Chief T-shirt settlement details: UI paying alum $7,500 to halt sales

Chief T-shirt settlement details: UI paying alum $7,500 to halt sales

PARK RIDGE — The University of Illinois is paying $7,500 to the Chicago-area alum who made T-shirts that said "Make Illinois Great Again" on the back and had a drawing of Chief Illiniwek on the front.

In exchange, Ted O'Malley has to stop selling the shirt and agreed not to sell similar T-shirts in the future.

The UI reached a settlement with O'Malley after suing him in March for violating its trademarks for the word "Illinois" and a copyrighted photo commissioned by the UI of the Chief holding up his arms.

The UI has also agreed not to challenge O'Malley's "Make Illinois Great Again" trademark and to dismiss its lawsuit.

While the settlement is confidential, it was obtained by The News-Gazette with an open-records request.

University spokeswoman Robin Kaler declined to comment, and O'Malley didn't respond to a request for comment, likely because the terms of the settlement all but forbid him from doing so.

"O'Malley shall not disclose the existence or the terms of this agreement, or provide a copy of this agreement, to anyone else, including without limitation any individuals or organizations external to the university or any members of the media," the settlement says.

The agreement also forbids O'Malley from publishing "any statements to anyone disparaging, attacking or painting in a negative light the university or any of its departments, divisions, employees, services or athletic programs."

Likewise, the UI has agreed "not to authorize and will not authorize any disparaging or defamatory statements, whether oral or written, about O'Malley."

Since the settlement was reached, the "Make Illinois Great Again" Facebook page has disappeared. The shirts haven't been for sale since April.

"Unfortunately, due to the federal lawsuit brought on by the University of Illinois, we have been advised by our attorneys to not sell any T-shirts at this time," the page read at the time.

When the lawsuit was filed, both sides stood their ground.

"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," Kaler said in March.

And in a Facebook post in April, the "Make Illinois Great Again" page said, "We are not ready to just give into the university and their lawyers that are being funded by our tax dollars."

O'Malley also set up a GoFundMe campaign to create a legal fund.

"This will not be easy or cheap," the post said.

The campaign only raised $1,385 toward its $50,000 goal.

With the settlement, O'Malley agreed to no longer sell "Make Illinois Great Again" clothing that is orange and blue or that uses any of the UI's trademarks, logos, symbols or landmarks, such as Chief Illiniwek, the Alma Mater statue or Memorial Stadium.

If he makes "Make Illinois Great Again" clothing in the future, he agrees not to make athletic clothing or to use a font similar to the "Fighting Illini" font.

He also agreed not to use the "Make Illinois Great Again" trademark to "disparage or impugn" the UI, something his lawyer, Doug Johnson, did before the lawsuit was filed.

After the UI opposed O'Malley's trademark in November before the U.S. Patent and Trademark Office, arguing that it trades "on the substantial goodwill and recognition of the university's Illinois name" and that it is "confusingly similar to the university's Illinois marks and name," Johnson criticized the UI's football and basketball teams.

"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 in a motion to dismiss.

The patent and trademark office dismissed the UI's complaint in March because the UI didn't respond to Johnson's motion, and later that month, the federal lawsuit was filed.

The UI retired the Chief in 2007, but it has been criticized for not doing enough to remove Chief-related merchandise since then.

Noted Chief critic Stephen Kaufman declined to praise the university for shutting down this Chief T-shirt sale, saying the UI should "make public and clear its position on the Chief tradition and use of university legally protected property, and, to strictly enforce all its legal agreements related to Illiniwek, especially those made with the Honor the Chief Society and Students for Chief Illiniwek."

In 2013, the UI settled a trademark dispute with the Honor the Chief Society, allowing the group to sponsor activities honoring the Chief, but mostly preventing it from selling Chief-related merchandise, among other requirements.