Aggressive Litigation in Higher Ed: Duke

Two Duke professors detail their school’s pattern of trademark litigation and place it in context

Trademark law serves as an important consumer protection tool. If you regularly purchase Vlasic pickles, to take an example, you should feel assured that a product on the shelf named “Vlasic” with a similar design is actually a Vlasic product without having to check on the ingredients and manufacturing detail. Trademark rights are in this way an important and legitimate tool for organizations to defend themselves and help their customers.

In recently published article in the Fordham Intellectual Property, Media & Entertainment Law Journal, Duke Law School professors James Boyle and Jennifer Jenkins look at the downside of trademark litigation – what they term “bullying” – and surprisingly hone in on their own institution as the main offender in higher ed. They use the US Patent & Trademark Office’s own description of bullying to define the behavior: “a trademark owner that uses its trademark rights to harass and intimidate another business beyond what the law might be reasonably interpreted to allow.” Boyle and Jenkins, who are intellectual property specialists, have apparently been hearing rumors about potentially abusive litigation by Duke for several years and in this article attempt to cover the area from a general conceptual viewpoint. They look at how US business as a whole manages trademark litigation and then compare the behavior of prominent universities quantitively and qualitatively. Duke is identified as an outlier both in terms of top academic universities and then schools with notable athletic programs during the 2015-18 period. In a chart that must have taken a considerable amount of research to assemble, the authors show that Duke pursued more trademark litigation actions in that period than the other top 9 academic schools combined (p. 10 at the link). For example, Princeton, Columbia, Penn, and Northwestern — all names that one can imagine lead to some trademark confusion in certain situations — collectively initiated 0 actions in this period; Duke initiated 136. Boyle and Jenkins note that University of Texas (Austin) is the second most aggressive trademark litigator in higher ed – with 30 actions initiated in this period – and hypothesize correctly that running prominent athletic and basketball programs increases trademark infringement controversy and litigation, and present statistics supporting this fact. For example, Ohio State pursued 11 cases in the period. The 10 biggest athletic departments in terms of revenue had a median of 4 cases pursued; again, Duke initiated 136.

The trademarks pursued by Duke are mostly in fields entirely removed from higher education and sports. Trademarks grant use of a word or symbol or design in a specified domain. So the existence of Delta Air Lines does not create any issue for Delta Faucets, as the firms operate in completely different areas. Based on its association with “duke”, “blue” and “devils”, Duke reportedly acted against, among others, “Devil’s Nightmare” (beer), “Kuke” (electronics), “Beach’d” (clothing accessories), “DLove” (marketing services) and “Stay Blue” (denim clothing). Boyle and Jenkins write: “Duke does have well-known ‘Duke’ trademarks for educational services, medical services, athletic merchandise and so on. Yet the marks above are sufficiently different from those ‘Duke’ marks to make the assertion of consumer confusion frivolous.” The authors use their professional judgement in evaluating the actions (“oppositions” in trademark law lingo) Duke took in this period and decided that 85% of them could be characterized as “Clearly Erroneous” and “Far-fetched” (their terms). 15% are described as “Arguable” or “Sound”.

In many cases of trademark litigation, the defendant settles and abandons the problematic trademark simply to avoid costly litigation. This is especially true when the defendant is a small firm without the legal resources of a large institution like Duke. The paper quotes from an interview of an intellectual property lawyer unconnected to Duke who relates how this works:

Q: Has that happened in a recent trademark case for you, where you represent a big client and are trying to enforce a weak case on the merits, weak in your opinion?

A: Oh yeah! (laughs) I’ve had a case recently where I think we were probably wrong on the merits… The lawyer on the other side was yelling at me about we didn’t have a case, and I said you must be confusing me with somebody who cares about the merits. We are the giant in this case and we’ve decided we’re not going to tolerate this, we’re not going to give up.

Q: Was that effective?

A: Yeah, it worked. They gave up. We just didn’t want this individual using the client’s mark. They’re no threat to us, a different world, very different services. No real likelihood of confusion. But we just didn’t want them to use it, use their mark.

The authors note that Duke encountered a great deal of “success” with its litigation, with settlements and trademark abandonment in most cases. But the word success here is narrowly defined. Aside from the ethics, legal and otherwise, of Duke’s pattern of behavior, our first question was why the university bothered to pour energy and staff time into this. The litigation in most cases contributed little to the school in terms of its mission, its financial strength or its brand, let alone proving worthwhile after a cost-benefit analysis. Two thoughts occurred – ours and not those of Boyle and Jenkins:

1) Metrics connected to trademark litigation are not well known and in fact needed to be developed by Boyle and Jenkins in writing their article. Duke’s General Counsel may not have been aware that Duke’s behavior was out-of-consensus, so considered their department’s activity in that area normal based on the school’s past history. That is speculation but explains management perception of this behavior.

2) “Middle management-itis”: Managers with energy and the need to justify their salaries and budgets frequently engage in actions that do not help their organization. Look around you while going about your daily life and this issue – it’s an agency problem – will reveal itself everywhere.

The other possibility of course is that Duke has a different view of trademarks and views this activity as benefitting the university. But the lack of benchmarking and agency issues within large organizations supply two alternatives.

Duke’s communications department decided not to comment after being contacted about this post, with the discussion suggesting the topic hadn’t hit their PR screen yet.

To reduce the chance of any litigation connected to this item, we decided to use a picture of the North Carolina Tar Heels men’s basketball team as a post image.