When Coach Deion Sanders and his Jackson State Tigers run onto the field at Mississippi Veterans Memorial Stadium, they hear the JSU marching band, the Sonic Boom of the South, play JSU’s longtime alma mater, “Jackson Fair”, and hear the famous “Thee”. I like the lyrics. This same phrase also appears on the shirts, shorts and other apparel often worn by Tigers fans. It is also on state-issued Vanity JSU license plates.
One problem with all that “love”: JSU hasn’t filed the phrase with the U.S. Patent and Trademark Office.
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Meanwhile, a trademark company, derisively described in court documents as a “trademark pirate”, applied for registration and sued JSU’s business partners – but not JSU itself – for infringement. Last week, the United States Court of Appeals for the Fifth Circuit upheld the dismissal of the suit on the grounds that JSU enjoyed sovereign immunity as a public university.
The legal controversy began five years ago when Business Moves Consulting successfully applied to the USPTO for registration of “TheeILove” and licensed it to sell apparel. In 2019, the company and its business partners requested “Thee I Love” for multiple uses, including on license plates (the USPTO has yet to approve the request). Those behind Business Moves have been criticized for opportunistically seeking high-profile brand records, including for Cash Money Records and even DJ Khaled’s son Asahd, when they had no significant connection.
Business Moves’ ability to register JSU-related trademarks stems in part from the fact that JSU did not seek to register the phrase with the USPTO, despite using Thee I Love in its alma mater for approximately 80 years. . As Judge Jennifer Walker Elrod summarized, the JSU made a request in late 2019, “but the USPTO previously denied the requests because Business Moves. . . beat in the fist. JSU also registered the mark under Mississippi law in 2015 for use on vanity plates and in 2019 for T-shirts. The university also asserts other intellectual property rights in the sentence.
Like many colleges, JSU has retained Collegiate Licensing Company to license what JSU considers its trademarks and other properties to apparel and merchandise companies. In 2020, Business Moves sued CLC and licensees in federal district court in Louisiana for infringement, claiming they were unlawfully using trademarks in the sale of merchandise.
In response, SIC attorneys noted that JSU was “conspicuously absent” from the list of defendants. “[JSU] is strongly tied to the ‘Thee I Love’ brand,” CLC insists, as evidenced in part by the campus bookstore, which only sells official merchandise, representing “the largest retailer of JSU merchandise, including ‘Thee’ merchandise. I Love”. According to CLC, JSU is a necessary party to the lawsuit since it has certain proprietary rights, if disputed, in Thee I Love, while CLC is only an agent on behalf of JSU.
Yet the legal problem with Business Moves suing JSU is that as a public university, JSU is considered an “arm” of Mississippi. Under the 11th Amendment to the United States Constitution, states and their arms enjoy sovereign immunity from many types of lawsuits. This means that unless JSU, one of the largest historically black colleges and universities in the country, consents to be sued, a case against it will be dismissed.
CLC and the other defendants argued that since the case involves an unresolved legal battle over trademarks related to JSU, the university is a necessary party. And since JSU enjoys sovereign immunity — and therefore cannot be joined to a lawsuit — the case should be dismissed.
The District Court and the Fifth Circuit agreed. Judge Elrod noted that CLC is not replacing JSU in the litigation. “Collegiate,” Elrod wrote, “has no ownership interest in the mark, and the University retains its sole discretion to grant licensees access to the mark.” She added that “the proper forum for determining the true owner of these trademark rights is the USPTO,” rather than a court.
Meanwhile, Sanders – who, according to Judge Elrod, “is also known as Prime Time or Neon Deion” – can continue to lead his Tigers as the Sonic Boom of the South continues.
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