In the world of college sports, there is perhaps no hand gesture more famous than the University of Texas’s “Hook ‘em Horns.” For those unfamiliar, the gesture consists of a hand gesture with the palm facing forward, the index and pinky extended, and the middle and ring fingers held down by the thumb. That exact gesture is also known, in heavy metal music circles around the world, under many names, including “Metal Horns.” Metals Horns appears to have been first used at concerts as early as the early-mid 1970’s, and became popularized by the late Ronny James Dio starting in 1979, when Mr. Dio joined as the front man for Black Sabbath.
These competing gestures seemed to co-exist, however uneasily, in the marketplace until recently, when the University of Texas became aware that a company called Horns-Inc. was selling apparel featuring “Metal Horns.” On January 25, 2013, the University of Texas sued Horns-Inc., claiming trademark infringement, trademark dilution, and unjust enrichment. Horns-Inc. has not yet responded to the complaint.
Assuming this dispute does not settle, there may be a number of interesting issues to watch here. First is the scope of protection that a court could grant to the University’s mark. The gesture at issue almost certainly predates both “Hook ‘em Horns” and “Metal Horns.” Indeed, Mr. Dio in a 2005 documentary claimed that his use of “Metal Horns” derived from a hand gesture his grandmother made to ward off the evil eye. The scope of protection for “Hook ‘em Horns” may be limited if there is a considerable amount of third party use of the symbol for other purposes.
The second issue to watch is whether Horns-Inc. musters a defense that they are using the symbol purely in an ornamental, and non-trademark, manner. The “Hook ‘em Horns/Metal Horn” design on a t-shirt, for instance, may not function as a trademark. It may simply be an ornamental design, which can be copied.
Finally, there is the question of consumer confusion or dilution of the distinctiveness of the “Hook ‘em Horns” mark. Given that these gestures have co-existed for so long, will the University of Texas be able to prove that an appreciable number of consumers are likely to be confused into thinking that Horns-Inc. and its products are affiliated with the University of Texas, when they are not? Likewise, has “Hook ‘em Horns” actually lost any of its distinctiveness because of defendant’s conduct?
In the interim, and notwithstanding this lawsuit, headbangers everywhere are free to throw their “Metal Horns” into the air at concerts or wherever they may be enjoying their music. It appears that the University of Texas has no issue with “Metal Horns” as long as they don’t appear on products or services that impact the commercial value of the University’s trademarks.