University Sending Out Trademark Letters To Parody Artist Over Logo/Mascot It Abandoned

from the sue-sioux dept

As you may recall, we had written about the University of North Dakota getting trolled by a jackass over attempts to give themselves a new school team name. Once called The Fighting Sioux, the school bent to local tribes’ requests and agreed to abandon that name and come up with a new one. After soliciting suggestions from the public, a guy who wanted the school to keep its old team name went ahead and registered for trademark all of the new possible team names. It was a move as annoying as it is ineffective since, as we pointed out at the time, this man would have to prove he was using those marks in the same marketplace as the school in order to allege any kind of trademark violation. UND was the victim of trademark bullying.

But now the shoe is on the other foot, as UND lawyers have sent cease and desist notices to a Denver UND alumnus who has created clothing featuring a parodied version of the old UND mascot logo. Here are the two logos side by side.

So, yeah, there isn’t a ton of differences there, but what changes were made make a significant impact. Parody only works if there’s similarity, of course, and it seems unlikely that anyone is going to miss the outstretched tongue and think they’re buying official UND clothing. That isn’t stopping the school from sending out the letters, though.

Karl Larson is still making and selling clothing that parodies UND’s retired Fighting Sioux logo after the school’s legal counsel sent a letter asking him to stop. The Fighting Sioux nickname was controversially retired in late 2012 after the NCAA threatened sanctions, but UND still owns the trademark to the logo, which was designed by American Indian artist and sculptor Bennett Brien. The cease and desist letter from UND dated Sept. 23 states Larson’s logo is an “unauthorized reproduction,” and is likely to cause confusion, constituting copyright infringement.

“While your website includes a self-serving referenced to ‘parody,’ we do not believe that there is any legal authority that would even remotely suggest that the minor, almost imperceptible modification to the work here qualifies as permissive use.”

The use clearly is parody. The entire point of the change in logo is to mock the school for abandoning its trademarked name and associated images. Finally, the school abandoned the trademark and images. That should end the trademark argument right there. For a trademark to be valid, it needs to be actively used in commerce. The school abandoned its nickname and logo in 2012. Spend some time on the school’s athletics page and you won’t find the old logo anywhere.

Larson has reportedly retained counsel out of Fargo to respond to the letter, but I wouldn’t expect much other than an explanation of how trademark law works to be required.

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Companies: university of north dakota

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Comments on “University Sending Out Trademark Letters To Parody Artist Over Logo/Mascot It Abandoned”

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Dark Helmet (profile) says:

Re: c'mon man

I’m actually with you on this, in that I don’t think the Fighting Sioux’s name or logo is in any way racist. That said, if the local tribes say they’d rather you not use their tribe name as a moniker for a big institution of the state that long ago did you wrong, I think it’s appropriate to change the name at their request….

tqk (profile) says:

Re: Re: Re: c'mon man

Not when the rich elite ruling class thinks you are sub human.

I believe the Sioux taught that rich, elite ruling class they were mistaken, fatally so, when they kicked Custer’s ass to hell and back. There’s not a damned thing offensive about “Fighting Sioux.” It’s a compliment when your oppressor wants to be known as one who respects your ability. The more capable your enemy is reflects on your own strength.

The Sioux should be proud to have taught them this lesson.

Anonymous Coward says:

What I don’t get is how lawyers can get away with ignoring the law. If the guy using their abandoned trademark had ignored the law (say, by using a current trademark) he’d be in big trouble. But the university lawyer ignores the law by sending a demand letter about an abandoned trademark, and what’s the worst that happens? Nothing at all? Maybe a declaratory judgement against the university for no money stating what should have been obvious in the first place?

Anonymous Coward says:

Re: Re:

This was in the linked article…

The cease and desist letter from UND dated Sept. 23 states Larson’s logo is an “unauthorized reproduction,” and is likely to cause confusion, constituting copyright infringement.

Since they don’t show the actual letter, I can’t tell whether it’s the lawyer or the reporter who is totally mixing up trademark and copyright.

Anonymous Coward says:

> … other than an explanation of how trademark law works …

Er… as the linked article already states, UND relied on copyright law in their cease and desist. And Larson’s lawyer explained parody to them already. It may be that he’ll explain it to them a time or two more. Possibly in a courtroom.

Of more interest (to me) is whether UND holds the actual copyright to the image (through assignment or Work For Hire). If they don’t, it could get embarassing.

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