Sports

With millions on the line, the UW plays hardball on trademarks.

Bucky Badger enjoys tormenting opposing mascots on the court of play, but what about in a court of law? That’s what some are saying about the university’s efforts to stop other schools from using its trademarked logos for their own sports teams.

UW’s enforcement efforts drew ire in Waukee, Iowa — where the high school’s purple uniforms bore a “Motion W” similar to the one trademarked by UW-Madison — and propelled the story into the national media. That prompted alumni around the country to rat out other high school teams that are using the logo in states including New Jersey, Ohio, Texas, and West Virginia.

But the controversy is not the classic David versus Goliath match-up it’s been made out to be. UW officials say it’s a matter of picking smaller battles to protect a valuable trademark and avoid losing rights to it altogether.

A host of former trademarks — kerosene, aspirin, yoyo, and zipper, to name a few — fell into the public domain because the owners didn’t do a good job of protecting them from use by others. The Motion W could meet the same fate if the university doesn’t protect it as a trademark, says Cindy Van Matre ’83, the UW’s director of trademark licensing.

“It could be considered to become a generic mark so that any third party could use the logo any way they wanted,” she says.

Other would-be users of the logo, Van Matre adds, “could turn around and say ‘Well, you let all these high schools use it, and you didn’t seem to care.’ “

There’s precedent for that concern, explains Craig Fieschko ’89, MS’91, JD’94, an intellectual property attorney with Dewitt, Ross & Stevens in Madison who also teaches UW law students about trademarks and copyright.

“If you don’t enforce your marks — even in questions like this, where there are arguments on both sides as to whether the marks are truly infringed — if you don’t try to enforce your mark and stomp that out, you could lose rights to it,” Fieschko says.

Take the phrase “March Madness,” which was first adopted by the Illinois High School Basketball Association in the 1940s. It took hold as a marketing tool for CBS’s television coverage of the NCAA Basketball Tournament in 1982 after announcer Brent Musburger referred to the Final Four games as “March Madness” on the air. The Illinois organization did nothing to challenge the network’s use of the catchphrase for a decade, and a federal appeals court ultimately ruled in 1996 that CBS and the association jointly owned the trademark.

“Basically, the university is a bit afraid of a similar situation here,” Fieschko says.

If the UW doesn’t police how high schools are using the logo, he says, those teams could legally tie their own identity to it, including selling merchandise such as clothing or class rings that bear the Motion W.

“If the horse bolts the stable, it’s hard to bring it back,” he says.

UW ranks fifteenth for merchandise royalties among the more than two hundred colleges and universities represented by the Collegiate Licensing Company, which helps schools handle legal issues connected to trademark infringement.

Wisconsin generated nearly $2 million in royalties from its trademark licensing program in 2005–06, the highest total in the program’s history.

More than four hundred companies pay for licenses to sell items featuring Wisconsin logos — provided university officials don’t find them to be in bad taste. That means diehard fans can buy everything from dog collars to windshield ice scrapers to rubber duckies to toilet seats with Wisconsin logos. Officials did reject a proposal to use the Motion W on casket liners, something other schools have approved.

Before Bucky Badger was licensed in 1988, Van Matre says, the mascot could be found on everything from condoms to obscene T-shirts, which have popped up on eBay.

Licensing royalties are divided equally between the Athletic Department and the Bucky Grants scholarship program, which provides financial assistance to low-income students, many of whom are the first in their families to attend college. Since 1994, the program has provided $6.5 million to 2,800 students.

When it comes to “On, Wisconsin,” the university’s fight song, it’s a distinctly different situation. Rumors once abounded on campus that Paul McCartney or Michael Jackson owned the rights to the song, but it has been in the public domain since 1984. It is performed by thousands of high school bands, according to the UW Marching Band’s Web site.

Waukee school officials thought their choice of the purple W, which bears striking similarity in font and design to UW’s logo, would be just as innocuous. The school adopted the logo after dropping an image of an Indian warrior to be sensitive to Native Americans. “The irony is we were trying to do the right thing,” says Waukee Superintendent David Wilkerson. The community, he says, was dismayed that using a letter of the alphabet — not Bucky Badger himself — was under dispute.

“I kept telling people this is a learning experience for everybody,” he says. “We have people who think we should have fought it and people who stepped up and said it’s no different than pirating software and pirating music.”

Meanwhile, the university is allowing Waukee to phase out use of the logo to avoid any financial burden, and the school district has asked the Collegiate Licensing Company to review its proposed new W before moving ahead with ordering new uniforms or other equipment.

Wilkerson says the ordeal, without a doubt, has alerted more schools and the public to protected trademarks.

“You’re not just free to grab them willy-nilly as you see fit,” he says.

— Jenny Pric