BATON ROUGE – The Southern University System
Foundation has been ordered to attend a settlement conference in a trademark infringement
case involving the use of several of the foundation's Bayou Classic trademarks
and service marks.
The foundation sued defendants André Henderson and Gary
Shelton in 2014 after it became aware that Henderson snapped up several
registrations for trademarks related to the Bayou Classic football game that had
been allowed to expire in 2004. When the school filed new trademark
applications with the Secretary of State to correct the oversight, its requests
Henderson became a licensee of the
Bayou Classic trademarks through the university’s licensing agent, Collegiate
Licensing Company, though the foundation asserts that he assigned the
registrations to Shelton, a resident of Prairieville, in late 2013. The
foundation sent cease-and-desist letters to both men and later sued them.
In its original complaint, the foundation contended that it
is the rightful owner of the Bayou Classic marks, and that it is improper for
Henderson and Shelton to hold the registrations. In court filings, the
foundation further accused Henderson and Shelton of profit seeking and
intentionally misrepresenting themselves to the public and to the Secretary of
State in order to register the marks.
The Bayou Classic is a football game, Greek Show and Battle
of the Bands between rival schools Southern University and Grambling State
University that dates back to 1973. According to its website, the annual event commemorates
historically black colleges and universities, academic achievement, tradition,
sportsmanship, marching bands and friendly competition. The activities are held
in New Orleans during the last weekend of November and typically attract more
than 200,000 visitors.
In a counterclaim, Shelton argued that if Southern and
Grambling State were harmed by his use of the trademarks, their own negligence
was to blame. He also claimed that he did not misrepresent himself
to the Secretary of State’s office in order to acquire the registrations.
The foundation’s legal counsel believes
Shelton is under the impression that registering the trademark somehow gave him
the right to own the mark, even though basic intellectual property law says
that registration of the trademark does not grant him such ownership.
“The purpose of the settlement conference is to attempt to
resolve the Southern System Foundation's trademark infringement lawsuit against
Mr. Shelton,” Henry Tillman, Southern University’s director of communications,
told the Louisiana Record in an email statement.
“The Foundation sued Mr. Shelton for both damages and
injunctive relief,” Tillman said. “The foundation has not yet
decided how much money it will agree to accept to settle the damages portion of
its lawsuit against Mr. Shelton, but it is hopeful the parties will reach an
agreement and the amount Mr. Shelton pays will be adequate.”
U.S. District Court Judge Richard Bourgeois Jr. ordered the
plaintiff and defendants to make a good-faith effort to
negotiate and settle the case prior to the settlement conference, which will
take place on August 3 in Bourgeois’ chambers at the Baton Rouge federal