Ohio State University v. Skreened Ltd.
16 F. Supp. 3d 905
| S.D. Ohio | 2014Background
- Ohio State University (Plaintiff) licenses trademarks for apparel; Skreened Ltd. (Defendant), co-owned by Daniel Fox, operates a print-on-demand apparel business selling shirts via a website and retail store.
- Users upload designs to Skreened; Skreened prints on demand and sells directly to consumers; some orders are private/bulk.
- Plaintiff sent warning letters and sued in July 2012 asserting federal trademark infringement (15 U.S.C. § 1114), false designation/unfair competition (15 U.S.C. § 1125(a)), counterfeiting (15 U.S.C. § 1114), and Ohio right of publicity claims (Ohio Rev. Code ch. 2741) over selected t-shirt designs.
- Many disputed shirts used Ohio State marks (e.g., Block O, Brutus, OSU, Gold Pants, Scarlet & Grey); Plaintiff narrowed the case to specific designs.
- Both parties moved for summary judgment; Court addressed likelihood of confusion, counterfeiting elements, right of publicity, and various defenses (e.g., §230 immunity, ISP status, parody/First Amendment, policing procedures).
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Federal trademark infringement (15 U.S.C. §1114) / false designation (§1125(a)) — likelihood of confusion | Marks are valid, used in commerce by Skreened without authorization, use likely to confuse consumers | Many designs originate from third-party uploads; policing/"autohold" procedures and expressive/parody uses limit liability | Court: Likelihood of confusion is established; summary judgment for Plaintiff on federal infringement and §1125 claims |
| Counterfeiting (15 U.S.C. §1114/§1117) — identical or substantially indistinguishable marks and willful intent | Plaintiff: Shirts are identical/substantially indistinguishable and Defendants knowingly sold counterfeits | Defendants disputed some registrations timing (e.g., running Brutus) and intent | Court: Summary judgment for Plaintiff on counterfeiting except for Skreened’s running Brutus sales occurring before mark’s registration date |
| Ohio right of publicity (Ohio Rev. Code ch. 2741) re: Urban Meyer | Plaintiff: Meyer assigned publicity rights to Ohio State; Skreened sold unauthorized shirts using his persona | Defendants: ISP/advertiser/media status and statutory exemptions; failed to plead some affirmative defenses | Court: Plaintiff entitled to summary judgment on right-of-publicity claim against Defendants |
| Defenses (§230 immunity, ISP/advertiser status, First Amendment, parody, policing practices) | N/A | Defendants rely on §230, ISP/exemption provisions, First Amendment/parody, and internal policing to avoid liability | Court: Defenses fail — §230 does not abrogate IP claims; Skreened is a producer/retailer of apparel (no immunizing status); parody/First Amendment insufficient; policing gaps not a defense |
| Attorneys' fees and joint liability of Fox | Plaintiff seeks fees as an exceptional case and joint/sveral liability against Fox | Defendants contest willfulness and Fox’s personal liability | Court: Case is exceptional; awards attorneys’ fees; Fox is personally liable for federal claims (personal involvement/willful blindness). Summary judgment on joint liability for state publicity claim denied for lack of developed argument |
Key Cases Cited
- Celotex Corp. v. Catrett, 477 U.S. 317 (U.S. 1986) (summary judgment standard)
- AutoZone, Inc. v. Tandy Corp., 373 F.3d 786 (6th Cir. 2004) (likelihood-of-confusion multifactor test guidance)
- Audi AG v. D’Amato, 469 F.3d 534 (6th Cir. 2006) (same test for infringement and false designation; internet marketing increases confusion risk)
- Frisch’s Restaurants, Inc. v. Shoney’s Inc., 759 F.2d 1261 (6th Cir. 1985) (mark strength and similarity analysis)
- Daddy’s Junky Music Stores, Inc. v. Big Daddy’s Family Music Ctr., 109 F.3d 275 (6th Cir. 1997) (similarity and consumer impression focus)
- Coach, Inc. v. Goodfellow, 717 F.3d 498 (6th Cir. 2013) (exceptional case and attorneys’ fees under Lanham Act)