CLARKSBURG – The owner of a Morgantown t-shirt company says he finds it "absolutely absurd" that West Virginia University is picking on him.
Kevin Ford, owner of MivaMan LLC and the website fastees.com, said the WVU Board of Governor's federal lawsuit against his company for trademark infringement is without merit. He also calls WVU a "big bully."
Ford's company has printed controversial shirts that say, among other things, "West F***** Virginia" and "Let's Go Drink Some Beers," in gold and blue designs.
The university argues that the manufacturer's actions could inflict "irreparable harm" to its goodwill and reputation, according to its 25-page complaint filed in the U.S. District Court for the Northern District of West Virginia Jan. 6.
Ford, of Morgantown, is the organizer and managing member of MivaMan and was "intimately involved" in the business, according to WVU's complaint. The third defendant, JFord, facilitates and/or processes the sales of MivaMan's and Ford's merchandise and is based in Charleston, the complaint states.
"I think it's absolutely absurd that they think they can do this," Ford said Tuesday. "This is all about two things. One, they don't want us selling the West F***** Virginia shirts. And secondly, they don't want anyone selling t-shirts around here unless they are paying royalties to the school.
"I print West Virginia t-shirts and designs. They have nothing to do with WVU."
WVU is suing the defendants for trademark infringement, trademark dilution, cyberpiracy and unfair competition under the Federal Trademark Act of 1946, trademark and anti-dilution laws in West Virginia and unfair competition laws in the state.
"Defendants sold and are selling merchandise that incorporates word marks, color schemes and other source-identifying indicia associated with WVU BOG," WVU alleges.
"Defendants' t-shirt designs are calculated to create the misimpression that Defendants' merchandise is licensed or sponsored by or otherwise affiliated with WVU BOG."
In particular, the university accuses the defendants of producing and selling shirts, coolers and temporary tattoos that say the following:
* West F***** Virginia;
* West By God Virginia;
* Let's Go! Drink some bEERS!;
* Best F***** Virginia;
* Gold F***** Rush;
* Blood Sweat and Eers;
* West Virginia Girls Do It In The Mud;
* I am 99 Percent West Virginia;
* I Only Flash West Virginia Fans;
* I Only Sleep With West Virginia Fans;
* The Incredible EERS; and
* VERY WASTED.
Other shirts sold by the defendants include an image of the state of West Virginia and a hand raising its middle finger interposed between the words "West" and "Virginia"; another with "West F***** Virginia" and a yellow fist in the middle; and another with the words "Don't Curse" on the front and on the back "West F***** Virginia."
WVU takes issue not just with the combination of the obscene language and the marks used, but also the defendants' pervasive use of the university's color scheme.
"WVU BOG's gold and blue color scheme has achieved significant fame and public recognition, especially when appearing in connection with athletic teams and events and related apparel items," it wrote.
"Because of its widespread use in connection with WVU BOG's activities and licensed merchandise, the gold and blue color scheme has tremendous power as a source identifier of WVU BOG, particularly when used in connection with other indicia identifying or suggesting West Virginia University, such as references to athletic events in which a West Virginia University team is participating, the history of West Virginia University's athletic successes, or the geographic area in which West Virginia University is located."
But Ford defends his business decisions.
"We print shirts that have the state of West Virginia's outline, and some say 'Established 1863," he said, noting the year of West Virginia's statehood. "And yes, we print in gold and blue. We're in West Virginia. Those are the state's colors. We'd be stupid to print in orange and red or some other color."
WVU also takes issue with the similarity of some of the expressions used on the shirts to ones commonly used by the university.
For example, WVU argues that the "Let's Go! Drink some bEERS!" shirt "clearly references" WVU's popular cheer, "Let's Go! Mountaineers!"
The university, it notes, also owns common law trademark rights to "Gold Rush."
Ford notes that none of his designs feature any official WVU logos.
"No 'Flying WV' and no official WVU marks," he said. "You'd have to be stupid to think our designs were officially sanctioned by the school. The thought is pretty ludicrous."
Ford said his attorneys are working on a settlement with WVU, but he said he still isn't happy about the lawsuit.
"This is all about big bully with big money bulling the little guy," he said. "If you don't have the $50,000 to fight them, they can file a lawsuit saying anything they want. And then, you're forced to settle.
"We're settling because we don't have the money to fight it. If we did, we'd fight, and we'd win."
In filing its lawsuit, WVU is seeking to prevent the defendants from continuing to use its marks to "pass off" their merchandise as that of the university's.
"Defendants' misconduct is likely to cause confusion and to deceive consumers and the public and will continue to do so absent relief from this Court," the complaint states.
West Virginia Attorney General Darrell McGraw is representing WVU in the case.
According to the complaint, WVU is asking the federal court to preliminary and permanently enjoin the defendants from using WVU's marks or any other copy, reproduction or "colorable imitation or simulation" of the university's marks on or in connection with their apparel.
The university also is asking the court to order the defendants to recall any products found to infringe or violate its rights, and for the defendants to deliver for "impoundment" and "destruction" all clothing items, bags, boxes, labels, tags, signs, packages, receptacles, advertising, sample books, promotional material, stationary or other materials that infringe on its rights.
WVU also wants to the court to order the defendants to account to it "for any and all profits" derived by them for products found to violate the university's rights, and to pay damages to the university.
In addition, the university is asking for an order requiring the transfer of the manufacturer's domain names that use WVU's marks to the university, and to order the cancellation of the domain names.