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Fighting Irish Trademark Battle: Notre Dame vs. Kansas High School Over Leprechaun Mascot

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Fighting Irish sign by Ron Miguel on Flickr

Image by Ron Miguel on Flickr

Chapman High School in Kansas is currently holding a “mascot art contest” to see who can come up with the new image of the school’s Fighting Irish logo. Until now, the school has been using one that the University of Notre Dame claimed looked too similar to its own trademarked logo. [Editor's note: And let's be honest, it's kinda identical.] When a Notre Dame official saw the Chapman mascot online, the university nudged Chapman to come up with a new design.

That was in 2006. In 2008, Chapman High School—along with the rest of Chapman, Kansas—was flattened by a tornado. The school was heroically rebuilt—and then Notre Dame decided to revive the whole leprechaun thing.

This isn’t the first time Notre Dame has defended its rights to its iconic leprechaun. The South Bend, Indiana university has put up its dukes against Catholic Central High School in Springfield, Ohio; Cathedral High School in El Paso, Texas; and others.

In this case, there was no real fight between the Fighting Irish factions, since Chapman had already agreed to change its logo. But Chapman, due perhaps to biblical weather, hadn’t made it enough of a priority for Notre Dame’s liking. (Notre Dame has no problem with the high school keeping its “Fighting Irish” name, which Chapman has been using since 1967.)

Dennis Brown, Notre Dame’s vice president of communications, released a written statement, noting that “Notre Dame and Chapman High School have been in communication about the school’s use of Notre Dame’s leprechaun logo and have worked cordially and cooperatively to resolve this matter.”

Brown also states that although the university doesn’t actively seek out schools with leprechauns as mascots, Notre Dame will step in and ask the school to find an alternative mascot that doesn’t violate the university’s trademark. Brown’s statement calls this action “unfortunately necessary.”

“Because of U.S. trademark law,” said Brown in the statement, “to allow others to use our trademarks as their own could weaken the university’s rights to its own symbols to the point where our legitimate property interests could be at risk.”

Notre Dame is not the only school to engage in this kind of behavior: the University of Florida infamously forced Glades Day School to spend $60,000 repainting its gym floor and redoing its football scoreboard to avoid infringement claims surrounding “Gator” logos. “It’s not something we target, and it’s not something we look for,” said Jim Aronowitz, associate general counsel for the Collegiate Licensing Company, which represents about 160 colleges and universities. “But when it comes to our attention or our client’s attention, as trademark owners, there is a responsibility to address these issues.”

[Editor’s note: Here’s the thing: it’s easy to get upset at Notre Dame and University of Florida for picking on small high schools.  Notre Dame has the 14th largest educational endowment in the country, and UF’s is $1.51 billion. Glades Day School is a high school of 390 students who wanted to express its sporting aspirations by associating with the great Gators. And Chapman just rebuilt itself after a natural disaster. So it’s easy for this armchair-non-quarterback to tell these institutions of higher learning to come up with an easy licensing solution. I mean seriously: Collegiate Licensing Group’s middle name is “Licensing:” Can it really not come up with a solution that preserves UF’s trademark rights but lets this one small high school use the mascot instead of spending $60K ripping up its gym?  Can Notre Dame  truly not avoid forcing Chapman to cease and desist without losing its rights to its leprechaun?

Maybe not. You see, trademarks are “source indicators.” That is, they tell you where what you buy comes from and, by doing so, avoid consumer confusion. That is their function. And so here, if the universities were to license their well-known logos to high school sports programs—as lovely a thing as that might be to do—the chance that a consumer would be confused about whether a t-shirt with a pugilistic leprechaun came from Kansas or Indiana becomes an actual concern…especially given the exactitude of the sameness. Ditto the Gators.

So can you fashion a creative solution? Does it solve the problem if the high schools can use the logos but only with their names (Chapman, Glades) prominently featured, to show that a particular shirt or hat comes from there, rather than being an official Notre Dame or UF product? That might work—or it might not. But it’s just not true for these huge institutions to say that by allowing others to use their logos they’d be losing their trademark rights, QED.  It’s an easy dodge for the big guys (“heck, we don’t WANT to pick on these poor little schools, but we HAVE to!”) but it doesn’t necessarily work that way, and you’d think that “Creative Licensing Solutions” or whatever they’re called could come up with something nicer than a cease-and-desist letter. Your suggestions are welcome.]

In case you’re keeping track, the mascot art contest at Chapman runs until January 20, and the new one will be revealed at a basketball game on February 10.

What do you think about Notre Dame’s trademark enforcement actions?

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<a href="" title="Notre Dame demands a small Kansas high school change its leprechaun mascot: right or wrong?">Notre Dame demands a small Kansas high school change its leprechaun mascot: right or wrong?</a>
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October 24th, 2011 at 12:28 pm