Kansas Athletics Resolves Lawsuit with Local Apparel Manufacturer
FOR FURTHER INFORMATION, CONTACT:
For Kansas Athletics: Jim Marchiony 785-864-3359
For Victory Sportswear, Larry Sinks and Clark Orth: James Tilley 918-583-8868
April 12, 2010
LAWRENCE, Kan. – Kansas Athletics announced today that it has resolved its trademark-infringement lawsuit against Victory Sportwear, Larry Sinks and Clark Orth.
A federal jury in 2008 found the defendants guilty of willfully infringing several of KU’s marks and awarded Kansas Athletics $127,000 in damages. Last year a federal judge awarded KU more than $650,000 in attorneys’ fees.
In exchange for KU’s full release of the judgment (including the attorneys’ fee award), the defendants have agreed to a Consent Injunction and Settlement Agreement. That agreement stipulates that the defendants, or anyone acting at the direction of or in concert with the defendants, are permanently enjoined from ordering, producing, manufacturing, distributing, selling, offering for sale, advertising, promoting, licensing, or marketing:
– Any product listed on the verdict form, regardless whether the judge or jury found them to infringe or dilute;
– Any product licensed by KU;
– Any product that is red or blue (or red and blue) or that makes prominent use of the colors red or blue when combined with any of the words or symbols listed below which Defendants are prohibited from using, except as otherwise specifically permitted;
– Any product that bears any of the following words: KANSAS, KU, UNIVERSITY, JAYHAWK, JAYHAWKS, HAWK, HAWKS, CRIMSON, BLUE, KIVISTO, 1865, PHOG, or LAWRENCE, either separately or in combination with any other words or symbols, however, Defendants shall be permitted to utilize the word LAWRENCE alone or the word LAWRENCE in combination with the word KANSAS, if these words are used in good faith to describe a person or organization whose residence or place of business is located in Lawrence, Kansas;
– Any product that bears the name, nickname, initials, image, likeness, jersey number or any other reference, including synonyms and homonyms, to any current or former student-athlete of KU, however, Defendants shall be permitted to utilize names which also happen to be the names of current or former student athletes of KU if the names are used in good faith and it is reasonably apparent that the names are used to identify or describe a person other than a current or former student athlete of KU;
– Any product that bears the name, nickname, initials, image, likeness, or any other reference, including synonyms and homonyms, to any current or former employee of KU, including but not limited to any coach, staff member, athletic director, administrator, or professor, however, Defendants shall be permitted to utilize names which also happen to be the names of current or former employees of KU if the names are used in good faith and it is reasonably apparent that the names are used to identify or describe a person other than a current or former employee of KU;
– Any product that bears the name, nickname, mascot, location of or any other reference to any rival school (including but not limited to any school in the Big XII) and including but not limited to the transposition or deletion of the letters of any such rival’s name, however, Defendants shall be permitted to utilize the name, nickname, mascot, location of or any other reference, including synonyms and homonyms, of schools which also happen to be the name of one of KU’s rival schools if the name is used in good faith and it is reasonably apparent that the name is used to identify or describe a school other than one of KU’s rival schools;
– Any product that bears a design, graphic, or image that is identical or similar to any of KU’s design trademarks, derivations of any design trademarks, current or future buildings on KU’s campus, or other KU landmarks;
– Any product that bears the name, nickname, or reference, including synonyms and homonyms, to the geographic location of a collegiate sporting event in which KU is a participant or an event that is located in KU-owned facilities, including but not limited to the name of any stadium, arena, championship, playoff, or bowl game, however, Defendants shall be permitted to utilize the words “Lawrence” and “Kansas” as set forth in Paragraph 1(d), above, and shall be permitted to use utilize the name of a geographic location which happens also to be the location of a collegiate sporting event in which KU is a participant if the name is used in good faith and it is reasonably apparent that the name is used to identify a non-KU related event or business;
– Any product that bears any marks that are the subject of federal or state applications or registrations that KU now owns or files in the future; and
– Any product that bears any design, word, mark, or feature that is confusingly similar to any of the products above.
In addition, the Defendants agreed not to make any further public comments, oral or written, regarding the Civil Action, the appeal, the injunction, or the settlement agreement.
“We are extremely pleased that we can now put this case behind us,” said KU Athletics Director Lew Perkins. “We did not want to initiate this lawsuit, but it was important to protect KU’s trademarks from infringement and dilution. The jury correctly ruled that the defendants willfully infringed on our marks, and we hope the action we took serves notice that we will take all due action to protect those marks.”
“We acknowledge that KU was required to prosecute this litigation in order to protect the KU marks from infringement,” the defendants said in a statement. “We further acknowledge that many of the Joe-College shirts were found by the judge and jury to have unlawfully infringed KU marks. We apologize for our past public statements criticizing KU, Kansas Athletics, and their employees for pursuing the litigation. We have agreed we will no longer manufacture or distribute any of the more than 200 shirts that were the subject of the litigation, nor will we manufacture or distribute any other shirts with similar marks or colors.”
