Urban Outfitters’ Kent State T-Shirt Was Offensive But Probably Legal (Guest Blog Post)

By Tyler Ochoa

As reported in various news outlets (including MSN and New York magazine), Urban Outfitters generated a storm of controversy on Twitter a few days ago, when it was discovered that it was offering for sale a “vintage” Kent State University sweatshirt, stained red in a manner that resembled blood spatter. In the wake of this mini-scandal, the question arose whether Kent State could successfully sue Urban Outfitters for trademark infringement or dilution.

I seriously doubt that Kent State will file a legal action against Urban Outfitters. Urban Outfitters has already stopped selling the offending item, and suing would only give Urban Outfitters even more publicity for this tasteless stunt, which is undoubtedly what it was seeking in the first place. Moreover, even if Kent State was to file a legal action, it is far from clear that it would succeed.

With regard to federal copyright law, the name of the University is not protected by copyright. Only the seal, and perhaps the layout, would qualify as a work of authorship; and since the seal bears a date of 1920, it was likely first published before 1923, and it is therefore in the public domain in the U.S. Thus, even assuming that red stains would qualify as a “derivative work,” Kent State would not be able to pursue a copyright infringement claim.

Traditional trademark infringement requires showing that consumers are likely to be confused about the source of the product. Since this appears to be a genuine sweatshirt that has been altered, the question is whether consumers would perceive the altered shirt to be sponsored or endorsed by Kent State. Case law indicates that genuine second-hand goods may be sold, so long as it is clear that they are used and they have not been altered in a way that would be attributed to the original trademark owner. Here, it is clear that the sweatshirt is used, and it is doubtful that a reasonable consumer would believe that the “bloodstains” were genuine, or that they were sponsored or endorsed by the University.

Trademark dilution comes in two forms: dilution by blurring and dilution by tarnishment. Dilution by tarnishment is defined as an “association arising from the similarity between a mark or trade name and a famous mark that harms the reputation of the famous mark.” Kent State would first have to show that its mark was “famous,” meaning that “it is widely recognized by the general consuming public of the United States.” While Kent State has a certain notoriety among adults who were alive in 1970, certainly it is not a “household name” in the way that large public universities that have nationally ranked sports teams are. I imagine if you took a survey of adults under the age of 30, a relatively small percentage would have heard of Kent State. Next, Kent State would have to show that the reputation of the mark was harmed by the use. While the use certainly is in bad taste, it merely reminds people of the reputation that Kent State acquired in 1970. Unless people thought that Kent State had authorized the use, which is unlikely (see above), it is doubtful that the use would “tarnish” that reputation of the University any more than it already was. Finally, even if tarnishment was found to be likely, the statute contains an exception for “any fair use, including a nominative or description fair use, of a famous mark,” including use “identifying and parodying, criticizing, or commenting upon the famous mark owner.” This is a “nominative fair use” (using a trademark to refer to the trademark owner), and the sweatshirt reasonably could be construed as parodying, criticizing, or commenting upon the famous mark owner.

On the other hand, a federal district court recently held that a political anti-abortion group was liable for both trademark infringement and trademark dilution for publicly referring to the NAACP as the “National Association for the Abortion of Colored People.” [Read the decision]. It rejected the argument that this was a fair use parodying, criticizing, or commenting on the NAACP. This decision has been appealed to the Fourth Circuit; but if it is upheld, it would certainly provide support for a hypothetical legal action by Kent State against Urban Outfitters.

Ironically, Urban Outfitters has denied that it was attempting to comment upon the shootings at Kent State. That statement certainly would be held against it if it had to defend against a legal action by claiming that this was a parody, or a criticism of or comment about Kent State. If Kent State decides to file a legal action, I certainly would expect Urban Outfitters to change its tune.