When you see a T-shirt or hat with a recognizable, old logo on it, do you look to the current brand owner as its source? Universities and companies will often try to protect their goodwill in these images even after they have updated the marks they use and license others to use. In a case with implications across the licensing industry, Pennsylvania State University was victorious in a recent, closely watched trial over unauthorized use of its legacy logos and old images. The jury found that the defendant, Vintage Brand, infringed Penn State’s trademarks. The jury verdict solidifies the rights of a mark owner to control its goodwill over time and changes in mark usage.
Like many schools, Penn State has a robust licensing program for those who want to sell clothing, hats, and other merchandise to students, alumni, sports fans, and others. Penn State alleged that Vintage Brand; its manufacturer, Prep Sportswear; and its owner, Chad Hartvigson, were selling such merchandise using the university’s logos and old imagery without a license. The defendants had copied illustrations from old school materials and printed them on apparel and other items. Among the marks used without permission were the school’s official seal and an old version of the Nittany Lion Shrine. Vintage Brand argued that use of such designs was fair because they do not serve as a symbol that a consumer associates with the source of the products being sold—that is, with Penn State. Vintage Brand also relied on the disclaimer on its website that its designs were not “affiliated with, licensed, or sponsored by any college, team or league.”
Siding with Penn State, the jury found that all three defendants had intentionally infringed on several of the university’s trademarks, including old marks. The jury rejected Vintage Brand’s fair use defenses, finding that the use of Penn State’s marks was not merely “ornamental” but was indeed likely to create consumer confusion about the source of the products.
Also notable in this case was the court’s decision to allow the jury to consider whether the defendant manufacturer was liable for intentionally infringing Penn State’s marks. Prep Sportswear had argued that it was merely a passive participant in the sales, but the court held that because Prep Sportswear applied the logos and imagery itself during manufacturing and then shipped the goods to consumers, the jury could find it liable for direct trademark infringement. Subsequently, the jury found that Prep Sportswear had intentionally infringed on some (but not all) of the marks in question.
This is a significant decision with broad implications in sports merchandising and more generally for trademark owners as well as those who want to use old imagery on products. The decision, which may still be appealed, solidifies the control trademark owners have over their brands. It also has implications for other entities that apply marks and ship goods (or provide other online services) at the direction of their customers.
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The case is The Pennsylvania State University v. Vintage Brand LLC, Sportswear, Inc. d/b/a Prep Sportswear, and Chad Hartvigson, M.D. Pa., No. 21-1901, Verdict 11/19/2024. To learn more about how this ruling could affect your trademarks or your business, please email the authors or your regular contacts at McCarter & English