Originally published July 9, 2008 at 01:05p.m., updated July 9, 2008 at 06:39p.m.

Jury to resume deliberations Thursday morning in KU’s trademark dispute with T-shirt maker

By Scott Rothschild

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A federal lawsuit that pits KU against a Lawrence T-shirt company is in the hands of a jury tonight.

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Topeka — A federal jury Wednesday started deliberations in Kansas University's lawsuit against Lawrence T-shirt seller Larry Sinks, whom school officials accuse of producing sometimes offensive T-shirts that look too much like official KU merchandise.

KU and its trademark enforcement arm Kansas Athletics Inc. allege Sinks' T-shirts infringe on KU's registered trademarks and harm the school's reputation.

KU has asked the eight-member jury to order Sinks to pay KU $509,000 - $476,000 in profits from the T-shirts and $33,000 in royalties - and to assess an unspecified amount in punitive damages against Sinks and Clark Orth, who operates a screen printing business that produces Sinks' shirts for sale at Joe-College.com, 734 Mass., and the company's Web site.

"KU's marks are strong and famous, and the defendants intentionally used those to make a buck," said Charlie Henn, an attorney representing KU.

But Sinks and his attorney, Jim Tilly, portrayed a different story.

Sinks said he went to great lengths to inform customers that his T-shirts were not official KU merchandise.

"We've done as much as I can think possible," Sinks said before U.S. District Court Judge Julie Robinson.

He said he has more than 200 signs in his shop informing customers that the shirts are not licensed by KU and that none of the money to purchase the shirts goes to KU.

Sinks said he was trying to establish a niche market that included T-shirts that KU would never approve, such a "Muck Fizzou" and "Our Coach Can Eat Your Coach."

Sinks' attorney said KU was trying to monopolize the marketplace so that everyone attending a KU event would be wearing official KU merchandise.

"Freedom in the marketplace is one of the great things that made this country great," Tilly said in urging the jury to reject KU's claims.

But Henn also argued that many of Sinks' T-shirts have tarnished the school's image because some believe the offending messages are sponsored or affiliated with KU. He cited the "Muck Fizzou" shirt as among those with "vile comments."

But Tilly said "Muck Fizzou" has been in the marketplace since 1982 and he didn't understand why it has become an issue for KU when Sinks was selling it.

The jury was given more than 60 specific instructions that took Judge Robinson more than an hour to read. In those instructions, it was noted that KU had registered trademarks on such words as Kansas, KU, Jayhawks, The Phogg, Allen Fieldhouse, Rock Chalk Jayhawk and others.

Afterward, KU associate athletics director Jim Marchiony said KU supported free speech but that Sinks' T-shirts "had crossed the line."

But Tilly said universities nationwide are filing similar court cases, trying to gain monopolies because the sale of merchandise has become extremely lucrative.

"This is a watershed case," he said.

Mark Fagan contributed information for this story.

Comments

yovoy (anonymous) says...

i've never been confused into thinking that the 'muck fizzou' or 'our coach can eat your coach' shirts were "official" shirts of the u in any way.

uncle lew will probably just sew this guy, then start his own company to sell them "unofficially".

the o'jays said it best...

July 10, 2008 at 2:26 a.m. ( | suggest removal )

K_Easthouse (anonymous) says...

Copyright law is serious business. Ask the MPAA.

As for this lawsuit, it will be difficult for KU to prove it's case unless, somehow, they prove to have the copyrights to "KU", "Kansas University" "Jayhawk" and a slew of other phrases. Additionally, they have to prove that they've "defended the copyright with due diligence" and not let it slip into the public domain (ask Frisbee about that one). Finally, KU has to prove financial damages done either to "it's good name" through the sales of these shirts, which will be extremely difficult to prove.

In short, I don't see KU prevailing in this one. Next Joe College shirt: "I got sued by my favorite school and all I got was this lousy T-Shirt."

July 10, 2008 at 7:17 a.m. ( | suggest removal )

K_Easthouse (anonymous) says...

And, just so everyone knows, I do publicly claim that T-Shirt idea for myself. Time-stamp and dated in public forums. Now taking bids for the rights to produce it.

July 10, 2008 at 7:25 a.m. ( | suggest removal )

Corkwis (anonymous) says...

How the heck does KU have a trademark on the word "Kansas"?

Correct me if I'm wrong, but that is the name of the state....

July 10, 2008 at 7:29 a.m. ( | suggest removal )

plasticJHawk (anonymous) says...

you're wrong, the name of the state is Cannziss...

July 10, 2008 at 7:41 a.m. ( | suggest removal )

K_Easthouse (anonymous) says...

I don't think they would. "Kansas University," perhaps, but not "Kansas."

I was trying to point out the ridiculousness of everything needing to be copyrighted in order for the court to side with KU in this matter.

July 10, 2008 at 7:42 a.m. ( | suggest removal )

WichitaJayhawk (anonymous) says...

I'm with Joe College on this one! That is a great store and is a tourist attraction on Mass Street. I'm sure most universities wished they had such a store in their towns. Go to a KU game and see how many of the students are sporting KU (oops, I mean that college in Lawrence) t-shirts! Go Joe!

July 10, 2008 at 8:23 a.m. ( | suggest removal )

BCRavenJHawkfan (anonymous) says...

Glad I got my T-Shirts (from Joe College) when I did.

July 10, 2008 at 8:27 a.m. ( | suggest removal )

ChicagoJHawk (anonymous) says...

That makes no sense to me either, there is no way that KU has registered trademarks on the word Kansas!

Other than that, I actually have to side w/KU on this one. If Joe College simply made t-shirts that said "Kansas" on the front, or maybe even have something making fun of the state of missouri on the back, that's fine. But when you start making t-shirts that have a #3 printed on the back & say something about Russell Robinson on the front, I think that means you're representing KU, and not just the state of Kansas.

That's just 1 example, I've seen plenty of other t-shirts @ Joe College that have KU players' names on them/other references to the school & not just the state. It doesn't matter how many signs you put up in your store; when you make t-shirts like that of course KU is going to say/do something about it. Some of you may disagree with me but I think Joe College did cross the line in this case. I really don't care that much, it's not affecting me personally but that's my 2 cents for today.

July 10, 2008 at 9:08 a.m. ( | suggest removal )

jhawkclassof02 (anonymous) says...

I definitely think there's alot of grey area here. There is absolutely no doubt that these T-shirts are being made to represent the fans of KU, if not directly the University itself. My wife has a shirt that says "You had me at Rock Chalk" and apparently "Rock Chalk Jayhawk" is trademarked while "Rock Chalk" is not. Definitely some grey area. I've seen the store selling shirts that say "The Fighting Manginos" which I've also seen as an officially licensed shirt by KU. "Mangino" isn't trademarked but he is a KU employee. I could see this going either way but it is for sure an interesting case.

July 10, 2008 at 9:53 a.m. ( | suggest removal )

oldrocker (anonymous) says...

To K_Easthouse:

"I got sued by my favorite school and all I got was this lousy T-Shirt."

Very clever...I got a good chuckle out of that one.

July 10, 2008 at 10:28 a.m. ( | suggest removal )

ColdCoffee (anonymous) says...

Used to work for Mr. Sinks after I graduated from KU (in the early 90s) and am not surprised in the least at this news.

July 10, 2008 at 10:35 a.m. ( | suggest removal )

AzHawk97 (anonymous) says...

The Capital Journal has been covering this all week. And it doesn't look like there has been as much confusion about the shirts as KU claims:

http://cjonline.com/stories/070908/ka...

Take the quiz for yourself. Pretty easy to get 100% if you have ever seen one or two KU shirts in your lifetime:

http://app.cjonline.com/quiz/ku_v_joe...

July 10, 2008 at 10:37 a.m. ( | suggest removal )

kc_wildfire (anonymous) says...

AzHawk97...

I got 60% on that quiz.

I probably have over 50 different KU t-shirts (official or unofficial I don't know...if I like it I buy it) that I have got over the years. The older ones that don't fit any longer were made into a blanket by my mother for a Christmas present one year. Very nice gift.

To me it doesn't matter about the money but rather how KU comes off in some of the shirts. That is the real issue in my opinion. Although I am sure KU wants all the money they can get their hands on. The "Muck Fizzou" shirts are classless.

July 10, 2008 at 11:31 a.m. ( | suggest removal )

avaholic (anonymous) says...

The store is littered with signs that say they are not affliated with KU. Gotta go with Joe College on this one.

To K_Easthouse,

With love from an old high school friend

Opie

July 10, 2008 at 11:34 a.m. ( | suggest removal )

tdub (anonymous) says...

The sole reason I side with JoeCollege on this one is because I love actually seeing blue in the stands at bball and fball games. Let's face it, KU fans had been traditionally reluctant to actually sport their color at games (can't tell you how many red KU shirts I've seen at Nebraska games) until JoeCollege came along. If you've been to any games the last few years, you can't deny that a vast majority of those blue shirts are from JC.

This is pure and simple greed. As stated in the article, Muck Fizzou has been around for decades. Borderline offensive screen-printed tees are not new by any means.

Good deal for the KU athletics dept. JC sets the standard for actually wearing the school color to games, then KU sues for the ability to be the only major provider of said apparel in town. I love my 'Hawks, but always will despise the suits behind them.

July 10, 2008 at 12:46 p.m. ( | suggest removal )

ColdCoffee (anonymous) says...

Unfortunately, if you to take the line of reasoning that a person can make anything they want with licensed material, then where does this stop? Why have any licensing at all?

Let's say you create a brand and someone takes your brand and sells it using offensive material, or misrepresents your product and gives out false information with your Identity, they are not only making money off your business, without any compensation to your idea, their idea may be slandering your name. This isn't much different from ripping off music or buying/downloading pirated software and movies for a fraction of the cost(or for fee).

While some of the shirts may be in good taste and fill the stands with blue, KU has every right, under the law, to say they would rather not have their Logo, Name, Identity affiliated with unlicensed material.

You can be as Socialist about this idea all you want, and I'm all for open source sharing (being a web designer), but when someone has a license, you should be willing to abide by the law.

If fans like to see blue, wear a freakin' blue shirt, make a mass mail/email campaign to KU's PR department that you'd rather see more of their products be Blue, or just don't buy their stuff. But there's plenty of places that sell official, licensed, apparel that shouldn't be overlooked.

I've worked for Mr. Sinks, and other screen printers, as a designer and some could give a flip about ethics and legal issues, while others go to great lengths to making sure all requirements are met. Those that end up purchasing licenses to sell University apparel are the ones that end up suffering because some don't want to pay the price for licensing - they just want the money off of someone else's idea.

July 10, 2008 at 1:50 p.m. ( | suggest removal )

nettiepie (anonymous) says...

Well, alrighty then. I have several of the questionable t-shirts and do enjoy the humor and bad taste involved. Perhaps Joe College should put "product of Joe College" in plain sight on every t-shirt. If he quits making them, people will make their own. Then we'll all be in trouble.

July 10, 2008 at 2:32 p.m. ( | suggest removal )

K_Easthouse (anonymous) says...

"Let's say you create a brand and someone takes your brand and sells it using offensive material, or misrepresents your product and gives out false information with your Identity, they are not only making money off your business, without any compensation to your idea, their idea may be slandering your name. This isn't much different from ripping off music or buying/downloading pirated software and movies for a fraction of the cost(or for fee)." -ColdCoffee

I think there are some key differences. First, I don't see JoeCollege as ripping of the KU "brand," they are just using KU culture in their sales. The dispute (as it appears to me) is whether Joe College stepped on KU's copyrights in selling it's merchandise.

As for the slander part, that's a different legal issue outside of copyright law. For these sort of slander damages, KU would need to prove that Joe College shirts have had a negative financial impact based on the public perception of KU. I don't see that happening, as few shirts are insulting or demeaning towards the university.

At this point, I think it's fairly obvious I'm rooting for Joe College to prevail. While I understand KU does go to great lengths to preserve it's cash cow of licensed material, I would think one shirt store couldn't dent the income from all the money KU has brought in nationally for it's agreements.

July 10, 2008 at 3:06 p.m. ( | suggest removal )

tdub (anonymous) says...

Agreed K_Easthouse. JC hasn't ripped anything off of the KU "brand" or "trademark". There has never been a single Jayhawk on any of their shirts. KU has no case.

July 10, 2008 at 6:01 p.m. ( | suggest removal )

JayViking (anonymous) says...

Leaning towards Joe College..despite my overall disapproval of their shirts.

=\

July 10, 2008 at 7:45 p.m. ( | suggest removal )

kylecisnum1 (anonymous) says...

everyone make sure to go to espy.tv to vote for ku as the "best team" and "best game!" voting closes the 12th so everyone get on it!

July 11, 2008 at 12:39 a.m. ( | suggest removal )

Jacobpaul81 (anonymous) says...

They have crossed the line. Seriously, how can they say they have a trademark on the word: KANSAS.

To add to this, it's not like KU hasn't officially licensed shirts that were offensive. I remember "The Good, The Bad and The Ugly" t-shirts of the early 90's.

I think the case reflects poorly on the University. More so than the Tshirts they are trying to remove from the store. If Lew and the University are going to be that greedy, the next time the alumni association and the sports programs come begging me for money, I'll tell them where they can shove it.

July 11, 2008 at 9:15 a.m. ( | suggest removal )

Mr_Sandman (anonymous) says...

I own a Muck Fizzou shirt and there is nothing better to wear on Gameday against the Tigers. Anyone who thinks that any of this man's shirts were licensed by KU is an idiot.

July 12, 2008 at 12:48 a.m. ( | suggest removal )