Image Attributed to Flickr User Techsports

Earlier this year I reported on the decision of the District Court in Western Virginia to deny Virginia Tech’s (“VTech’s”) motion for preliminary injunction in a case against John Wilburn (“Wilburn”) and his company Hokie Real Estate.  The lawsuit began in October of 2010, with VTech alleging trademark infringement against Hokie Real Estate for diluting the Hokie moniker.  Wilburn, a VTech alum, fought the claim and this summer a settlement was reached between the two parties.  The Roanoke Times recently obtained the settlement and licensing agreement through a Freedom of Information Act request.  So what did Wilburn get for standing up to his alma mater?  As it turns out, a lot.

According to the story printed by the Roanoke Times, Wilburn now has a licensing agreement to use the Hokie mark without payment along with free ad space for Hokie Real Estate in Virginia Tech’s alumni magazine.  As if this weren’t enough – Wilburn will also receive four tickets to every home football game for the next five years, as well as ten years of platinum-level Hokie Club membership (an estimated $50,000 – $100,000 value alone).  In return for their generous offer, Wilburn has agreed to stipulate that Virginia Tech owns the exclusive right to the “Hokie” trademark.  In addition, Wilburn must let the mark that he has registered for “Hokie Real Estate” expire in 2016 without renewal. 

On its face, the settlement favors Wilburn – but in reality, it is beneficial to both parties.  With the lawsuit over, Virginia Tech has avoided further litigation.  Up until the settlement, Virginia Tech’s attorney fees were in excess of $125,000, according to university spokesman Larry Hincker.  Virginia Tech also avoided a potential courtroom loss to Wilburn.  VTech, from all outside appearances, looked as though it was going to lose the lawsuit.  I argued in my previous post that Wilburn had strong points against the false designation of origin and dilution claims.  Had VTech continued the suit, they could have been liable for both parties’ attorneys’ fees.  Along with the money that they would have had to pay out, Virginia Tech would have also lost control of the Hokie trademark in the real estate market.  Virginia Tech, however,has retained its trademark.  With the lawsuit gone and recognition of Virginia Tech as the sole possessor of the “Hokie” name, VTech bolstered its ownership of the mark and made it more difficult for potential infringers to make an IP claim against the university.

Settling this lawsuit was a great strategic move by Virginia Tech – they retain the power of their trademark and John Wilburn gets to hear “Enter Sandman” a lot more than he would have otherwise.

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