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.