In 2021, my alma mater, Penn State University, filed a lawsuit against Vintage Brand LLC and its co-founder and majority owner, Chad Hartvigson. The university alleges that Vintage Brand infringes upon its registered and common law trademarks by incorporating those marks into its products without consent.
Vintage Brand counters these allegations by asserting that consumers are aware its products are neither affiliated with nor endorsed by Penn State or other universities or teams. They argue that disclaimers, such as hang tags on their clothing, clearly indicate this lack of affiliation.
Known for selling clothing and other merchandise featuring screen-printed images of memorabilia and historic logos from various universities and professional sports teams, Vintage Brand has faced legal scrutiny from several universities. However, this is the first case involving the company that has proceeded to trial.
U.S. District Judge Matthew W. Brann has played a pivotal role in the proceedings thus far. He rejected Penn State's bid to dismiss one of Vintage Brand's counterclaims. Judge Brann noted that while the dispute touches "on broad and substantial questions about collegiate merchandising rights" in trademark law, Penn State's motion hinged on a narrower issue.
"Under the Lanham Act, does a symbol identify the source of the goods if it merely creates an association between it and the trademark holder? Because the court finds that it does not, Penn State's motion to dismiss is denied," Judge Brann stated.
In February, Judge Brann denied Penn State's motion for summary judgment on its trademark infringement claims. He explained, "Although the historical images indisputably incorporate Penn State trademarks, the images are visually distinct from those trademarks, and Vintage Brand provides numerous disclaimers on its website that disavow affiliation with any university. These facts mean that many of Penn State's claims fail."
Earlier in his decision on Penn State's motion to dismiss one of Vintage Brand's counterclaims, Judge Brann delved into the evolution of trademark law and the debate over merchandising rights for trademark owners. He highlighted two opposing views:
The "per se" approach, advocated by Penn State, posits that consumers inherently associate marks with a particular university, satisfying the source-identification requirement.
Vintage Brand favors the "fact-intensive" approach, which calls for a case-by-case analysis to determine whether consumers believe the trademark owner is the source or sponsor.
Judge Brann remarked that this trademark dispute landed in his court "because many courts have still not squarely addressed the question," including the U.S. Supreme Court.
This trial marks the first time a jury will decide foundational questions in trademark law, such as whether a design mark serves as a source and quality indicator or is merely aesthetic and ornamental, not indicating a product's origin.
Jury selection is set to begin on November 12, 2024, in Pennsylvania federal court.
I support Penn State's stance in this litigation. Unauthorized use of well-established trademarks like those of Penn State can lead to consumer confusion regarding the origin or endorsement of products. Trademark protections are crucial—not only for major institutions but also for smaller brands that depend on their trademarks to build identity and consumer trust. While it's important to encourage creativity and not unduly restrict artistic expression, such creativity should not infringe upon the rights of trademark owners.
In this case, Vintage Brand seems to be leveraging the goodwill and reputation that Penn State has cultivated over the years to sell merchandise without obtaining proper licensing. This approach potentially undermines the value of Penn State's trademarks and the licensing agreements that many universities rely on for significant revenue. It appears to be an attempt to exploit legal loopholes to avoid paying licensing fees, which raises ethical and legal concerns.
I'm very interested in how the court addresses these issues, especially since the outcome could set a significant precedent in trademark law. The decision will likely have far-reaching implications for how trademarks are protected and enforced, particularly in merchandising and the use of historical or aesthetic designs. It will be fascinating to observe how the balance is struck between protecting trademark rights and allowing for creative expression.
Case Name: The Pennsylvania State University v. Vintage Brand LLC et al. | Case No. 4:21-cv-01091 | U.S. District Court for the Middle District of Pennsylvania.
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