UI files suit over an alum's 'Make Illinois Great Again' T-shirts

UI files suit over an alum's 'Make Illinois Great Again' T-shirts

PARK RIDGE — The University of Illinois is suing a Chicago-area man selling orange and blue T-shirts that say "Make Illinois Great Again" on the back and have a drawing of Chief Illiniwek on the front.

The UI, which has been criticized in the past for not doing enough to remove Chief-related merchandise, says the T-shirts violate its trademarks for the word "Illinois" and a copyrighted photo commissioned by the UI in 2007 of Chief Illiniwek holding up his arms.

"We vigorously defend all of our trademarks, whether it be the Chief, the word Illinois, U of I, the Block I, the column I or anything else that would infringe on our marks or confuse consumers," UI spokeswoman Robin Kaler said. "Whenever people want to use any nomenclature, colors, design, etc., that are associated with our marks, we always protect it."

But the Park Ridge man selling the T-shirts, UI alum Ted O'Malley, isn't backing down.

"No one in their right mind would possibly believe that was something furnished by the University of Illinois," said his attorney, Doug Johnson. "It's much like someone making something that said 'Make America Great Again' being sued by America.

"They are a state actor, and they don't like the message. They're trying to stifle First Amendment rights."

The UI filed the federal lawsuit last week, arguing that the UI has long been referred to as "Illinois" and that "by incorporating the University trademarks, trade dress colors and copyrights into the clothing, Defendant is creating confusion in the marketplace as to the origin of the clothing, diluting the University's Marks and creating a false association with the University."

Among various requests, the UI is asking the court to prohibit O'Malley from using the trademarks and copyrighted images to sell or distribute his T-shirts, to impound "all copies of Defendant's Infringing Material," and to be awarded "damages suffered by Plaintiff, plus any revenues or profits earned by Defendant as a result of Defendant's trademark infringement, unfair competition and false advertising in an amount to be proven at trial."

 

Trademark application

O'Malley applied for the "Make Illinois Great Again" trademark in March 2017 to be used for "athletic apparel, namely, shirts, pants, jackets, footwear, hats and caps, athletic uniforms," according to the U.S. Patent and Trademarks Office.

"I was just trying to parody Make America Great Again with an Illinois version because I'm a passionate alumnus who believes there are some things to be improved at the University, especially a few sports teams," O'Malley said in a text message. "It wasn't intended as anything other than that, and my lawyer told me it was fair use."

O'Malley then created a Facebook page in September, the lawsuit says, which includes an image of Memorial Stadium and calls on Illini fans to "show your love for the University and its traditions. It's time to Make Illinois Great Again!"

"As part of Defendant's advertising and selling of such shirts, Defendant specifically marketed them to, and targeted fans of, the University's sports teams," the lawsuit says.

On Friday, that Facebook page had 20 likes.

"I've sold a few shirts," O'Malley said. "My intent was to only generate some passion and excitement amongst those people who care about the school to make it great again."

 

Trademark dispute

In November, the UI filed a notice of opposition with the U.S. Patent and Trademark Office.

"Applicant intends to use the mark MAKE ILLINOIS GREAT AGAIN to directly trade on the substantial goodwill and recognition of the University's ILLINOIS name," wrote Andrew Goldstein, a lawyer for the UI, arguing that "Applicant's MAKE ILLINOIS GREAT AGAIN mark is confusingly similar to the University's ILLINOIS Marks and name."

But that was dismissed when the UI didn't respond to a motion to dismiss by Johnson, O'Malley's lawyer.

In his motion, Johnson came out swinging.

"Despite massive tax hikes, the state of Illinois has unpaid bills of over 15 billion dollars. Its governor called it a 'banana republic' and its comptroller warns that the state 'can no longer function.' To help spark some winds of change, applicant seeks to MAKE ILLINOIS GREAT AGAIN by registering a trademark," Johnson wrote. "Clearly, the mark is a political statement."

He went on to cite the university's lackluster football and basketball teams as reasons the UI might want to be great again.

"Evidently, the mark struck a nerve with the Trustees of the University of Illinois. With a football team that has an 8-41 conference record and a basketball team with a record of 37-53 over the last five years, the University, like the state, would like to return to greatness," Johnson wrote. "Why they would use public funding to oppose anyone trying to MAKE ILLINOIS GREAT AGAIN is a mystery."

Johnson also said the italicized "Illinois" in the UI's trademarks is not used in O'Malley's and that there are 876 registered trademarks with the term "Illinois" in them.

"Just as the Trustees cannot prove a sufficient association to oppose the registration of marks such as 'LOL Illinois' (87181774), 'Tap-Illinois' (4505935), or 'Abortion Illinois' (4025896), it can not prove a set of facts where by MAKE ILLINOIS GREAT AGAIN is a close association to the University. Heck, it has not even opposed a mark known as 'The Illinois' (4437792)," Johnson wrote. "Clearly, the use of the term 'Illinois' by itself does not establish a close association with the University."

In January, the UI's trademark dispute was dismissed by the USPTO's Trademark Trial and Appeal Board after the UI failed to respond to the motion to dismiss.

In February, Goldstein asked the appeal board to reconsider, saying the UI believed it had been given an extension as the two parties were discussing a settlement.

In early March, the appeal board denied the motion to reconsider and again dismissed the UI's opposition.

Then, "without any warning, they filed this" lawsuit, Johnson said.

 

U of IPA

Since 2000, the UI has opposed trademarks through the USPTO's appeal board at least nine times, according to USPTO records.

And in most cases, the person or organization applying for a trademark has dropped their application.

"We worked hard to try to resolve this particular situation amicably, as we have successfully done with others," Kaler said.

Last year, that happened with the Blind Pig's U of IPA beer. After applying for a trademark for "U of IPA" in November 2016, it reached an agreement with the UI and dropped its application.

"We negotiated for a long time with the U of I," said Blind Pig owner Chris Knight. "They were helpful and pleasant. We took their complaints to heart and changed our color scheme as a result of their suggestion."

 

Chief concerns

After retiring the Chief in 2007, the university retained its trademark to the Chief logo and copyright to Chief images to maintain control of its use.

The UI's lawsuit against O'Malley alleges that "Defendant's clothing includes a derivative and substantially similar image" to one the UI commissioned in 2007 of the Chief raising his arms.

Johnson doesn't buy it.

"How many pictures of the Chief have been taken over the last 30, 40 years?" he said. "That's like saying I took a picture of Wrigley Field, and you can't draw a picture of Wrigley Field because I took a picture of it one time."

Longtime Chief opponent Stephen Kaufman has criticized the UI for not policing merchandise of the Chief strongly enough and wouldn't praise the UI for this lawsuit.

"It is certainly in the interest of the university to protect its property rights but only if it plans to uphold these rights with due penalties to violators. In the past, the university has spent tens of thousands of dollars on endeavors such as this, only to fail to uphold the legal resolutions that stemmed from such pursuits and subsequent violations," Kaufman wrote in an email. "Thus, it is not surprising that violations of the university's property rights continue."

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Tom Napier wrote on March 25, 2018 at 2:03 pm

The University of Illinois files a lawsuit.  That's fine.  It'll probably be dismissed or negotiated away.  I seriously doubt it will be upheld. 

Stephen Kaufman and his acolytes got their wish.  They've ... pursuaded ... the UI to take a symbolic action.  Remember, to him symbolism is so much more important than any substantative action.

yates wrote on March 25, 2018 at 3:03 pm

Give Illinois their piece of the action and this might all go away. Just one thing....will you need to buy off the state as well as the University? Better dig down deep though because this will quickly become a hot button issue.

illini82 wrote on March 25, 2018 at 4:03 pm

Way to go university of Illinois administration!  You just created a huge market for this so called contraband. They’ll find a way to make this legal and the university won’t be able to do a thing!

Milanus wrote on March 25, 2018 at 4:03 pm

Hasn't anyone ever heard of the Streisand effect? If not for this I'd never have seen this. Now I'm going to be buying one.

Illinimac wrote on March 25, 2018 at 6:03 pm

Of course we know that "protecting" the trademark means suppressing the Chief.  It's pretty clear this isn't an official U of I product since the administration is anti-Chief.  Your tax dollars at work.  

Innocent_Primate wrote on March 25, 2018 at 9:03 pm

Once again we see this played out. Which should those loyal to the University put first: their own agenda and interests or those of the University ? It is a very simple question.

Innocent_Primate wrote on March 25, 2018 at 9:03 pm

Once again we see this played out. Which should those loyal to the University put first: their own agenda and interests or those of the University ? It is a very simple question.

JohnRalphio wrote on March 25, 2018 at 9:03 pm

So this is the lead story, huh? Not the family from Savoy tragically killed, nothing about the March For Our Lives rally that hundreds of people attended in a blizzard. More trivial baloney about the Chief, that's what matters to the N-G.

No matter what happens with the Chief in future years, it will always represent bullying and pettiness from now on, thanks to things like this obnoxious Trumpist shirt and the overblown coverage here that (not incidentally) promotes it. 

There's no way the Chief could now ever be regarded as an honored symbol of the past. The Chief's "supporters" have collectively made sure of that. 

Innocent_Primate wrote on March 25, 2018 at 9:03 pm

Once again we see this played out. Which should those loyal to the University put first: their own agenda and interests or those of the University ? It is a very simple question. 

burl55 wrote on March 26, 2018 at 3:03 am

Thank You to Ted O’Malley for the nice shirt. Had it not been for the incessant whining by the socialist regime of the University of Illinois, I would’ve missed this offer. I am really amused how the school claims to own the name “Illinois.” Are we now to do away with that disgusting name from our legal addresses? My address might now be “Cali Whiner- 123 Your Street- 12345” from now on? No more “Illinois” in the address? Dang! All those faded license plates I see around town need corrected soon. Are the colors orange and blue next on the regimes list?

The University says, by their own actions, that it’s ok to shoot video of men who use the schools restrooms? But it’s not ok to use the image of an American Indian, his tribe name Illiniwek, nor the state whom is named after him? I thought the U of I discovered some weeks back, that dictating what clothing a person wears. Was in fact a violation of that persons 1st Amendment Rights? Oh there is that pesky, outdated, Constitution thingy, that keeps getting in the way of real progress that people need. After all, with Obama we had made such strides to shred that old document. It’s 2018, do we really need Amendments 2,4,1,10, etc.? I’m sure people like Kauffman, Rosenstein, and Frerichs would be a better moral compass, for us all,  than that ragged, outdated, “always in the way” Constitution. The schools progressives only need it when THEY need to hide their lifestyles behind it!

hunter80snicarte wrote on March 26, 2018 at 10:03 am

Yep, just bought two. Thanks for the heads up anti-chief people!

rgg717 wrote on March 26, 2018 at 10:03 am

Does anyone know the website address? I need on of those t-shirts.

Tyler2cent wrote on March 26, 2018 at 10:03 pm

Awesome t-shirts.  Proud Trump supporter and Illini fan.  

 

Dread Pirate DNT wrote on March 27, 2018 at 8:03 am
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I can hear your mouth breathing from my house.

CommonSenseless wrote on March 27, 2018 at 11:03 am

Sounds like thin walls.

Tom Napier wrote on March 27, 2018 at 2:03 pm

I've asked you several times but have received no reply ...

Where can I get a SYF/In Your Guts t-shirt?  I find the SYF logo and the In Your Guts image online, but never the two together as you've combined them. 

Having commented on this article, I can only assume you're a law abiding citizen who respects copyright laws.  You wouldn't want the GD lawyers to file a suit against you for copyright infringement, would you?

Dread Pirate DNT wrote on March 27, 2018 at 9:03 pm
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Terrible assumption, terrible take and terrible content per usual. Another swing and miss but you're used to it by now.

Tom Napier wrote on March 28, 2018 at 7:03 pm

So, it was a "terrible assumption" that you have any regard for the laws of society.  That says a lot.

Now, about that SYF/In Your Guts t-shirt ...

Dread Pirate DNT wrote on March 28, 2018 at 7:03 am
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A big thank you is deserved to all who buy and wear this shirt in public. It will further help the rest of us identify the unstable, weak and unintelligent humans in our society and speed up evolution by allowing us to skip over these Neanderthals in the reproduction process (although the median age if a chief supporter is about 85.) Make sure you keep your shirts tucked in to those dad jeans from the early '90s!

Illiniwek222 wrote on March 28, 2018 at 3:03 pm

I'm guessing you haven't been to campus lately.

Dread Pirate DNT wrote on March 29, 2018 at 7:03 am
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Actually I'm likely on campus more than any of you old farts and the only ones I see wearing chief attire are the creepy old white guys who waddle down to the games to see another one of their teams get pulverized by an awful opponent.

Tom Napier wrote on March 30, 2018 at 11:03 am

Name calling; a practice applied when one is incapable of no other logical or coherent reply.

You're looking, but you're not seeing.  The other day I saw two African American ladies shopping in one of our local stores, each wearing a Chief sweatshirt, and apparently not together.  These ladies were perhaps of a certain age, but definitely not old, definitely not white, and definitely not men.  I didn't take notice them waddling, but I wasn't studying them as closely as you study ... "old farts."  What would you say to these ladies if you encountered them in a store?

Myopia is a funny thing; not comical funny but ironic funny.  You observe in great detail ... "old farts" ... at sporting events, but somehow fail to see students, students of apparently diverse ethnicities, wearing Chief apparel.  I suspect your dogma prevents you from seeing everything there is to be seen. 

CallSaul wrote on March 30, 2018 at 5:03 pm

Yep --- the bitter old 'chief' clingers sure do have a warped view of that aspect of reality as well...

Before you respond to Napier, if you're even considering doing so, remember that he's a hypocritical scold who loves to chastise those to his left but equally loves to engage in the same behavior he condemns so sanctinomiously in anyone who dares to disagree with him.

He of course also only targets --- completely coincidentally, of course --- those to his left. 

He's fine with the nastiness, namecalling, deviations from 'civil discourse' and the idea of proper decorum he seeks to impose on those who oppose the racist old ex mascot --- not to mention the bigotry and racism --- of those he agrees with.

He also believes there's not one little thing about the racist Aunt Jemima stereotype that is, y'know, racist...so of course he also insists there's not a thing racist about the old racist ex mascot.

All he's capable of is bad faith argumentation, clumsy sealioning and tortured and very tedious lectures about how the chicken feather moldy old racist 'chief' ex mascot must come back.

He whines that opponents of the racist old ex mascot won't 'compromise' but his idea of compromise is that he gets 100% of what he wants and those who are opposed get 0% of what they want, meaning he thinks only possible fair solution is that the racist old ex mascot is restored and made the school's mascot again.

He also loves to bizarrely claim that over the last 3 decades, no one has even made the attempt to explain to him why the racist old ex mascot is racist.

Even weirder, he ludicrously claims that my use of the term 'bitter "chief" clinger' is somehow 'racist.' 

More desperate bad faith and bald faced lying of course --- par for the course with him.

So, not that I think this is any kind of special insight or unique observation, but engaging this bad faith troll is not worth the time...

Tom Napier wrote on March 31, 2018 at 9:03 am

And your opinion of African American ladies wearing Chief apparel is ...... ? 

 

 

CallSaul wrote on March 31, 2018 at 12:03 pm

Lol...

Need moar better trolls!

What a ludicrously simple minded tactic. The fact that you clearly believe you've trapped me in a logical bind is, sadly, unsurprising.

You're acting like the addle brained rightwing reactionaries who think they're the cleverst of all bunnies when they note that liberals oppose discrimination against LGTBQ folks and also oppose discriminiation against Muslims but then claim that, according their delusional hatred and resentment, every single Muslim wants to kill every single gay, and therefore liberals are being so inconsistent...

It's probably not possible for you to fathom how ridiculous your question makes you seem to people who haven't based the last three decades of their life on chicken feather 'chief' clinging. And let's not even discuss your no doubt smug expression of perceived resounding and ultimate victory when this most brilliant of ideas struck you like a wet sack of mud plopping onto the street.

Just what, exactly, is the bind you believe you've put me in...?

I think the same thing whenever I see someone wearing chicken feather 'chief' apparel: that person has chosen to wear a piece of clothing depicting a moldy old racist ex mascot in public.

It's really not that hard...

Now come back and ask me what I'd think if I saw an Indian wearing a chicken feather 'chief' shirt. That'll be sure to win the argument and bring the moldy old ex mascot back forever...

Tom Napier wrote on March 31, 2018 at 7:03 pm

... but engaging this bad faith troll is not worth the time..."

And yet you still spend the time ... which isn't worth it.

OK.  Enough already.  This forum isn't about me and it isn't about you.  It's about the NG article; the subject at hand. 

Give me a call and we can meet over a coffee, or beer, or kale smoothies.  We can engage in civil discourse about each of the behaviors and personality traits you apply to me.  You can psychoanalyze me in person then.  But until that happens, please, please refrain from the ponderous blanket accusations and stereotyping. 

CallSaul wrote on March 31, 2018 at 8:03 pm

Meh...

While I usually ignore your clumsy sealioning and sanctimoniously hypocritical scolding of those who dare to disagree with you, I do sometimes I find it worthwhile to note the utter ridiculousness of your posts.

If you don't want to engage with me then y'know, don't engage with me.

If you don't want me to respond to your responses to me, then don't respond to me.

It's really quite simple.

However, don't for a second believe you can respond to me and then impose some sort of prior restraint somehow forbidding me from responding to your response to my comments.

That's not how it works in the real world...

 

jparks wrote on March 31, 2018 at 8:03 pm

Saul, as you know I have read many of your posts on this site.  Other than not being able to answer the question I have asked you numerous times, this interaction with Tom is one you should have avoided.  WOW.

If this had been a boxing match between the two of you, your corner would have thrown in the towel a long time ago.  Just wow.  That is a beat down at its finest.

CallSaul wrote on March 31, 2018 at 8:03 pm

I've explained probably more than a dozen times now that I'm not going to engage with your clumsy racist trolling.

I've done so clearly and in easy to understand terms.

How many more comments will you post whining about this...?

wykhb wrote on March 28, 2018 at 5:03 pm

You have an intent fixation on men and their jeans, and you sexualized the wearing of a T-shirt.  Now do that thing where you wrote about "unstable" again.    LOL

You assume that only men wear such things, is it a stretch to guess that you have a particular skin color in mind as well?   Yeah, don't bother because it's apparent.  

  Maybe one or more of your other personalities would love to debate yourself about it. 

Illiniwek222 wrote on March 31, 2018 at 9:03 pm

Knockout by Napier. Same old, tired, muddled commentary from Saul. Give it a rest. How many times can Saul repeat himself?  He's become comical.