By: Angela Chung

Universities may be unhappy with how their brands are presented in television shows, but comparison and commentary does not necessarily produce consumer confusion. Where trademark law falls short, are there other legal avenues for universities to distance their marks from uses that are inconsistent with their values? 

Duke University recently criticized The White Lotus for depicting characters wearing Duke apparel in scenes involving suicidal ideation. Memes sprouting from these scenes in reference to Duke’s March Madness progression (and the later Final Four finish) prompted an official reply that the imagery “mistakenly suggests an endorsement or affiliation” with the show’s themes. This comes not long after Pepperdine University sued Netflix and Warner Bros. Entertainment for using “Waves” athletic branding in Mindy Kaling’s new show, Running Point. Pepperdine similarly asserted that the show’s depictions of identifiable branding created a false sense of endorsement by Pepperdine of the show’s suggestive themes, which are inconsistent with the university’s Christian values.

TV Does Not Dilute TMs

Trademark law is, at its core, intended to prevent consumer confusion. Facilitating distinctions and siloing off the rights to marks helps consumers and companies associate brand logos with particular values. For example, an Apple logo creates expectations of  sleek aesthetics and user interface while the Gucci logo communicates high status and product quality. When certain marks—like Apple or Gucci—are extremely well known, trademark law extends further protections for said ‘famous’ marks when they get linked to unsavory subject matter. This is called trademark dilution. Dilution can occur through blurring (chipping away at the distinction between brands in a way that harms brand reputation) or tarnishment (lowering brand reputation through association with subject matter or product quality in tension with actual values of mark owner). For instance, if a knockoff iPhone was being sold with glitchy and poor functionality, Apple may have a trademark dilution claim on the grounds that  the knockoff harms Apple’s reputation for creating smooth and reliable smartphones. 

At first glance, both universities appear to have an argument for trademark dilution, particularly via tarnishment. Associating university brand imagery with unsavory images that are contrary to university values could arguably imply inaccurate ideas about both schools. But the foundational goal of trademark law to prevent consumer confusion limits the protections these universities may seek. Context matters—seeing a particular university brand associated with products or services is very different from seeing that same brand within an expressive work on TV. 

Ultimately, viewers are unlikely to believe that university logos in creative works—like a TV show—indicate that the universities actually endorse ideas from the show itself. In fact, university branding can be a tool to express new commentary or criticism in themes across education, class, athletics, and more. Using a mark in a creative work fundamentally changes the way potential consumers view its associated ideas. Trademarks can therefore become independent vessels for communicating artistic expression, rather than identifiers of potential product or service origins.

Creative Expression > Commercial Identity

Trademark expressions in creative works are therefore explicitly protected through fair use exceptions to trademark infringement and dilution claims. The two-prong test from Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989) is used to determine if a trademark falls under fair use in a creative work. Under the Rogers test, courts assess if the use of a trademark (1) has artistic merit and (2) explicitly misleads a viewer as to the source of a work. Under 15 U.S.C. § 1125(c)(3)(A), if the mark has some artistic merit and does not mislead a user to believe the creative work originates from the trademark owner, there is no cause of action for trademark infringement. Ultimately, the Rogers test seeks to distinguish artistic expression from commercial products and protect free speech. Recent Supreme Court rulings have affirmed strong support for use of trademarks in creative / artistic works without permission from the mark owners.

Pepperdine’s temporary restraining order on Netflix was therefore denied because Netflix’s use of the Waves’ marks “does not explicitly mislead consumers as to the source of the work.” And Duke would not have a strong claim for trademark dilution because trademarks do “not give one control over how others reference one’s brand, including in critical ways.” (Duke Says ‘White Lotus’ Went ‘Too Far’ With School References – The New York Times). Under the Rogers test, the Duke logo likely has artistic merit for shaping out characters of the show, and does not explicitly mislead viewers into thinking The White Lotus is endorsed or produced by Duke. 

Ultimately, trademark laws protect companies where the use of their marks by others affect their commercial reputation and recognizability in the market. Trademarks do not protect brands from being referenced, criticized, or used as part of cultural /creative expression. So where can universities go from here if they sincerely wish to prevent the use of their logo in these shows? Does copyright or defamation law provide avenues for action?  

Probably not. 

Legal Limits of Brand Protection

Trademark law protects words, phrases, or designs used to identify goods and services. In order to help consumers identify the source of goods and services, mark owners are empowered to prevent others from using their marks without permission. Copyright law, on the other hand, prevents people from copying or reproducing a creative work without permission from the copyright holder. For brands, copyright law would only extend protections to creative elements of brand design, such as a logo illustration. But words, phrases, and common combinations of design are not protected because doing so would stump creativity. Because of this, copyright law would not block others from using the words “Waves” or “Duke,” for example.

A particular illustration of Duke’s mascot could be granted protections when reproduced or used in another copyrightable work, but protections over logo elements (like the combination of font styles with certain colors) would be very thin at best. In the case of Pepperdine, courts would be unlikely to prevent others from using a general combination of blue and orange with the word “Waves.” Even if Pepperdine could raise a claim for copyright infringement of their Waves logo imagery by showing substantial similarity between the show’s logo with Pepperdine’s , it probably would not entirely stop Running Point from using various brand design elements. Copyright therefore falls short of the more robust protections provided by trademark law over brand names and imagery. 

Defamation suits would not survive either. A defamation prima facie case requires a false statement about the defendant purporting to be fact and proof of damages or harm caused to the reputation of the defendant. Here, associating university brands with controversial subject matter in explicitly fictional shows does not qualify as false statements about those universities. Having a character wear a Duke sweater does not mean The White Lotus is factually stating that Duke supports or exacerbates suicide amongst its students or alum. In addition, neither Duke nor Pepperdine would likely be able to show actual damages or harm to their reputation as a result of their brand being used. While Pepperdine may dislike allusions to their sports logos alongside inappropriate scenes in Running Point, there is no evidence that the show’s airing reduced enrollment or otherwise affected the university’s reputation or funding. 

Legal action is generally sought in order to prevent or seek redress for harm. While unauthorized presentations of university brand logos in fictional shows may be strongly disliked by the respective universities,  it does not necessarily amount to harm under the law.  Further, the use does not harm viewers since there is no evidence that the use of university logos creates confusion about the show’s origins or misleads viewers into believing they are consuming something else. Creative contexts provide new meaning to protected marks outside of commercial identification, and fair use exceptions prioritize these expressive means. For now, where trademark law does not provide protections for distasteful themes in association with brand presentation, universities may just have to accept the discourse as is.