Federal judge grants temporary restraining order against T-shirt maker

By Jessica M. Karmasek | Feb 21, 2012

CLARKSBURG - A federal judge last week granted West Virginia University's motion for a temporary restraining order against a Morgantown T-shirt maker.

Judge Frederick P. Stamp Jr. filed the 14-page order in the U.S. District Court for the Northern District of West Virginia Thursday.

Stamp wrote that the defendants' conduct "has likely been intentional and profit-driven, proximately resulting in irreparable damages to the plaintiff's licensed products, reputation and goodwill as a public institution."

WVU is suing defendants MivaMan LLC, JFord Inc. and owner Kevin Ford 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.

In particular, the university accuses the defendants -- which also operate the website www.fastees.com -- of producing and selling shirts, coolers and temporary tattoos that are strikingly similar to some of WVU's most popular phrases and cheers, and that use the university's trademarked logos, colors and fonts.

WVU filed its motion for a temporary restraining order and/or a preliminary injunction on Feb. 9. The same day, Ford filed a motion asking the court to grant MivaMan more time to find a lawyer and prepare for opposition to WVU's motion.

Corporate defendants cannot, under established law, appear without counsel.

At hearing Feb. 10, the court denied Ford's motion for additional time but said it would proceed to hear the motion for a temporary restraining order only, and would defer hearing the motion for a preliminary injunction to a later date.

According Stamp's order Thursday, Ford and his businesses are temporarily restrained, enjoined and prohibited from manufacturing, distributing, marketing, advertising, promoting, displaying, disposing, donating or offering for sale any goods or services which are the same or substantially similar to the goods and services which defendants manufactured, distributed, marketed, advertised, promoted, displayed or offered for sale at any time on or before Feb. 9 and which use or display the phrases:

* West F***** Virginia;

* Best F***** Virginia;

* I Only Flash West Virginia Fans;

* Blood Sweat and Eers;

* I Only Sleep with West Virginia Fans;

* The Incredible Eers;

* Very Wasted ( using a variation of the Flying WV logo);

* West Virginia (with a middle finger interposed between the "West" and "Virginia");

* West Virginia Girls Do It In the Mud; and

* Don't Curse/West F***** Virginia.

Stamp said the defendants are also not allowed to use the word mark or phrase "West Virginia" or any other variations, imitations or permutations of the "West Virginia" mark by itself or in combination with other words, phrases, graphics or symbols on, except as a "purely non-infringing geographic designation."

In particular, the phrases "West By God Virginia," "State of West Virginia" and "(Any city name), West Virginia" shall be the only permitted use of "West Virginia" as a geographic designation.

"No variations, permutations or substantially similar imitations" of those phrases shall be permitted, the judge wrote.

Also, all words of the phrases shall be in the same font size on any given goods or services; and goods or services on which the phrases are placed shall not use any font the same as or substantially similar to a font used by WVU on its athletic uniforms, located on its art style sheet, or otherwise appearing on goods or services that are officially licensed by the university.

In addition, Stamp said any goods and services on which the phrases are placed cannot be created using gold or blue articles of clothing, gold or blue ink or fonts, or WVU's gold and blue color scheme.

The judge said the defendants also are prohibited from manufacturing, distributing, marketing, advertising, promoting, displaying, disposing, donating or offering for sale any goods or services, except as specifically set forth above, which use the university's federally registered "West Virginia Mountaineers," "WVU," Flying WV logo or "Mountaineers" marks.

They also cannot use WVU's unregistered marks, "Let's Go Mountaineers!" or "Gold Rush," Stamp said.

In addition, Ford was ordered to remove all content from his websites within 24 hours of the issuance of the temporary restraining order. He is not allowed to sell or transfer ownership or control of the websites to third parties for the duration of the order, the judge said.

Stamp also noted that WVU has not provided "sufficient evidence" that the phrases "Let's Go! Drink Some bEERs!" and "Let's Go! Drink Some Beers!" -- despite having some "perceived similarity" to the popular phrase "Let's Go Mountaineers!" -- constitute a trademark infringement or dilution sufficient to warrant injunctive relief.

Becky Lofstead, a spokeswoman for WVU, told The Associated Press the university was pleased with the order.

Meanwhile, Ford told The Dominion Post on Friday that he'll most likely close his business because of the legal battle.

In an interview with the Record earlier this month, Ford called the whole situation "ridiculous."

"We put 'West By God Virginia' on a T-shirt and they seem to think that's infringing on their standards," he said.

"They don't have a trademark on the words 'West Virginia.' They can't trademark a geographic location."

The temporary restraining order is set to expire March 12. A hearing on WVU's motion for a preliminary injunction will be held that day in Wheeling.

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