University Of Illinois Bullies Alum Out Of Making 'Make Illinois Great Again' Shirts Through Tiny Settlement

from the nice-one-chief dept

You will recall that earlier this year we discussed the University of Illinois' attempt to trademark bully an alumnus out of making orange and black shirts that read "Make Illinois Great Again." The whole story surrounding the school's actions is somewhat more complicated than it might appear. Part of the issue is that the shirts in question used the image of Chief Illiniwek, something of a mascot the school abandoned a decade ago, and one that was the source of controversy given its cartoonish mannerisms as related to Native American tribes. So, when the school first objected to Ted O'Malley's trademark application, and then later filed suit against him, you should understand that it was done as the school remains under public pressure to disavow the previous use of this imagery. All of that being said, claims that the school's trademark gives it the right to control the word "Illinois" on all apparel were obviously silly.

But trademark bullying works, as we've stated many times in the past. And it tends to work all the more when the bully has a large war chest to fund its legal team and the victim is a much smaller, much less well-funded entity. Such appears to be the case with O'Malley, who has settled with the school and essentially agreed to its demands in return for a measly $7,500 payout.

The University of Illinois is paying $7,500 to the Chicago-area alum who made T-shirts that said “Make Illinois Great Again” on the back and had a drawing of Chief Illiniwek on the front. In exchange, Ted O’Malley has to stop selling the shirt and agreed not to sell similar T-shirts in the future.

The UI reached a settlement with O’Malley after suing him in March for violating its trademarks for the word “Illinois” and a copyrighted photo commissioned by the UI of the Chief holding up his arms. The UI has also agreed not to challenge O’Malley’s “Make Illinois Great Again” trademark and to dismiss its lawsuit.

Ok, so you may read this and conclude that it's not a full win for the university. And that's true in that O'Malley no longer faces the lawsuit, no longer has to worry about the copyright component of the legal action, and gets to keep his "Make Illinois Great Again" trademark. What such a conclusion would ignore is that the real aim of the school in all of this was, again, to keep an alumnus from using any imagery of a mascot it itself used to embrace but has since abandoned. The school's real issue here isn't trademark or copyright violations, but rather making sure it appears to act to keep images of the Chief from being displayed at all.

Put another way: if O'Malley had done everything exactly the same but had never used an image of the Chief on his shirts, the school likely would never had taken any action against him whatsoever. Cast in that light, the school essentially misused intellectual property law in order to attain an unrelated goal. That's trademark bullying. And, for $7,500, it got what it wanted. Keep in mind that part of the point of the shirts were commentary on the state of the University of Illinois and, specifically, its athletic programs.

With the settlement, O’Malley agreed to no longer sell “Make Illinois Great Again” clothing that is orange and blue or that uses any of the UI’s trademarks, logos, symbols or landmarks, such as Chief Illiniwek, the Alma Mater statue or Memorial Stadium.

If he makes “Make Illinois Great Again” clothing in the future, he agrees not to make athletic clothing or to use a font similar to the “Fighting Illini” font. He also agreed not to use the “Make Illinois Great Again” trademark to “disparage or impugn” the UI, something his lawyer, Doug Johnson, did before the lawsuit was filed.

So the school used taxpayer money to silence a critic using an embarrassing old mascot's image by being an IP bully. That's not a great look for a public institution.


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  • identicon
    Pixelation, 24 Jul 2018 @ 8:18pm

    Just goes to show you Illinois was never great to begin with.

    reply to this | link to this | view in chronology ]

  • identicon
    Anonymous Coward, 25 Jul 2018 @ 6:14am

    The school is protecting its trademark and reputation.

    This article is idiotic.

    reply to this | link to this | view in chronology ]

    • icon
      Cdaragorn (profile), 25 Jul 2018 @ 6:35am

      Re:

      Only if you have no clue how IP law works and didn't care to read the article.
      IP law is not there to protect your reputation, and using it to do that is abusing the law for quite literally illegal purposes.
      Trademark law is also not as simplistic as you present it to be.

      reply to this | link to this | view in chronology ]

      • identicon
        Anonymous Coward, 25 Jul 2018 @ 9:35am

        Re: Re:

        Trademark is without question designed to protect brand so you have no idea what you’re talking about.

        This school does not want to be misconstrued as promoting a racist caricature.

        reply to this | link to this | view in chronology ]

        • identicon
          Anonymous Coward, 25 Jul 2018 @ 5:40pm

          Re: Re: Re:

          Keep digging. Because it’s fun to watch people with absolutely no idea what the law actually says lecture other people on the finer points of it.

          reply to this | link to this | view in chronology ]

        • icon
          The Wanderer (profile), 26 Jul 2018 @ 7:44am

          Re: Re: Re:

          No, trademark is not designed to "protect brand" in anything like that broad a sense.

          Trademark is designed to prevent people from being tricked into thinking they're buying from you, when in fact they're buying from someone else.

          Or that's the only purpose of trademark I've ever encountered a sufficiently satisfactory justification for, anyway. If you want to argue that trademark has another purpose, you'll have to explain why that purpose is justified.

          Preventing someone from using a mark that you yourself no longer willingly use is not within the legitimate scope of trademark.

          reply to this | link to this | view in chronology ]

  • identicon
    Zonker, 27 Jul 2018 @ 4:31pm

    Note that the settlement only bars him from selling clothing under these conditions. Profit from settlement: $7,500 (minus legal expenses).

    New business model: Start selling "Make Illinois Great Again" coffee mugs, wait for new lawsuit, settle again.

    reply to this | link to this | view in chronology ]


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