Attorneys with the Kansas University Athletics Department filed a new wave of legal arguments this week aimed at punishing downtown T-shirt retailer Joe-College.com for violating university trademarks.
The most recent filings in U.S. District Court up the stakes by seeking $1.4 million in legal fees and expenses from Joe-College.com owner Larry Sinks. The filings, made on Tuesday, also ask the court to seize T-shirts that the university contends are illegal and to order Sinks to pay KU triple the amount of profits and royalties generated from the sale of shirts in question.
“Royalty revenue generated by university trademarks are used to fund important activities like student scholarships,” Charlie Henn, Jr. an attorney for KU said in explaining the university’s further pursuit of the case. “When you have a company like Joe-College out there selling unlicensed merchandise, you are literally taking money away from students who otherwise would not be able to attend KU.
The battle between Sinks and KU largely was considered to have come to a head in July when a federal jury ruled that about 50 T-shirts — roughly a quarter of the shirts KU had protested — violated the university’s trademark.
But the new filings open a new chapter in the battle. Sinks’ attorney said he’ll challenge all the new arguments, and particularly will argue that Sinks and his business should not be required to pay KU’s legal fees for the case.
James Tilly, a Tulsa, Okla. attorney for Sinks, said courts are only allowed to order a defendant to pay a plaintiff’s attorney’s fees in “exceptional cases.”
“This is not an exceptional case for a number of reasons, one of which is that Mr. Sinks was the prevailing party in roughly three quarters of the shirts that were presented to the court,” Tilly said.
But Henn said that KU is entitled to have its legal fees covered because the jury found that there were instances where Sinks “willfully” violated the trademark of the university.
KU is arguing recent activity by Sinks is another example of him willfully violating university trademarks. The athletics department presented photos to the court of Sinks selling shirts in his store that the court had banned.
But Sinks’ attorney said the shirts — which come in different colors and have the word Kansas printed on them — were sold mistakenly and not in defiance of the court’s order.
“There’s no question that he understands the need to comply with the judge’s order,” Tilly said.
Tilly said there’s no dispute that Sinks immediately removed from sale every T-shirt that the jury in July found to be in violation. But the T-shirts now in question were not part of that verdict. Instead, they were T-shirts added by U.S. District Court Judge Julie Robinson in early December.
Tilly said the most recent order by the judge was not overly clear. Tilly said he had not done a good enough job telling Sinks what shirts had to be removed. The shirts were sold for about 10 days. The shirts no longer are for sale, although Tilly has filed a motion asking Robinson to change her order to allow the shirts to be sold again.
Henn, the KU attorney, said he does not believe the sales were an innocent mistake.
“There is no conceivable way that this is an issue of miscommunication,” Henn said.
In other news in the case, Sinks’ attorneys are arguing that the amount of money the jury awarded KU in the original verdict is too high. Tilly said the court overestimated the amount of profit Sinks made from the T-shirts that were found to be in violation. The court found profits of about $120,000. Sinks is arguing the amount was about $29,000.
In total, Sinks was ordered to pay about $127,000 in profits and royalties. Sinks is seeking that be reduced to $38,196.