When the University of Houston Cougars debuted their new powder blue uniforms with red and white trim for the 2023-2024 football season on September 2nd, 2023, they were thinking about heritage, history, homage, and lineage. After all, the city of Houston has a long and proud history of association with football, starting in 1959, when the Houston Oilers took the field for the first time as an AFL team, and progressing to the present with the Houston Texans. But the NFL has other ideas about the Cougars’ new/old look – namely, that it violates the intellectual property rights of both the NFL and the Tennessee Titans, who evolved directly from the Oilers after the team relocated from the Astrodome in 1996. Now a cease-and-desist letter from the NFL to UH has caused consternation among sports fans and IP observers alike. Did the NFL make a good call here, or does the play need booth review? Let’s take a closer look at this gridiron gridlock, and what it means for intellectual property and the University of Houston!
When the University of Houston Cougars debuted their new powder blue uniforms with red and white trim for the 2023-2024 football season on September 2nd, 2023, they were thinking about heritage, history, homage, and lineage. After all, the city of Houston has a long and proud history of association with football, starting in 1959, when the Houston Oilers took the field for the first time as an AFL team, and progressing to the present with the Houston Texans. But the NFL has other ideas about the Cougars’ new/old look – namely, that it violates the intellectual property rights of both the NFL and the Tennessee Titans, who evolved directly from the Oilers after the team relocated from the Astrodome in 1996. Now a cease-and-desist letter from the NFL to UH has caused consternation among sports fans and IP observers alike. Did the NFL make a good call here, or does the play need booth review? Let’s take a closer look at this gridiron gridlock, and what it means for intellectual property and the University of Houston!
History of the “Luv Ya’ Blue” Uniform
The “Luv Ya’ Blue” era started in 1965, when the Oilers played home games at Rice University’s Rice Stadium. Over the next decade or so, the uniform became iconic as a symbol of the Oilers, with its oil derrick logo representing the city of Houston just as much as the team itself. In the late 1970s, the uniform was retired and updated to mark the end of the disastrous Bud Adams coaching regime, but remained an indelible part of the team’s history and legacy. When the Oilers upped sticks in 1996 and moved to Tennessee to give The Volunteer State an expansion team in the AFC South, the historic jerseys and the meaning attached to them went with the team.
This is an important point because the Titans revealed their own throwback uniforms during a recent game against the Atlanta Falcons, and stated they plan to sport the old-school but updated uniforms again on December 17th, when they face off with (surprise!) the Houston Texans. Whether they’re reminding the newcomers that they were there first, outright mocking the upstarts with visual trash talk in the form of the throwback uniforms, or paying tribute to the teams’ shared home and history is very much in the eye of the beholder, and football fans are divided on which, some, or all of those are true and if so, to what degrees. It doesn’t really matter here. For purposes of this discussion, what matters is that the Tennessee Titans asserted their rights to sport the Luv Ya’ Blue colors on the field, and they have a priority right of usage.
Now enter the UH Cougars, who allegedly didn’t discuss plans to incorporate their own take on the Luv Ya’ Blue uniforms with either the Titans or the NFL more broadly before launching the new/old look. This triggered a sharply worded cease-and-desist letter from NFL Properties, decrying the uniforms as “blatant copying” and demanding that UH remove all marketing, advertising, and merchandising concerning the Luv Ya’ Blue uniforms, on pain of being taken to court for “enhanced damages” and associated legal fees. UH’s counsel responded to the C&D, stating that the university would comply, and reach out to both the NFL and the Titans before attempting to use the Luv Ya’ Blue uniform again in any manner. On paper, that’s the end of it – at least for now.
Seems simple, right?
Well…not so fast.
Another Player Takes the Field
Oddly, Rice University suited up its players in their own riff on the Luv Ya’ Blue gear on September 30th against East Carolina, as a nod to the years when the Oilers, now the Titans, played their home games at Rice Stadium. However, Rice University athletics representatives said that as of the writing of this article, they weren’t aware of any acknowledgement or communication from either the NFL or the Titans concerning the throwback uniforms, positive or negative. They also said that the first they’d heard about the NFL’s C&D against UH came with interview attempts from reporters who noted Rice’s use of the same fundamental color scheme.
But does this mean Rice is out of the woods? Not necessarily.
It could be argued that UH, being a bigger school with a higher profile, would naturally make a larger target for the NFL and that the NFL simply hasn’t gotten around to issuing a C&D against Rice yet. It might also be that Rice went a different route and sought approval from the Titans and/or the NFL before taking the field in the new uniforms, although this seems unlikely given the timbre of Rice University’s response to the UH controversy. Either way, there is a chance that Rice may be on the Big Shield’s to-do list and just doesn’t know about it as of now.
The IP View of the Situation
While this issue has upset and divided football fans both in Houston and nationally, the plain fact is that the NFL does have a case here for unauthorized use of its trademarked intellectual property. Even though the IP in question hasn’t been in regular use in the NFL for decades, the colors and overall design are still part of the Big Shield’s portfolio, which means the NFL has both the right and the legal obligation to take steps to protect it from any infringement, lest it lose legal protection for the IP in question altogether.
One question that football fans frequently ask is how it is that the NFL can “cherry-pick” which teams to take action against. For example, a high school football team can more or less call itself what it likes, choose any colors it prefers, and expect to sell a little merchandise and a plethora of football tickets without incurring the legal wrath of the NFL, they say. There are even some colleges that encourage local high schools in their area to share mascots, colors, and uniform designs with them for a number of reasons, without fear of confusion in the mind of the general public about sourcing. Even in instances of more or less blatant copying at the high school level, this line of reasoning goes, with a few tweaks to the design, the teams can evade direct comparison and therefore the idea that, say, the Douglas High School Patriots out of Ellsworth AFB, South Dakota, are equivalent to the New England Patriots even though the teams wear the same colors and, until recently, Douglas used a throwback mascot design that the New England Patriots have long since abandoned. From an IP perspective, one of these arguments is true – to a point; the other is completely inaccurate.
One point of conventional wisdom involved in this argument that doesn’t hold up to close scrutiny, or really any at all in IP circles, is the idea of the “15% rule.”
This supposed “rule” states that if you change any element of a team’s logo or colors by 15%, that’s enough to clearly differentiate one team from another. A similar theory holds in the world of music, where many people believe that if you alter a song’s lyrics, note structure, or chord progression by as little as one note, you have effectively created a new song. In both cases, these arguments are as bogus as the so-called “poor man’s copyright.” They simply don’t exist in IP law and the courts tend to take an extremely dim view of people who rely on these mechanisms to try to assert or enforce rights they don’t have because proper channels to secure any rights they may have had weren’t followed. Just because you tweak the colors, elongate or flatten a logo, move things around a little, etc., doesn’t mean by any means that you’ve created something new. At best, you’ve created a TAKE on something that already exists, and if you plan to sell that take on the open market in any form, you’re still going to have to do some explaining – possibly in front of a judge, with a lot of money riding on the strength of your argument, if you don’t do it right.
Even more damning is the fact that the world is getting smaller. A grandfather in Maine can log onto a computer, click a link, and watch his granddaughter participate in a gymnastics tournament in Oregon. A man in Toronto can watch his little brother play high school football in Texas live on the internet. In many parts of the country, such as the Deep South, high school football is as much a part of the local economy as gas, groceries, and general goods. This means that while NFL football is inevitably going to have a wider national audience than college, and college football is far more likely to have fans at a distance than high school programs, no team or institution can reasonably expect to escape scrutiny for the unauthorized use of intellectual property the way they could have back in the days when instantaneous live-streaming wasn’t a thing. While it’s unlikely that the NFL would bother to go after a high school for even an outright copy of its designs, it’s not out of the question – and it would be a foolish administration or program that would dare to roll dice that size.
So which part of the argument from football fans IS true?
It is absolutely true that many high schools and colleges, especially those in close proximity, work together to share branding. From a college administration perspective, this is a logical move for promoting their institutions and hopefully persuading students who already play at the high school level to consider their institutions when they’re looking at their higher education options. The fans who point out this apparent dichotomy are correct, but it’s not the “gotcha” argument they think they’re making. Why?
Because where the NFL is concerned, there is no such potential benefit as colleges and high schools might enjoy from shared branding.
Indeed, the more closely a college’s team name, mascot, or look hews to the NFL’s branded IP, the more likely it is to create consumer confusion. The NFL doesn’t like that, for obvious reasons. Therefore, the NFL is going to take action to make sure that there is as remote a chance as possible that no one’s going to confuse the Florida State Cardinals with the Phoenix Cardinals. Contrariwise, a college who wants to use a similar or identical logo to an NFL team is going to reach out and request, and obtain, permission to do so before launching a new uniform, so they don’t wind up with a C&D in their own mailbox.
While it may seem petty, or even like a pointless technicality, the reality is that the NFL’s merchandising alone is a $5 billion-per-year concern. When that kind of money is in play, the NFL isn’t going to sit back and watch potential revenue be diverted, nor is the booth review likely to favor the offside team. The fans may not like it, but that’s the law – and the NFL played within the rules, even if the result wasn’t to every fan’s taste in this particular situation.
ABOUT JOHN RIZVI, ESQ.
John Rizvi is a Registered and Board Certified Patent Attorney, Adjunct Professor of Intellectual Property Law, best-selling author, and featured speaker on topics of interest to inventors and entrepreneurs (including TEDx).
His books include “Escaping the Gray” and “Think and Grow Rich for Inventors” and have won critical acclaim including an endorsement from Kevin Harrington, one of the original sharks on the hit TV show – Shark Tank, responsible for the successful launch of over 500 products resulting in more than $5 billion in sales worldwide. You can learn more about Professor Rizvi and his patent law practice at www.ThePatentProfessor.com
Follow John Rizvi on Social Media
YouTube: https://www.youtube.com/c/thepatentprofessor
Facebook: https://business.facebook.com/patentprofessor/
Twitter: https://twitter.com/ThePatentProf
Instagram: https://www.instagram.com/thepatentprofessor/
