Licensees of a sovereign entity’s trademark—like a school sports activities group identify—would have free rein to infringe if a decrease court docket dismissal stands, the proprietor of a “Thee I Love” trademark registration instructed the US Supreme Court docket.
Enterprise Strikes Consulting Inc. mentioned its swimsuit in opposition to an organization that makes Jackson State College merchandise was improperly dismissed as a result of it didn’t identify the varsity a defendant. “Thee I Love” is the title of the music that’s served as Jackson State’s alma mater for 80 years, however in 2017 Enterprise Strikes turned the primary to register it federally—as THEEILOVE design mark—and later sued Jackson State licensee Collegiate Licensing Co. for promoting merchandise with the phrase.
The case activates whether or not licensors need to be included in lawsuits in opposition to licensees whose use of the licensed marks is alleged to infringe a 3rd celebration’s trademark—and what occurs when the licensor enjoys sovereign immunity.
Letting the Fifth Circuit’s ruling affirming dismissal stand would “arm all method of IP infringers with a novel and invincible protection,” as it might drive rights house owners to incorporate a sovereign—and immune—rightsholder as a defendant. Such a requirement would successfully create a workaround that renders trademark rights unenforceable in opposition to anybody who’s licensed emblems from state entities, Enterprise Strikes argued.
Traditionally requiring joinder of the licensor in trademark fits is supposed to use to plaintiffs to stop double-recovery quite than to defendants, the petition mentioned.
The petition additionally argues Faculty Licensing is totally able to defending Jackson State’s trademark rights and has no conflicting pursuits to do in any other case. Jackson State additionally has an unbiased means to problem the trademark and argue its widespread regulation trademark rights—rights stemming from use previous to that of the registered consumer—earlier than the Trademark Trial and Attraction Board.
“Thee I Love” Triangle
The US District Court docket for the Jap District of Louisiana dismissed the case for not together with a required celebration months into Enterprise Strikes and BrandMixer Inc.’s 2020 lawsuit. The US Court docket of Appeals for the Fifth Circuit—whereas noting that “Thee I Love” has performed “a big position within the College’s lore” and that the varsity owns state trademark registrations on the phrase for license plates and shirts—concurred.
The appeals court docket held that Jackson State’s vital curiosity in defending its trademark rights and undermining Enterprise Strikes’ rights made it a required celebration. The three-judge panel acknowledged that Faculty Licensing wouldn’t take a special place than one defending the college’s rights, however the college had much more to lose within the battle over who owns rights to “Thee I Love.”
The court docket additionally mentioned that Jackson State is an arm of the state of Mississippi and due to this fact immune from swimsuit, and the Supreme Court docket has held a swimsuit involving non-frivolous pursuits of a sovereign absent from the litigation should be dismissed.
A separate consideration of equitable components weighed strongly in favor of dismissal unbiased of sovereign immunity, the Fifth Circuit added. A kind of concerns is whether or not Enterprise Strikes would have an enough treatment after dismissal, and each the district and appeals courts mentioned the premise of the dispute is possession of the mark, and the correct venue for figuring out such rights is the US Patent and Trademark Workplace.
Lilly PLLC represents Enterprise Movers.
The case is Paige Lee et al. v. Anthony Lawrence Assortment LLC et al., U.S., No. 22-483, petition for evaluate 11/21/22.