name space until the recent expansion of top-level extensions by ICANN.  Yet as my research shows, owning space in the .EDU domain name is not enough for many institutions, for a variety of reasons.  In expanding their online domain beyond the .EDU, colleges and universities in a real sense are defining what they value as institutions, and the extent to which intellectual property protection figures into institutional mission.

Inescapable for higher education seems the fact that online space is important space, increasingly so as entire degree programs move to, or even are born as, “online only.”  These spaces go to the heart of how we conceptualize higher education in the public sphere, as some combination of a public-facing but privately-oriented entity, simultaneously influenced by concerns for commerce, brand, and academic missions.  At this intersection of priorities and values, made all the more pronounced and visibly contested in cyberspace, we find an industry pulled in different directions, whose behaviors occasionally seem schizophrenic, as the dual motives of self-preservation and self-aggrandizement intermix.

Interested readers can expect the full draft of my article, entitled “Defining Domain: Higher Education’s Battles for Cyberspace,” to be posted to my SSRN page by early fall.

Friday
Jul182014

Freedom of religion or guise for discrimination?

The June 30 Supreme Court decision in Burwell v. Hobby Lobby Stores, Inc. sparked passionate debate between those who fervently uphold a person's right (well, in this case, a corporation) to freely exercise religious beliefs and those who worry that such interpretations of the First Amendment might be used as a shield to discriminate. Since that decision, a few interesting developments in higher education have occurred that further pit religious freedom against civil rights.

Just days after the Hobby Lobby decision, the Supreme Court made it easier for religious institutions to refuse to provide coverage for contraception. (Wheaton College, a Christian college in Illinois, had objected to such provisions in the Patient Protection and Affordable Care Act.) The Act requires employers fill out forms requesting such an exemption; pending further review religious institutions need only inform the federal government of its objections.

This week Inside Higher Ed reported that the Department of Education rejected a complaint from a transgender student who was denied housing at George Fox University, a Quaker institution. (The university had previously been granted a religious exemption in the 1980s for declining "to enroll or hire divorced individuals or the parents of out-of-wedlock children"--claiming that Scripture prohibited it.) Just yesterday the university announced that it had modified its policy and would provide regular student housing for those transgendered students who had undergone gender reassignment surgery. And in yet another case, last week a judge ruled in favor of California Baptist University after a transgender female student who applied for admission as a woman was expelled for "fraud."

(After reading these headlines and in researching for this post, I was surprised to discover a 2005 article discussing state religious exemptions to accreditation standards.)

When thinking about the Hobby Lobby decision--and the recent developments in higher education--I often reference Justice Ginsburg's dissent: Would the exemption. . . extend to employers with religiously grounded objections to blood transfusions (Jehovah's Witnesses); antidepressants (Scientologists); medications derived from pigs, including anesthesia, intravenous fluids, and pills coated with gelatin (certain Muslims, Jews, and Hindus); and vaccinations.

It is undeniable that in our society certain religions are privileged more than others. Even in our court system, some religions (e.g., Jehovah's Witnesses in Minersville School District v. Gobitis) have historically received short shrift. I can't help but think that to some people this case is more about pro choice v pro life than true religious freedom. How many people who applauded the Hobby Lobby decision would be comfortable if the scenario Ginsburg painted would come to fruition? In the higher education cases, has "Christian privilege" pervaded the court system and allowed discrimination to be whitewashed by the First Amendment?

I, for one, look forward to learning more about this issue and engaging further in the debate.

 

Tuesday
Jun242014

Education Law Association awards deadline approaching!

Just a friendly reminder to submit nominations for the following awards to be announced at the annual meeting of the Education Law Association, November 12-15, 2014 in SUNNY San Diego!

*George Jay Joseph Award: outstanding scholarly piece written by a student (graduate student or law student). Winner will be published in Journal of Law and Education, invited to present at conference,  and fee waived to attend conference. DEADLINE: July 1, 2014

*Joseph C. Beckham Dissertation of the Year: presented to an outstanding legal or policy-based dissertation, defended between July 2, 2013 and July 1, 2014. Winner will be invited to present at the conference. EXTENDED DEADLINE: July 15

*Steven S. Goldberg Award: recognizing an outstanding scholarly piece (article, book, or book chapter) in the field of education law. DEADLINE: August 1, 2014

*August Steinhilber Award: recognizing outstanding appellate court brief pertaining to education law. Winner will receive one-year membership to ELA and free conference registration. DEADLINE: August 1, 2014

*ELA Board of Directors: those interested or know of someone interested in serving on the Board of ELA. Three-year commitment. DEADLINE: September 2, 2014

*M.A. McGhehey Award: recognizing outstanding service to ELA. DEADLINE: September 2, 2014

More information about each award, as well as the online nomination forms, are available at www.educationlaw.org under "Events"/"ELA Award Nominations"