UI settles dispute with pro-Chief group
URBANA — The University of Illinois has reached a settlement in a trademark dispute with the Honor the Chief Society that will allow the group to sponsor activities honoring the former UI symbol but not use the term "Chief Illiniwek" or the official Chief logo — with some exceptions.
The group also cannot refer to any individual as "the next Chief Illiniwek" and must make clear that its activities are in no way associated with the university or its agents, according to the agreement, which was obtained by The News-Gazette.
The settlement resolves a dispute that dates back to 2008 — a year after the UI officially retired the Chief — when the university notified the group Students for Chief Illiniwek that it was infringing on the university's trademarks by selling T-shirts and other items with the Chief Illiniwek trademark, using the logo on its website and using the words "Chief Illiniwek," "Chief" and "Illiniwek." The group was organizing "The Next Dance" rally at the Assembly Hall, where a student wearing a replica Chief costume planned to dance for fans.
The show went on for several years, but in 2010 the university threatened legal action against the Honor the Chief Society, which supported the annual "Next Dance," for using the name Chief Illiniwek in selling items on its website and promoting appearances by a Chief portrayer. The society had filed an application to trademark some Chief Illiniwek items.
Under this week's agreement, the society agrees not to pursue trademark rights and the UI will not object to — "but does not in any way approve, sponsor or endorse" — the group hosting events honoring or advocating for the Chief. The events can include "a performance in the nature of a choreographed tribute to the dance, as was performed by University authorized portrayers of 'Chief Illiniwek' between 1926 and 2007."
However, the group cannot use the term "Chief Illiniwek," the official Chief logo or any other trademarks, except to advocate for reinstating the Chief as the UI symbol or to refer to the history of the Chief. Those are not considered a "trademark use," according to the settlement.
The group also cannot refer to any dancer or portrayer as "Chief Illiniwek" or "the next Chief Illiniwek."
"I think the most important thing is that it helps everyone involved better understand where the lines are," campus spokeswoman Robin Kaler said Wednesday. "Having those things spelled out in writing and agreed to officially is helpful."
Roger Huddleston, co-founder of the Honor the Chief Society, said he was "relieved" by the settlement. The two parties "probably came out better than the Republicans and Democrats in their negotiations," he said Wednesday.
Huddleston said the original trademark application was an attempt to be able to use the term "Chief Illiniwek" at will. The settlement's prohibitions on the term "Chief Illiniwek" mostly involve merchandising, he said.
"It doesn't prohibit us from doing anything we want to do or we're currently doing. It doesn't prevent us from going ahead and taking sides and being pro-Chief. It doesn't take anything away from teaching about the history of the Illiniwek tradition," he said.
Other terms of the settlement:
— The society must put a disclaimer on its website and promotional materials stating that it is not "sponsored, licensed, approved or endorsed by the University of Illinois."
— It cannot sell or promote any goods bearing UI trademarks without authorization, although it can sell items with the term "Honor the Chief," another Native American logo that is not too "confusingly similar" to the Chief, or images of former Chief portrayers.
— The group's website cannot link to any official UI web page without the university's written consent, though it can link to websites of related student organizations, such as Students for Chief Illiniwek.
— It also cannot make any references that imply that the university, the UI Alumni Association or the UI Foundation endorses or is affiliated with its activities, although registered student organizations are free to endorse or sponsor the society's activities.
"While the University continues to recognize that First Amendment rights may exist in events and performances related to 'Chief Illiniwek,' the University will defend its intellectual property rights and its policies where applicable," the settlement states.
Kaler added: "We certainly value free speech, and I don't think there's anything at all in this settlement that is counter to that."
Huddleston said his group is not planning another "Next Dance" rally "at this time," but added, "We're looking forward to planning more Chief events in the future."
He expressed appreciation to the university for "giving us the respect of an agreement."
"It's been a dialogue, and it's not been a bad one. It's been long and expensive for us," he said, estimating he spent "tens of thousands" of dollars on the issue.
The agreement is strictly between the UI and the Honor the Chief Society, although it states that "the parties expressly reserve the right to prosecute suits and claims against any and all other entities or persons that may use like or confusingly similar marks to either of the parties' trademarks."