Just one month ago, Texas A&M was depicted as a bully who got its thrills from suing double amputee cancer survivors. The story generated headlines like these:
“Texas A&M threatens to sue double amputee, cancer survivor”
“Texas A&M tackles double amputee over ’12th Man'”
“Texas A&M plays hardball with a double amputee over 12th Man trademark”
Those headlines appeared on July 2nd and 3rd when news broke that Texas A&M sent multiple cease and desist letters to a group of Bills fans who founded the site 12thManThunder.com, one member of which happens to be a double amputee cancer survivor.
Charles “Chuckie” Sonntag, the aforementioned individual, told reporters earlier this month, “My experience has proven two things: a handicapped person can accomplish just about anything â€“ and Texas A&M will sue just about anybody.”
Today the headline is that Texas A&M has reached a settlement agreement with the group that will result in the 12thManThunder.com domain name and associated social media accounts reverting to Texas A&M. And Chuckie Sonntag has sure changed his tune.
“We’re really pleased with the way the university handled the dispute and we fully recognize Texas A&M is the owner of the ’12th Man’ trademark,” Sonntag was quoted as saying in a joint press release from his group and Texas A&M. “We’ve already started operations under Bills Fan Thunder and will continue our fight to keep the Bills franchise in Buffalo.”
Why the complete 180 from Sonntag and his group? Because Texas A&M was always wrongly labeled the bully in this story, and here are four reasons why:
1. Texas A&M didn’t address its correspondence directly to the double amputee cancer survivor.
Charles “Chuckie” Sonntag, the aforementioned individual, was not the registered owner of 12ManThunder.com. Texas A&M’s initial cease and desist letters were not addressed to him for this reason, although he was copied on correspondence after his name was discovered on one of the social media accounts connected with the group. Until Sonntag chose to speak to the media in early July, Texas A&M knew nothing about Sonntag other than his name and his involvement with 12thManThunder.com.
“We wrote to them several times and tried to work with them,” said Bill Raman, outside legal counsel to Texas A&M. “The first time we learned he was a cancer survivor was when it hit the news.”
Texas A&M has largely decided to stay quiet on this issue, recognizing the no win situation in which they found themselves after the news broke.
2. Double amputee cancer survivors aren’t above the law.
Can Sonntag steal someone’s identity and rack up debt in their name and then get away with it because he’s a double amputee who has survived cancer? Of course not.
Then why can he steal a university’s identity?
Texas A&M’s use of the 12th Man dates back to 1922. You might think the term is widely used everywhere and Texas A&M has no claim to it, but it didn’t exist until Texas A&M. You can read the full story behind the 12th Man here.
If you’ve never been to College Station, you might not get it. This fall will be my fourth year in a row attending a game in College Station, and I can tell you the 12th Man is Texas A&M’s identity. Better yet, I’ll let an Aggie tell you….
“It’s a strong attractor for prospective students who are looking for a place they can identify with as they go to school,” said Hinckley.
“12thMan is more than an athletic identity, it’s the core DNA of who Teaxs A&M is: leadership, selfless service, loyalty, respect, integrity, excellence. Those are our core values, and the 12thMan embodies all of that.”
12th Man isn’t just a slogan or a logo Texas A&M slaps on t-shirts to make a buck; it’s the university’s identity, and long ago the university took the necessary legal steps to protect that identity.
It’s perfectly understandable that Sonntag and his group might not have known 12th Man was a trademark. That’s why organizations like Texas A&M send letters before they pursue more aggressive option like a law suit. In my podcast on this issue I described how I sent these letters when I worked at the WTA Tour. Every organization with trademarks does (or should) do this. Once you receive the letter and are aware the mark is protected, there is no excuse for continuing to knowingly break the law.
3. Texas A&M has a legal duty to “police” their trademark.
The value in a 12th Man t-shirt isn’t in the t-shirt itself, it’s in the mark on the shirt a fan wants to wear to demonstrate pride. There is value in being the only producer of merchandise with a given trademark, like 12th Man. Both the Seahawks and Bills pay Texas A&M for the right to use 12th Man in their stadiums, but neither are permitted to use it on merchandise.
Policing your trademark is important, because a trademark can be “genericized,” meaning use of the term has become so prevalent for a product or service that it loses federal protection. Aspirin, escalator and kerosene are just a few examples of terms formerly owned by their creators and subsequently lost. Imagine if every escalator company out there had to pay Otis Elevator Company, the original trademark owner, to use the term “escalator” and the value Otis Elevator Company lost when the term became generic and no longer protected by federal law.
I spoke with Collegiate Licensing Company’s general counsel, Jim Aronowitz, about the duty to police. He explained trademark owners do not have to enforce against every single use. However, a pattern of non-enforcement can lead to a term becoming generic.
I asked Raman about how they decide when to pursue enforcement against an infringer, and he said there are a number of factors. One of the most important is the potential damage done by a use.
Here’s an example (from me, not Raman): if a group was using 12th Man in the name of a one-night event at a small bar that might draw 25 people, the damage is low compared to someone using 12th Man in the name of a website and on social media accounts that can reach very large numbers of people worldwide. That’s not to say Texas A&M, or any other trademark holder, won’t come after you for using a trademark in the name of a small, one-night event, but hopefully you get the point.
4. 12thManThunder wasn’t just a one-time use.
As I explained in my example above, using a trademark in a website name or on a social media account has the potential to reach thousands…millions…tens of millions…hundreds of millions of people worldwide. Do you think Alabama would let you start a website called RollTideFootball.com? Or that McDonald’s would look the other way if you started McDonaldsBurgers.com?
Now, odds are you can think of websites who are using trademarks without a license. In the end, there are only so many uses a trademark holder can and will discover. You’ve likely seen other drivers run red lights. Will that argument get you out of a ticket when you run one? Probably not.