On Thursday, November 3rd, online customized clothing company CafePress Inc. (NASDAQ:PRSS) was named as a defendant in a trademark complaint filed by Ohio State University. At the center of the dispute are T-shirts and other merchandise being sold through CafePress which infringe upon trademarks held by Ohio State as well as publicity rights assigned to the university by the Urban Meyer, head coach of the Ohio State Buckeyes football team. The case is filed in the U.S. District Court for the Southern District of Ohio (S.D. Ohio).
In its trademark complaint, Ohio State alleges that CafePress offers 1,100 Ohio State Buckeyes designs available on a total of 67,300 products. These products infringe upon trademarks held by Ohio State protecting its use of a buckeye flower design on decals and stickers, a large stylized “O”, a similar stylized “O” with the wording “OHIO STATE” running through the center and an illustration of four figurines forming the letters “O-H-I-O” with their arms above their heads. Ohio State also alleges trademark infringement on CafePress merchandise reflecting the persona of Urban Meyer, who has assigned the rights to his name, voice, signature and other rights of persona to the university.
Ohio State University notes that, although CafePress is not authorized to retail such merchandise, the college has negotiated more than 400 licenses for merchandise retailers allowing them the authorized use of Ohio State’s trademarks. These licenses cover a wide range of products including toys, sporting goods, food products, screen savers, mouse pads, flags and banners. In its complaint, Ohio State provides screenshots of CafePress and authorized licensee websites side-by-side to show the nature of the infringement.
Ohio State has included four separate counts for relief in its complaint, including counts for registered trademark infringement, unfair competition and passing off as well as counterfeiting under federal code. The complaint also includes one count under state law for a violation of of right of publicity, which relates to the sale of merchandise featuring the Urban Meyer persona. Ohio State is seeking $1 million per counterfeit mark per type of product sold, offered for sale or distributed and asked that the damages be trebled because of willful acts of infringement.
CafePress has been on the hook in the past for trademark infringement allegations involving clothing and merchandise which is sold through its website. In December 2014, CafePress was targeted by fashion retailer Victoria’s Secret for printing and selling a variety of clothing items which bear the Victoria’s Secret brand name. Earlier, in September 2012, the U.S. District Court for the Southern District of New York (S.D.N.Y.) threw out a motion to dismiss filed by CafePress in a case involving the sale of T-shirts using a design trademarked by electric guitar company Born to Rock. For its part, the content usage policy at CafePress expressly states that users are prohibited from uploading images which infringes upon the trademark or other intellectual property rights of other entities.