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Archive for Wednesday, July 16, 2008

A split decision

The gray area left by Monday’s verdict concerning disputed T-shirts leaves plenty of room for future conflict.

July 16, 2008

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It's a little hard to tell who the winner was in Monday's verdict concerning T-shirts made and sold by Joe-College.com, a store in downtown Lawrence.

Officials of the Kansas University Athletic Department said they won because a jury determined that some of the Joe-College shirts infringed on the university's trademarks. But Joe-College owner Larry Sinks didn't exactly lose the case because, of the 206 shirts that were targeted in KU's lawsuit, only 50 were found to infringe on the trademark. And, although Sinks was ordered to pay KU about $127,000 in profits and royalties, that is only about a fourth of the damage amount KU had sought.

To the applause of many, Joe-College will be able to remain in business producing the blue T-shirts with their sometimes controversial white lettering. For that reason, it seems likely that this isn't the last time KU and Sinks will tangle over trademark issues.

Presumably, the 50 shirts tagged by the jury as trademark infringements will be excised from the inventory (and become instant collectors items) but what about new slogans Sink might dream up for his T-shirts? Given his willingness to fight the KU establishment in court on this issue, it's unlikely he will choose not to push the trademark envelope with future designs.

The jury didn't draw a particularly clear line on what's OK and what isn't. Many observers had wondered how the KU Athletics Department could say that it owned a certain color of blue or the word Kansas. All of the 206 shirts are blue, so that wasn't a deciding factor for the jury, and it's hard to understand on what basis jury members decided a shirt that says "Our Coach Beat Anorexia" is OK, but one that said "Our Coach Can Eat Your Coach," is not. A huge gray area obviously remains.

For KU, and perhaps for the jury, this was more than a trademark issue; it also was an effort to get rid of shirts officials found "tasteless" and therefore a poor reflection on the university. In several cases, it seemed the jury nixed shirts more because they found them to be in poor taste than because they clearly violated KU's trademark. If that is the case, this becomes a free speech issue. Although others probably agree that some of the shirts were in poor taste, that doesn't mean that Joe-College should be barred from producing them.

Many observers also saw this case as another example of the KU Athletic Department's arrogant and money-focused approach to life. The department's effort to shut down a business that dared to take money out of KU's pocket by producing popular T-shirts without paying royalties to KU had a certain David and Goliath flavor that couldn't help but make some people cheer for the underdog.

So, round one in this controversy appears to be a split decision. KU officials got something, but they didn't get rid of Joe-College - which makes it seem likely this fight will go another round or two somewhere down the road.

Comments

notajayhawk 5 years, 9 months ago

(continued)- KU asked that Mr. Sinks be found to be infringing on their trademarks with around 200 items; although the 200 shirts which became part of the suit were not specifically mentioned in the letter, they were nonetheless items which were covered by the three categories - if not, regardless of your explanation that this is just how things are done (and you wonder why people hate lawyers), their later inclusion was frivolous. If their inclusion was not frivolous, then KU thought it at least possible that the shirts were infringing; in that case, it is reasonable to expect that they would have been shirts KU would have demanded be discontinued as covered by the three categories. You can't have it both ways.- Neither Jay_lo nor yourself have provided anything factual, nothing other than your own opinions, to defend the contention that KU would have settled for a lot fewer shirts being discontinued.You certainly talk like an attorney, bad_dog, although your arguments are more like those of the typical law students who post here that think after a year of law school they're experts on the law - talking around and around in circles and attacking the other side of the argument without actually answering any questions. If you were familiar with my posts, you'd know that I'm not exactly known for castigating large corporations for picking on the little guy. However, your own posts suggest the bias of someone who is either blindly dedicated to KU and/or what he sees as the law (which is the end all and be all of our existence, and, as we know, is never, ever wrong), or else someone involved directly in KU's side of the lawsuit, and not exactly impartial.

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notajayhawk 5 years, 9 months ago

bad_dog (Anonymous) says:"Common sense tells me that "KU would have settled for a cease and desist involving a lot fewer shirt styles:" ... I can almost unequivocally assure you KU would have considered a compromise with Joe College."And maybe you'd care to tell us where your inside information comes from, oh bad one? That you can state "almost unequivocally" that KU would have compromised? From the same area Jay_lo's came from, perhaps?"The key word in your quote is "eventually"."No, actually, the key words were - and still are - "and any other." If we're using common sense now, instead of those pesky little facts, who was to decide what "any other" consisted of? Mr. Sinks? You might have noticed that he was under the impression that none of his items infringed on KU's trademarks.http://www2.ljworld.com/news/2006/feb..."Most parties to litigation are over inclusive in their pleadings rather than miss the opportunity to have relief granted."Nice words, "over inclusive." Or, in a single word, "frivolous."Well, let's see, bad_dog, what are those 'pesky facts':- The original letter from Lew Perkins, by your own citations, was not limited to "9-10 specific examples" but also specifically mentioned "any other items," which fell into three categories. - Mr. Sinks had publicly stated, in a story in this newspaper, prior to the letter from Mr. Perkins (indeed, one might even suspect that story was the impetus for Mr. Perkins letter), that he did not believe any of his items infringed on the trademarks; hence, it can only be concluded that KU was to be the arbiter of which items were to be included in those categories.(continued)

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bad_dog 5 years, 9 months ago

2nd sentence, 2nd paragaph of 11:03 post should read "...to more than 200 as discovery proceeded."

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bad_dog 5 years, 9 months ago

Continuing..."The letter from the university's AD requested Joe College cease and desist selling "any other items," and that "any other" eventually included, in addition to the 9 or 10 mentioned, another almost 200 shirts that KU believed fell into those categories."-notajayhawkThe key word in your quote is "eventually". As I've indicated, the # of articles grew from those specifically identified in the letter (plus the "any other articles") to more than 140 as discovery proceeded. Most parties to litigation are over inclusive in their pleadings rather than miss the opportunity to have relief granted. That's why Complaints or Petitions are often amended after filing-to add and remove various counts or causes of action based on developments in the evidence since filing. KU's merely needed a "good-faith" basis to add additional articles. Inclusion of the additional articles was not "frivolous" or they would not have been admitted as exhibits and gotten before the fact-finder, the jury.Now, let me ask you a question notajay. And "please inform not just me, but everyone", what was the basis for your chiding Jay_lo's suggestion that "KU would have settled for a cease and desist involving a lot fewer shirt styles than they ended up suing over"? I don't believe you were aware of the May 2006 letter at that time, so just what did you base that criticism upon? Did you have inside information, were you privvy to the most confidential discussions or was that just your opinion, based on a visceral reaction arising from your perception of KU as the oppressor?

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bad_dog 5 years, 9 months ago

notajayhawk-As you may recall, this discussion began last week over your comment to Jay_lo wherein you stated: "And just what where you basing your claim that "KU would have settled for a cease and desist involving a lot fewer shirt styles than they ended up suing over" on, Jay_lo, other than maybe it came out of a certain body area people associate with your screen name?" I then brought KU's May 2006 cease and desist letter to your attention wherein KU took issue with 3 categories of shirts and gave Joe College 9-10 specific examples. Yes, they also requested Joe College C & D selling "any other items". "So, bad_dog, please inform not just me, but everyone - if the 200 shirts that eventually were included in the lawsuit were not covered by those three broad categories - what was the basis of their inclusion in the suit?"This is the way demand letters are written. You identify specific items/issues then try to include the balance of any potentially applicable issues to prevent someone from agreeing to just specific items and then proceeding with other, non-identified articles, or subsequently arguing you waived the right to contest other items. It's typically the starting point for discussions or negotiations assuming the other party doesn't ignore you. If you are ignored, then you proceed with your defense. Common sense tells me that "KU would have settled for a cease and desist involving a lot fewer shirt styles..." considering the cost of litigation, the possibility of an adverse verdict/ongoing appeals and the potential for negative PR. I can almost unequivocally assure you KU would have considered a compromise with Joe College. Perhaps a compromise beginning with those specifically identified and discussing "any other articles"? That's just the way sound business decisions are made.Continued...

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BIGBEAR 5 years, 9 months ago

I think that most of the people who are commenting here have never been in the store. Have you seen all the signs?I doubt that the Jury was allowed to actually go to the store. But had they walked in the day I did to see all the disclaimers they would have had to rule in favor of JoeCollege. They have made it VERY clear that they are not trying to confuse anyone. This case is a complete joke!

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notajayhawk 5 years, 9 months ago

bad_dog (Anonymous) says:"No, as I stated above and on numerous other occasions, the May 2006 letter asked Sinks to stop marketing the 3 categories mentioned above and specifically named ~ 9-10 t-shirts in those categories as examples. The number grew to 140 by the time dispositive motions were filed in the case, i.e. many, many months after the lawsuit was filed."Yes, on numerous other occasions. So I'll just repeat what I said on the other thread:The original letter (cited by bad_dog) included the following quote: "cease production and sale of any other items that infringe on the University's trademarks, including the term Kansas, and cease the use of designs that are closely identified with the University." As you note yourself, the original cease and desist letter was not limited to 9-10 shirts, it identified three categories - note the words "any other items."So, bad_dog, please inform not just me, but everyone - if the 200 shirts that eventually were included in the lawsuit were not covered by those three broad categories - what was the basis of their inclusion in the suit? The letter from the university's AD requested JoeCollege cease and desist selling "any other items," and that "any other" eventually included, in addition to the 9 or 10 mentioned, another almost 200 shirts that KU believed fell into those categories. Mr. Sinks was correct to challenge their request, as the jury apparently believed that KU's definition of what should be included in those categories was overly broad. Unless, of course, you're saying that the inclusion of all those other shirts was frivolous?

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alhawk43 5 years, 9 months ago

I just looked at the verdict pleading and there doesn't appear to be any logic to the shirts the jury picked and the ones that aren't infringing. It may just be me, but I don't think the jury really understood what they were supposed to be evaluating. It seems that the thing people are missing about this whole case is just because something is "tasteless" does not mean it is infringing upon anything KU owns. I'm curious what their basis was for saying the Muck Fuzzou infringed upon their marks. Some may say it is tasteless, but it isn't owned by the university.

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bad_dog 5 years, 9 months ago

"Overall, I think JoeCollege won. When KU issued their original cease-and-desist order..."-notaCourts or other bodies with judicial authority issue Cease and Desist Orders-not plaintiffs to be in an unfiled lawsuit. KU sent Sinks a "cease and desist" letter in May 2006 asking him to stop marketing t-shirts KU believed either infringed on their trademark, were offensive and reflected poorly on the university, or used the name of student athletes in violation of NCAA guidelines."...it was for something like 140 shirts." No, as I stated above and on numerous other occasions, the May 2006 letter asked Sinks to stop marketing the 3 categories mentioned above and specifically named ~ 9-10 t-shirts in those categories as examples. The number grew to 140 by the time dispositive motions were filed in the case, i.e. many, many months after the lawsuit was filed."What's sad is that it cost JoeCollege so much money to stand up to the bullying."It is sad that litigation in our judicial system-particularly on this scale, is extremely expensive. Keep that in mind if you get the urge to sue someone-particularly given the outcome in this case. Having said that, I wouldn't be surprised if there's another chapter or two left in this book.What's also sad to me is the partisan oriented, opinion-only driven misinformation being spread. Whether you believe KU-the corporate monolith was acting greedily and engaging in "bullying", or the "little guy" Joe College was infringing on a protectable property right, that is your right. Unfortunately, there are distasteful aspects of this case on both sides and no clear-cut winner.

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mom_of_three 5 years, 9 months ago

The jury decision is listed in the Kansas City paper,and the t-shirts which were thought trademark infringed are not all the ones in bad taste. Believe me, plenty of those were not touched. There was a shirt which said "smile if you were a jayhawk" which was trademark infringement, and another which had go big blue. Allowed were "hawk" but "hawks" was not allowed. "lucky to be a jayhawk" was not allowed, but "I got mass faced on ***street" was allowed. I don't know why some Missouri shirts were chosen and others were not. Doesn't seem to be much rhyme or reason, but it seems Joe College got lucky.

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fu7il3 5 years, 9 months ago

Muck Fizzou is nothing. At Iowa State we hadIuck Fowa, only the letters weren't reversed, if you get what I am saying.

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penguin 5 years, 9 months ago

Actually if you take a look through the line there are still plenty of drunken idiot shirts left in the inventory. The most notable survivor is "She Fat I'm Drunk It's On". I would guess that on tasteless grounds alone that this would be the first one eliminated. However, it clearly has nothing to do with the trademark and I am guessing got a pass. I imagine that like others have said that this issue will not close with this case, but only re-open with the next run of new t-shirts.However, we should all be thankful they were allowed to stay in business. At least we can get a better read on the people we meet. Anyone who would even consider buying one of the above shirts...well you can just tell what kind of member of the community they really have to be.

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spenmar 5 years, 9 months ago

It goes to show- dont hire a small town lawyerThis could have been won by using the SAME argument that the song writers used- it all is a parody.Wierd Al Jankovic was the man who won the court case Lew Perkins will sue this store again and again just watch.......You cannot trademark the color BLUE, the word HAWK, the name Kansas Lesson Here: Hire Better LaywersJoe College Should Appeal.Lew Perkins is using OPM and will not stop suing until he puts Joe College out of business.What Happened to Freedom of Speech?Lesson Here: When a BIG BULLY COMES KNOCKIN WITH BIG LAWYERS YOU BETTER HAVE EQUAL BIG LAWYERSSome lawyers charge $100 per hour.....some charge $2000 per hour......It is a very sad day when freedom of speech loses.

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Shardwurm 5 years, 9 months ago

How about:"My illegal alien pays less to go to school than yours!"

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Trobs 5 years, 9 months ago

Again, Joe College did not use any of the trademarks of KU. The shirts that were banned were shirts that gave a "bad image" of the school. Like the swim team shirt that had sperm on it. Joe College had/has zero Jayhawk shirts, KU shirts, etc. All of the shirts say Kansas, or Hawk, etc. All this was about was KU not getting their share. I for one will be going down this weekend and purchasing more then a few shirts to show my support for the shop. The best part of all of this, KU spent more then the $127,000 on lawyers!

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Confrontation 5 years, 9 months ago

Anyone who owns a business should be thankful for KU taking this to court. KU owns the rights to its trademarks, and Joe College is trying to get rich off something that belongs to someone else. The Jayhawk and other KU symbols have a huge value, unlike the purple crap to the west. Maybe Joe College should move to ManCrappin, where the college has no value.

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Take_a_letter_Maria 5 years, 9 months ago

Muck Fizzou was not banned.The thing that is most amusing about this is the fact that it isn't even original. I remember going to a game in Columbia back in the mid-70s and there were a bunch of MU fans wearing Tuck Fexas t-shirts. It appears that "we" stole this shirt from Mizzou.

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Trobs 5 years, 9 months ago

Muck Fizzou was not banned.

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vavs0929 5 years, 9 months ago

So... this lawsuit includes the whole "muck fizzou" thing... but that shirt has been around as long as I can remember, are they going to sue the first guy who made them and sold them out of jocks nitch? Probably not...

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Trobs 5 years, 9 months ago

Championships or not, the man is greedy. Honestly the entire university is.

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starbucks 5 years, 9 months ago

Not to mention Lew had nothing to do with this.The Collegiate Licensing Committee in Atlanta GA approached KU and said, more or less, "we are willing to pursue this on your behalf". That is what happened. KU didn't initiate this.

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Haiku_Cuckoo 5 years, 9 months ago

Anyone for a Luck Few shirt?===I'll pass, thanks. The phrase "luck few" sounds stupid plus he helped bring us two winning teams this year.

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Write2Know 5 years, 9 months ago

I think the jury really dropped the ball on this by not establishing a set of consistent guidelines.

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Trobs 5 years, 9 months ago

I'd like to see a list of all the shirts that have been banned. From the sound of it, they banned the drunk frat boy shirts more then the shirts that stepped on KU's trademark.

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logicsound04 5 years, 9 months ago

"Anyone for a Luck Few shirt?"--------------I have a feeling this shirt (or one like it) will be coming shortly....======================Another question,If there were no mention of "Hawk" anything, do you think Joe College could print things that said "Self-defense", "Self-reliance", "Self-confidence", etc....

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Trobs 5 years, 9 months ago

Muck Fizzou lives on!Anyone for a Luck Few shirt?

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Jerry Stubbs 5 years, 9 months ago

Yeah, it cost Joe College a lot of money, but look how much publicity they've gotten. Thousands of people that never even heard of them before are now going to check them out this football season and probably buy a shirt or two. Things don't always end the way you might think.

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notajayhawk 5 years, 9 months ago

Overall, I think JoeCollege won. When KU issued their original cease-and-desist order, it was for something like 140 shirts. Rather than cave in, JoeCollege challenged their mandate and the jury agreed that while some shirts did infringe, nowhere near the number that KU tried to stop were disallowed by the jury. What's sad is that it cost JoeCollege so much money to stand up to the bullying.

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