What's In A Name? Copyright and Trademark Infringement Risks for Interscholastic Athletics

Interscholastic athletics is an integral part of the student experience and School’s team name, logos, uniforms, and mascots can invoke pride and a sense of identity for the students and the larger community. For any school looking to change their team name, logos, uniforms, or mascots, either because of the recent prohibition against indigenous imagery or to find a new look, it is imperative that the Districts consider the Intellectual Property concerns that could unexpectedly burden the District.

Many schools, universities, and professional sports teams have registered copyrights and trademarks for their team names, logos, uniforms, and mascots. Generally speaking, registering a “work” or a “mark” such as an image or name, under a copyright or trademark gives the creator certain rights to control the use of the work and to enforce those rights in federal courts. Hypothetically, if a School District copies a registered copyright and/or trademark, it may have committed “infringement.” Then, the owner of the copyright or trademark could file a lawsuit against the infringing school district, which could, among other remedies:

• Force the District to stop using the infringing mascot, logo, uniform or team name;
• Disgorge any profits earned from the District’s use of the infringement
• Pay damages for the dilution or damage to the value of the copyright or trademark; and
• Pay attorney’s fees to the copyright or trademark holder.
  

These drastic consequences require careful consideration before any District takes any action with respect to its athletics.

The legal analysis on what constitutes infringement is complicated and very specific to the particular use in question. To make matters worse, the application of any infringement test by the courts to K-12 interscholastic athletics almost non-existent, which leaves a high degree of uncertainty to any District that needs to make a decision about its athletic teams’ appearance. There are some examples, however, that can be instructive and helpful to a District making the decision to change their team name, logos, uniforms, and mascots.

With respect to a team name, most names would be safe from any possible infringement claim by existing teams, but certain organizations have vigorously pursued unauthorized use of their team names. For example, in 2014 Keuka College changed the name of its athletic teams to the “Wolfpack,” but NC State University, who has used that unique name since 1921 and has registered it with the Trademark and Copyright Offices, threatened litigation over the unauthorized use of “Wolfpack. ” Keuka College abandoned their new name, citing the extensive cost and risk of litigation.

There are many examples of High Schools receiving “Cease and Desist” Notices from Universities and Colleges for using similar logos or mascots. In 2020, Miami University (Ohio) demanded that the Bozeman, Montana High School cease using a similar Red Hawk logo and mascot for their sports teams . The University of Wisconsin, reportedly, sent out dozens of Cease and Desist Notices for High Schools seeking to stop these schools using its trademarked “Motion W” logo. The risk of detection by Universities and other copyright or trademark owners has grown with the ubiquity of video highlights on social media and video sharing websites. Likewise, the profits generated by collegiate athletics and related merchandizing has increased the incentive for Universities to enforce their intellectual property rights.

While Districts can face consequences if they use infringing designs or names, the selection of a new image for their athletics is not a hopelessly dangerous process. Many Universities offer a path to license a team name, logo, uniform, or mascot, which would grant permission to a District to use all or part of protected work or mark. Also, the NFL has encouraged the use NFL insignias and imagery for interscholastic sports, with a spokesperson suggesting, “It is inspirational for young players to play football under the same name as NFL teams.” Furthermore, independent creation of a work is a complete defense to any threat or allegation of copyright infringement. Thus, hiring a professional design company to create new designs for athletic teams would prevent substantial costs and uncertainties regarding potential claims for infringement and can offer contractual protections to the School District.
______________________________________________________________

(1) Background and Frequently Asked Questions Regarding Part 123 of the Regulations of the Commissioner of Education Relating to Prohibiting the Use of Indigenous Names, Mascots, and Logos by Public Schools, May 2023 https://www.nysed.gov/sites/default/files/programs/indigenous-education/indigenous-mascot-regulation-background-and-faq.pdf

(2) Lawsuit threat forces Keuka College to drop 'Wolfpack'