OU works to prevent trademark infringement
Merrill Jones, The Oklahoma Daily
OU will be teaming with local law enforcement agencies for the remainder of this football season to crack down on the illegal use of OU’s trademarks on T-shirts, hats and the like, university officials said at a seminar Thursday at OUPD’s headquarters.
The upcoming sweeps will target not only stores, but also those people coming to Norman on football game days to sell counterfeit products in makeshift stands and even out of vehicles, said Renata Hays, director of licensing for OU’s athletic department.
She said first-time violators would receive warnings, along with demands to remove the items in question, but she also said OU would consider seizing items and pursuing civil and criminal actions against repeat offenders.
No one announced a specific time for the sweeps. Instead, the timing will depend on OU receiving enough reports of sales of counterfeit items to justify creating a team of OU and law enforcement personnel to make door-to-door demands, said Anil Gollahalli, OU’s chief legal counsel. He also said key times for counterfeiting enforcement are during football season, as holidays approach and as the basketball seasons approach March Madness.
OU offered the training seminar to members of both OUPD and Norman Police. A representative from Oklahoma State University also attended.
“It won’t be [OU officials] on the stand when the [district attorney] prosecutes it,” Gollahalli said. “It will be [law enforcement officers] on the stand, and simply pointing to [OU officials] and saying ‘Well, they told me it was counterfeit,’ isn’t going to have a whole lot of stroke.”
Hays said officers participating in the sweeps will receive overtime pay, likely from the Collegiate Licensing Company, a national company OU works with to enforce its trademark rights nationally.
People and companies violating OU’s trademark not only deprive the university of money, but also prevent OU’s licensees from getting the full value of the rights for which they pay OU, as well as mislead customers hoping their purchase will provide funds to OU, Gollahalli said.
Counterfeit goods are also often of inferior quality and their manufacturing can contribute to human rights violations, he said.
“For us, it’s sort of a moral issue, it’s a financial issue, and so that’s why we’re undertaking this process,” he said.
OU licenses more than 500 companies to make products using OU trademarks, and uses the Collegiate Licensing Company as a clearinghouse to deal with those vendors, Hays said. The clearinghouse uses holograms with serial numbers, along with stickers, tags and labels to mark products as officially-licensed from OU, Hays said.
The clearinghouse also enforces trademark rights for OU at events outside Oklahoma, such as OU-Texas, bowl games and NCAA tournaments. It seized about 10,000 pieces of counterfeit merchandise each year, Hays said. She didn’t know how many of those pieces were OU related, but did say OU ranks 10th in the country among universities in licensing revenues, with more than $3 million brought in to OU each year.
“I do see it frequently in Norman,” Hays said of counterfeit OU goods in a post-seminar interview. “I’ve seen it on numerous occasions. In fact, some of these items [we brought] for [training purposes] were from stores here in Norman that were selling things that shouldn’t be.”
OU’s standard licensing deal allows the university to claim 10 percent of the wholesale value of the goods as a royalty, Hays said. However, local and small-time vendors pay smaller amounts, she said. Internal groups using OU’s trademarks, such as a student organization creating clothes for its own use, need permission from OU to do so but do not pay licensing fees, Hays said.
Rachel Blue, a trademark attorney with the Tulsa office of McAfee and Taft, said OU is affected by two types of unlicensed goods: counterfeit goods and goods that infringe on OU’s trademarks.
Counterfeit goods use marks identical, or almost identical, to trademarks the university owns, such as the interlocking OU or the Sooner Schooner, she said. People or companies involved in counterfeiting are subject not just to demands to stop using the symbols, but also to civil lawsuits and criminal charges, Gollahalli said.
Infringement, however, involves a mark that “is so similar to a registered mark that when it’s used on goods and services that are related to the trademark owners’ goods and services, it might cause confusion in the public,” Blue said.
OU can demand an end to the sale of goods that infringe on its trademarks, and pursue violators in civil court, but infringement is not criminal, Blue said.
For example, some T-shirts produced by the Smack company infringe on OU’s trademarks, she said.
These shirts use colors similar to OU’s crimson and cream color scheme, along with other imagery the buying public might associate with OU, such as highlighting the letters “O” and “U” in the design, Blue said.
The United States Court of Appeals for the Fifth Circuit found the combination of OU’s colors, plus some reference to a university, enough to rule Smack infringed on OU’s trademarks, Blue said.
“Smack was very careful not to actually use any of the universities registered trademarks,” she said.
Gollahalli said abuse of OU’s trademarks goes up when the university’s teams are successful on the field, which means OU’s struggles on the football field likely means counterfeiting will be less of an issue this season.
“There are actually [counterfeiters] that sort of rove the country, looking for programs, and they’ll hit bowl games, they’ll hit large games and we’re not going to attract as many of those.” he said.