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The Villanova Alumni Educational Foundation Inc., a private group that raises scholarship funds for Villanova University non-athlete students, must change its name now that a federal judge has ruled that it no longer has the right to use any of Villanova University’s trademarks, including the terms “Villanova,” “Villanova Alumni,” “Wildcat” and “Wildcat Club.” In her 38-page opinion in Villanova University v. Villanova Alumni Educational Foundation Inc., U.S. District Judge Anita B. Brody found that VAEF operated for nearly 28 years under an “implied license” from the Pennsylvania university, which ended when the school terminated its affiliation in October 1999. Although the license was not a formal one and was never referred to as a license, Brody found that VAEF’s members originally sought approval from the university’s president before organizing in 1972 and began raising funds only after receiving permission to do so. Throughout its existence, she said, the university maintained guidelines for VAEF to follow and monitored its compliance. And even when the group’s relationship with the university grew strained for about six years over the temporary elimination of football, Brody found, they continued to operate under the basic terms of their agreement. “It is irrelevant whether the parties thought of the arrangement at the time in terms of an implied license. The test for whether or not an implied license existed is based solely on the objective conduct of the parties,” Brody wrote. As a former licensee, Brody found, VAEF’s continued use of Villanova’s trademarks was very likely to confuse the public. “From its inception, defendant’s use of the name and marks ‘Villanova Educational Foundation’ and ‘Wildcat Club’ was pursuant to a license to use such marks. The license has been terminated. As long as defendant uses the designations ‘Wildcat’ and ‘Villanova,’ it is inevitable that there will be confusion among individuals who mistakenly believe, for example, that a contribution to the ‘Wildcat Club’ is a contribution to Villanova University,” Brody wrote. The ruling is a victory for attorneys Dennis Supplee and Paul G. Gagne of the Philadelphia firm Schnader Harrison Segal & Lewis, who filed the suit on behalf of the university in June and argued for a preliminary injunction in August. Villanova is a private, Catholic, non-profit university that was founded in 1842. Since 1875, the school has used the trademark “Villanova Alumni Association” for its membership of graduates, who now number more than 80,000. In 1991, the Alumni Association was incorporated as a separate entity but continues to use the name and to abide by the university’s guidelines. Since 1926, Villanova has continuously used the trademark “Wildcat” as well as logos and images of wildcats to identify its athletic teams. VAEF is a non-profit corporation first established under the name Villanova Educational Foundation Inc. for the purpose of soliciting charitable funds, especially for the school’s athletes. It often raises funds under the name Wildcat Club. The club changed its name to VAEF Inc. in January 2000. Throughout its existence, all of the money raised by the club, apart from its operating expenses and minor expenditures for other charitable purposes, was contributed to the university. In her opinion, Brody outlined the history of the group’s affiliation with the university beginning with the first meetings in 1969 between certain Villanova alumni and Father Edward McCarthy, then-president of the university. In her findings of fact, Brody found that the club was given permission to use Villanova trademarks but that the university set guidelines for its conduct and that members “openly accepted the fact that its existence was subject to university authorization and the university’s guidelines.” In 1981, when the board of trustees of Villanova voted to eliminate football as an intercollegiate sport, the relationship between the university and the club became strained. In response to the board’s decision, the club organized a committee to restore football and took out a full-page advertisement in the Philadelphia Bulletin protesting the decision. Football was brought back in 1984, and the relationship between the club and the university was restored by 1991. But in the ensuing years, the university kept the club on a shorter leash, with a series of “affiliation agreements” that stretched from 1992 to 1999, when they were unable to reach an agreement on a new one. After the disaffiliation, in January 2000, the club changed its corporate name to “Villanova Alumni Education Foundation,” adding the word “Alumni” in an effort to distinguish itself from the university. The club also changed its mission to raising funds for scholarships to support non-athlete students but continued to use the terms “Wildcat Club,” “Villanova Alumni” and “Villanova Wildcats,” as well as the image of a wildcat, in its promotional literature, including its Web site. Since the disaffiliation, the club has added a disclaimer to its application for scholarships and all of its publications stating that the club is not affiliated with Villanova University. Brody found that there have been up to 20 instances of “actual confusion” documented by the university in which students, parents and others were confused about the source of the club’s scholarship program, the sponsorship of the club’s golf outing and the sponsorship of the club’s affinity credit card. The club’s lawyers argued that it is free to use the trademarks to solicit charitable donations to support Villanova students and in any other way that the club may choose. The university’s ownership of the marks, they argued, does not extend to charitable services, which is the club’s only business. Brody disagreed, saying, “The educational activities of a non-profit educational institution inherently encompass charitable services.” Although the Wildcat trademarks were never registered, Brody found that they have common law protection because “even if they are not distinctive, they clearly have secondary meaning.” The club also argued that it is entitled to continue using the marks under the “fair use” doctrine that allows for use of a mark when it is “used in a way that does not deceive the public,” but is simply “being used to tell the truth.” Brody again disagreed, saying the club’s use of the marks “leads to the conclusion that the public will believe that the club is affiliated with Villanova University.” The club also argued that the use of the term Wildcats by other universities — University of Arizona, Northwestern University and University of Kentucky — as their school mascot diminishes the strength of the Villanova’s mark. But Brody found that both the club and the university direct their services to a “narrow population.” “The fact that Wildcat may be more strongly identified with another school for those outside of this population, bears no relevance to the determination of a likelihood of confusion in this case. The use of the Wildcat mascot by other schools does not dilute the mark within the relevant population,” she wrote. The club also raised two related defenses — the equitable doctrines of estoppel and laches — to argue that the university should be barred from bringing its trademark claim after allowing the club to use the marks for 28 years. Brody found that estoppel “is not a separate defense but is referred to as ‘estoppel by laches’ and ‘estoppel by acquiescence’.” The question, she said, turned on whether the club had an implied license during most of its existence. “I conclude that the conduct of the parties prior to 1992 gave rise to an implied license, which encompassed the defendant’s use of the marks at issue in its name and materials. I also find that the 1992 and 1995 Affiliation Agreements ratified this license agreement, such that the plaintiff’s request for an injunction is not presently barred by either estoppel or laches,” she wrote. The club was represented by attorneys Stanley H. Cohen and Mona Gupta of Philadelphia’s Caesar, Revise, Bernstein, Cohen & Pokotilow and Walter Weir and Joseph C. Hare of Weir & Partners in Philadelphia.

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