Trademark Registration Key To Enforcement: OSU Fansite Opens Itself up to Liability for Direct Competition in the Information and Advertising Market

Trademark Registration Is Critical To Protecting trade marks from infringement.

On August 27th, the Ohio State University (OSU) (plaintiff) prevailed in the federal district court for the Southern District of Ohio against Keith Antonio Thomas (defendant). District Judge Gregory L. Frost delivered the opinion of the court and issued a preliminary injunction against Thomas for his use of OSU marks on his Internet fansites and publications.

The district court came to three major findings before holding that an injunction against Thomas was the proper remedy;

1st, OSU’s registered trade marks were “readily accepted by the public as hallmarks” of OSU athletics, the court held that use of the marks was “quite strong in the context of website or publication.”

2nd, The district court held that OSU and Thomas’s Websites directly competed in the market for information and advertising about OSU athletics.

3rd, In support of its finding that consumer confusion was highly likely, the district court enumerated; that OSU’s registered marks and the marks used on Thomas’s Websites were identical, OSU already offered its own very similar publications, and the same advertisers purchased advertising from both OSU’s and Thomas’s publications.

OSU’s argument was that Thomas’s conduct constituted trademark infringement of OSU’s various registered and common law ‘Buckeye’ related trademarks by using identical marks in stories, player statistics, and sports schedules on his Websites and publications.

Thomas argued that his use of the OSU Buckeye trademarks was permissible in that it was akin to a newspaper’s use, that therefore Thomas offered different services than those offered by OSU which were primarily for educational purposes.

As noted above the court rejected Thomas’s arguments and instead held that both fansites were not analogous to newspapers, and that the primary mission of OSU as an educator was irrelevant to the discussion of the issues.

The court went on to note that the similarity between the publications of the University and those of Thomas and the likelihood of confusion faced by Web users were key considerations in its determination for issuing the injunction.

The court also explicitly rejected Thomas’s ‘fair use’ argument, instead holding that Thomas’s use of the OSU marks was not descriptive, rather that it was intended to capitalize on Ohio State’s reputation and goodwill.

The full case can be found here: Ohio State Univ. v. Thomas, 2:10-CV-753, 2010 WL 3447848 (S.D. Ohio Aug. 27, 2010) (courtesy of IPLitigationUpdate)

Autumn Nero on IPLitigationUpdate pointed out what is a valuable ‘lesson learned’ for Internet Law Attorneys from this litigation;

“Lesson Learned: Fansites, beware the trademark. You may end up competing with the object of your affection in the market for information and advertising. In particular, to the extent you intend to allow advertising on your sites, seek a license.”