Jury selection for a trademark trial pitting Penn State against Vintage Brand—an online retailer of vintage T-shirts, throwback hats, retro tees, socks, magnets, koozies, mugs, cutting boards and similar products associated with sports teams—begins this Tuesday in a federal district court in Williamsport (Pa.).
The sports world will be watching. At stake is whether teams’ imagery can be used without consent to create unlicensed products. But also at play is whether teams can exclude others from using historical memorabilia that, as relics of history, are already in the public domain.
In 2021, Penn State sued Vintage for acting as a so-called “serial infringer” by selling “counterfeit Penn State-branding clothing and accessories” without the school’s permission. Purdue, Arizona, Arizona State, Cal Berkeley, UCLA, Colorado, Oregon, Oregon State, USC, Stanford, Utah, Washington and Washington State have also filed suit against Vintage and raised the same basic grievance. They have accused the company of blatantly using schools’ trademarks without permission to generate sales.
As Penn State tells it, Vintage sells products online in “virtually indistinguishable” ways from websites that sell licensed Penn State merchandise, which include vintage and throwback apparel. It therefore competes with the university and, Penn State says, “free rides” off the university’s fame.
Vintage’s merchandise is portrayed as including “the same or highly similar versions” of Penn State’s logos and imagery. Vintage is also accused of using “dynamic internet searching tools” and Google Dynamic ads to solicit customers who search for Penn State merchandise. Those consumers found Vintage’s “Penn State Nittany Lions” store, which the school contends tricked people into thinking they’ve found a licensed seller.
Making matters worse, Penn State maintains, is that the products at issue are “not the sort that typically involve a lengthy decision-making process or high degree of customer care,” like a car or a big screen TV, and usually cost less than $30. In other words, a customer looking to buy a drink coaster with a Penn State theme, that customer can find that product quickly online and make a purchase without a deep comparison of options. Penn State says there is evidence of customers being confused into wrongly thinking they’re buying a licensed Penn State product.
Vintage, which is based in Washington, insists its practices are lawful and that Penn State’s legal arguments miss the mark.
Vintage asserts it sells merchandise “bearing historic artistic images reproduced from vintage school memorabilia.” Vintage maintains that it has not sold merchandise bearing any of these familiar Penn State images, including the famed Lionhead design:
Instead, the company says, it has sold products using these images:
The company also maintains it uses a disclaimer to notify consumers they’re not buying an official Penn State product. “Vintage designs,” the disclaimer expresses, “not affiliated with, licensed, or sponsored by any college, team or league.”
Vintage insists it isn’t liable because it hasn’t used University-related historic images as trademarks and maintains there’s no likelihood of consumer confusion. Vintage also contends its practices are protected under several legal doctrines, including ornamental and aesthetically functional use. Vintage stresses that a trademark is intended to identify the source of a good and distinguish it from other goods, but it is not intended to serve as an ornamental or decorative feature. From that perspective, consumers aren’t confused by Vintage’s products because the Penn State imagery at issue is not identifying the school as the source.
Vintage, which has counterclaimed Penn State, further maintains the images at issue are historic and in the public domain. The company explains that from 2018 to 2021, it sold products that featured about 35 Penn State-related vintage images. All those images, Vintage claims, were “from historic memorabilia predating 1989” and included game tickets, pennants, decals and buttons. The company also says it earned less $25,000 in revenue from selling those items.
Penn State is represented by Lucy Jewett Wheatley and other attorneys from McGuireWoods while Vintage is represented by John T. Fetters, Mark P. McKenna and other attorneys from Stokes Lawrence, Lex Lumina and Post & Schell.
U.S. District Judge Matthew W. Brann will preside over the trial, which is expected to last nine days. The jury’s verdict could be appealed to the U.S. Court of Appeals for the Third Circuit, kicking off a review process that could last many months or longer.