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article: 1 Jun 06

On May 23, 2006 I received an email from cafepress telling me they had suspended one of my designs. Here is the story as it unfolded and was posted on the page for that design:
[Neither the horizontal lines separating the comments (in italics) nor the comments were in the original posting.]

This design is currently unavailable because cafepress fears that Harvard, Yale and Collegiate Licensing Company value trademarks more than free speech.

I would have disagreed with them until I went to the Harvard Trademark Program page and read:

Harvard University's worldwide trademark registrations include "HARVARD," "HARVARD UNIVERSITY," and the "VE-RI-TAS" shield. The various Harvard University school names, such as "HARVARD COLLEGE," "HARVARD BUSINESS SCHOOL" and "HARVARD LAW SCHOOL," their respective shields and several other marks associated with the University, such as "CRIMSON" and "H," are also Harvard trademarks. (emphasis added)
That's right, they say they have a trademark on "CRIMSON" and "H". I know this sounds absurd, but you can follow the link and see it for yourself. And I can't blame cafepress for not wanting to take on all of the lawyers Harvard could bring to a fight over this.

I have contacted CLC and Harvard by email in an attempt to resolve this. Hopefully we will be able to buy items with this design soon.

-- Geo. McCalip

On the 30th of May I received an email from Thomas Holt asking me to call him regarding the Harvard trademark issue.

UPDATE: 30 May 2006 - I just spoke with Thomas L. Holt, Esq. of BRINKS HOFER GILSON & LIONE, the outside counsel for Harvard on trademark issues. He insists that this is a violation of Harvard's trademark.

I pointed out that this use is covered under the following exceptions to trademark:

  • free speech in a political statement
  • free speech in a parody
  • nominative use (i.e., using a name rather than a trademark)
    [A]nyone is free to use the term in its primary, descriptive sense so long as such use does not lead to customer confusion as to the source of the goods or services. - Zatarains, Inc. v. Oak Grove Smokehouse, Inc., 698 F.2d at 791 (citing 1 J. T. MCCARTHY, TRADEMARKS AND UNFAIR COMPETITION 11.17 at 379 (1973)).
Mr. Holt insisted that the design is still an infringement of Harvard's right to the trademark. I find that particularly intersting given another case regarding trademarks:
[W]here the defendant uses a trademark to describe the plaintiff's product, rather than its own, we hold that a commercial user is entitled to a nominative fair use defense provided he meets the following three requirements: First, the product or service in question must be one not readily identifiable without use of the trademark; second, only so much of the mark or marks may be used as is reasonably necessary to identify the product or service; and third, the use must do nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder. - New Kids on the Block v. News America Publishing, Inc., 971 F.2d 302 (9th Cir. 1992) [emphasis added]
By stating that the above design infringes on Harvard's trademark, Mr. Holt is arguing that it suggests that Harvard endorses the message. Hmmm...

If that is the case I would be happy to license the design to Harvard for use on T-shirts and other merchandise.

Given that Harvard doesn't endorse the message, their claim stands as a block to free speech. Free speech being a fundamental foundation of knowledge, learning, and research, their claim draws into question Harvard's dedication to academics.

I emailed the above to Thomas Holt and cc'ed:

  • Harvard's Trademark Office
  • cafepress
  • Collegiate Licensing Company
  • The Daily Crimson - Harvard's paper
  • Lawrence H. Summers, President of Harvard

UPDATE: 31 May 2006 - I just received a phone call from Thomas L. Holt informing me that Harvard does not object to the use of their trademark in this design. He will be contacting cafepress and hopefully we will have a resolution of this issue soon.

The design was restored on June 1, 2006.

Thank you, Harvard and Mr.Holt.

© 2006 Geo. McCalip