T-shirt trial's effect vague

Topeka Capital-Journal, The, Jul 16, 2008 by James Carlson

By James Carlson

THE CAPITAL-JOURNAL

Opinions about the impact of The University of Kansas' trademark lawsuit against a Lawrence merchant are as varied as the 206 T- shirts in question.

One day after a U.S. District Court jury in Topeka slapped Joe- College.com with a $127,000 penalty for its approximately 50 shirts infringing on the KU brand, some were happy to see some of the clothes off the market, while others worried about the ruling's potential dampening effect on new businesses.

There are still a few more steps for the local case -- the judge will have to decide about any injunctions against future T-shirt sales and whether to adjust the award up, down or let it stand.

But the lawsuit was the talk of many in the college apparel industry both in Kansas and across the country.

Chilling effect?

At issue is licensed versus unlicensed merchandise and how much of a school's brand can be used in selling clothing not signed off on by the university.

Stacey Osburn, spokeswoman for the NCAA, said trademarks for the NCAA's brand are important to "ensure that the use of these marks reflects on the NCAA in a favorable manner, produce revenue to support and enhance NCAA programs, and to fund scholarships."

Lew Perkins, KU athletic director, said after Monday's decision that revenues from trademarked items are used to provide about $1 million in scholarships for the university's students.

Wayne Curtiss, of Smack Apparel, sells unlicensed shirts from his behemoth Web site and at many of the country's biggest universities. He said he isn't averse to licensed apparel, "I'm just averse to not being creative."

Curtiss said he didn't think the ruling was a win for either side but worried about the effect of the monetary judgment.

"The fact that they have a big bank and most (small businesses) don't have the money to fight, I think it could squelch creativity in the marketplace," he said.

Andrew Torrance, a professor of intellectual property law at KU, said the school was most likely trying to send a message.

"(KU) can use that against other merchants to chill any future trademark infringement," he said.

The little guy

Throughout the trial, some on Massachusetts Street in Lawrence grumbled about a big university picking on the little guy. That isn't the case, said Ryan Owens, general manager of Jock's Nitch in Lawrence.

Owens said certain T-shirt sales dropped off with the entrance of the Joe-College.com store across from one of his two shops in downtown. He said Joe-College.com had an unfair advantage because stores such as his pay the proper fees to sell licensed KU gear.

"It was exciting to see KU standing up not only for itself but for us licensed dealers," Owens said.

There is only a finite amount of money in the university shirt market, said Mike Sykes, a sales representative for Step Ahead Sportswear, which sells licensed apparel to stores in Kansas. He said such vendors as Joe-College.com "dilute" others' share of the legitimate market.

At least one local licensed seller didn't mind the offbeat shirts sold at the Lawrence store. Tim Liebert, co-owner of Kansas Sampler, said the target audiences for licensed and unlicensed apparel are different, and he doesn't find his business has suffered.

"We've only seen our sales go up," he said.

But Owens said he has students walk in his stores and ask for a Joe-College.com design. When they find out Jock's Nitch doesn't sell them, many simply walk out.

What now?

Jim Tilly, Joe-College.com's attorney, called the case "one of a first of its kind." He said it is early in the process, but the case could affect future court action.

He will get a chance to find out himself in September when he begins oral arguments before the 5th U.S. Circuit Court of Appeals on a separate case involving Smack Apparel.

Curtiss, with Smack Apparel, produced six shirts that numerous universities are suing him over.

He was optimistic after the Topeka ruling because U.S. District Judge Julie Robinson allowed a jury trial, whereas the judge in Curtiss' case granted a summary judgment against his company with no jury.

"It's an issue that's proper for a jury trial," Tilly said.

James Carlson can be reached

at (785) 233-7470

or james.carlson@cjonline.com.