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

 

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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."