I was only going to write one post today but since I have taken many intellectual property classes in law school this article about UConn asking Clinton’s Morgan School to change the husky image they use piqued my interest. The article does a somewhat decent job of laying out the issues and notes that the university is not interested in litigating the matter. However I think the article does a poor job of laying out the law and explaining it to the general public.
The first issue is that the article discusses trademark infringement but a quote from Michael Enright refers to copyright infringement. I think that this quote confuses two separate issues for the readers. Trademark is protection granted to a distinctive mark for the purposes of identifying the source of goods used in commerce. The purpose of trademark is to prevent consumer confusion in the marketplace (i.e. we do not want people seeing the dog from Morgan School on a hat and have people think it’s a UConn hat or vice-versa). Copyright is protection granted to an author of an original work for a limited period of time so they can profit from their creative endeavor. Copyright is why you cannot legally share music online.
The test for copyright consists of two parts: access to the original work and substantial similarity to that work. The first component is key with regards to copyright because the article notes:
The gymnasium Husky was not copied from UConnâ€™s logo, and does not resemble it, but was drawn by a student many years ago, Cross said, possibly prior to the UConn trademark.
If it turns out the gym logo was created first, then that certainly could not be a copyright infringement case because it would not meet the access prong of the test.
The second issue that is murkier comes when we assess the impact of the potential of the Morgan School logo being first in time to UConn’s trademark. Under trademark law the fact that Morgan School used the logo first entitles them to continue to use it as a senior user of the mark. They are not required to register the mark with the USPTO to have a valid mark; they acquire trademark rights to their mark in common law but only in the geographic area they use it. Therefore if Morgan School was first in time, UConn can ask them to stop using the mark, but they are not likely to succeed if they decided to take it to court. For a more technical discussion on this aspect of trademark law you can read this article.
The article does do a good job of pointing out that trademark owners are required to police their marks otherwise they risk losing the protection of it. Unfortunately they decided to include a quote from First Selectman William Fritz at the end, decrying the fact that UConn was pursuing the matter. Fritz did not seem to understand the obligations of the university under trademark law and his statement cast UConn in a bad light. The quote added little to the article other than encouraging the readers to be angry. And angry they are based on the comments at the end of the article.
Disclaimer: I am not an attorney (yet) and this blog post is merely my own analysis of the situation based on the facts provided and some knowledge from my classes. It does not constitute legal advice.