SEPTEMBER 3, 2009 ISSUE
ACLU Prompts Changes to ASU Trademark Policy
Following a request by the American Civil Liberties Union of North Carolina (ACLU-NC) Legal Foundation and the student ACLU chapter at ASU, ASU officials have revised the university’s trademark licensing policy to include text protecting the right to free speech and fair use under trademark law.
Among the changes is a new “Legal Notices and Disclaimers” section that has been added to the ASU Office of Trademarks & Licensing website. The notice includes the following statement: “…it is not the intent of Appalachian State's policy to limit or prevent or to require the licensing of activity that would not infringe or dilute Appalachian State's legal rights, e.g., the legitimate exercise of the constitutional right of free speech or trademark or copyright fair use.”
The notice also states, “The denial by Appalachian State of any application for a license does not necessarily imply or infer that the requested activity would per se infringe or dilute any trademark, nor that the activity necessarily requires a license.”
The ACLU-NC and student chapter contended that the previous policy provided too much discretion over the use of ASU trademarks to the Office of Trademarks & Licensing and that it provided no time frame in which decisions were to be made. Additionally, the ACLU groups said, groups and individuals not officially affiliated with the university were required to seek permission for non-commercial, non-infringing uses of ASU trademarks.
“
If you get to the point where you have to submit speech that is critical to the institution you’re criticizing, that’s obviously problematic. That’s a chilling effect on speech.
” —Clark Anderson, ACLU student chapter president
The civil rights organization said that inconsistent decisions were made about student club T-shirts based on perceived “offensiveness,” and that ASU required individuals and groups to submit applications for T-shirts with messages that constitute protected free speech. ASU administrators also claimed university approval was necessary before individuals and groups had “permission to print,” even if designs contained ASU trademarks that were used in a fair use and free speech context.
“I understand the desire to protect the university’s image, but administrators overstepped their trademark authority and violated free expression rights,” said Clark Anderson, president of the student ACLU chapter, in a press release.
While ASU agreed to the changes, the institution stopped short of admitting any wrongdoing or violation of rights.
“We are willing to make these changes out of a sense of fairness and reasonableness in accommodation of the concerns you have expressed,” said ASU Deputy General Counsel David Larry in a letter to Katherine Parker, ACLU-NC legal director. “However, our willingness to make these changes does not constitute, and should not be construed to constitute, any admission on the university’s part that any of your concerns are correct or require attention nor that any aspect of the university’s policy and implementation of the policy to date have violated any legal rights or otherwise been legally impermissible.”
Background
According to the Office of Trademarks & Licensing website, “any mark, name, logo, symbol, nickname, abbreviation, word, mascot, slogan, insignia uniform or landmark that is associated with Appalachian State University and is distinguished from any other university, team or organization” qualifies as a trademark, logo or symbol.
“If an entity owns a trademark, they want to limit the uses of that,” Larry said. Failing to limit the uses of trademarks and allowing unauthorized uses can dilute the brand and lead to confusion, he said.
Protected marks listed on the Trademarks & Licensing website include the verbiage “Appalachian State University,” “Appalachian State,” “ASU,” “Mountaineers,” “Appalachian,” “Appalachian State University Mountaineers,” “ASU Mountaineers” and “App State.”
Under U.S. trademark law, uses of trademarks without permission could qualify as “fair use” if the mark is used in a purely descriptive sense, if the mark is necessary in identifying another producer’s product but does not suggest endorsement or sponsorship by the group, or if the marks are used in parodies that are not tied too directly to commercial use, according to a Harvard University online overview of trademark law. Trademark can differ from circuit to circuit based on established precedent.
Samantha Stevens, assistant athletics director for marketing & licensing at ASU, appeared before a meeting of ASU student club presidents in September 2008 to announce a new trademark licensing policy, Anderson said. Stevens told the club members if they wished to use ASU trademarks on T-shirts or other materials that they would be required to have designs approved by her office.
Anderson said that Stevens told the presidents that clubs would only receive approval for trademark uses that presented the university in a positive light and that no drug, alcohol or sexual references would be permitted.
“No process like that had been in place before,” Anderson said.
Anderson said he met with Stevens shortly afterward and asked if the policy only applied to clubs. Stevens told him that any time words reference the university, it must be approved.
“That’s very broad,” Anderson said, noting his concern that protected free speech critical of ASU might not be approved.
Later in the fall 2008 semester, Anderson met with several ASU administrators about changing the language of the policy to ensure the protection of free speech, but they were “non-committal,” he said.
In spring 2009, one student submitted a T-shirt design stating “Appalachian: The Beer and Football University” to Stevens’ office for licensing. The project was not approved because “it is not a design that the university would like to be associated with, plus you are not authorized to print unless you use a licensed screen printer,” Stevens wrote in an email to the student.
Another submitted design, which stated, “Shame on ASU: Support the Workers’ Rights Consortium,” went two months without a decision from the Trademark and Licensing office.
The ACLU-NC, based in Raleigh, submitted a public records request to ASU asking for any recent documents associated with approvals and disapprovals of licensing. Parker then sent a May 28, 2009, letter to Larry, stating, “it appears that the licensing policy oversteps the legal boundaries of trademark law and creates an unconstitutional prior restraint on speech in violation of the First Amendment.”
The letter argued that Stevens’ office had been inconsistent in its approval of designs—disapproving some designs while approving others that could be argued to be just as offensive. The letter also argued that a mark is not protected unless ASU has actually used it in commerce to identify goods and services and that in order to sue for infringement, a trademark owner must show that the alleged infringer used the mark in commerce and that the use created a likelihood of consumer confusion.
But, Larry responded in his June 19, 2009, letter to Parker, the university’s position is that it can enforce its trademark rights against non-commercial uses of its trademarks. “Product given away or otherwise used without generating revenue may be just as likely to cause consumer confusion,” he said in his letter.
“Just the fact that you’re not charging for the product doesn’t mean you’re not infringing,” he elaborated earlier this week.
Parker’s letter also claimed that ASU’s prior policy violated the First Amendment because it created a prior restraint on speech without listing exact criteria used to determine whether a design would be accepted or rejected and because it set no time frame for making those decisions.
“Our concern was that they were being over-broad,” Parker said this week.
While Larry’s June 19 letter contested several of the arguments made by the ACLU, it also announced that ASU was willing to make several changes to its policy.
Specific Changes
In addition to the language in the new “Legal Notices and Disclaimers” section protecting free speech and fair use of trademarks, the university added text to its “FAQ” section on the website.
A new question addressing the length of time to obtain approval was added, with the answer stating that decisions will depend on the nature of the use but that most decisions will be provided in 30 days or less.
Additional text was added to the answer to the question “Who must be licensed?” stating, “Other activities, such as some non-commercial use of trademarks/logos, may or may not need to be licensed. Some activity may constitute fair use or free speech so as not to require license.
The following text was added to the question “What products can be licensed?”: “Appalachian State University also will not license activity which it believes would disparage the university or any of its trademarks, or would be libelous, slanderous, scandalous, offensive, vulgar or constitute an unfair trade practice, or otherwise reflect negatively on the university. Some activity may constitute fair use or free speech so as not to require license. Advice in that regard should be sought from your own legal counsel.”
Larry said earlier this week that he likes the changes to the policy.
“I think we’ve got better language on the website,” he said. “It makes it clear that even if we deny the license, it doesn’t mean there isn’t a legal way to use it.”
The Bottom Line
The university cannot require that groups or individuals not affiliated with the university apply for a license to use its trademarks. Commercial entities wishing to sell products with ASU trademarks must obtain a license from ASU through the Licensing Resource Group (LRG).
Any party, whether a commercial enterprise, student group, individual or any third party, is not required to obtain a license for activity that constitutes free speech or trademark fair use, Larry wrote in a memo to Anderson. But if that activity would constitute trademark infringement if unlicensed, the party must obtain permission from the university through a license.
All university-recognized groups, including student organizations, are still required to apply for licensing through the Office of Trademarks & Licensing—regardless of whether they believe their design qualifies as free speech or fair use. If the design is disapproved for licensing by the Trademarks & Licensing office, the group can still proceed with the design without licensing if they believe it fair use or free speech, but it does so at its own risk, Larry said.
Although the ACLU-NC and student chapter have said they are pleased with the changes and additions to the policy, they believe the policy is still confusing and has the ability to “chill,” or discourage, free speech.
The requirement to apply for a license sends the message, whether intentional or not, that students could “get in trouble” if they use a design that isn’t approved by the university, even if it is free speech or fair use, Anderson said.
“If you get to the point where you have to submit speech that is critical to the institution you’re criticizing, that’s obviously problematic. That’s a chilling effect on speech,” he said.
Parker said the ACLU-NC is continuing to examine whether requiring university groups to apply for a license is constitutional. The ACLU-NC encourages any group disciplined under the ASU trademark licensing policy to contact the ACLU-NC Legal Foundation at 919-834-3466.
For more information about the ASU trademark licensing policy, click to www.licensing.appstate.edu. Individuals and groups seeking additional information can email the ACLU student chapter at acluofasu@yahoo.com or Parker at acluncklp@nc.rr.com.
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