One of those scholars, law professor Mark Lemley of Stanford University, agreed that until the 1970s, no one would have thought trademark rights allowed sports teams and academic institutions to block ornamental uses of their trademarks on clothes.
“Everybody in the industry assumes ‘this is ours, we have a right to it,’” Lemley said. “But the case law doesn’t really bear that out, and the logic of trademark law doesn’t bear that out.”
Lemley, the Stanford professor, said the reach of trademark law has gotten out of hand. He pointed to a fight between universities and Smack Apparel. The Fifth Circuit found in 2008 that shirts using school colors and referencing their football teams’ accomplishments or upcoming games—without even naming the school or using any trademarks—clearly nodded to the schools and would likely cause confusion.
“To say the university is the only one that can communicate a message about the university is a problem,” Lemley said. “The thing the trademark owner is trying to own isn’t a connection between its brand and the product sold, it’s the image and the word itself.”
Lemley said Penn State may want to keep pushing its case to lock in its rights over Vintage, but it also may deem the risk of an adverse precedent too great. If the Third Circuit issued an opinion that adopted Brann’s reasoning, it could upend the school’s licensing rights and force it to compete with other sellers of Penn State gear.
“It’s very much going to be a case to watch. The trademark bar and sports associations are going to be interested in it,” Lemley said. “Unless the parties run quickly to settle, we’ve not heard the last of it.”