We have been discussing the growing limitations and litigation over copyright and trademark claims in this country. U.S. District Judge Keith Ellison granted a temporary injunction in a trademark infringement suit filed by the University of Houston Law Center against the Houston College of Law (formerly known as the South Texas College of Law). Judge Ellison found that there was a sufficient showing that the new name and the school’s red-and-white colors infringed the trademark of the University of Houston Law Center. The Houston College of Law dominantly features a warning that it is not affiliated with the Houston Law Center on its website and material. The opinion is linked below.
We have been discussing a disturbing trend in copyright and trademark claims over things occurring in public or common phrases or terms. (For a prior column, click here). We have often discussed the abusive expansion of copyright and trademark laws. This includes common phrases, symbols, and images being claimed as private property. (here and here and here and here and here and here and here and here and here and here and here). This included a New York artist claiming that he holds the trademark to symbol π. This is all facilitated, if not encouraged, by federal laws secured by industry lobbyists with little consideration of the impact on average Americans or small businesses. Thus, Caribou Coffee can now sue a small diner for using Caribou in its name as companies claim ownership over common nouns.
The recent controversy between the law schools demonstrates how broad these laws can be in the prominent use of the name of the city for the school. This is not a criticism of Judge Ellison who is applying the laws written by Congress (and wrote a detailed opinion), but the line over trademark infringement remains a difficult one to discern for many of us.
The University of Houston Law Center is obviously higher ranked (at around 50 on U.S. News and World Report) than the Houston College of Law. There has also been confusion with students signing up for bar examinations and other tests, according to the University of Houston Law Center. I can understand the frustration of the school. However, you have two schools in Houston that want to use the name of the city and obviously “Law” in the title. One has chosen the term of “Law Center” while the other “College of Law.” Ironically, UH’s law school was founded in 1947 under the name of the University of Houston College of Law until 1967 and then became the Bates College of Law. However, it saw the value of using the geographic location in its title and changed in 1982 to University of Houston Law Center (“UHLC”). The same value in the incorporation of the geographic location was reflected in the recent change of the new Houston College of Law. Shouldn’t a school be allowed to use the geographic location in its title with its academic focus? I can understand issues of any confusion of school logos, but the violation concerning the name is problematic.
On June 22, 2016, South Texas College of Law announced that it was changing its name to “Houston College of Law.” UH publicly objected and, five days after the name change, UH filed a complaint alleging trademark infringement.
The claim turns on the Lanham Act which makes liable “[a]ny person who . . . uses in commerce any word, term, name, symbol, or device, . . . which . . . is likely to cause confusion, or to cause mistake . . . as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person.” UH had to show that (1) the claimed mark is eligible for protection, (2) the party seeking protection is the mark’s senior user, (3) there is a likelihood of confusion between the plaintiff’s mark and the defendant’s mark, and (4) this likelihood of confusion will cause the plaintiff irreparable injury for which there is no adequate legal remedy. The problem is when on mark has used a common noun or geographic location and then claims irreparable injury in the use of that geographic location by others in the same field.
The Court ruled that the name and logos are out of bounds:
The appearance of the UNIVERSITY OF HOUSTON LAW CENTER and HOUSTON COLLEGE OF LAW marks are strikingly similar. As an initial matter, two of the three words in Defendant’s mark appear in UH’s mark (“Houston” and “Law”), which is a noteworthy fact in and of itself.56 Far more troubling, however, is the way in which Defendant deploys its mark in the marketplace. Consider Defendant’s logo, for example, which is prominently featured in most (if not all) of the promotional material in evidence. As is true of the UHLC logo, Defendant’s logo uses block letters,58 emphasizes the word “HOUSTON,” and utilizes a red and white color scheme. Indeed, these features are ubiquitous throughout Defendant’s marketing materials.
Once again, the logos are understandable, but the name controversy is disturbing since the use of “Houston” and “Law” are key elements for a school in the city.
What do you think?
The ABA Journal posted the opinion here.
9 thoughts on “Federal Court Enjoins Houston College Of Law In Use Of Name After Lawsuits By University of Houston Law Center”
The mere fact that the names are similar does not mean copyright or trademark infringement. Names may sometimes be alike, but no student who attends one school is going to confuse it with the other similar-sounding one, and employers certainly won’t confuse the two. Sure, when you first read the names you might confuse the two, but nobody is going to make an economic decision relating to the schools based on the fact that they sound alike.
For example, I remember the first time I read about someone having graduated from “Samford University” and I first assumed they meant “Stanford University,” as I never heard of “Samford University” before. But I looked it up and learned that “Samford University” is indeed an educational institution, but in Birmingham, not Palo Alto. No big deal.
But I agree that copyright laws are completely screwed up. A couple years ago, I was in Hartford, CT, and a friend invited me to see a musical that got good reviews called “A Gentleman’s Guide to Love and Murder.” I had no idea what it was about, but I agreed to go see it. Within a couple of minutes into the musical, I realized that I knew this story and had seen it before. Then within a few seconds later, I realized that this musical was a complete rip-off of a movie I hadn’t seen in years; but I remembered enjoying it, called “Kind Hearts and Coronets,” a 1949 classic British comedy from the Ealing Studios starring Dennis Price and Alec Guinness, with Guinness playing 8 roles.
Although the musical copied virtually every story detail from the 1949 movie, right down to having one of the lead actors play 8 different roles, I later learned that the makers of the musical successfully defended infringement claims brought by the owners of the rights to the 1949 movie. The court’s basis for claiming no infringement is that both works were based on the novel “Israel Rank: The Autobiography of a Criminal,” published in 1907, which was in the public domain. However, the Court totally ignored the fact that the 1949 movie made many changes to the novel, yet the musical directly copied the movie’s significant and unique story and character points, which differed substantially from the novel. Had the musical copied the novel, then, yes, the court’s conclusion would make sense. But the fact is that the musical copied the movie, not the novel, and, thus, the court’s conclusion was a bogus one.
I have long come to realize that the law is such a problem because lawyers are rendering decisions about things they know absolutely nothing about, but those decisions affect all of our lives. A judge rendering legal opinions on matters involving literature and film should have solid credentials in those areas. Yet, here we have an illiterate judge making rulings on literature and films. We also have judges ruling on scientific patents when they know zilch about science. We have judges ruling on financial matters who know zilch about finance. We have judges ruling on accounting matters who know zilch about accounting. We have judges ruling on medical cases who know zilch about medicine. And so on and so forth.
And the only people who can do anything to correct this mess are lawyers. But lawyers aren’t going to improve anything that helps the public if it means that the whole lot of them would have to go back to school to become qualified on the matters they are rendering opinions about.
Not for nothing did one of the greatest writers of all time pen the following:
“The first thing we do, let’s kill all the lawyers.” — Henry VI, Part 2, Act 4, Scene 2.
Ralph Adamo = ‘Kind Hearts and Coronets’ is one of my favorite movies. Did not realize there was a book. Saw the film in the late 50s at a film club in 16 mm. I catch it everytime I can.
I think the issue here is that the South T law school intentionally tried to create ambiguity. It wasn’t just the name change, but the colors and lettering as well. Face it, colleges are very competitive with one another, and in order to attract students, it is easier and cheaper to “improve” the college by a vague association with a higher ranked school than to improve the quality of the program by hiring more prestigious professors. I knew a guy who couldn’t get admitted to a regular law school, so he moved to Calif to attend a non-accredited one. He bragged that he intentionally chose the non-ABA accredited San Francisco Law School because the name is similar to the University of San Francisco Law School, which he didn’t have a chance of getting in.
I spent three years (12 months the first two) at the school I always refer to as:
South Texas College of Barber Knowledge & Night Law School @ 1220 Polk Street
For those who feel superior to the more humble students found at STCL, there are many high-grade
attorneys who received a J.D. degree from there — including numerous very succe$$ful trial (P&D) and criminal defense graduates.
I sat next to a recent Harris County Dist. Atty in three or four classes there.
Their graduates tend to have a deeper, broader understanding of human nature, and how to use that knowledge in the practice of law.
I’ve read a lot of attorney resumes, and done a lot of interviewing. There are exceptions on both ends. There will always be some students from lower ranked schools who do quite well, and I’ve seen Ivy law graduates who just can’t cut it in the real world. But the value of ranking is that it tends to correlate to the average success of the graduates. Thus top 10% law grads will, on average, do significantly better than bottom 10%. The most significant impediment for lower ranked grads is that they won’t get the interviews and will never get the chance to prove themselves. Unless, of course, they go into private practice and suceed, but that is really tough, especially in a state like CA which is drowning in lawyers.
I am going with the ABA on this one.
Hmmm. Well, I guess The Celtic University is going to have to lose the horny frogs mascot.;
One does wonder why they didn’t take care to create more visually distinct materials if they were going with a similar name. It seems they could have greatly lessened the potential for this result.
Names of schools often seem to create problems. Southwest Texas State University changed its name a few years ago to Texas State University-San Marcos, but is widely known as simply Texas State University even though the University of Texas is 28 miles away in Austin. Texas State University is widely abbreviated as TSU along with two other colleges in Texas – Texas Southern University and Tarleton State University – and others around the country.
South Texas College of Law was always a directional misnomer. Corpus Christi or San Antonio or Laredo might be considered south Texas, but not Houston, which would, at best, be located in Southeast Texas. The need for a name change is understandable, but greater care needs to be taken to reduce confusion with the U of H Law Center, which, as you point out is a more prestigious institution, though many Harris County judges graduated from South Texas College of Law and attended it part-time while they worked in other jobs. Locally, it has a lot of influence. Maybe Harris County College of Law would be a better choice. It is not affiliated with a college or university.
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