This football season, as many attempt to hone their “Teach Me How to Ducky” skills and zealously root for the nation’s top football program, local Internet rap sensation Supwitchugirl slowly contemplates its next licensing deal with the UO DuckStore. If it’s not licensing with what is considered one of the largest sports-merchandising agencies in the state of Oregon, then it’s being the topic of negotiations with major corporate entities, to assure Supwitchugirl is not infringing upon already existing legal property. What began as a trio of Duck fanatics creating a UO football-themed video for a journalism project, quickly went viral, and has since created a myriad of complex legal issues. Legal issues that many lawyers, let alone a group of undergraduate journalism students, may have never seen coming.
WHO IS SUPWITCHUGIRL?
Supwitchugirl ((h)wətsupwiðyoōgərl|), is a word mash-up derived from the phrase Sup with it girl?, which is commonly used as a pick up line directed at young women. The rap group Supwitchugirl consists of three University of Oregon seniors: Michael Bishop, Brian McAndrew, and Jamie Slade. These young men, now local celebrities, never dreamt their comical spoof on J-Kwons Tipsy, revolutionized into I Love My Ducks (I Smell Roses), would take campus by storm, and generate close to one million You Tube hits. If that wasnt enough, Supwitchugirl responded to the infectious demand, creating a second video, I Love My Ducks (Return of the Quack) (also a spoof, based on Mark Morrisons Return of the Mack), which has quickly become the anthem for the Ducks successful 2010 season. The latter video, released in September 2010, also has managed to attract close to one million You Tube Hits.
Outside of their tremendous success in mass media, the group has also been a sensation in sports merchandising. It is estimated that they have sold over 75,000 shirts, with the words “I Love My Ducks” written conspicuously in bright yellow across the infamous ‘highlighter green’ shirts. For Supwitchugirl, the fortune and fame has managed to leak into every DuckStore – from Portland to Eugene – with the phrase being printed on everything from mugs to onesies. It has been “I Love My Ducks” pandemonium, and the fans are loving it. While this has been a dynamic time for Supwitchugirl and the University of Oregon, it has not come without pitfalls. As the saying goes, “with great success comes great responsibility.”
TROUBLE IN PARADISE: PUDDLES & THE LONG-TERM HANDSHAKE
Supwitchugirl’s battle for intellectual property commenced when University of Oregon officials came down on them for the unauthorized use of the University of Oregon mascot, “Puddles,” in their first video. The university was largely concerned with the perception that the trademark governing the Oregon “Duck” was not the property of the University of Oregon, but rather property of the Walt Disney Company – due to its close resemblance with Donald Duck.
As the legend holds, in 1940, Walt Disney and university officials made a handshake deal in which Disney orally contracted with the university for permission to use “the Duck” as the University of Oregon’s official mascot. After the Disney Co. questioned the informal agreement in 1970, the parties stipulated into a formal agreement officially allowing the University of Oregon’s use of the Duck. Under its formal licensing agreements with Disney, the UO had to get Disney’s permission to use the Duck in any setting outside those described in the agreement. In terms of the actual mascot, the agreement said the UO had to ensure that the performer in the costume had “the ability to properly represent the DONALD DUCK character.” The agreement further listed where and when the costume could be used: generally at UO sporting events, or at fundraisers that Disney has approved of in writing in advance.
When Supwitchugirl featured the official mascot in their video, the university was concerned that this was a violation of the Disney agreement. The university went back to the drawing board with Disney, to again solidify the permissible uses of the “Duck”. As a result of these negotiations, Disney concluded the current incarnation of a costumed character featured at the University of Oregons athletic and promotional events (the Oregon Duck), is not substantially similar to Disneys Donald Duck character.” Essentially, Disney concluded that Supwitchugirl’s use of Puddles in their video was not an infringement on the copyright.
I LOVE MY DUCKS: THE RACE TO THE TRADEMARK OFFICE
Supwitchugirl’s battle with the University did not stop at Puddles. Feathers were once again ruffled when the boys attempted to gain sole-ownership of the phrase “I Love My Ducks” by registering it with the US Patent and Trademark Office. After entering into a licensing agreement with the University’s Office of Marketing & Brand Management, which permitted the university to produce and sell the shirts at rate of $12 per shirt and compensate Supwitchugirl $2 per shirt, the group decided that they wanted to own the phrase.
On November 23, 2009, Supwitchugirl filed their trademark application. The current status of the application is “Abandoned.” Supwitchugirl withdrew their trademark application shortly after receiving a letter from Klarquist Sparkman, a private law firm assisting the University in intellectual property related matters (and one of the Northwest’s largest intellectual property law firms). That letter, dated October 12, 2010, highlights some of the University’s strongest arguments in opposition to Supwitchugirl coining the phrase as ‘theirs.’ Specifically, the letter proclaims:
“There can be no question the DUCKS in I LOVE MY DUCKS refers to the University of Oregon’s athletic nickname and trademark DUCKS. The University’s athletic nickname has been DUCKS for nearly a century. As most everyone in Oregon knows and is widely known throughout the country…
Thus it is obvious that Supwitchugirl’s unauthorized use of DUCKS in the mark I LOVE MY DUCKS is likely to lead the consumers to which the athletic apparel is marketed to mistakenly believe that such apparel is associated with, authorized, endorsed, or sponsored by the University of Oregon…”
The University claims that the phrase “Ducks” is widely known to refer solely to the University of Oregon and its athletic programs, and that if Supwitchugirl was allowed to own the phrase, it would cause substantial confusion to consumers and thus infringe upon the University of Oregon’s protected rights.
DAZED N CONFUSED: LIKELIHOOD TO CAUSE CONFUSION STANDARD
The standard of “substantial similarity”, invoked by both Disney and the University, is the same standard courts will adopt when analyzing the merits of any alleged trademark infringement. If the trademark is “substantially similar” to another, this will trigger the likelihood of confusion—that is, the alleged infringer will be prohibited from using a trademark on a competing product if that use causes a likelihood of confusion in the mind of a relevant purchaser.
Essentially, if the competing product is so substantially similar, that it would cause consumer confusion as to where the mark, logo, or sound is derived, it would be considered an infringement on the original owner. Some key factors to look for when evaluating the likelihood of confusion include: the closeness of the appearance, sound, and meaning of the conflicting marks; the relatedness of the goods on which the marks are used; the channels of commerce in which the marks are sold; and the sophistication of the relevant purchasers of the goods.
In the case of the University of Oregon’s mascot Puddles, Disney acknowledged the Duck was no longer Donald Duck and asserted no trademark claim over the Duck, thus rendering the issue moot. Conversely, the University’s opposition to Supwitchugirl trademark “I Love My Ducks” stems from concerns that consumers would associate “Ducks” with the University of Oregon, which would infringe on the University’s alleged ownership.
SETTLING THE SCORE
Courts have previously visited this issue of substantial similarity in the context of universities. In the Smack case, the Court held that Smack was liable for intentional trademark infringement based on its use of the color combinations of the schools. The Court found that the collegiate institutions had achieved “secondary meaning” in the minds of the consumers through their color schemes, logos and designs. Establishing secondary meaning in their colors schemes was essential for the schools to prevail on their claims of infringing use of unregistered color schemes and trade dress.
The Smack case is very factually similar to the current battle between Supwitchugirl and the University of Oregon. Nevertheless, this is a largely unsettled area of law, and it’s unclear how a court would rule on a trademark infringement case involving the “Ducks”. What is clear: universities have become mega spaces for sports merchandising, but also incubators for an immense amount of student creativity. This provides the perfect landscape for intellectual property battles. However, in the case of Supwitchugirl, it’s possible that these particular Ducks may have to go to battle against the very institution that inspired them.