Boston College Makes Its (Trade)mark

Boston College Makes Its (Trade)mark

Protecting University's good name an ongoing battle for administrators

By Stephen Gawlik
Staff Writer

A university's chief attorney can expect a few unusual cases every now and then, but until recently Boston College General Counsel Joseph Herlihy never thought extortion would be on his docket.

Last year, a pair of students from a local college registered an Internet domain name Herlihy says was most unflattering to Boston College. The students wrote to senior BC administrators, offering to prevent the domain name from being used for a World Wide Web site that would disparage the University - if, Herlihy said, BC would pay them $250,000.

"These students wanted me to deliver a check to their dorm room," laughed Herlihy. The pair had warned BC, he adds, that the price of their compensation would rise considerably if the University failed to meet their deadline.

Once Herlihy contacted a dean at the miscreants' school, however, the episode was quickly put to rest. The students, apparently skilled "hackers" who had been accused of other computer crimes, were appropriately punished for their actions against BC.

"People think that the Internet is like the Wild West and they are somehow above the law," said Herlihy. "That's simply not the case."

Internet domain naming is just the latest wrinkle in trademark law, an area of constant vigilance for Boston College administrators. Herlihy and his colleagues must determine when individuals or businesses, ranging from Web sites to chauffeurs, may be exploiting the University by implying that they are formally associated with BC.

Of course, there are few cases involving zealous if misguided, young would-be entrepreneurs, Herlihy says, and some offenders may not even realize they are committing trademark infringement. But it is an issue BC, like other colleges and universities, must take seriously, he says.

"When you register trademarks, you prevent people from passing off goods with your name on them and then deriving some economic benefit from it," said Herlihy. "It is simply a way to protect the University's integrity and reputation."

While copyrights protect ideas and patents cover inventions, Herlihy explained, a trademark identifies goods or services and is represented by a symbol or wording. Trademarks are approved by the federal government, which requires that parties show how the trademark is used, so as to prevent an over-arching or unfair monopoly on a phrase or logo.

Some registered trademarks held by the University include "AHANA," "BC," "BC Eagles," "Boston College," "Boston College Eagles," "Blue Chips" and the University's seal. The most recent addition to the list is "Gaelic Roots," the annual summer music and dance festival held on campus.

Each of those phrases or symbols have multiple goods or services which they are used to identify. For example, the phrase "Boston College" is described in its trademark as both "Educational services, namely conducting classes at the undergraduate and graduate levels; conducting athletic and sports events," and "Glass beverageware, pewter mugs, ceramic mugs and bowls."

The "Gaelic Roots" trademark was recently put to the test when an Australian sought to begin his own traditional Irish cultural event and call it "Gaelic Roots." The organizer claimed he was hiring people from BC to perform at the event, Herlihy said, and that his event was associated with BC's.

"The problem was not whether he could or could not use the words 'Gaelic Roots,'" said Herlihy. "It's that he was confusing his goods and services with ours."

The issue became a moot one, Herlihy said, when the organizer decided to scrap his plans.

But Herlihy said the trademarking concept is often misunderstood in other ways. He has received correspondence from concerned BC supporters suggesting legal action against those who use the initials "BC" in their business. One man contacted Herlihy because he thought the Philadelphia-based B.C. Limousine Service infringed on a Boston College trademark.

As much as he might appreciate such diligence, Herlihy declined to pursue any action. "The likelihood that someone could confuse the University and that company is not possible," he said.

With a high profile Division 1-A athletic program and legions of fans across the country, Herlihy said, keeping watch over BC's trademarks requires special persistence. Herlihy is working with the Athletic Association, which unveiled several new logos this summer that are still awaiting approval for trademark.

Yet another area of Herlihy's responsibilities involves making sure student or outside vendors do not produce and sell novelty items, humorous t-shirts and other goods bearing the University's trademarks without permission.

"The key to this process is the continued monitoring of the quality," said Herlihy. "If any shoddy good can use your mark, the value of the mark becomes diluted."  

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