Petition for Writ of Certiorari — Smack Apparel Apparel Co. v. Board of Supervisors of the Louisiana State University and Agricultural and Mechanical College (No. 08-1197)

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2 OD 081197 MAR 23 2009

bo _-OF 208 OF THE CLERK

Wisam K. Sik f, Cierk

Su The

Supreme Court of the United States

SMACK APPAREL COMPANY AND WAYNE CuRTIss,

Petitioners,

¥,

BOARD OF SUPERVISORS OF THE LOUISIANA STATE

UNIVERSITY AND AGRICULTURAL AND MECHANICAL

COLLEGE, BOARD OF REGENTS OF THE UNIVERSITY OF

OKLAHOMA, OHIO STATE UNIVERISTY,

UNIVERSITY OF SOUTHERN CALIFORNIA,

AND THE COLLEGIATE LICENSING COMPANY,

Respondents.

On Petition for Writ of Certiorari to the United

States Court of Appeals for the Fifth Circuit

PETITION FOR WRIT OF CERTIORARI

JAMES W. TILLY

Counsel of Record

THE TILLY Law FIRM

1639 S. CARSON AVENUE

Tusa, OK 74110

(918) 583-8868

Counsel for Petitioners

March 23, 2009

Becker Gallagher - Cincinnati, OH - Washington, D.C. + 860.890.5001

QUESTIONS PRESENTED

1. Did the court below err in denying Smack’s Petition

for Rehearing en banc for the purpose of overruling

Boston Professional Hockey Ass’n, Inc. v. Dallas

Cap & Emblem Mfg, Inc., 510 F.2d 1004 (5th Cir.

1975), hoiding that the sale of products “universally

associated” with a trademark owner “supported the

inescapable inference that many would believe that

the product itself originated with or was somehow

endorsed by” the trademark owner?

. Did the court below err in affirming a summary

judgment in favor of universities asserting that

their traditional school colors combined with other

identifying indicia constitutes a trademark, and

that this trademark was infringed by t-shirts

incorporating the universities’ school colors

combined with messages and graphic images which

refer to the universities?

. Did the court below err in finding, as a matter of

law, that the universities’ trademark (school colors

combined with indicia identified with the

universities) was not functional, despite the court’s

finding that consumers purchase shirts which

incorporate the mark in order to show support for

the particular university, that there is no consumer

demand without these identifying characteristics,

and that the mark has no demonstrated value

other than its significance to identify with the

universities?

Did the court below err in finding, as a matter of

law, that the display of the universities’ trademark

(school colors combined with indicia identified with

the universities) on t-shirts was not a nominative

fair use of the mark despite evidence that the

universities are not readily identifiable without

using the mark, the t-shirts incorporate only so

much of the mark as was reasonably necessary to

identify the universities, and the t-shirt

manufacturer did nothing that would, in

conjunction with the mark, suggest that the t-

shirts were sponsored or endorsed by the

universities?

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PARTIES TO THE PROCEEDING

See case caption. Petitioner Smack Apparel

Company is a Florida corporation, the stock of which

is owned by petitioner Wayne Curtiss and his wife,

and which has no parent or subsidiaries.

TABLE OF CONTENTS

Page

QUESTIONS PRESENTED ..... 0.0... ec cceees 1

PARTIES TO THE PROCEEDING ............ il

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STATUTES AND CONSTITUTIONAL

PROVISIONS EVOLVED ...........-008- 2

STATEMENT OF THE CASE .............0.6. 3

REASONS FOR GRANTING THE WRIT ...... 26

A. THE DECISION OF THE FIFTH CIRCUIT

COURT OF APPEALS CONFLICTS WITH

THE DECISIONS OF OTHER UNITED

STATES COURTS OF APPEALS ON THE

QUESTION OF WHETHER THE LANHAM

ACT'S “LIKELIHOOD OF CONFUSION”

REQUIREMENT IS SATISFIED BY A

SHOWING THAT THE PUBLIC

IDENTIFIES THE MARKS IN QUESTION

AS THE PLAINTIFFS’ MARKS ........ 26

B. THE FIFTH CIRCUIT COURT OF

APPEALS HAS DECIDED AN

IMPORTANT QUESTION OF FEDERAL

LAW THAT HAS NOT BEEN, BUT

SHOULD BE, SETTLED BY THIS

SEED 65S os. aoe Rew ees 31

C. THE FIFTH CIRCUIT HAS DECIDED AN

IMPORTANT FEDERAL QUESTION INA

WAY THAT CONFLICTS WITH

RELEVANT DECISIONS OF THIS

SEIN, cas be en Se eae eee eee 33

EE oy k's pk ee 6 oe oe ewe ee 37

APPENDIX

Appendix A: United States Court of Appeals for

the Fifth Circuit Opinion, November 25, 2008 . la

Appendix B: United States District Court

Eastern District of Louisiana, July 18, 2006 .. 49a

Appendix C: United States Court of Appeals for

the Fifth Circuit Order denying rehearing,

ROI Bae, DU nc co ek cee swe nec twcwes 72a

TABLE OF AUTHORITIES

Page

CASES

Alpha Tau Omega Fraternity, Inc. v. Pure Country,

Ine.,

2004 WL 3391781 (S.D. Ind. 2004) ......... 28

Beef/ Eater Rests., Inc. v. James Burrough Ltd.,

gue F.2a G37 (6th Cir. 1968) .............. 26

Bi-Rite Enters., Inc. v. Button Master,

555 F. Supp. 1188 (S.D.N.Y. 1983) ......... 28

Bd. of Governors of Univ. of North Carolina v.

Helpingstine,

714 F. Supp. 167 (M.D.N.C. 1989) ......... 28

Bd. of Supervisors of LA State Univ. v. Smack

Apparel Co.,

438 F. Supp. 2d 653 (E.D.La. 2006) ...... 1,14

Bd. of Supervisors for Louisiana State Univ. Agric.

and Mech. College v. Smack Apparel Co.,

550 F.3d 465 (5th Cir.2008)............ passim

Bd. of Trs. of Univ. of Arkansas v. Profil Therapy

Serus., Inc.,

873 F. Supp. 1280 (W.D. Ark. 1995) ..... 31, 32

Boston Profl Hockey Ass’n, Inc. v. Dallas Cap &

Emblem Mfg, Inc.,

510 F.2a 1004 (6th Cir. 1975) .......... passim

Vil

Dastar Corp. v. Twentieth Century Fox Film Corp..,

539 U.S. 23, 123 S.Ct. 2041,

EG TB. 2S TOC anc vce cecnewsicuns 34

Dippin’ Dots, Inc. v. Frosty Bites Distrib., LLC,

369 F.3d 1197 (1ith Cir. 2004) ............ 37

Eppendorf-Netheler-Hinz GMBH v. Ritter GMBH,

259 F.3d 351 (th Civ. 2002) on ccc ccs 23

Intl Order of Job’s Daughters v. Lindeburg and

Co.,

633 F.2d 912 (9th Cir. 1980) ........ 27, 28, 33

Moseley v. V Secret Catalogue,

537 U.S. 418, 123 S.Ct. 1115,

ek rr 33

Pebble Beach Co. v. Tour 18 I Ltd.,

156 F.3d 526 (5th Cir. 1996) .............. 35

Qualitex Co. v. Jacobson Prods. Co.,

514 U.S. 159, 115 S.Ct. 1300,

Dae tc ee Oe CEO) gc ecw cee 35, 36

Sicilia Di R. Biebow & Co. v. Cox,

iv ER pe OE epg So ee)! ) 35

Sno-Wizard Mfg., Inc. v. Eisemann Prods. Co.,

791 F.2d 423 (6th Cir. 1986) .............. 35

Society of Fin. Examiners v. Nat'l Ass’n of Certified

Fraud Examiners Inc.,

41 F.Oe 22s (6th Cir. TGS)... ww cance 26

vill

Supreme Assembly, Order of Rainbow for Girls v.

J.H. Ray Jewelry Co.,

676 F.2d 1079 (5th Cir.1982)........ 20, 21, 25

TrafFix Devices, Inc. v. Mktg. Displays, Inc.,

532 U.S. 23, 121 S.Ct. 1255,

149 L.Ed.2d 164 (2001) ............ 23, 35, 36

Univ. of Georgia Athletic Ass’n v. Laite,

756 F.2d 1535 (llth Cir.1985).......... 28, 29

Univ. of Pittsburgh v. Champion Prods., Inc.,

529 F. Supp. 464 (W.D. Pa. 1982) ....... 28, 32

Univ. of Pittsburgh v. Champion Prods., Inc.,

566 F. Supp. 711, 219 U.S.P.Q. 834 (W.D. Pa.

Jun 23, 1983) (NO. CIV. 81-2167) .......... 28

U.S. v. Giles,

213 F.3d 1247 (10th Cir. 2000) ............ 27

STATUTES AND RULES

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a id oe a ae 8b ea ees 1

TREATISES AND ARTICLES

3 Louis Altman, Callmann on Unfair Competition,

Trademarks and Monopolies § 19:7 (4th ed.

TACT i RTS as 2 ream LAS Ae aN hs MIR cy ar eee Oe 36

4 McCarthy on Trademarks, § 24:10 (4th ed.) ... 29

C. Knox Withers, Sine Qua Non: Trademark

Infringement, Likelihood of Confusion, and the

Business of Collegiate Licensing, 11 J. Intell.

FYOp. 4s. 421 GPT Es cc ce cee 29

Dogan, S.L., & Lemley, M.A.. The Merchandising

Right: Fragile Theory or Fait Accompli? 54

Emory Law Journal 461, 500 (2005) ........ 35

J. Grady andS. McKelvey, Trademark Protection of

School Colors: Smack Apparel and Sinks

Decisions Trigger Color-Ful Legal Debate for the

Collegiate Licensing Industry, 18 J. Legal

Aspects Sport 207 (2008) ........0...0005- 32

J. Voortman, Trademark Licensing of Names,

Insignia, Characters and Designs: The Current

Status of the Boston Pro Hockey Per Se

Infringement Rule, 22 J. Marshall L. Rev. 567,

GT (rar Be ia reece eee 29

“Sports Artist Sued for Mixture of Crimson and

Tide” New York Times, November 12, 2006,

available at www.nytimes.com/2006/11/12/us/

By RS 31

The Dilution Of Culture And The Law Of

Trademarks, 49 IDEA 1, 31 (2008) ......... 30

Tschura, G., Likelihood of Confusion and

Expressive Functionality: A Fresh Look at the

Ornamental Use of Institutional Colors, Names

and Emblems on Apparel and Other Goods. 53

WAYNE L. REv. 873, 897 (2007) ............ 30

]

PETITION FOR WRIT OF CERTIORARI

Petitioners request that a writ of certiorari issue to

review the final order of the United States Court of

Appeals for the Fifth Circuit (“Fifth Circuit”).

OPINIONS BELOW

The opinion of the Fifth Circuit is reported as

Board of Supervisors for Louisiana State University

Agricultural and Mechanical College v. Smack Apparel

Co., 550 F.3d 465 (5th Cir.2008) and reproduced in the

Appendix (“App.”) at la. The Fifth Circuit’s order

denying Petitioners’ Petition for Rehearing en banc is

unpublished and reproduced in the Appendix at App.

72a. The order entered by the District Court granting

partial summary judgment to Respondents is reported

as Board of Supervisors of LA State University v.

Smack Apparel Co., 438 F. Supp. 2d 653 (E.D.La.

2006) and is reproduced in the Appendix at App. 49a.

JURISDICTION

On November 25, 2008, the Fifth Circuit affirmed

the decision of the District Court granting summary

judgment to respondents. On December 23, 2008, the

Fifth Cireuit denied Petitioners’ Petition for

Rehearing. The Court’s jurisdiction is invoked

pursuant to 28 U.S.C. § 1254(1).

STATUTES AND CONSTITUTIONAL

PROVISIONS INVOLVED

Section 43(a) of the Lanham Act, codified at 15 U.S.C.

§ 1125(a), provides as follows:

(a) Civil action

(1) Any person who, on or in connection with

any goods or services, or any container for

goods, uses in commerce any word, term, name,

symbol, or device, or any combination thereof, or

any false designation of origin, false or

misleading description of fact, or false or

misleading representation of fact, which--

(A) is likely to cause confusion, or to cause

mistake, or to deceive as to the affiliation,

connection, or association of such person

with another person, or as to the origin,

sponsorship, or approval of his or her goods,

services, or commercial activities by another

person, or

(B) in commercial advertising or promotion,

misrepresents the nature, characteristics,

qualities, or geographic origin of his or her

or another person’s goods, services, or

commercial activities,

shall be liable in a civil action by any person

who believes that he or she is or is likely to be

damaged by such act.

STATEMENT OF THE CASE

Statement cf the Facts

Since 1998, Smack Apparel has been in the

business of manufacturing unlicensed t-shirts for

collegiate sports fans which incorporate the traditional

team colors of various colleges and universities.

Smack attempts to distinguish its products from

licensed merchandise in several ways. First, it does

not use the design elements that are typically found on

licensed merchandise, such as the name of the

university and team mascot, or images of the school’s

seal, mascot, logos, and other registered trademarks.

Instead of incorporating the university’s registered

trademarks in its t-shirt designs, Smack uses words

and images which are not trademarks, and which

indirectly refer to the school, such as the geographic

location of the school, a reference to an opponent of the

school, or the score of a game which the school won.

Smack is also known for the humorous messages

which are intended to taunt fans of the opposing team,

which are rarely found on licensed products. When

such non-specific design elements are portrayed on a

t-shirt which incorporates the traditional school colors

of the university, a fan (or opponent) can understand

which school the t-shirt is intended to refer to, and

Smack markets its shirts to such fans. The company

name (“Smack”) is taken from a slang term for

bragging or boastful language that fans often use when

referring to fans of the opposing team.

Smack is located in Tampa, Florida, where its

shirts are manufactured. Smack sells its t-shirts

primarily to retail stores which offer the shirts for sale

to the public. Smack also maintains a website through

which it sells its t-shirts directly to the public. Smack’s

website states that its shirts are “licensed only by the

First Amendment.” Smack does nothing to suggest

that its t-shirts are licensed or approved by the schools

referred to by the t-shirts. Smack’s t-shirts each

display the company logo (approximately 2.5 inches in

width), which contains the company name and the

words “Talkin’ the Talk.”

Plaintiffs Louisiana State University (LSU), the

University of Oklahoma (OU), Ohio State University

(OSU), and the University of Southern California

(USC), along with their licensing agent, Collegiate

Licensing Company (CLC), sued defendant Smack

Apparel Company and its principal, Wayne Curtiss,

under the Lanham Act and related state statutes.

Plaintiffs contended that their respective school colors

(purple and gold for LSU, crimson and cream for OU,

scarlet and gray for OSU, and cardinal and gold for

USC), when displayed on products containing

references to the universities or their accomplishments

and directed to fans of the universities and other

interested consumers, constitute common law

trademarks.

Smack denied that the claimed trademark (school

colors in combination with references to the

universities) was adequately distinctive to serve as a

trademark, and denicd that there was a likelihood that

consumers would think that Smack’s products were

manufactured, endorsed, or approved by the

universities. Smack contended that the universities’

alleged marks (school colors in combination with

references to the universities) were functional, since

the products in question constitute “game day”

apparel, and there was no consumer demand for “game

day” apparel which did not make some reference to the

teams which were playing. Smack also contended that

its use of the school colors in combination with

references to the schools constituted a nominative fair

use, because Smack did not use any of the schools’

registered trademarks, and did nothing to suggest that

its t-shirts were endorsed or approved by the schools.

The T-Shirts at Issue

Plaintiffs contend that six of Smack’s t-shirts

infringe their common law trademarks and unfairly

compete with products licensed by plaintiffs.

Two of the allegedly offending designs are for LSU

fans:

(1) “Beat Oklahoma” — This t-shirt is printed

with gold lettering on purple fabric. The front of this

t-shirt contains the following design elements:

(a) The phrase “Beat Oklahoma”; and

(b) The Smack logo, consisting of the word

“Smack” displayed within an oval border

containing the word “apparel”, below which

is displayed the phrase “Talkin’ the Talk”.

The back of this t-shirt contains the following

design elements:

(a) The phrase “And Bring It Back To The

Bayou!”; and

(b) The phrases “2003 College Football National

Championship” and “January 4, 2004 New

Orleans, Louisiana” in smaller letters; and

on top of the trophy.

(2) “Sweet as Sugar” — The “Sweet as Sugar” t-

shirt design is printed with purple lettering on gold

fabric. The front of this t-shirt design contains the

following design elements:

(a) The phrases “2003 College Football National

Champions” and “New Orleans, Louisiana”;

(b) A graphic image of a trophy with a football

on top of the trophy; and

The reverse side of this t-shirt design contains the

following design elements:

(a) Numbers (representing the scores of each

football game which LSU played during the

2003 football regular season) displayed

within a circular design, with accompanying

phrases which indirectly refer to the

opponent in each such game (e.g. the phrase

“Crimson Cried”, a_ derivation of the

University of Alabama team nickname,

“Crimson Tide,” appears directly below the

numbers 27-3, the score of the game between

LSU and Alabama played during the 2003

football season);

(b) The phrases “2003 College Football National

Champions” and “New Orleans, Louisiana”;

as Sugar” in the center of the circular

design, referring to the score of the 2004

Sugar Bowl game in which LSU became the

2003 College Football National Champions.

The “Sweet as Sugar” t-shirt design was intended

for fans of LSU to celebrate the National

Championship won by LSU in January 2004. The

game scores are shown with verbal jabs which poke

fun at the opponents defeated by LSU during the

regular season.

Two of the allegedly offending designs are for OU

fans:

(1) “Beat SoCal” - This t-shirt is printed with

white lettering on red fabric. The front of this t-shirt

contains the following design elements:

(a) The phrase “Beat SoCal”; and

(b) The Smack logo.

The back of this t-shirt contains the following

design elements:

(a) The phrase “And Let’s Make It Eight!”; and

(b) The phrases “2004 College Football National

Championship” and “January 4, 2005

Miami, Florida” in smaller letters; and

on top of the trophy.

The “Beat SoCal” t-shirt is intended to refer to a

football game played between OU and USC for the

college football national championship in January,

2004. The phrase “Let’s Make it Eight” refers to the

fact that OU had previously won seven national

championships in football, and that if OU were to win

that game, it would have won a total of eight national!

football championships. The t-shirt does not utilize any

registered trademark of OU or any other school as part

of the design elements.

(2) “Bourbon Street or Bust” — This t-shirt is

printed with white lettering on red fabric. The front of

this t-shirt contains the following design elements:

(a) The phrase “Bourbon Street or Bust” (with

the letters “ou” in “Bourbon” displayed in a

different font and the word “or” embedded in

a graphic image of a football);

(b) Graphic images of a martini glass and a

Mardi Gras mask, and

The back of this t-shirt contains the following

design elements:

(a) The phrase “Show us your beads!” (with the

“ou” in “your” in a different color and font);

(b) Graphic images of a martini glass and a

Mardi Gras mask,

word “as” embedded in a football; and

(d) A banner containing the words “January 4,

2004 New Orleans, Louisiana”.

While the letters “ou” in the w.cd “Bourbon” are

displayed in a font which is different than the other

letter in the word, OU had not registered the letters

“QU” as a trademark prior to the filing of this lawsuit.

Before making the “Bourbon Street or Bust” t-shirt,

Smack investigated OU’s registered trademarks and

discovered that while OU had registered a trademark

for a stylized interlocking form of the letters OU, it

had not attempted to register the letters “OU”. The

phrases “Show us your beads” and “Bourbon Street or

Bust” were intended to be statements that a typical

OU fan might make. OU does not make or sponsor

any t-shirt that is similar to the “Bourbon Street or

Bust” t-shirt. Suzanne Staley, OU’s Director of Brand

Development, testified that OU would not license a

shirt similar to the “Bourbon Street or Bust” t-shirt for

two reasons: (1) the presence of a martini glass on the

t-shirt implies consumption of alcohol, and OU does

not license products which encourage consumption of

alcohol; and (2) the phrase “show us your beads”

implies nudity, and OU does not license products

which involve sexual innuendo.

One of the allegedly infringing designs is for fans of

OSU.

(1) “Got Seven?” — The “Got Seven?” t-shirt design

is printed with white lettering on red fabric. The front

side of this t-shirt design contains the following design

elements:

(a) The phrase “Got Seven?”; and

(b) The Smack logo.

The reverse side of this t-shirt design contains the

following design elements:

(a) The phrase “We Do!”;

(b) A map of the state of Ohio with the words

“Columbus, Ohio”, a star indicating the

location of Columbus on the map, and a

graphic image of a football;

Champs”;

(d) Seven graphic images of trophies with a

football on top of each trophy; and

(e) Below each trophy is a date representing

each of the years in which OSU was the

National College Football Champion; and

(f) The Smack logo.

One of the allegedly infringing designs is for fans of

USC.

(1) “Got Eight?” — The “Got Eight?” t-shirt design

is printed with gold lettering on red fabric. The front

side of this t-shirt design contains the following design

elements:

(a) The phrase “Got Eight?”; and

(b) The Smack logo.

The reverse side of this t-shirt design contains the

following design elements:

(a) The phrase “We Do!”;

(b) A map of the state of California with the

word “SoCal”, and a star indicating the

location of Los Angeles on the map;

Champs’;

(d) Fight graphic images of trophies with a

football on top of each trophy; and

(e) Below each trophy is a date representing

each of the years in which USC was the

National College Football Champion.

The “Got Seven?” and “Got Eight?” t-shirt designs

are a parody of the “got milk” advertising campaign.

Smack has manufactured virtually identical t-shirt

designs for dozens of other schools, including OU and

LSU, without objection. Smack began to manufacture

and sell a “Got Seven?” t-shirt for OU in 2001, and

CLC has never objected to that shirt.

Dr. Thomas O’Connor, an expert on marketing

research from the University of New Orleans, citing

scientific literature and his own _ investigation

regarding the reasons why individuals wear apparel

which incorporate team colors, expressed the following

opinions:

(1) Color allows the person wearing a t-shirt to

convey a message, and to demonstrate support

for the school;

(2) Use of color allows persons to demonstrate

loyalty, to band together, and to “bask in the

reflective glory” of school success;

(3) The use of color for tribal, expressive, or

associative purposes has ancient origins dating

back several centuries; and

(4) Use of color identifies the speaker, and gives

context to a speaker’s expressive message.

To illustrate how businesses in the universities’

respective communities use team colors combined with

references to the universities as a marketing device,

and demonstrate why there was no likelihood that

consumers would think that Smack’s t-shirts were

endorsed or approved by the universities, Smack

introduced photographs reflecting the widespread use

of team colors on commercial signs, vehicles, and

buildings as the dominant color theme, often

accompanied by words or images which make

reference to the university. These photographs depict:

(a) businesses in Norman with names such as

“Sooner Income Tax”, “Sooner Driving School”, “Sooner

Pain Management”, “Sooner Theater”, “Sooner

Trophies”, “University Muffler”, “Big R Furniture”,

“Boomer Book Company”, “College Cleaners”,

“Crimson Creamery”, “OU Motel”, and “Sooner Copy

Center” which also display OU’s team colors (crimson

and cream) on buildings and signs;

(b) businesses in Columbus with names such as

“Varsity Club”, “Buckeye Donuts”, “Go Bucks

Express”, and “Campus Car Co.”, which display OSU’s

team colors (scarlet and gray) on buildings and signs,

and

“Tiger Plaza”, “Campus Car Care”, and “TigerLand

Market” which display LSU’s team colors (purple and

gold) on their signs and buildings.

District Court Proceedings

Plaintiffs filed their Complaint in this action on

June 7, 2004. Both sides moved for summary

judgment in early 2005. On July 18, 2006, the District

Court entered its Order granting plaintiffs’ Motion for

Summary Judgment, and denying Smack’s Motion for

Summary Judgment, finding that the six t-shirts at

issue infringed the plaintiffs’ trademarks.

The District Court found that there was no genuine

issue of material fact that the university trademarks

had acquired secondary meaning, since it was

undisputed that the universities had used their

respective colors for a lengthy period of time, had

marketed scores of items incorporating the school

colors which generated substantial revenue, and

sometimes referred to themselves by reference to the

school colors, i.e. LSU sometimes refers to itself as the

“purple and gold”. The District Court also found that

Smack’s concession that it used school colors on its

shirts as a means of referring to the universities was

evidence that the colors had acquired secondary

meaning.

The District Court also found that there was no

genuine issue of material fact that Smack’s use of

school colors on its t-shirts was likely to cause

confusion among consumers regarding the source,

affiliation, or sponsorship of Smack’s t-shirts. Applying

the Fifth Circuit’s “digits of confusion” test, the

District Court found that the university marks were

strong, despite the fact that businesses in the cities

where the respective universities were located used

school colors combined with references to the

universities to market their businesses. The District

Court also found that the university marks were

“virtually identical” to the marks incorporated on

Smack’s t-shirts, due in part to the fact that Smack’s

t-shirts left no doubt that they referred to the

universities. The District Court found that the parties’

respective products were very similar, even though

Smack’s t-shirts did not incorporate the university’s

registered trademarks (as did licensed products), and

despite the fact that Smack’s t-shirts include

irreverent phrases or slang comments in addition to

the school colors. The District Court found that while

Smack denied that it intended to confuse consumers,

it admitted that it used the university marks with the

intent of identifying the universities as the subject of

the message expressed on the t-shirts, and that this

weighed in favor of a likelihood of confusion because

Smack used the university marks in its t-shirts “with

‘an intent’ to ‘rely upon the drawing power in enticing

fans of the particular universities to purchase their

shirts.”. There was no direct evidence of actual

confusion; in fact, the universities entered into a

stipulation that there was no evidence that any

consumer had ever purchased one of Smack’s t-shirts

under the mistaken belief that it had been endorsed,

sponsored, or approved by the universities.

Citing Boston Professional Hockey Ass’n, Inc. v.

Dallas Cap & Emblem Mfg, Inc., 510 F.2d 1004 (5th

Cir. 1975) (hereinafter Boston Professional Hockey),

the District Court rejected Smack’s contention that the

university marks were functional. The District Court

found that consumers purchased shirts which

incorporated the universities’ color schemes combined

with references to the universities “in order to show

support for the particular university” and that there

was “no consumer demand without these identifying

characteristics.” 438 F. Supp. 2d at 662.

Even though the universities described their

trademark as “color schemes in the context of

merchandise that makes reference to the Plaintiff

Universities or their accomplishments and is directed

to their fans and other interested consumers,” and the

District Court stated that Smack had “selected the

color schemes, logos, and designs for their shirts in

order to refer to the universities and call them to the

mind of the consumer,” 438 F. Supp. at 657-58

(emphasis added), the District Court rejected Smack’s

nominative fair use defense. The District Court

reasoned that a use could not be considered a

nominative fair use if it resulted in a likelihood of

confusion, and the District Court had already

determined that Smack’s use of the university marks

on its t-shirts resulted in a likelihood of confusion.

A jury trial was conducted on November 27 & 28,

2006, and the jury awarded plaintiffs $10,507.80 as

actual damages, and the additional sum of $35,686 as

profits from the sale of the six t-shirts. The District

Court declined the universities’ request to award

enhanced damages. The District Court permanently

enjoined Smack from manufacturing only the six t-

shirts at issue, and any shirts similar to those six t-

shirts.

The District Court entered its judgment on

February 12, 2007. On February 23, 2007, plaintiffs

filed a motion to reconsider, asking that the court

amend the judgment to include prejudgment interest.

On April 16, 2007, the court granted the motion to

reconsider, and amended the judgment of February 12,

2007 to include prejudgment interest in the aggregate

sum of $1,187.31.

Appellate Proceedings

On May 15, 2007, Smack filed its notice of appeal

to the United States Court of Appeal for the Fifth

Circuit. On November 25, 2008, the Fifth Circuit

affirmed the District Court’s summary judgment for

the universities in all respects.

On appeal, Smack argued that the university

marks (team colors combined with indicia referring to

the universities) were not trademarks because they

described the products which were produced by the

university licensees, and did not serve to distinguish or

identify the universities as the secondary source of

those products. The Fifth Circuit rejected this

argument, stating “we see no reason to exclude color

plus other identifying indicia from the realm of

protectable marks’ provided the remaining

requirements for protection are met.” 550 F.3d at 476.

While Smack did not contest the universities’

contention that their school colors had been used to

identify the universities for more than a century,

Smack contended that the use of colors as a means of

identifying the universities and distinguishing them

from other institutions was not a trademark use

unless the colors were used as a means of identifying

the universities as a unique source of goods. The Fifth

Circuit disagreed, stating as follows:

Given the longstanding use of the color scheme

marks and their prominent display on

merchandise, in addition to the well-known

nature of the colors as shorthand for the schools

themselves and Smack’s intentional use of the

colors and other references, there is no genuine

issue of fact that when viewed in the context of

t-shirts or other apparel, the marks at issue

here have acquired the secondary meaning of

identifying the Universities in the minds of

consumers as the source or sponsor of the

products rather than identifying the products

themselves.

We think this conclusion is consistent with the

importance generally placed on sports team

logos and colors by the public. We have

previously noted, although not in the context of

secondary meaning, that team emblems and

symbols are sold because they serve to identify

particular teams, organizations, or entities with

which people wish to identify. See Boston Prof!

Hockey Ass’n v. Dallas Cap & Emblem Mfg.,

Inc., {510 F.2d 1004, 1011 (5th Cir.1975)} We

think this desire by consumers to associate with

a particular university supports the conclusion

that team colors and logos are, in the minds of

the fans and other consumers, source indicators

ofteam-related apparel. By associating the color

and other indicia with the university, the fans

perceive the university as the source or sponsor

of the goods because they want to associate with

that source.

550 F.3d at 477-78.

While acknowledging evidence that third party

businesses near the university campuses also used

university school colors and other indicia to attract

consumers to their businesses, the Fifth Circuit found

that this third party use was not “extensive” enough to

create a genuine issue of material fact regarding

confusion.

The Fifth Circuit also affirmed the District. Court’s

finding that no issue of genuine material fact existed

with regard to whether Smack’s t-shirts were likely to

result in consumer confusion. While the Fifth Circuit

mentioned the “Sweet as Sugar” t-shirt as an example

of a Smack t-shirt that was “strikingly similar” to a t-

shirt licensed by LSU, the only features of the Smack

t-shirt that the Fifth Circuit also found in the t-shirt

licensed by LSU was the use of the colors purple and

gold, and reference to the national championship won

by LSU in 2004:

For example, one of Smack’s shirt designs in

purple and gold is referred to as the “sundial”

shirt and was targeted toward LSU fans. The

front of the shirt proclaims “2003 National

Champions,” and the back contains the scores

from twelve games won by LSU. The scores are

arranged in a circle with a short phrase poking

fun at each opponent. The shirt also contains

the final score of the 2004 Sugar Bowl, which

LSU won, and the phrase “Sweet as Sugar!”

Although the shirt does not use the initials

“LSU” anywhere, its identification of LSU as

the national champion is unmistakable from the

colors and from the references to the games in

which LSU played. This shirt is strikingly

similar to LSU’s own merchandise that also

uses the purple and gold colors and proclaims

LSU as the national champion.

550 F.3d at 480. Another t-shirt which the Fifth

Circuit found to be similar to a licensed product was

the “Bourbon Street or Bust” t-shirt which Smack

manufactured for OU fans. Jd. As noted above, OU’s

Director of Brand Development testified that OU

would never grant a license for the “Bourbon Street or

Bust” t-shirt because it displayed a martini glass and

the phrase “Show Us Your Beads,” which were

considered to be suggestive of alcoholic consumption

and nudity/sexual innuendo, respectively.

Notwithstanding the presence of factors which would

allow consumers to distinguish the Smack t-shirts

from licensed products, the Fifth Circuit concluded

that “[t]he similarities in design elements are

overwhelming and weigh heavily in favor of a

likelihood of confusion.”

The Fifth Circuit, like the District Court, found

that Smack’s admission that it intentionally used the

university colors and indicia “to make people think of

the particular school that each shirt targeted” weighed

in favor of a likelihood of confusion:

Smack did not hope to sell its t-shirts because of

some competitive difference in quality or design

compared with the Universities’ licensed

products, but rather it intended to take

advantage of the popularity of the Universities’

football programs and the appearance of the

school teams in the college bowl games.

550 F.3d at 482. In concluding that the District Court

properly found that there was no substantial dispute

of genuine fact regarding the likelihood of confusion,

the Fifth Circuit stated:

As noted above, the digits of confusion-

particularly the overwhelming similarity of the

marks and the defendant’s intent to profit from

the Universities’ reputation-compel this

conclusion. This 1s so, we have noted, because

Smack’s use of the Universities’ colors and

indicia is designed to create the illusion of

affiliation with the Universities and essentially

obtain a “free ride” by profiting from confusion

among the fans of the Universities’ football

teams who desire to show support for and

affiliation with those teams. This creation of a

link in the consumer’s mind between the t-

shirts and the Universities and the intent to

directly profit therefrom results in “an

unmistakable aura of deception” and likelihood

of confusion.

550 F.3d at 483-84.

The Fifth Circuit attempted to distinguish this case

from Supreme Assembly, Order of Rainbow for Girls v.

J.H. Ray Jewelry Company, 676 F.2d 1079 (5th

Cir.1982) (hereinafter Rainbow for Girls), in which a

fraternal organization and its official jeweler sued a

retailer for trademark infringement based on the

retailer’s sale of jewelry bea.ing the organization’s

registered mark. In Rainbow for Girls, the Fifth

Circuit affirmed the district court’s finding of no

likelihood of confusion, concluding that “[t]he fact that

purchasers purchased Rainbow jewelry as a direct

result of the presence of the Rainbow emblem did not

compel the conclusion that they did so believing that

the jewelry was in any way endorsed, sponsored,

approved or otherwise associated with Rainbow.” 676

F.2d at 1084. The Fifth Circuit concluded that the

instant case was distinguishable because of district

court findings in Rainbow for Girls that “there was no

historic custom or practice specific to Rainbow jewelry

or to the fraternal jewelry industry that Rainbow

jewelry could be manufactured only with Rainbow’s

sponsorship or approval.”

After distinguishing this case from Rainbow for

Girls, the Fifth Circuit noted that this case was more

analogous to Boston Professional Hockey, in which the

Fifth Circuit “held that the likelihood of confusion

requirement was met because the defendant

duplicated and sold the emblems ‘knowing that the

public would identify them as being the teams’

trademarks’ and because the publics ‘certain

knowledge ... that the source and origin of the

trademark symbols were in plaintiffs satisfies the

requirements of the act.” 550 F.3d at 485 (quoting

Boston Professional Hockey, 510 F.2d at 1012. The

Fifth Circuit noted that the Rainbow for Girls court

recognized that sports emblems were significantly

different than emblems of fraternal organizations in

terms of how they are perceived by consumers:

In Rainbow for Girls, the district court opinion,

which we upheld, also recognized in reference to

Boston Hockey that “(i)t is not unreasonable to

conclude, given the degree to which sports

emblems are used to advertise teams and

endorse products, that a consumer seeing the

emblem or name of a team on or associated with

a good or service would assume some sort of

sponsorship or association between the

product’s seller and the team.”

Id.

The Fifth Circuit concluded that the difference in

public perception between sports emblems and

fraternal symbols required that the outcome of this

case be governed by Boston Professional Hockey rather

than Rainbow for Girls:

We agree with this reasoning as applied to this

case, which is more like Boston Hockey than

Rainbow for Girls. We hold that given the

record in this case and the digits of confusion

analysis discussed above-including’ the

overwhelming similarity between’ the

defendant’s t-shirts and the Universities’

licensed products, and the defendant’s admitted

intent to create an association with the

plaintiffs and to influence consumers in calling

the plaintiffs to mind-that the inescapable

conclusion is that many consumers would likely

be confused and believe that Smack’s t-shirts

were sponsored or endorsed by the Universities.

The Universities exercise stringent control] over

the use of their marks on apparel] tr, ough their

licensing program. It is also undisputed that the

Universities| annually sell millions of dollars

worth of licensed apparel. We further recognize

the public’s indisputable desire to associate with

college sports teams by wearing team-related

apparel. We are not persuaded that simply

because some consumers might not care

whether Smack’s shirts are officially licensed

the likelihood of confusion is negated. Whether

or not a consumer cares about official

sponsorship is a different question from

whether that consumer would likely believe the

product is officially sponsored. For the foregoing

reasons, we conclude that a likelihood of

confusion connecting the presence of the

Universities’ marks and the Universities’

themselves was demonstrated in this case.

Smack also urged the Fifth Circuit to reverse the

District Court’s conclusion that the university marks

were not functional, to no avail. As it had done in

Boston Professional Hockey, the Fifth Circuit found

that the marks in question “had no demonstrated

value other than their significance as the trademarks

of the team,” and were therefore nonfunctional.

Applying the “traditional” test of functionality, e.g.

“whether the feature is essential to the use or purpose

of the product or whether it affects the cost or quality

of the product,” the ifth Circuit found that “[{t]he

school colors and other indicia used here do not make

the t-shirts ‘work.’ The t-shirts would function just as

well as articles of clothing without the colors and

designs.” 550 F.3d at 486. Applying the “secondary”

test of functionality, e.g. “one the exclusive use of

which would put competitors at a significant non-

reputation-related disadvantage,” the Fifth Circuit

found that:

Smack contends that it will be placed at a

significant non-reputation-related disadvantage

if it “is unable to satisfy consumer demand for

game day clothing that allows fans to conform

to the crowd, or satisfy consumer demand for

game day clothing that matches other items of

clothing worn by the consumer.” Smack has

admitted that the colors and indicia on its shirts

are designed to call the Universities to the mind

of the fans, and it acknowledges in its brief that

fans purchase t-shirts to wear to football games

to show the colors of the team that the

consumer is supporting. . . . Smack’s alleged

competitive disadvantage in the ability to sell

game day apparel relates solely to an inability

to take advantage of the Universities’

reputation and the public’s desired association

with the Universities that its shirts create. This

' TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23, 32-33,

121 S.Ct. 1255, 1261-62, 149 L.Ed.2d 164 (2001) (hereinafter

TrafFix).

* Eppendorf-Netheler-Hinz GMBH v. Ruiter GMBH, 289 F.3d 351,

356 (5th Cir. 2002)

is not an advantage to which it is entitled under

the rubric of legitimate competition.

550 F.3d at 488.

The Fifth Circuit also rejected Smack’s contention

that its use of the university marks was a nominative

fair use of those marks. One of the issues which

Smack raised on appeal was that the Fifth Circuit does

not consider nominative fair use to be an affirmative

defense, but rather, a factor which the court is

required to consider in conjunction with its likelihood

of confusion analysis. However, the District Court in

this case first concluded that Smack’s t-shirts created

a likelihood of confusion, and then found that Smack’s

use of the university marks could not be considered a

nominative fair use because the District Court had

already concluded that Smack’s use of the university

marks created a likelihood of confusion. Smack

contended that the District Court failed to consider the

nominative fair use doctrine as part of the likelihood

of confusion analysis, and that this failure constituted

reversible error.

While acknowledging that the nominative fair use

analysis should “ordinarily” be considered in

conjunction with the likelihood of confusion analysis in

order to avoid lowering the standard for confusion, the

Fifth Circuit stated that it had not required any

particular method for consideration in cases “where

the nominative use is not a significant factor in the

liability determination,” and concluded that this was

“such a case.”

As an illustration of Smack’s use of the university

marks in a way that improperly suggested affiliation,

sponsorship, or endorsement, the Fifth Circuit noted

that the “Got Seven?” and “Got Eight?” shirts also

contained the phrase “We Do!” and concluded that the

use of this phrase implied that the university had

endorsed or approved the t-shirt, since Smack had not

won any national championships in football.* Relying

on the district court’s finding that “Smack copied the

mark with ‘an intent to rely upon the drawing power

in enticing fans of the particular universities to

purchase their shirts [and that s]uch an attempt to

capitalize on consumer confusion is not a nominative

fair use,” the Fifth Circuit concluded that the district

court correctly granted summary judgment to the

Universities on the nominative fair use issue. 585 F.3d

at 489.

Petition for Rehearing

Smack sought en banc review of the panel opinion

on the grounds that it conflicted with other Fifth

Circuit decisions and consideration by the full court

was therefore necessary to secure and maintain

uniformity of the court’s decisions. Smack contended

that Boston Professtonal Hockey and Rainbow for Girls

* It should be noted that the Fifth Circuit’s reliance on the phrase

“We Do!” in the “Got Seven!” and “Got Eight!” t-shirts as

justification for its conclusion that Smack had used the university

marks in a way that suggested sponsorship or endorsement was

never raised by the plaintiffs, either in the trial court or on

appeal, was never mentioned by the District Court, was not raised

by the panel as an issue during oral argument, and appears for

the first time in the Fifth Circuit opinion. Had the issue been

raised, Smack would have noted that the term “we” is not used in

the first person singular tense to refer to the university, but is

used in the first person plural sense, to refer to the fan wearing

the shirt and other fans who might encounter the t-shirt in public.

were conflicting, and that the en banc panel should

grant Smack’s Petition for Rehearing and overrule

Boston Professional Hockey.

Smack also asserted that the panel opinion had

cited Beef/ Eater Rests., Inc. v. James Burrough Ltd.

398 F.2d 637, 639 (5th Cir. 1968), for the proposition

that “[T]he trial judge, by inspection of the

trademarks, may himself determine, and must

determine, the likelihood of confusion,” and that

Beef/ Eater had clearly been superseded in this respect

by more recent Fifth Circuit opinions such as Society

of Financial Examiners v. National Ass’n of Certified

Fraud Examiners Inc., 41 F.3d 223, 226 (5th Cir.

1995), reversing a district court for holding that the

“fact-intensive” likelihood of confusion inquiry could be

conducted without a trial. 41 F.3d at 224- 25.

On December 23, 2008, the Fifth Circuit denied

Smack’s Petition for Rehearing.

REASONS FOR GRANTING THE WRIT

A. The decision of the Fifth Circuit Court of

Appeals conflicts with the decisions of other

United States Courts of Appeals on the

question of whether the Lanham Act’s

“likelihood of confusion” requirement is

satisfied by a showing that the public

identifies the marks in question as the

plaintiffs’ marks.

In affirming the district court’s summary judgment

in favor of the universities, the Fifth Circuit applied

and reaffirmed its holding in Boston Professional

Hockey, in which the Fifth Circuit held that the

Lanham Act’s “likelihood of confusion” requirement

was satisfied by a showing that customers recognized

the defendant’s patches as bearing the logos of the

sports teams. The holding of Boston Professional

Hockey has been rejected by the United States Court

of Appeal for the Ninth Circuit in International Order

of Job’s Daughters v. Lindeburg and Co., 633 F.2d 912,

918 (9th Cir. 1980) (hereinafter Job’s Daughters), in

which the Ninth Circuit rejected Lanham Act claims

asserted by a fraternal organization against the

manufacturer of jewelry bearing the fraternal

organization’s insignia, finding that the name and

emblem were “functional aesthetic components of the

jewelry, in that they are being merchandised on the

basis of their intrinsic value, not as a designation of

origin or sponsorship.” In Job’s Daughters, the Ninth

Circuit stated:

We reject the reasoning of Boston Hockey.

Interpreted expansively, Boston Hockey holds

that a trademark’s owner has a complete

monopoly over its use, including its functional

use, in commercial merchandising. [The

Lanham Act’s} scope is much narrower: to

protect consumers against deceptive

designations of the origin of goods and,

conversely, to enable producers to differentiate

their products from those of others.... The

Boston Hockey decision transmogrifies this

narrow protection into a broad monopoly.

Id. at 918. The Tenth Circuit has also refused to

follow Boston Professional Hockey. U.S. v. Giles, 213

F.3d 1247, 1250-51 (10th Cir. 2000), (“[T]he [Boston

Hockey] court relied upon a novel and overly broad

conception of the rights that a trademark entails. ...

[T]he court essentially gave the plaintiffs a monopoly

over use of the trademark in commercial

merchandising. ... For these reasons we decline to

follow Boston Professional here.”)."

The Eleventh Circuit, on the other hand, has

followed the reasoning of Boston Professional Hockey.

In University of Georgia Athletic Association v. Laite,

756 F.2d 1535 (11th Cir. 1985), the Eleventh Circuit

cited Boston Professional Hockey in affirming a

permanent injunction against a novelty’ beer

wholesaler who manufactured a beer called “Battlin’

Bulldog Beer” which was alleged to infringe on the

portrayal of an English Bulldog which the University

of Georgia had chosen for its mascot:

In [Boston Professional Hockey], this court’s

predecessor held that “confusion” need not

relate to the origin of the challenged product.

Rather, “confusion” may relate to the public’s

knowledge that the trademark, which is “the

* District courts in the Second, Third, and Fourth Circuits have

rejected the holding of Boston Professional Hockey. See Bi-Rite

Enters., Inc. v. Button Master, 555 F. Supp. 1188, 1193-95

(S.D.N.Y. 1983); Univ. of Pittsburgh v. Champion Prods., Inc., 566

F. Supp. 711, 219 U.S.P.Q. 834 (W.D. Pa. Jun 23, 1983) (NO. CIV.

81-2167) (We do not think that Boston Hockey is good law.

Instead, we are in full accord with the analysis provided in [Job's

Daughters]); Bd. of Governors of Univ. of North Carolina v.

Helpingstine, 714 F. Supp. 167, 172-73 (M.D.N.C. 1989).

However, a district court in the Seventh Circuit found Boston

Professional Hockey to be persuasive authority. Alpha Tau

Omega Fraternity, Inc. v. Pure Country, Inc., 2004 WL 3391781,

*8-10(S.D. Ind. 2004) (predicting the Seventh Circuit would adopt

the reasoning of Boston Professional Hockey).

triggering mechanism” for the sale of the

product, originates with the plaintiff.

Id. at 1546.

Professor McCarthy has referred to Boston

Professional Hockey as a “radical break with

traditional trademark law.” 4 McCarthy on

Trademarks, § 24:10 (4" ed.). Other commentators

have criticized the decision, and have suggested that

a grant of certiorari from this Court is necessary to

resolve the uncertainty that the decision has created.

in Lanham Act jurisprudence. See C. Knox Withers,

Sine Qua Non: Trademark Infringement, Likelihood of

Confusion, and the Business of Collegiate Licensing, 11

J. Intell. Prop. L. 421, 455 (Spring 2004) (“The ‘Boston

Hockey’ cases present a number of questions to which

the ‘Job’s Daughters’ decisions suggest answers. No

matter how persuasive one might find the reasoning of

the Job’s Daughters, Bi-Rite, University of Pittsburgh,

and University of North Carolina courts, an

incongruity between the two lines of cases still exists.

A grant of certiorari from the United States Supreme

Court in a future case would perhaps be the best

solution to this split of authority. ... By answering

these questions, the Supreme Court could make great

strides in resolving the inconsistencies between the

‘Boston Hockey’ and ‘Job’s Daughters’ cases”); John J.

Voortman, Trademark Licensing of Names, Insignia,

Characters and Designs: The Current Status of the

Boston Pro Hockey Per Se Infringement Rule, 22 J.

Marshall L. Rev. 567, 571 (Spring 1989) (“Indeed, the

question of whether persons or firms should have the

exclusive right to exploit their own names, emblems,

and the fictional characters they have created is

probably dependent in part on intuitive beliefs which

are not susceptible to logical argument. It is clear,

however, that a Supreme Court decision or legislation

to resolve this issue one way or the other is needed.

Not only is there a conflict between the circuits, but

even within the circuits, the law has become highly

unpredictable.”). T'schura, G., Likelihood of Confusion

and Expressive Functionality: A Fresh Look at the

Ornamental Use of Institutional Colors, Names and

Emblems on Apparel and Other Goods. 53 WAYNE L.

REV. 873, 897 (2007) (“Perhaps it is high time these

merchandising theories were considered by the

Supreme Court. In this author’s. view and in light of a

more recent opinion of the Court which refused to

expand the scope of trademark protection beyond

simply the avoidance of consumer confusion, the Court

should likewise conclude that the difference between |

expressing allegiance and any assumption or belief as

to endorsement or sponsorship is an easy distinction

for the consumer to make.”). The Dilution Of Culture

And The Law Of Trademarks, 49 IDEA 1, 31 (2008)

(“Although [Boston Professional Hockey] was harshly

criticized in other decisions and in the legal literature,

courts have increasingly accepted its logic. The

question has yet to be decided by the Supreme Court,

but the logic underlying the court’s decision has

recently come to dominate legal practice.”).

The issues raised in this case are likely to appear

with increasing frequency as other colleges and

universities, armed with the Fifth Circuit’s decision in

this case, begin to challenge the use of their school

colors by parties who have used those colors without

complaint for decades. The University of Alabama,

one of the amici in the Fifth Circuit, has asserted

Lanham Act claims against Daniel Moore, who has

been painting and selling artistic works depicting the

University of Alabama school colors for twenty six

years without a license or any objection from the

university. The university claims that Moore’s

paintings violate the University’s trademark rights.

See “Sports Artist Sued for Mixture of Crimson and

Tide” New York Times, November 12, 2006, available

at www.nytimes.com/2006/11/12/us/12artist. html. The

case is still pending.

Given the huge mismatch in resources between

major universities and the small businesses who are

typical defendants in this type of litigation, many such

businesses choose to settle out of court rather than

devote the resources to defending litigation of this

type. As a consequence, it is unlikely that this Court

will soon have another opportunity to review a decision

raising the issues that this case presents.

B. The Fifth Circuit Court of Appeals has

decided an important question of federal law

that has not been, but should be, settled by

this Court.

“(T] the use of collegiate marks by local businesses

as part of their trade names is an old and venerable

tradition.” Bd. of Trs. of Univ. of Arkansas v. Profil

Therapy Servs., Inc., 873 F. Supp. 1280, 1289 (W.D.

Ark. 1995). Prior to the mid-1970’s, unauthorized use

of collegiate trademarks in the United States was

principally by local merchants who used the marks as

an indication of support. Jd. at 1283-84. During this

same period of time, manufacturers produced soft

goods, e.g. t-shirts, sweatshirts, and other apparel,

which featured collegiate trademarks without a license

or payment of a royalty to the universities. See, Univ.

of Pittsburgh v. Champion Prods., Inc., 529 F. Supp.

464, 466-68 (W.D. Pa. 1982). Increased television

coverage of college athletics led to an enormous boom

in the production and sale of goods bearing collegiate

marks. By the early and mid-1980's, many colleges and

universities began licensing programs to insure control

over goods and services bearing collegiate marks. Bd.

of Trs. of Univ. of Arkansas at 1283-84.

Over the past two decades, the collegiate licensing

industry has experienced exponential revenue growth,

today topping $3 billion in annual merchandise sales.

In fact, as reported in 2006, retail sales of collegiate

licensed merchandise in the United States and Canada

trailed only that of the National Football League and

Major League Baseball among the major sport

organizations. J. Grady and S. McKelvey, Trademark

Protection of School Colors: Smack Apparel and Sinks

Decisions Trigger Color-Ful Legal Debate for the

Collegiate Licensing Industry, 18 J. Legal Aspects

Sport 207 (2008).

This case involves issues of first impression

regarding the extent to which traditional school colors

of colleges and universities are protected as

trademarks. The importance of these issues is

reflected by the fact that amicus briefs supporting the

plaintiff universities were filed in the Fifth Circuit by

four professional sports organizations? and twenty

eight universities’.

° Major League Baseball Properties, Inc., NBA Properties, Inc.,

NFL Properties LLC, and NHL Enterprises, L.P.

® Board of Trustees of the University of Alabama, Board of

Trustees of the University of Arkansas, acting for and on behalf

of the University of Arkansas, Fayetteville, Auburn University,

C. The Fifth Circuit has decided an important

federal question in a way that conflicts with

relevant decisions of this Court.

As noted above, this case raises an important issue

as to which the Fifth Circuit’s position (in Boston

Professional Hockey) is at odds with the position taken

by the Ninth Circuit (in Job’s Daughters), i.e., whether

infringement requires a real likelihood of confusion as

to product source or whether it is enough to show that

the public recognizes the trademark as emanating

from the complaining party. While this Court has yet

to squarely address this issue, relevant recent

decisions of this Court suggest that the Court would

adopt the position taken by the Ninth Circuit.

First, in Moseley v. V Secret Catalogue, 537 U.S.

418, 123 8.Ct. 1115, 155 L.Ed.2d 1, (2003), this Court

rejected the idea that mere mental association between

the plaintiffs trademark and the defendant’s product

Baylor University, Boise State University, University of

Connecticut, Duke University, Florida Board of Regents (for

Florida State University), The University of Florida Board of

Trustees, University of Georgia Athletic Association, Inc., Board

of Trustees of the University of Illinois, acting for and on behalf of

the University of Illinois, Urbana-Champaign, University of

Kentucky, Regents of the University of Michigan, Regents of the

University of Minnesota, University of Mississippi, Curators of

the University of Missouri on behalf of the University of Missouri-

Columbia, Board of Governors of the University of North Carolina,

University of North Texas, University of Notre Dame du Lac,

Oklahoma State University, The Pennsylvania State University,

Purdue University, University of South Carolina, The University

of Texas at Austin, Texas A&M University, Texas Tech

University, Tulane University, Board of Regents of the University

of Wisconsin System.

could suffice to prove dilution of that

trademark. Considering that mental association is not

enough to satisfy the dilution standard, it certainly

would not be enough to show likelihood of confusion.

Second, the Court’s decision in Dastar Corp. uv.

Twentieth Century Fox Film Corp., 539 U.S. 23, 123

S.Ct. 2041, 156 L.Ed.2d 18 (2003) directly refutes the

idea that infringement can occur without confusion as

to the source or sponsorship of the goods and discredits

the notion that any other form of mental association

counts in evaluating infringement. Dastar involved a

“reverse passing-off’ claim based on the sale of

videotapes containing a movie created by the plaintiff

but sold under the defendant’s name. The plaintiff

contended that the defendant deceived the public into

thinking that it, rather than plaintiff, had made the

movie, and that the sale of the movie under

defendant’s name constituted a false designation of

origin under the Lanham Act. This Court rejected that

theory, reasoning that “origin . . . of goods” under the

Lanham Act refers to the origin of the physical product

sold in the marketplace, rather than to any ideas or

communications included inside:

While most merchandising claims involve

allegations of confusion as to _ product

sponsorship, rather than origin, the Dastar

reasoning has no less force in the sponsorship

context. To succeed in a sponsorship claim after

Dastar, a trademark holder must establish that

defendant’s use of its mark will confuse

consumers into believing it sponsored the goods

sold by defendant. In merchandising cases, this

méans that the trademark holder must

establish that consumers are likely to believe

that it makes or stands behind the t-shirt, cap,

or other merchandise at issue in the case. The

Boston Hockey notion that infringement can

turn on confusion as to source of the mark--i.e.,

of “the ideas or communications” embodied in

the product--runs directly counter to this ruling.

Dogan, S.L., & Lemley, M.A.. The Merchandising

Right: Fragile Theory or Fait Accompli? 54 Emory Law

Journal 461, 500 (2005).

Third, as noted above, the Fifth Circuit’s opinion in

this case reaffirms the Fifth Circuit’s rejection of the

aesthetic functionality doctrine, and is at odds with

this Court’s decision in TrafFix, in which this Court

recognized the doctrine of aesthetic functionality,

stating that “[i]t is proper to inquire into a ‘significant

non-reputation-related disadvantage’ in cases of

esthetic functionality, the question involved in

Qualitex [Co. v. Jacobson Prods. Co., 514 U.S. 159,

165, 115 S.Ct. 1300, 131 L.Ed.2d 248 (1995)).” Id. at

1262. The Fifth Circuit has previously rejected

aesthetic functionality,’ and the panel opinion in this

case reaffirmed that position:

Smack relies on this pronouncement in TrafFix

for the proposition that the Supreme Court has

recognized the aesthetic functionality doctrine.

We note that the TrafFix Court’s

characterization of the issue in Qualitex has

’ Sicilia Di R. Biebow & Co. v. Cox, 732 F.2d 417, 428-29 (5th Cir.

1984); Sno-Wizard Mfg., Inc. v. Eisemann Prods. Co., 791 F.2d

423, 426, n.3 (5th Cir. 1986); Pebble Beach Co. v. Tour 18 I Ltd..,

155 F.3d 526, 540, n.6 (5th Cir. 1998).

been harshly criticized by commentators.

Nevertheless, neither Qualitex nor TrafFix

addressed aesthetic functionality as the

dispositive issue, let alone the purported

aesthetic functionality of a color-scheme that

acts to identify and create a desired association

with the particular source. We do not believe

that the Court’s dictum in TrafFix requires us

to abandon our long-settled view rejecting

recognition of aesthetic functionality.

550 F.3d at 487-88. The Fifth Circuit’s rejection of

aesthetic functionality effectively creates a monopoly

for the universities in the manufacture of game day

apparel, and prevents all but licensed vendors from

competing in this market.® If the universities are

permitted to obtain trademark protection for their

school colors in combination with indicia referring to

the universities, regardless of whether consumer

confusion can be shown, all competition in the game

day apparel industry will be eliminated — the “ultimate

non-reputation related disadvantage.”

® Contrary to the Fifth Circuit’s suggestion that the product

market involved in this case is t-shirts, the product market is

game day apparel designed for sports fans. See 3 Louis Altman,

Callmann on Unfair Competition, Trademarks and Monopolies

§ 19:7, at 79 (4th ed. 2003) (stating that “functionality ... is not to

be determined within the broad compass of different but

interchangeable products; the doctrine of functionality is intended

to preserve competition within the narrow bounds of each

individual product market”).

° «Likewise, the color, shape, and size of dippin’ dots are ‘aesthetic

functions’ that easily satisfy the competitive necessity test

because precluding competitors like FBD from copying any of

these aspects of dippin’ dots would eliminate all competitors in the

CONCLUSION

For the better part of the twentieth century,

colleges and universities permitted (and even

encouraged) businesses to use college colors and

references to the universities as a means of promoting

consumer patronage. Universities derived a benefit

from third party use of college colors because it served

to promote loyalty to the alma mater.

Collegiate merchandising has seen tremendous

growth over the last few decades. In an attempt to

protect a valuable source of revenue in a time when

public revenue is being cut back, and the value of

endowments has dropped, universities have become

aggressive in their attempts to eliminate any

competition in the market for game day apparel and

similar products. As this case illustrates, the legal

principles which have developed over the years in

regard to purely commercial enterprises don’t provide

a satisfying rule of decision in cases such as this. The

colors which identify colleges and universities do not

function in the same manner as a commercial

trademark. Students, alumni, and fans of all types

have historically displayed school colors as a way of

identifying themselves as supporters of the university,

and to distinguish themselves from the tribe which

invades their campus on Saturday afternoon. These

fans use clothing in an expressive manner, and not as

a trademark.

flash-frozen ice cream market, which would be the ultimate non-

reputation-related disadvantage.” Dippin’ Dots, Inc. v. Frosty Bites

Distrib., LLC, 369 F.3d 1197, 1204, n.7 (11th Cir. 2004).

The law which governs the use of school colors as a

trademark has never been addressed by this Court,

but is very likely to recur in future litigation.

Decisions in cases such as this one will also impact the

development of the law governing the use of colors as

a trademark in other commercial contexts. It is

therefore important that this Court address and

resolve the issues presented in this case to clarify how

trademark law applies to “affiliation products” such as

the t-shirts involved in this case.

Smack respectfully request that the Court grant a

writ of certiorari to review the decision of the Fifth

Circuit, and that the judgment against Smack be

reversed or remanded for further proceedings

consistent with this Court’s decision.

Respectfully submitted,

JAMES W. TILLY

Counsel of Record

The Tilly Law Firm

1639 S. Carson Avenue

Tulsa, OK 74119

Telephone: 918-583-8868

Facsimile: 918-584-3162

Attorney for Petitioners

APPENDIX

APPENDIX A

IN THE

UNITED STATES COURT OF APPEALS

FOR THE FIFTH CIRCUIT

No. 07-30580

[Filed November 25, 2008]

REVISED DECEMBER 15, 2008

BOARD OF SUPERVISORS FOR LOUISIANA )

STATE UNIVERSITY AGRICULTURAL AND )

MECHANICAL COLLEGE; BOARD OF )

REGENTS OF THE UNIVERSITY OF

OKLAHOMA; OHIO STATE UNIVERSITY;

UNIVERSITY OF SOUTHERN CALIFORNIA

Plaintiffs-Appellees

SMACK APPAREL CO; WAYNE CURTISS

Defendants-Appellants

)

Cons. w/ No. 07-30887

BOARD OF SUPERVISORS FOR LOUISIANA

STATE UNIVERSITY AGRICULTURAL AND

MECHANICAL COLLEGE; BOARD OF

REGENTS OF THE UNIVERSITY OF

OKLAHOMA; OHIO STATE UNIVERSITY;

UNIVERSITY OF SOUTHERN CALIFORNIA;

COLLEGIATE LICENSING COMPANY

Plaintiffs-Appellants

SMACK APPAREL CO; WAYNE CURTISS

)

Vv. )

)

Defendants-Appellees )

)

Appeal from the United States District Court

for the Eastern District of Louisiana

Before REAVLEY, STEWART, and OWEN, Circuit

Judges.

REAVLEY, Circuit Judge:

These consolidated appeals concern a trademark

dispute between four universities and an apparel

company and its principal. The Universities alleged in

the district court that the defendants violated the

Lanham Act and infringed their trademarks by selling

t-shirts with the schools’ color schemes and other

identifying indicia referencing the games of the

schools’ football teams. The district court granted

summary judgment to the Universities for trademark

infringement and conducted a jury trial as to damages,

with the jury returning a verdict favoring the

plaintiffs. The defendants appeal the summary

judgment order, and the Universities appeal the

district court’s denial of their post-verdict motion for

attorneys’ fees. We conclude that the colors, content,

and context of the offending t-shirts are likely to cause

confusion as to their source, sponsorship, or affiliation,

and we AFFIRM.

I. Background

The plaintiffs are Louisiana State University

(LSU), the University of Oklahoma (OU), Ohio State

University (OSU), the University of Southern

California (USC), and Collegiate Licensing Company

(CLC), which is the official licensing agent for the

schools.’ The defendants are Smack Apparel Company

and its principal, Wayne Curtiss (collectively Smack).

Each university has adopted a particular two-color

scheme as its school colors (purple and gold for LSU,

crimson and creme for OU, scarlet and gray for OSU,

and cardinal and gold for USC). The Universities have

used their respective color combinations for over one

hundred years, and the color schemes are immediately

recognizable to those who are familiar with the

Universities. The schools use these color schemes in

many areas associated with university life, including

on campus signs and buildings, on printed brochures,

journals, and magazines, and on materials sent to

potential donors. The Universities also use the color

schemes extensively in connection with their athletic

programs, particularly on team uniforms, resulting in

wide-spread recognition of the colors among college

sports fans. Each university operates a successful

collegiate football program, and the respective football

‘The Pasadena Tournament of Roses was also a plaintiff in the

district court, but it was dismissed upon joint motion of the

parties and is not part of the instant appeal.

teams have appeared on numerous occasions in

nationally televised football games that have been

viewed by millions of people.

The schools also grant licenses for retail sales of

products, including t-shirts, that bear the university

colors and trademarks. In recent years, the total

annual sales volume of products bearing the school

colors along with other identifying marks has exceeded

$93 million for all the Universities combined. The

Universities hold registered trademarks in their

respective names and commonly used initials. They do

not, however, possess registered trademarks in their

color schemes.

Smack Apparel Company is located in Tampa,

Florida. Since 1998 Smack has manufactured t-shirts

targeted toward fans of college sports teams, and it

uses schoo] colors and printed messages associated

with the Universities on its shirts. Smack sells some of

the shirts over the Internet, but most are sold

wholesale to retailers and t-shirt vendors. The shirts

frequently appear alongside those that have been

officially licensed by the Universities. The instant case

involves six of Smack’s t-shirt designs that concern the

appearance of the OU and LSU football teams in the

2004 Sugar Bowl in New Orleans, Louisiana, and the

number of national championships previously won by

OSU and USC. The district court described these

Smack shirt designs as follows:

e OU (2 shirt designs): (1) “Bourbon Street or

Bust” (with the “ou” in “Bourbon” in a different

typestyle) (front), “Show us your beads!” (with

the “ou” in “your” in a different typestyle) and

“Sweet as Sugar!” (back) (2) “Beat Socal” (front),

“And Let’s Make it Eight!” (back). These shirts

refer to 2004 Sugar Bowl contest in New

Orleans between the OU and LSU football

teams. A victory in the Sugar Bow] could have

given OU aclaim to an eighth national football

championship. One of OU’s principal rivals to

this claim was USC.

¢ LSU (2 shirt designs): (1) “Beat Oklahoma”

(front), “And Bring it Back to the Bayou!” and

“2003 College Football National Championship”

(back) (2) “2003 College Football National

Champions’ (front), colored circular depiction of

game scores, with “2003 College Football

National Champions” and “Swect as Sugar”

(back). These shirts refer to the 2004 Sugar

Bowl contest in New Orleans between OU and

LSU, which was played to determine the Bowl

Championship Series’ national football

champion.

¢ OSU: “Got Seven?” (front), “We do! 7 Time

National Champs,” with depiction of the state of

Ohio and a marker noting “Columbus Ohio”

(back). This shirt refers to the seven college

football national titles claimed by OSU.

¢ USC: “Got eight?” (front), “We Do! Home of

the 8 Time National Champions!” and depiction

of the state of California with a star marked

“SoCal” (back). This design refers to USC’s

claim to eight college national football

championships.

Bd. of Supervisors of LA State Univ. v. Smack Apparel

Co.” In addition to the messages described above, each

shirt included Smack’s own logo in a_ space

approximately 2.5 inches wide and the words “Talkin’

the Talk.”

The Universities sued Smack, alleging that the

above six shirt designs infringed their trademark

rights. The Universities alleged causes of action for

federal trademark infringement and dilution, unfair

competition, and deceptive trade practices under the

Lanham Act, 15 U.S.C. §§ 1051—1141n; unfair trade

practices under the Louisiana Unfair Trade Practices

and Consumer Protection Act (LUTPA), LA. REV.

STAT. §51:1409; common law trademark infringement

and unfair competition; and state trademark dilution.

The plaintiffs alleged that each schools’ color

combination acts as a _ source-identifier for the

respective schools, especially when used in connection

with other indicia identifying or suggesting the

schools. They alleged that Smack’s shirts infringed

their unregistered trademarks by “combining

Plaintiffs’ Marks with references to, inter alia, . . . (a)

well-known and highly-publicized athletic events in

which a University participated; (b) a University’s

opponent in the referenced athletic event; (c) the

geographic area in which the referenced event takes

place; (d) titles and honors bestowed as a result of the

referenced athletic event; (e) a University’s earlier

athletic successes and accomplishments; and (f) the

geographic area in which the University is located or

associated.”

? 438 F. Supp. 2d 653, 655 (B.D. La. 2006).

The Universities claimed that Smack’s products are

similar to and competed with goods sold or licensed by

the Universities and are sold directly alongside

merchandise authorized by the plaintiffs at or near

events referenced in the shirts. In this way, according

to the Universities, the sale of Smack’s products is

likely to deceive, confuse, and mislead consumers into

believing that Smack’s products are _ produced,

authorized, or associated with the _ plaintiff

Universities. The Universities sought injunctive relief,

lost profits, damages, costs, and attorneys’ feces.

The parties filed cross-motions for summary

judgment on the issue of liability for trademark

infringement. The district court granted summary

judgment for the Universities, holding that the

Universities’ trademarks in their color schemes, logos,

and designs on shirts referring to the schools or their

accomplishments had acquired secondary meaning.®

The district court concluded that the marks were

strong, having been used for decades as a reference to

the Universities, and that Smack’s infringing shirts

were likely to cause confusion as to the source,

affiliation, or sponsorship of the shirts.* The district

court found that the marks at issue were virtually

identical. The court reasoned that Smack used the

same color schemes and similar logos and designs as

the plaintiffs; that Smack marketed and sold its shirts

in a manner similar to the Universities’ products and

sometimes alongside those of the Universities; and

that Smack used the color schemes, logos, and designs

* Id. at 657-58.

* Id. at 658-61.

with the specific intent to rely upon their drawing

power in enticing fans of the Universities to purchase

its shirts.” The court noted that Smack admitted using

the school colors and other indicia with the intent of

identifying the Universities as the subject of the

message in the shirt designs.® The court also noted

that a likelihood of confusion existed because the

shirts, which are relatively inexpensive, are not

purchased with a high degree of care by consumers.’

The district court rejected Smack’s defenses of

functionality, nominative fair use, and laches.®

After deciding the liability issue, the district court

conducted a jury trial on the issue of damages. Smack

moved for judgment as a matter of law, arguing that

there could be no actual damages because there had

been no actual confusion. The district court denied the

motion. The jury then returned a verdict in favor of the

plaintiffs and answered special interrogatories finding

that Smack’s “infringement caused actual confusion of

the public or caused the public to be deceived.” The

jury awarded the Universities actual damages of

$10,506.80 and lost profits of $35,686. The district

court also enjoined Smack from manufacturing,

distributing, selling, or offering for sale any of the six

t-shirt designs found to be infringing or any other

similar designs.

> Id.

7 Id.

° Id. at 661-63.

II. Discussion

We review a district court’s grant of summary

judgment de novo. Noble Energy, Inc. v. Bituminous

Cas. Co. Summary judgment is appropriate “if the

pleadings, the discovery and disclosure materials on

file, and any affidavits show that there is no genuine

issue as to any material fact and that the movant is

entitled to judgment as a matter of law.”’° “No genuine

issue of material fact exists if the summary-judgment

evidence is such that no reasonable juror could find in

favor of the nonmovant.” Jenkins v. Methodist Hosps.

of Dallas, Inc." Although the secondary meaning of a

mark and the likelihood of confusion are ordinarily

questions of fact, Elvis Presley Enterprises, Inc. v.

Capece,’” summary judgment may be upheld if the

summary judgment record compels the conclusion that

the movant is entitled to judgment as a matter of law.

Beef/ Eater Rests., Inc. v. James Burrough Ltd.*

To prevail on their trademark infringement claim,

the plaintiffs must show two things. First, they must

establish ownership in a legally protectible mark, and

second, they must show infringement by

demonstrating a likelihood of confusion. Am. Rice, Inc.

° 529 F.3d 642, 645 (5th Cir. 2008).

' Feb. R. Civ. P. 56(C).

' 478 F.3d 255, 260 (5th Cir.), cert. denied, 128 S. Ct. 181 (2007).

'? 141 F.3d 188, 196 (5th Cir. 1998).

'S 398 F.2d 637, 639 (5th Cir. 1968).

10a

vu. Producers Rice Mill, Inc.‘ Smack argues first that

the district court erroneously found no genuine issue

of fact whether there are legally protectible marks at

issue in this case.

A. Protectible trademark

and secondary meaning

The Lanham Act provides that a trademark may be

“any word, name, symbol, or device, or any

combination thereof” that is used or intended to be

used “to identify and distinguish” a person’s goods

“from those manufactured or sold by others and to

indicate the source of the goods, even if that source is

unknown.””’ A mark need not be registered in order to

obtain protection because “{o]wnership of trademarks

is established by use, not by registration.” Union Nat'l

Bank of Tex., Laredo v. Union Nati Bank of Tex.,

Austin.”© The marks at issue in this case are

unregistered, and, as noted by the district court, were

described by the Universities as “color schemes in the

context of merchandise that makes reference to the

Plaintiff Universities or their accomplishments and is

* 518 F.3d 321, 329 (5th Cir. 2008); see also Elvis Presley Enters. ,

141 F.3d at 194 (noting “the threshold requirement that the

plaintiff must possess a protectible mark, which must be satisfied

before infringement can be actionable”).

15 U.S.C. § 1127.

'6 909 F.2d 839, 842 (5th Cir. 1990).

lla

directed to their fans and other interested

consumers.”!”

The protectibility of unregistered marks is

governed generally by the same principles that qualify

a mark for registration under the Lanham Act. Two

Pesos, Inc. v. Taco Cabana, Inc.® The key is whether

the mark is “capable of distinguishing the applicant’s

goods from those of others.”’? Marks are generally

classified as (1) generic, (2) descriptive, (3) suggestive,

(4) arbitrary, or (5) fanciful.”® The parties here do not

articulate a classification for the marks at issue, but

the briefs show that they, and indeed the district

court, have treated the marks as descriptive. This type

of mark is not inherently distinctive because it does

not inherently identify a particular source of the

product; instead, it requires secondary meaning to be

protected under the Lanham Act.”

The parties correctly agree that a color scheme can

be protected as a trademark when it has acquired

secondary meaning and is non-functional. Qualitex Co.

v. Jacobson Prods. Co.”* Although the parties discuss

color at length in their briefs, the Universities do not

7 See Bd. of Supervisors, 438 F. Supp. 2d at 657 (quotation marks

and citation omitted).

8505 U.S. 763, 768, 112 S.Ct. 2753, 2757 (1992).

"1 Id. at 769, 112 S. Ct. at 2757.

72514 U.S. 159, 163-64, 115 S. Ct. 1300, 1303-04 (1995).

12a

claim that every instance in which their team colors

appear violates their respective trademarks. Instead,

the claimed trademark is in the colors on merchandise

that combines other identifying indicia referring to the

Universities. It is appropriate therefore to consider not

only the color but also the entire context in which the

color and other indicia are presented on the t-shirts at

issue here.

Smack contends that the claimed marks are too

broad to encompass a trademark because the concept

of color along with other identifying indicia is not

distinctive. We disagree. As noted, the statute

contemplates that a trademark may include any word,

name, or symbol “or any combination thereof.”™ The

Supreme Court has recognized that the Lanham Act

describes the universe of permissible marks “in the

broadest of terms.” Because the Court recognizes that

trademarks may include color, we see no reason to

exclude color plus other identifying indicia from the

realm of protectible marks provided the remaining

requirements for protection are met. Thus, the first

step here is to ask whether the Universities’ claimed

marks have acquired secondary meaning.

Secondary meaning “occurs when, ‘in the minds of

the public, the primary significance of a (mark] is to

identify the source of the product rather than the

product itself.” Wal-Mart Stores, Inc. v. Samara Bros.,

*° 15 U.S.C. § 1127 (emphasis added).

* Qualitex, 514 U.S. at 162, 115 S. Ct. at 1302.

l3a

Inc.” The inquiry is one of the public’s mental

association between the mark and the alleged mark

holder. Sno-Wizard Mfg., Inc. v. Eisemann Prods. Co.”°

A mark has acquired secondary meaning when it “has

come through use to be uniquely associated with a

specific source.” Pebble Beach Co. v. Tour 18 I Ltd.*'

We have applied a multi-factor test for determining

secondary meaning. The factors include: “(1) length

and manner of use of the mark or trade dress, (2)

volume of sales, (3) amount and manner of advertising,

(4) nature of use of the mark or trade dress in

newspapers and magazines, (5) consumer-survey

evidence, (6) direct consumer testimony, and (7) the

defendant’s intent in copying the trade dress.” These

factors in combination may show that consumers

consider a mark to be an indicator of source even if

each factor alone would not prove’ secondary

meaning.”

* 529 U.S. 205, 211, 120 S. Ct. 1339, 1343 (2000) (citation

omitted).

*° 791 F.2d 423, 427 (5th Cir. 1986) (“[T]he prime element of

secondary meaning is ‘a mental association in buyers’ minds

between the alleged mark and a single source of the product.”

(citation omitted)).

27155 F.3d 526, 536 (5th Cir. 1998) (internal quotation marks

omitted), abrogation on other grounds recognized by Eppendorf-

Netheler-Hinz GMBH v. Ritter GMBH, 289 F.3d 351, 356 (5th Cir.

2002).

*® Pebble Beach, 155 F.3d at 541.

” Id.

14a

There is no dispute in this case that for a

significant period of time the Universities have been

using their color schemes along with other indicia to

identify and distinguish themselves from others.

Smack admits in its brief that the Universities’ colors

are well known among fans “as a shorthand nonverbal

visual means of identifying the universities.” But

according to Smack, the longstanding use of the school

colors to adorn licensed products is not the same as

public recognition that the school colors identify the

Universities as a unique source of goods. We think,

however, that the factors for determining secondary

meaning and an examination of the context in which

the school colors are used and presented in this case

support the conclusion that the secondary meaning of

the marks is inescapable.

The record shows that the Universities have been

using their color combinations since the late 1800s.*°

The color schemes appear on all manner of materials,

including brochures, media guides, and alumni

materials associated with the Universities.

Significantly, each university features the color

schemes on merchandise, especially apparel connected

with school sports teams, and such prominent display

supports a finding of secondary meaning.”’ The record

also shows that sales of licensed products combining

the color schemes with other references to the

Universities annually exceed the tens of millions of

%° OSU adopted its school colors in 1878, while LSUhas been using

its colors since 1893, and OU and USC since 1895.

*! See Pebble Beach, 155 F.3d at 541-52 (prominent display of golf

hole’s trade dress in advertising supported finding of secondary

meaning as a designator of source).

l5a

dollars.” As for advertising, the district court held that

the Universities “advertise items with their school

colors in almost every conceivable manner... .”** It is

not clear from the summary judgment evidence where

and how the Universities advertise their merchandise,

but they certainly do use their color schemes and

indicia in numerous promotional materials aimed at

students, faculty, alumni, and the public in general,

which strengthens the conclusion that the color

schemes and indicia viewed in context of wearing

apparel also serves as an indicator of the Universities

as the source or sponsor of the apparel. Furthermore,

the district court correctly observed that the school

color schemes have been referenced multiple times in

newspapers and magazines and that the schools also

frequently refer to themselves using the colors.** The

district court did not specifically refer to any

consumer-survey evidence or direct consumer

testimony, but it noted that Smack admitted it had

incorporated the Universities’ color schemes into its

shirts to refer to the Universities and call them to the

mind of the consumer. Thus, Smack itself believed that

the Universities’ color schemes had secondary meaning

that could influence consumers, which further

supports the conclusion that there is secondary

* For example, LSU sells between $10 and $20 million worth of

goods each year, while the annual sales volume for the other

schools is approximately $13 million for USC, $20 million for OU,

and $50 million for OSU.

33 Bd. of Supervisors, 438 F. Supp. 2d at 658.

* For example, LSU and third parties have referred to that

university as the “Purple and Gold.”

16a

meaning here.* Given the longstanding use of the

color scheme marks and their prominent display on

merchandise, in addition to the well-known nature of

the colors as shorthand for the schools themselves and

Smack’s intentional use of the cclors and other

references, there is no genuine issue of fact that when

viewed in the context of t-shirts or other apparel, the

marks at issue here have acquired the secondary

meaning of identifying the Universities in the minds of

consumers as the source or sponsor of the products

rather than identifying the products themselves.

We think this conclusion is consistent with the

importance generally placed on sports team logos and

colors by the public. We have previously noted,

although not in the context of secondary meaning, that

team emblems and symbols are sold because they

serve to identify particular teams, organizations, or

entities with which people wish to identify. See Boston

Profl Hockey Ass’n v. Dallas Cap & Emblem Mfg.,

35 See also Thomas & Betts Corp. v. Panduit Corp., 65 F.3d 654,

663 (7th Cir. 1995). We also note that the record does contain

survey evidence compiled by the Universities indicating that

approximately thirty percent of consumers interviewed believed

two of Smack’s t-shirts were produced or sponsored by the

Universities. We have indicated that survey evidence often may

be the most direct and persuasive evidence of secondary meaning.

Sugar Busters LLC v. Brennan, 177 F.3d 258, 269 (Sth Cir. 1999).

Nevertheless, Smack moved in limine to exclude the Universities’

survey evidence, and the district court found it unnecessary to

rule on the motion because of the other evidence in the record.

Because no party has raised the issue, we express no opinion on

the correctness of the district court’s belief and merely note the

presence of the survey evidence in the record.

l7va

Inc.© We think this desire by consumers to associate

with a particular university supports the conclusion

that team colors and logos are, in the minds of the fans

and other consumers, source indicators of team-related

apparel. By associating the color and other indicia with

the university, the fans perceive the university as the

source or sponsor of the goods because they want to

associate with that source.

Smack argues that because photographs of

businesses near the campuses of the Universities show

use of school colors by those businesses, consumers in

college towns merely associate school colors with

“support of the home team.” Smack cites no authority

or supporting evidence for its contention, however.

Moreover, the fact that other businesses in college

towns may use the same colors as a local university

does not create an issue of fact as to the secondary

meaning of the colors used in merchandise that the

Universities indisputably produce, especially given

Smack’s admission of intentional use of the colors to

influence consumers.

Smack also argues that because the Universities

grant licenses to many licensees, a consumer may not

identify a university as the single source of the

product. The fact that the Universities may grant

licenses to many licensees to sell authorized products

does not negate the fact that the schools are still the

%° 510 F.2d 1004, 1011 (5th Cir. 1975).

18a

sources of the marks.*’ We conclude that the record

establishes secondary meaning in the marks here.

B. Likelihood of confusion

Once a plaintiff shows ownership in a protectible

trademark, he must next show that the defendant’s

use of the mark “creates a likelihood of confusion in

the minds of potential customers as to the ‘source,

affiliation, or sponsorship” of the product at issue.

Westchester Media v. PRL USA Holdings, Inc.®

“Likelihood of confusion is synonymous with a

probability of confusion, which is more than a mere

possibility of confusion.”*? When assessing the

likelihood of confusion, we consider a nonexhaustive

list of so-called “digits of confusion,” including: “(1) the

type of mark allegedly infringed, (2) the similarity

between the two marks, (3) the similarity of the

products or services, (4) the identity of the retail

outlets and purchasers, (5) the identity of the

advertising media used, (6) the defendant’s intent, and

(7) any evidence of actual confusion.”*° Courts also

consider (8) the degree of care exercised by potential

*’ Cf Taco Cabana Int'l, Inc. v. Two Pesos, Inc., 932 F.2d 1113,

1121 (5th Cir. 1991)“An owner may license its trademark or trade

dress and retain proprietary rights if the owner maintains

adequate control over the quality of goods and services that the

licensee sells with the mark or dress.”).

% 914 F.3d 658, 663 (5th Cir. 2000) (citation omitted).

%° Id. at 663-64.

9 Id. at 664.

19a

purchasers.*’ No single factor is dispositive, and a

finding of a likelihood of confusion need not be

supported by a majority of the factors.“

Smack argues that there were genuine issues of

material fact whether its t-shirt designs were likely to

cause confusion among consumers. We disagree. The

first digit, the type of mark, refers to the strength of

the mark.*® Generally, the stronger the mark, the

greater the likelihood that consumers will be confused

by competing uses of the mark.** We agree with the

district court that the plaintiffs’ marks, which have

been used for over one hundred years, are strong.” As

noted above, Smack concedes that the Universities’

color schemes are well-known and are used to identify

the plaintiff Universities. It argues, however, that the

district court disregarded evidence of third-party use

of the Universities’ team colors in a non-trademark

manner, and it cites Sun Banks of Florida, Inc. v. Sun

Federal Savings and Loan Association“ in support of

its argument.

In Sun Banks, we held that “extensive” third-party

use can weaken a mark and negate a likelihood of

*' Am. Rice, 518 F.3d at 329.

8 Elvis Presley Enters., 141 F.3d at 201.

*° See Bd. of Supervisors, 438 F. Supp. 2d at 659.

“651 F.2d 311 (5th Cir. 1981)

20a

confusion.” In that case there were “over 4400

businesses” in Florida that were using the word “Sun”

in their names, and we noted that “a significant

number” fell within the same category of financial

institutions as the plaintiff.”

Smack presented photographs of three businesses

in Louisiana, eight businesses in Ohio, and

approximately 20 businesses in Oklahoma that

incorporated in their signage color schemes similar to

the school colors of LSU, OSU, and OU, respectively.

The businesses included several restaurants and bars,

a driving school, a pain management clinic, a theater,

a furniture store, a dry cleaners, a motel, a donut shop,

an apartment complex, and a car care company. All

third-party use of a mark, not just use in the same

industry as a plaintiff, may be relevant to whether a

plaintiffs mark is strong or weak.*® But the key is

whether the third-party use diminishes in the public’s

mind the association of the mark with the

plaintiff—surely lacking where colors are shown on a

store wall. See Univ. of Ga. Athletic Ass’n v. Laite.*°

Smack’s evidence falls far below that of extensive use,

and the specific photographs of third-party use here

7 Sun Banks, 651 F.2d at 316.

* Id.

*? Union Nat'l Bank of Tex., 909 F.2d at 848 n.24; see also 2 J.

THOMAS MCCARTHY, MCCARTHY ON TRADEMARKS AND UNFAIR

COMPETITION § 11:88 (4th ed.) (“[E]vidence of extensive third

party use on a wide range of goods and services does tend to

weaken strength and narrow the scope of protection.”).

2la

fail to create an issue of fact concerning the public’s

association between the plaintiffs and color schemes

and other indicia that clearly reference the

Universities. We conclude that the Universities

possess strong marks in their use of color schemes and

other identifying indicia on college sports-themed

merchandise.

The second digit is the similarity of the marks. This

factor requires consideration of the marks’ appearance,

sound, and meaning.” The district court held that the

marks at issue are virtually identical.* Smack argues

that there was no evidence that any of its shirts were

identical to any shirts licensed by the Universities and

that its t-shirt designs are not at all similiar to any of

the Universities’ licensed products. Smack’s contention

is belied by the record, and even a cursory comparison

of Smack’s designs with the plaintiffs’ licensed

products reveals striking similarity.”

For example, one of Smack’s shirt designs in purple

and gold is referred to as the “sundial” shirt and was

targeted toward LSU fans. The front of the shirt

proclaims “2003 National Champions,” and the back

contains the scores from twelve games won by LSU.

The scores are arranged in a circle with a short phrase

poking fun at each opponent. The shirt also contains

the final score of the 2004 Sugar Bowl, which LSU

*! Elvis Presley Enters., 141 F.3d at 201.

*” Bd. of Supervisors, 438 F. Supp. 2d at 659-60.

°° See Beef/Eater Rests., 398 F.2d at 639 (“[T)he trial judge, by

inspection of the trademarks, may himself determine, and must

determine, the likclihood of confusion.”).

22a

won, and the phrase “Sweet as Sugar!” Although the

shirt does not use the initials “LSU” anywhere, its

identification of LSU as the national champion is

unmistakable from the colors and from the references

to the games in which LSU played. This shirt is

strikingly similar to LSU’s own merchandise that also

uses the purple and gold colors and proclaims LSU as

the national champion. Several of the official designs

contain the scores of the games from LSU’s season and

at least two designs present those scores in a circular

arrangement. The official designs also contain the

phrases “Ain’t It Sweet!” and “Pour It On!”

Another Smack shirt directed at LSU fans is the

“Beat Oklahoma” shirt. It states, “Bring it Back to the

Bayou.” This is very similar to two official] designs that

state in part “Bring It Home” and “We'll Have Big Fun

on the Bayou.”

The evidence of similarity is not limited to the

shirts targeted toward LSU fans. For example, the

“Bourbon Street or Bust!” shirt directed at OU fans

highlights the letters “OU” in a different type face in

the words “Bayou” and “your.” It also states “Sweet as

Sugar,” references beads, and contains a picture of a

mardi gras mask. OU presented evidence of official t-

shirt designs that also highlight the letters “OU,”

contain phrases such as “Ain’t Nothin’ Sweeter” and

“100% Pure Sugar,” and contain depictions of mardi

gras masks and beads. Another Smack OU design

encourages, “Let’s Make it Eight,” while official

designs proclaim “Sugar is Sweet But. . . 8 is Great!”

In the district court, Smack presented the affidavit

of its principal, Wayne Curtiss, who explained that

Smack uses humor and creative language to

23a

distinguish its t-shirt designs from those of the

purportedly more conservative licensed or school-

endorsed apparel. Curtiss asserted that the “got

seven?” and “got eight?” shirts’ directed

towardOSUandUSCfans, respectively, are parodies of

the “got milk” campaign. He further averred that he

has used a similar design on shirts for LSU and OU

fans. It is clear from the record, however, that use of

creative language is not unique to Smack and does not

make Smack’s shirts dissimilar to the Universities’

own products. For example, LSU presented evidence of

a school-endorsed design that included the phrase “got

sugar?” We conclude that Smack’s shirts and the

Universities’ products are similar in look, sound, and

meaning, and contain very similar color schemes,

words, and images. The similarities in design elements

are overwhelming and weigh heavily in favor of a

likelihood of confusion. The district court correctly held

there is no genuine issue of material fact with respect

to this digit of confusion.™

The third digit in the likelihood of confusion

analysis is the similarity of the products or services.

We disagree with Smack’s assertion that the district

** Because we conclude that there is no issue of fact as to the

similarity of the use of the marks in the t-shirt designs, we need

not consider Smack’s contention that the district court

erroneously stated there had been instances where consumers

actually believed Smack’s shirts were affiliated with or sponsored

by the Universities. Smack points to a stipulation by the parties

at the summary judgment stage that there was no evidence any

consumer purchased a Smack shirt believing it to be licensed by

one of the Universities. Actual confusion on the part of aconsumer

is not required to find a likelihood of confusion, however. Elvis

Presley Enters., 141 F.3d at 203.

24a

court did not find a great deal of similarity between

the plaintiffs’ products and the t-shirts at issue, as the

district court specifically held that “{ilt is undisputed

that both Smack and the universities market shirts

bearing the same color schemes, logos, and designs.””

The district court went on to reject Smack’s argument

that its t-shirts differed from the Universities’

products because of the use of irreverent phrases or

slang language, reasoning that Smack’s use of such

phrases and language was a misuse of the

Universities’ good will in its marks. Smack denies that

it appropriated the Universities’ good will, but it does

not make an argument here that its shirts are

distinguishable from those of the Universities because

of particular language on its shirts. We therefore find

this factor weighs in favor of a likelihood of confusion.

Smack concedes that the fourth factor of the

analysis—identity of retail outlets and

purchasers—weighs in favor of a likelihood of confusion

because the Universities’ licensed products are often

sold wholesale to the same retailers who purchase

Smack’s products.

The fifth digit is the identity of advertising media.

The district court found that Smack used the

Universities’ color schemes, logos, and designs in

advertising its shirts at the same or similar venues as

those used by the Universities.” The court based its

finding on Smack’s admission that it participated in

the same trade shows as the Universities and that it

» Bd. of Supervisors, 438 F. Supp. 2d at 660.

7" 2

25a

displayed its shirts at the trade shows. The

Universities do not point us to evidence that trade

shows are a significant advertising channel for the

kinds of products at issue in this case. Although the t-

shirts are sold to the public at the same retail outlets

as officially licensed merchandise, Curtiss testified

that beside limited sales on Smack’s web site, Smack

does not sell directly to the public and does not

advertise. Curtiss testified that Smack sells mainly to

wholesalers. Some of these wholesalers may include

Smack’s shirts in advertisements that promote their

own business, but Curtiss was unable to provide much

information about these ads. We conclude that this

digit, based on trade show advertising, is minimally

probative.

The sixth digit of confusion further supports a

likelihood of confusion. Although not necessary to a

finding of likelihood of confusion, a defendant’s intent

to confuse may alone be sufficient to justify an

inference that there is a likelihood of confusion.’ As

noted by the district court, Smack admitted that it

“used school colors and ‘other indicia’ with the intent

of identifying the university plaintiffs as the subject of

the message expressed in the shirt design.’”””* Curtiss

testified that it was “no coincidence” that Smack’s

shirts incorporated the color schemes of the plaintiff

Universities and that he designed the shirts to make

people think of the particular school that each shirt

targeted. Smack asserts that its intent to copy is not

the same as an intent to confuse. The circumstances of

*” Elvis Presley Enters., 141 F.3d at 203.

Bd. of Supervisors, 438 F. Supp. 2d at 661 (citation omitted).

26a

this case show, however, that Smack intended to

capitalize on the potential for confusion. Smack knew

that its shirts were sold in the same venues as and

sometimes alongside officially licensed merchandise,

and it intentionally incorporated color marks to create

the kind of association with the Universities that

would influence purchasers.

The Eleventh Circuit found a likelihood of

confusion based on a similar intent by the defendant to

capitalize on the popularity of a college sports team.

Univ. of Ga. Athletic Ass’n v. Laite.*® In Laite, the

defendant used school colers and a mark strikingly

similar to the University of Georgia’s bulldog mascot

on cans to sell “Battlin’ Bulldog Beer.” After

concluding that the defendant’s bullauog mark was

similar to the university’s mark, the court turned to

the defendant’s intent, concluding “there can be no

doubt that Laite hoped to sell ‘Battlin’ Bulldog Beer’

not because the beer tastes great, but because the cans

would catch the attention of University of Georgia

football fans.”*' Significantly, the court found “the

defendant’s intent and the similarity of design between

the two marks sufficient to support the district court’s

finding of a ‘likelihood of confusion . .. .”°* The same is

.true here. Smack did not hope to sell its t-shirts

because of some competitive difference in quality or

design compared with the Universities’ licensed

°° 756 F.2d 1535 (11th Cir. 1985).

©) Td. at 1545 (footnote omitted).

°? Id. at 1545.

27a

products, but rather it intended to take advantage of

the popularity of the Universities’ football programs

and the appearance of the school teams in the college

bowl games. We have previously said that when a

“mark was adopted with the intent of deriving benefit

from the reputation of [the mark holder] that fact

alone ‘may be sufficient to justify the inference that

there is confusing similarity.” Amstar Corp. v.

Domino’s Pizza, Inc.** We believe that Smack’s

admitted intent and the similarity in appearance

between Smack’s shirts and the Universities’ licensed

products is strong evidence of a likelihood of confusion.

Smack argues that an intent to confuse is negated

by its use of its own logo and the words “Talkin’ the

Talk,” which it maintains identifies it as the source of

the shirt. We are not persuaded. Smack’s logo appears

in a space that is only 2.5 inches wide. We cannot

conclude, without more, that this small and

inconspicuous placement of the logo would disabuse

consumers of a mistaken belief that the Universities

sponsored, endorsed or were otherwise affiliated with

the t-shirts.°* Smack has not pointed to evidence that

its own logo is recognizable by consumers or that it

was acting to trade off its own reputation as a

producer of specialty t-shirts.©’ Nor are we convinced

* 615 F.2d 252, 263 (5th Cir. 1980) (quoting RESTATEMENT OF

TORTS § 729, comment f (1938)).

* See Pebble Beach, 155 F.3d at 552 (noting that “conspicuous

disclaimers that disclaim affiliation may reduce or eliminate

confusion”).

°° See, e.g., Univ. of Kan. v. Sinks, 565 F. Supp. 2d 1216, 1244-45,

1247-48 (D. Kan. Mar. 19, 2008) (finding a likelihood of confusion

28a

that Smack’s logo on the shirts acts as a disclaimer.

The Universities point out that they require all

licensed products to contain the licensee’s name.

Therefore, a consumer could believe that Smack’s logo

merely indicated that it was a licensee. We conclude

that the intent digit weighs in favor of a conclusion

that there is a likelihood of confusion.

The seventh digit is evidence of actual confusion.

Evidence that consumers have been actually confused

in identifying the defendant’s use of a mark as that of

the plaintiff may be the best evidence of a likelihood of

confusion.®’ It is well established, however, that

evidence of actual confusion is not necessary for a

finding of a likelihood of confusion.” The district court

did not resolve whether there was sufficient evidence

of actual confusion, and because such evidence is not

with respect to defendant’s manufacture of t-shirts that were

substantially similar to officially licensed goods, but not shirts

that it found contained substantial differences, in part because

“(t]he high degree of similarity weighs strongly in favor of a

finding of intent; the use of almost identical marks supports a

conclusion that defendants intended to derive a benefit from KU’s

reputation, rather than rely upon their own”).

® See A.T. Cross Co. v. Jonathan Bradley Pens, Inc., 470 F.2d 689,

692 (2d Cir. 1972) (defendant’s placement of its own name on pen

also bearing mark similar to plaintiffs mark “does not save the

day; a purchaser could well think plaintiff had licensed defendant

as a second user and the addition is thus ‘an aggravation, and not

a justification” (citation omitted)).

®’ Elvis Presley Enters., 141 F.3d at 203.

68 id.- Pebble Beach, 155 F.3d at 545; Amstar, 615 F.2d at 263.

29a

required we also find it unnecessary to pass on the

question further.™

With respect to the eighth digit of confusion—the

degree of care exercised by potential purchasers—the

district court held that the t-shirts at issue are

relatively inexpensive impulse items that are not

purchased with a high degree of care.’ Where items

are relatively inexpensive, a buyer may take less care

in selecting the item, thereby increasing the risk of

confusion.’' Smack contends there was insufficient

evidence for the district court’s conclusion. In

response, the Universities note Curtiss’ testimony that

he hoped customers’ decisions to purchase Smack’s

shirts would be “quick,” and they point out that the

shirts sell for less than $18. Smack cites no evidence to

demonstrate an issue of fact on this point, and we

agree with the district court that this digit weighs in

favor of a likelihood of confusion.

After reviewing the record, we conclude that there

is no genuine issue of fact that Smack’s use of the

Universities’ color schemes and other identifying

in“icia creates a likelihood of confusion as to the

*° The Universities contend that there was evidence of actual

confusion consisting of consumer surveys concerning two of the six

t-shirt designs and testimony from Curtiss that “I have had people

come up and go—at the booth and go, ‘Are these licensed?” The

evidence is arguably minimal, see Amstar, 615 F.2d at 263, but as

discussed we need not resolve the matter.

Bd. of Supervisors, 438 F. Supp. 2d at 661.

" Sun-Fun-Prods., Inc. v. Suntan Research & Dev. Inc., 656 F.2d

186, 191 (5th Cir. 1981)

30a

source, affiliation, or sponsorship of the t-shirts. As

noted above, the digits of confusion—particularly the

overwhelming similarity of the marks and _ the

defendant’s intent to profit from the Universities’

reputation—compel this conclusion. This is so, we have

noted, because Smack’s use of the Universities’ colors

and indicia is designed to create the illusion of

affiliation with the Universities and essentially obtain

a “free ride” by profiting from confusion among the

fans of the Universities’ football teams who desire to

show support for and affiliation with those teams.”

This creation of a link in the consumer’s mind between

the t-shirts and the Universities and the intent to

directly profit therefrom results in “an unmistakable

aura of deception” and likelihood of confusion.”

Smack contends that there is no evidence that

consumers care one way or the other whether t-shirts

purchased for wear at a football game are officially

licensed and that, absent evidence that consumers

prefer licensed merchandise, it was error for the

district court to conclude there was a likelihood of

confusion. Smack relies in part on our decision in

Supreme Assembly, Order of Rainbow for Girls v. J. H.

Ray Jewelry Company.” The context of that case is

different from the instant case.

2 See Boston Athletic Ass’n v. Sullivan, 867 F.2d 22, 33 (1st Cir.

1989) (“Defendants’ shirts are clearly designed to take advantage

of the Boston Marathon and to benefit from the good will

associated with its promotion by plaintiffs. Defendants thus

obtain a ‘free ride’ at plaintiffs’ expense.”).

'S Id. at 35.

™” 676 F.2d 1079 (5th Cir. 1982)

3la

In Rainbow for Girls, a fraternal organization and

its official jeweler sued a retailer for trademark

infringement based on the retailer’s sale of jewelry

bearing the organization’s registered mark. Purchasers

in the fraternal-organization jewelry market bought

jewelry to show membership and status in the

organization.” We upheld the district court’s finding of

no likelihood of confusion, concluding that “[(t)he fact

that purchasers purchased Rainbow jewelry as a direct

result of the presence of the Rainbow emblem does not

compel the conclusion that they did so believing that

the jewelry was in any way endorsed, sponsored,

approved or otherwise associated with Rainbow, given

the court’s findings.””* The district court had held that

there was no historic custom or practice specific to

Rainbow jewelry or to the fraternal jewelry industry

that Rainbow jewelry could be manufactured only with

Rainbow’s sponsorship or approval.’’ Instead, the court

noted that fraternal organizations exercised little

control over the manufacture of jewelry bearing their

emblems.’”® Furthermore, the court had held that

because Rainbow’s “official jeweler” was itself well

advertised and used its own distinctive mark on the

jewelry, any jewelry without that distinctive mark

could not cause confusion.” We noted that the district

court’s findings distinguished the case from our

” Id. at 1084.

” Id. at 1083.

"i.

oat” 4

32a

decision in Boston Professional Hockey Association v.

Dallas Cap & Emblem Manufacturing.”

In Boston Hockey, we held that the defendant

infringed the plaintiffs trademark rights by selling

embroidered patches containing the emblems of

professional hockey teams.” There, the emblems were

sold for use by the public to show “allegiance to or

identification with the teams.” We held that the

likelihood of confusion requirement was met because

the defendant duplicated and sold the emblems

“knowing that the public would identify them as being

the teams’ trademarks” and because the public’s

“certain knowledge . . . that the source and origin of

the trademark symbols were in plaintiffs satisfies the

requirements of the act.”

Subsequently, in Kentucky Fried Chicken

Corporation vu. Diversified Packaging Corporation, we

recognized that Boston Hockey might be read to

dispose of the confusion issue when _ buyers

undoubtedly know that the plaintiff is the source and

origin of a mark.™ We reiterated that a showing of

likelihood of confusion was still required.” But we

* id.

*' 510 F.2d 1004 (5th Cir. 1975).

Td. at 1011.

Td. at 1012.

4 549 F.2d 368, 389 (5th Cir. 1977)

33a

noted that the circumstances in Boston Hockey

supported the likelihood of confusion there insofar as

the sale of products “universally associated” with the

hockey team “supported the inescapable inference that

many would believe that the product itself originated

with or was somehow endorsed by Boston Hockey.” In

Rainbow for Girls, the district court opinion, which we

upheld, also recognized in reference to Boston Hockey

that “(ijt is not unreasonable to conclude, given the

degree to which sports emblems are used to advertise

teams and endorse products, that a consumer sceing

the emblem or name of a team on or associated with a

good or service would assume some sort of sponsorship

or association between the product’s seller and the

team.””®’

We agree with this reasoning as applied to this

case, which is more like Boston Hockey than Rainbow

for Girls. We hold that given the record in this case

and the digits of confusion analysis discussed

above—including the overwhelming similarity between

the defendant’s t-shirts and the Universities’ licensed

products, and the defendant’s admitted intent to create

an association with the plaintiffs and to influence

consumers in calling the plaintiffs to mind—that the

inescapable conclusion is that many consumers would

likely be confused and believe that Smack’s t-shirts

were sponsored or endorsed by the Universities. The

Universities exercise stringent control over the use of

their marks on apparel through their licensing

program. It is also undisputed that the Universities

*” Rainbow for Girls, 676 F.2d at 1085.

34a

annually sell millions of dollars worth of licensed

apparel. We further recognize the public’s indisputable

desire to associate with college sports teams by

wearing team-related apparel. We are not persuaded

that simply because some consumers might not care

whether Smack’s shirts are officially licensed the

likelihood of confusion is negated. Whether or not a

consumer cares about official sponsorship is a different

question from whether that consumer would likely

believe the product is officially sponsored. For the

foregoing reasons, we conclude that a likelihood of

confusion connecting the presence of the Universities’

marks and the Universities’ themselves was

demonstrated in this case.

C. Functionality

A product feature that is functional does not qualify

for protection under the Lanham Act.™ The party

seeking protection under the Lanham Act has the

burden of establishing nonfunctionality. TrafFix

Devices, Inc. v. Marketing Displays, Inc.® The

Supreme Court has recognized two tests for

determining functionality. “[T)he primary test for

determining whether a product feature is functional is

whether the feature is essential to the use or purpose

of the product or whether it affects the cost or quality

8 Qualitex, 514 U.S. at 164-65, 115S. Ct. at 1304; Eppendorf, 289

F.3d at 355.

532 U.S. 23, 32, 121 S. Ct. 1255, 1261 (2001).

35a

of the product.”” This is the “traditional” test.*'

“Under this traditional definition, if a product feature

is ‘the reason the device works,’ then the feature is

functional.” Under a secondary test for functionality

“a functional feature is one the exclusive use of which

would put competitors at a significant non-reputation-

related disadvantage.” This is the “competitive

necessity” test.” :

In Boston Hockey, we held that emblems of 2

hockey team sold on embroidered patches had no

demonstrated value other than their significance as

the trademarks of the team.” Relying on our decision

in Boston Hockey, the district court here similarly held

that the Universities’ color schemes, logos, and designs

also had no significance other than to identify with the

Universities and were therefore nonfunctional.” We

agree. Fans and other members of the public purchase

Smack’s shirts only because the shirts contain the

plaintiffs’ colors and indicia identifying the

Universities’ football teams, just as people purchased

the defendant's emblems in Boston Hockey only

* Eppendorf, 289 F.3d at 356 (citing TrafFix, 532 U.S. at 32-33,

121 S. Ct. at 1261-62).

”! Id. at 355.

™ is.

8 Id. at 356 (internal quotation and citation omitted).

* Boston Profl Hockey, 510 F.2d at 1013.

* Bd. of Supervisors, 438 F. Supp. 2d at 661-62.

36a

because they contained the hockey team’s

trademarks.”’ In other words, the presence of the

plaintiffs’ marks serve no function unrelated to

trademark.

Smack argues that the Universities’ colors do

perform functions unrelated to trademark because the

Universities use the colors in activities and programs

in connection with student life, buildings, and other

programs and events and that the colors are not used

solely to identify the Universities as a source of goods.

However, the claimed trademarks are in the color

schemes and other indicia of the Universities when

combined on merchandise that refer to the

Universities. It is proper, therefore, to examine that

context when determining the functionality of the

claimed marks.” As explained above, the Universities’

colors and indicia when used on merchandise creates

secondary meaning tending to identify the Universities

in the minds of consumers as the producers, sponsors,

or endorsers of the product.

The school colors and other indicia used here do not

make the t-shirts “work.” The t-shirts would function

just as well as articles of clothing without the colors

and designs. Smack’s t-shirts are sold not because of

any functionality in the marks Smack placed on them

but rather because they bear the identifiable marks of

*” See Boston Prof Hockey, 510 F.2d at 1013.

% Cf. Elvis Presley Enters., 141 F.3d at 197 (“Courts consider

marks in the context that a customer perceives them in the

marketplace... .”).

37a

the plaintiff Universities.” The marks fail under the

traditional test for functionality and are protectible.

Smack urges, however, that the Universities’ colors

on the t-shirts serve several functional purposes. It

contends that the shirts allow groups of people to bond

and show support for a philosophy or goal; facilitate

the expression of loyalty to the school and a

determination of the loyalties of others; and identify

the wearer as a fan and indicate the team the fan is

supporting. These claimed functional uses are nothing

more than the kind of aesthetic uses at issue in Boston

Hockey. Our circuit has consistently rejected the

concept of aesthetic functionality.’

Smack asserts that the Supreme Court has

recognized aesthetic functionality, and it relies on the

interplay between the Court’s decisions in Qualitex

and TrafFix. As noted above, the Court recognized in

Qualitex that color alone could be protected as a

trademark.” In its discussion of functionality, the

Court noted that the purpose of the functionality

doctrine is to prevent use of a product’s feature as a

trademark where doing so would hinder competition,

and it set forth the traditional definition where

functionality turns on whether the feature is

“essential to the use or purpose of the article’ or

* See Boston Hockey, 510 F.2d at 1013.

1° See id.: Sno-Wizard, 791 F.2d at 426 n.3; Pebble Beach, 155

F.3d at 540 n.6.

" Qualitex, 514 U.S. at 163-64, 115 S. Ct. at 1303-04.

38a

‘affects fits} cost or quality.”’” After discussing

aesthetic functionality in the Restatement (Third) of

Unfair Competition, the Court went on to state that

“where a color serves a significant nontrademark

function . . . courts will examine whether its use as a

mark would permit one competitor (or a group) to

interfere with legitimate (nontrademark-related)

competition through actual] or potential exclusive use

of an important product ingredient. That examination

should not discourage firms from creating esthetically

pleasing mark designs, for it is open to their

competitors to do the same.”?”

In TrafFix, the Court reiterated the traditional test

for functionality and expanded on the secondary

“competitive necessity” test."* The Court explained

that if a product feature is found to be functional

under the traditional test, which it was in that case,

the inquiry ends and there is no need to consider

whether the feature is a competitive necessity.’ The

Court went on to state, however, that it is proper to

inquire into the competitive necessity test in cases of

10? Td. at 169, 115 S.Ct. at 1306 (quoting Jnwood Labs., Inc. v. Ives

Zabs., Inc., 456 U.S. 844, 850 n.10, 102 S. Ct. 2182, 2186 n.10

(1982)).

' Td. at 170, 115 S. Ct. at 1306.

% TrafFix, 532 U.S. at 32, 121 S. Ct. at 1261.

TrafFix was a dual-spring mechanism designed to keep outdoor

signs upright in the wind.

39a

aesthetic functionality, which the Court stated “was

the central question” in Qualitex.'”

Smack relies on this pronouncement in TrafFix for

the proposition that the Supreme Court has recognized

the aesthetic functionality doctrine. We note that the

TrafFix Court’s characterization of the issue in

Qualitex has been harshly criticized by

commentators.’ Nevertheless, neither Qualitex nor

TrafFix addressed aesthetic functionality as the

dispositive issue, let alone the purported aesthetic

functionality of a color-scheme that acts to identify and

create a desired association with the particular

source.’’® We do not believe that the Court’s dictum in

TrafFix requires us to abandon our long-settled view

rejecting recognition of aesthetic functionality.’

7 See 1 J. THOMAS MCCARTHY, MCCARTHY ON TRADEMARKS AND

UNFAIR COMPETITION § 7:80 (4th ed.) (calling “amazing and

incomprehensible {the} statement that in the 1995 Qualitex case,

‘aesthetic functionality was the central question”).

108 See id. (stating that “the Supreme Court has never directly

addressed aesthetic functionality as a dispositive issue in a case”);

see also Au-Tomotive Gold, Inc. v. Volkswagen of Am., Inc., 457

F.3d 1062, 1070 (9th Cir. 2006) (“The Supreme Court has yet to

address aesthetic functionality as it applies to logos and insignia

in contrast to product features.”).

109 See N.L.R.B. v. Datapoint Corp., 642 F.2d 123, 129 (5th Cir.

1981) (“Without a clearly contrary opinion of the Supreme Court

or of this court sitting en banc, we cannot overrule a decision of a

prior panel of this court... .” (emphasis added)).

40a

Furthermore, we believe application of the

competitive necessity test does not require a different

result. Smack contends that it will be placed at a

significant non-reputation-related disadvantage ifit “is

unable to sati:iy consumer demand for game day

clothing that atlows fans to conform to the crowd, or

satisfy consumer demand for game day clothing that

matches other items of clothing worn by the

consumer.” Smack has admitted that the colors and

indicia on its shirts are designed to call the

Universities to the mind of the fans, and it

acknowledges in its brief that fans purchase t-shirts to

wear to football games to show the colors of the team

that the consumer is supporting. In other words, fans

desire to wear the t-shirts precisely because they show

the Universities’ marks. The Court in Qualitex

stressed that the focus of functionality is “legitimate

(non-trademark-related) competition.”'!° But here any

demand for Smack’s t-shirts is inextricably tied to the

Universities’ trademarks themselves.'" We agree with

the Ninth Circuit that “the fact that a trademark is

desirable does not, and should not, render it

unprotectable.”"" Smack’s alleged competitive

disadvantage in the ability to sell game day apparel

relates solely to an inability to take advantage of the

Universities’ reputation and the public’s desired

association with the Universities that its shirts create.

This is not an advantage to which it is entitled under

0 Qualitex, 514 U.S. at 170, 115 S. Ct. at 1306.

1) Au-Tomotive Gold, 457 F.3d at 1074.

"2 Id. at 1072.

4la

the rubric of legitimate competition.’ We conclude

that the district court correctly held that the marks at

issue here are nonfunctional.

D. Nominative fair use

Smack argues that it incorporated the Universities’

colors in its t-shirts to identify the Universities as the

subject of the shirts. It contends that this was a

protected nominative fair use.

The nominative fair use doctrine provides that “one

who has lawfully copied another’s product can tell the

public what he has copied.”"* It also permits one to

“use another’s mark truthfully to identify another’s

goods or services in order to describe or compare its

product to the markholder’s product.”* The right of

fair use is limited, however, insofar as “the use cannot

be one that creates a likelihood of confusion as to

source, sponsorship, affiliation, or approval.”'”®

We have held that a nominative fair use claim is a

claim that a mark’s use is noninfringing and therefore

"3 See Pebble Beach, 155 F.3d at 539 (“To define functionality

based upon commercial success would allow the second comer to

trade on the first comer’s goodwill, purely because it would be |

easier to market his product and not because he could not produce

a viable, competitive product.”).

4 Td. at 545.

"'S Td. at 546.

116 Id.

42a

creates no likelihood of confusion.'’’ Thus, we have

also said that a court ordinarily should consider a

nominative fair use claim in conjunction with its

likelihood-of-confusion analysis in order to avoid

lowering the standard for confusion.'* Smack argues

that the district court here first determined that there

was a likelihood of confusion and then determined that

there could be no nominative fair use because of that

likelihood, thereby lowing the confusion standard. We

are not convinced of any error. Aithough the alleged

nominative fair use should usually be considered along

with the lkelihood-of-confusion analysis, we have

declined to require any particular method for the

consideration in cases where the nominative use is not

significant factor in the liability determination.”’? We

think this is such a case.

In order to avail oneself of the nominative fair use

defense “the defendant (1) may only use so much of the

mark as necessary to identify the product or service

and (2) may not do anything that suggests affiliation,

sponsorship, or endorsement by the markholder.”’”°

Smack used the Universities’ colors and indicia in

more than a nominative sense. It did not incorporate

the colors and other indicia to describe or compare its

shirts with shirts licensed by the Universities, nor did

it do so to tell the public what it had copied. Smack did

incorporate the marks to identify the Universities as

"7 Td. at 545.

18 Td. at 547.

"9 Id. at 547 n.14.

120 Id. at 546.

43a

the subject of the shirts, but it did so in a way that

improperly suggested affiliation, sponsorship, or

endorsement.

To take a simple example, two shirt designs

targeted toward the fans of OSU and USC refer to the

number of national championships those universities

have won and ask, respectively, “got seven?” and “got

eight?” Both shirts proclaim “WE DO!” and contain

other specific indicia identifying the schools. Smack

did not win any national championships—the

respective Universities did. The use of the inclusive

first-person personal pronoun “we” easily permits the

inference that the schools are the speakers in the

shirts and therefore endorsed the message.

As noted by the district court, Smack copied the

mark with “an intent to rely upon the drawing power

in enticing fans of the particular universities to

purchase their shirts.”!7’ Such an attempt to capitalize

on consumer confusion is not a nominative fair use.'*

We conclude that the district court correctly granted

summary judgment to the Universities on this issue.

FE. Laches

Smack asserts that it is undisputed the LSU

Athletic Department purchased several of its purple

and gold t-shirt designs, none of which are at issue in

this case, for sale in the LSU stadium gift shop

'21 Bd. of Supervisors, 438 F. Supp. 2d at 661 (internal quotation

marks omitted).

122 See New Kids on the Block v. News Am. Publ’g, Inc., 971 F.2d

302, 308 (9th Cir. 1992).

44a

between 2001 and 2004. It argues that because LSU

never objected to the shirt designs even though they

were similar to the designs involved in this case, the

doctrine of laches is applicable.

Laches is “an inexcusable delay that results in

prejudice to the defendant.”’” “Laches comprises three

elements: (1) delay in asserting one’s trademark

rights, (2) lack of excuse for the delay, and (3) undue

prejudice to the alleged infringer caused by the

delay.”'* A defendant who intentionally infringes a

trademark with the bad faith intent to capitalize on

the markholder’s good will lacks the clean hands

necessary to assert the equitable defense. Conan

Props., Inc. v. Conans Pizza, Inc.'*°

The district court held that because Smack

admitted it intentionally copied the plaintiffs’ color

schemes, Smack’s bad faith precluded the assertion of

laches.'* In Conan Properties, we held that although

a defendant’s intentional use of a plaintiffs mark may

give rise to “a presumption that the defendant

intended to cause public confusion as to the source or

sponsorship of the product,” such an intentional use

“does not give rise to a presumption that the defendant

'3 luis Presley Enters., 141 F.3d at 205 (internal quotation marks

omitted).

'24 Westchester Media, 214 F.3d at 668.

12° 752 F.2d 145, 150-51 & n.2 (5th Cir. 1985).

'*° Bd. of Supervisors, 438 F. Supp. 2d at 663.

45a

intended to appropriate the plaintiffs good will.”’*'

Unlike Conan Properties, the record here establishes

the substantive and knowing bad faith necessary to

foreclose an equitable defense.'** Smack did not simply

admit that it knew the plaintiff Universities used

marks similar to its own. Rather, it admitted that it

intentionally incorporated the Universities’ color

schemes and other indicia in order to specifically call

the Universities to the public’s mind, thus deriving a

benefit from the Universities’ reputation.’ The

district court properly declined to apply the defense of

laches.’

F. Actual damages

Smack argues that the district court erroneously

denied its motion for judgment as a matter of law at

the trial on damages. It asserts that the plaintiffs were

'27 See Conan Props., 752 F.2d at 151 n.2.

'28 See id.

'29 See id.; Armco, Inc. v. Armco Burglar Alarm Co., 693 F.2d 1155,

1159 n.7 (5th Cir. 1982).

'° The district court separately held that (1) OU was entitled to

summary judgment on its claim that Smack’s shirts highlighting

“OU” infringed OU’s unregistered mark in those initials, and (2)

LSU was entitled to summary judgment on its LUTPA claim. Bd.

of Supervisors, 438 F. Supp. 2d at 663. The court reasoned that its

digits-of-confusion analysis applied with equal force to OU's claim

and that the requirements for aclaim under LUTPA mirror those

of the Lanham Act. Jd. We agree with the district court. See also

Loutsiana World Exposition, Inc. v. Logue, 746 F.2d 1033, 1039

(5th Cir. 1984) (holding that likelihood of confusion is the

essential ingredient for claims under both LUTPA and the

Lanham Act).

46a

not entitled to recover actual damages without

evidence of actual confusion. It is settled in this circuit,

however, that actual confusion is not a necessary

prerequisite to an award of money damages.'”"

G. Attorneys’ fees

The Universities separately appeal the district

court’s denial of their request, for an award of

attorneys’ fees. The district court may award a

prevailing party its reasonable attorneys’ fees under

the Lanham Act “in exceptional cases.”'** We review

the district court’s determination as to whether a case

is exceptional for clear error, and we review the

district court’s decision whether to award attorneys’

fees for an abuse of discretion. Scott Fetzer Co. v.

House of Vacuums, Inc.'**

The prevailing party bears the burden of

demonstrating the exceptional nature of the case by

clear and convincing evidence.’ “An exceptional case

is one where the violative acts can be characterized as

'S! Taco Cabana, 932 F.2d at 1126. Although Smack asserts that

the Universities presented no evidence from which the jury could

find actual confusion, its argument addresses the plaintiffs’

entitlement to damages and does not contest the jury’s specific

award of damages. We therefore do not consider whether the

damages themselves were supported by sufficient evidence.

9215 U.S.C. § 1117(a).

83 381 F.3d 477, 490 (5th Cir. 2004).

4 Td.

A47Va

malicious, fraudulent, deliberate, or willful.”’* The

necessary showing demands a “high degree of

culpability on the part of the infringer, for example

bad faith or fraud.”'”

Smack intentionally copied the Universities’ color

schemes for use on its shirts and admitted doing so.

Yet, we have held that deliberate copying does not

render a case per se exceptional.'*’ When assessing

whether a case is exceptional, courts must consider all

the facts and circumstances.’ We are further mindful

that the district court, having heard the evidence,

observed the witnesses, and appraised the parties’

motives, is in the best position to make this

determination.’ The district court determined at the

summary judgment stage that Smack acted in bad

faith and was precluded from asserting the equitable

defense of laches. However, an actor’s bad faith in

violating the Lanham Act does not per se equate to

malicious, fraudulent, or willful conduct justifying an

award of attorneys’ fees.*° The district court here

‘SS Pebble Beach, 155 F.3d at 555 (internal quotation marks and

citation omitted)

'° Id. at 556.

88 Td. at 555.

139 Taco Cabana, 932 F.2d at 1127.

'4° See People for the Ethical Treatment of Animals v. Doughney,

263 F.3d 359, 370 (4" Cir. 2001) (holding that defendant's bad

faith in violating the anti-cybersquating statute did not compel a

48a

credited Curtiss’ testimony that he believed based on

a settlement agreement in another case that he could

use school colors and design elements in his shirts as

long as he did not use the school’s name or initials.'”

As the district court also recognized, this case presents

somewhat novel issues—also evident by the presence

of several amicus briefs—concerning the trademark

protection for color schemes used by the Universities.

A party does not act in bad faith by predicating his

legal claim or defense on an unsettled legal theory.'”

We have carefully considered the Universities’

arguments but conclude that the district court neither

clearly erred nor abused its discretion. We therefore

affirm the denial of attorneys’ fees.

AFFIRMED.

finding of malicious, fraudulent, willful or deliberate behavior for

attorneys’ fees under the Lanham Act).

'*" See Pebble Beach, 155 F.3d at 556 (“[a] district court normally

should not find a case exceptional where the party presents what

it in good faith believes may be a legitimate defense” (citation

omitted)).

'*2 See Scott Fetzer Co., 381 F.2d at 490.

APPENDIX B

UNITED STATES DISTRICT COURT

EASTERN DISTRICT OF LOUISIANA

No. 04-1593

Section: “S” (2)

[Filed July 18, 2006]

BOARD OF SUPERVISORS OF THE

LOUISIANA STATE UNIVERSITY

AND AGRICULTURAL AND

MECHANICAL COLLEGE, ET AL.

VERSUS

SMACK APPAREL COMPANY, ET

AL.

)

ORDER AND REASONS

IT IS HEREBY ORDERED that plaintiffs’

motions for summary judgment are GRANTED

(Record Document Nos. 86 and 143). IT IS FURTHER

ORDERED that Defendants’ motion for summary

judgment is DENIED (Record Document Nos. 45 and

48).

50a

I. BACKGROUND

Plaintiffs Louisiana State University (LSU), the

University of Oklahoma (OU), Ohio State University

(OSU), and the University of Southern California

(USC), along with their licensing agent, Collegiate

Licensing Company (CLC), have sued defendant

Smack Apparel Company and its principal, Wayne

Curtiss, under the Lanham Act and related state

statutes.

The universities each own trademark registrations

for both their names and their commonly used initials.

Additionally, over a century ago each university

adopted a particular color combination as its school

colors (purple and gold for LSU, crimson and creme for

OU, scarlet and gray for OSU, and cardinal and gold

for USC). The universities have spent millions of

dollars over the years in marketing and promoting

items bearing their initials and school colors. Plaintiffs

generally allege that defendants have engaged in

unfair competition by selling shirts bearing the

distinctive two colors used by the universities, along

with other symbols which identify the universities.

Among the allegedly offending designs promulgated by

defendants are the following:

e¢ OU (2 shirt designs): (1) “Bourbon Street or

Bust” (with the “ou” in “Bourbon” in a different

typestyle) (front), “Show us your beads!” (with

the “ou” in “your” in a different typestyle) and

“Sweet as Sugar!” (back) (2) “Beat Socal” (front),

“And Let’s Make it Eight!”(back). These shirts

refer to 2004 Sugar Bowl contest in New

Orleans between the OU and LSU football

teams. A victory in the Sugar Bow] could have

5la

given OU a claim to an eighth national football

championship. One of OU’s principal rivals to

this claim was USC.

LSU (2 shirt designs): (1) “Beat Oklahoma”

(front), “And Bring it Back to the Bayou!” and

“2003 College Football National Championship”

(back) (2) “2003 College Football National

Champions” (front), colored circular depiction of

game scores, with “2003 College Football

National Champions” and “Sweet as Sugar”

(back). These shirts refer to the 2004 Sugar

Bowl contest in New Orleans between OU and

LSU, which was played to determine the Bowl

Championship Series national football

champion.

OSU: “Got Seven?” (front), “We do! 7 Time

National Champs,” with depiction of the state of

Ohio and a marker noting “Columbus Ohio”

(back). This shirt refers to the seven college

football national titles claimed by OSU.

USC: “Got eight?” (front), “We Do! Home of the

8 Time National Champions!” and depiction of

the state of California with a star marked

“SoCal” (back). This design refers to USC’s

claim to eight college national football

championships.

Certain of the shirts also include additional graphics

or type, including championship trophies and the

scores of football games in which the universities have

competed. The relatively small logo “Smack” appears

in an oval on each shirt.

52a

Plaintiffs assert the following claims against

defendants: trademark infringement under the

Lanham Act, unfair competition under the Lanham

Act, unfair trade practices under the Louisiana Unfair

Trade Practices Act (as to LSU), federal trademark

dilution, state trademark dilution, common law

trademark infringement, and common law unfair

competition. Plaintiffs have moved for summary

judgment on (1) LSU’s, OU’s, OSU’s, and USC’s claims

for federal unfair competition and common law unfair

competition; (2) OU’s claim for trademark

infringement of its federally registered “OU” mark; (3)

plaintiffs’ claim for a violation of the Louisiana Unfair

Trade Practices Act (LUTPA); and (4) CLC’s claims of

federal unfair competition, common law unfair

competition, and violation of the LUTPA. Defendants

also have moved for summary judgment on each of

these claims.

Il. ANALYSIS

A. LSU’s, OSU’s, OU’s, and USC’s claims of

unfair competition under 15 U.S.C.

§ 1125(a) and claims of common law unfair

competition.

Section 43(a) of the Lanham Act, codified at 15

U.S.C. § 1125(a), prohibits the use in commerce of “any

word, term, name, symbol, or device, or any

combination thereof, or any false designation of origin,

false or misleading description of fact, or false or

misleading representation of fact” which is “likely to

cause confusion, or cause mistake, or to deceive as to

the affiliation, connection, or association of such

person with another person, or as to the origin,

sponsorship, or approval of his or her goods, services,

53a

or commercial activities.” Although the parties have

variously referred to plaintiffs’ color schemes, logos,

and designs on university shirts as being trademarks

or trade dress, the unfair competition provision of the

Lanham Act protects both trademarks and trade dress.

Sugar Busters, L.L.C. v. Brennan, 177 F.3d 258, 267

(5th Cir. 1999); see also Pebble Beach Co. v. Tour 18 I

Ltd., 155 F.3d 526, 541 (5th Cir. 1998) (“The same

tests apply to both trademarks and trade dress to

determine whether they are protectible and whether

they have been infringed, regardless of whether they

are registered or unregistered.”). Additionally, “[a]s a

general rule, the same facts which would support an

action for trademark infringement would also support

an action for unfair competition.” Marathon Mfg. Co.

v. Enerlite Prods. Corp., 767 F.2d 214, 217 (5th Cir.

1985).

1. Secondary meaning.

Section 43(a) of the Lanham Act “protects

qualifying unregistered trademarks,” and “the general

principles qualifying a mark for registration under § 2

of the Lanham Act are for the most part applicable in

determining whether an unregistered mark is entitled

to protection under § 43(a).” Two Pesos, Inc. v. Taco

Cabana, Inc., 505 U.S. 763, 768, 112 S.Ct. 2753, 120

L.Ed.2d 615 (1992).

Under the Lanham Act, a trademark may be

registered if it is “capable of distinguishing the

applicant’s goods from those of others.” Jd. at 768. A

mark’s distinctiveness is “often classified in categories

of generally increasing distinctiveness;” following the

classic Two Pesos, Inc. formulation, they may be “(1)

generic; (2) descriptive; (3) suggestive; (4) arbitrary; or

54a

(5) fanciful.” Jd. Generic marks are not entitled to

trademark protection, and suggestive, arbitrary, and

fanciful marks are inherently distinctive. A mark that

is descriptive may acquire distinctiveness if it “has

become distinctive of the applicant’s goods in

commerce,” which is generally called “secondary

meaning.” Id.

Plaintiffs describe their marks as “color schemes in

the context of merchandise that makes reference to the

Plaintiff Universities or their accomplishments and is

directed to their fans and other _ interested

consumers.” There is no question that a color scheme

may be protectible as a trademark if it “identifies and

distinguishes a particular brand (and thus indicates

its “source”).” Qualitex Co. v. Jacobson Prods. Co., Inc.,

514 U.S. 159, 163-64, 115 S.Ct. 1300, 131 L.Ed.2d 248

(1995). In Wal-Mart Stores, Inc. v. Samara Bros., Inc.,

529 U.S. 205, 120 S.Ct. 1339, 146 L.Ed.2d 182 (2000),

the Supreme Court made clear that under Qualitex,

color is not protectible without proof of secondary

meaning. /d. at 211-12.

Accordingly, plaintiffs must demonstrate that their

color schemes, logos, and designs on shirts referring to

them or their accomplishments have attained

“secondary meaning,” which is a _ shorthand for

denoting that “in the minds of the public, the primary

' Record Document No. 13 at 20; see also id. at 2 (“Smack has

deliberately copied the school colors of LSU (purple and gold),

Oklahoma (crimson and creme), Ohio State (scarlet and gray), and

USC (cardinal and gold) in connection with merchandise that

refers to the Plaintiff Universities.”).

55a

significance of a [mark] is to identify the source of the

product and not the product itself.” Jd. at 211.’

To acquire a secondary meaning in the

minds of the buying public, a labeled product,

when shown to a prospective customer, must

prompt the reaction, “That is the product I want

because I[ know that all products with that label

come from a single source and have the same

level of quality.” In other words, the article

must proclaim its identity of source and quality,

and not serve simply to stimulate further

enquiry about it.

As one court stated, “The buyer to be

deceived, must be looking for something.” That

is, the buyer, to be deceived, must be looking for

some symbol which he thinks identifies a single,

albeit anonymous, source. Without that

identification, called “secondary meaning” for

non-inherently distinctive terms, there can be

no confusion.

* See also Sugar Busters, 177 F.3d at 269 (primary element of

secondary meaning is “a mental association in buyer[s’] minds

between the alleged mark and single source of the product”);

Zatarains, Inc. v. Oak Grove Smokehouse, Inc., 698 F.2d 786, 795

(5th Cir. 1983) (“In assessing a claim of secondary meaning, the

major inquiry is the consumer’s attitude toward the mark. The

mark must denote to the consumer ‘a single thing coming from a

single source,’ to support a finding of secondary meaning.”); J.

Thomas McCarthy, 2 McCarthy on Trademarks and Unfair

Competition § 15:5, at 15-9 (4th ed. 2005) (“The prime element of

secondary mcaning is a mental association in buyers’ minds

between the alleged mark and a single source of the product.”)

(italics in original).

56a

J. Thomas McCarthy, 2 McCarthy on Trademarks and

Unfair Competition § 15:11, at 15-22 (4th ed. 2005); see

also Bretford Mfg., Inc. v. Smith System Mfg. Corp.,

419 F.3d 576, 579 (7th Cir. 2005) (“[W]hen trade dress

implies the product’s origin it is protected as a

trademark (unless it is also functional); but when

consumers value the feature for its own sake rather

than as a badge of origin, it may be copied freely.”).

The Fifth Circuit has adopted a seven factor test for

establishing secondary meaning:

That a particular mark or trade dress has

acquired secondary meaning can be proven by a

consideration of the following evidence:

(1) length and manner of the use of the mark or

trade dress, (2) volume of sales, (3) amount and

manner of advertising, (4) nature of use of the

mark or trade dress in newspapers and

magazines, (5) consumer-survey evidence, (6)

direct consumer testimony, and (7) the

defendant’s intent in copying the trade dress.

While each of these types of evidence alone may

not prove secondary meaning, in combination

they may indicate that consumers consider the

mark or trade dress to be an indicator of source.

In considering this evidence, the focus is on how

it demonstrates that the meaning of the mark

or trade dress has been altered in the minds of

consumers.

Pebble Beach, 155 F.3d at 541. Under this test, “the

burden of proof rests at all times with the plaintiff,

and ‘[a] high degree of proof is necessary to establish

secondary meaning for a descriptive term.” Vision

Center v. Opticks, Inc., 596 F.2d 111, 118 (5th Cir.

57a

1979), cert. denied, 444 U.S. 1016, 100 S.Ct. 668, 62

L.Ed.2d 646 (1980).

The court finds that plaintiffs have established

secondary meaning in their particular color schemes,

logos, and designs. It is undisputed that the

universities have used their color combinations for a

lengthy period of time.® The universities market scores

of items bearing their color schemes, logos, and

designs, and sales of these items exceed tens of

millions of dollars.* The universities advertise items

with their school colors in almost every conceivable

manner, and the record contains ample evidence that

the universities’ school colors have been referenced

numerous times in magazines and newspapers. The

universities have even used the colors to refer to

themselves, i.e., LSU sometimes refers to itself as the

“Purple and Gold. ” Defendants admit that they

selected the color schemes, logos, and designs for their

shirts in order to refer to the universities and call

them to the mind of the consumer, although

defendants deny that they intended to confuse the

public into thinking the universities manufactured

Smack’s shirts. See Thomas & Betts Corp. v. Panduit

Corp., 65 F.3d 654, 663 (7th Cir. 1995) (holding that

“Copying is only evidence of secondary meaning if the

defendant’s intent in copying is to confuse consumers

3 LSU has used its school colors since 1893, Oklahoma since 1895,

Ohio State since 1878, and USC since 1895.

“For example, the declaration of Robert Cleveland, the Assistant

Director of Trademarks and Licensing for The Ohio State

University, attests that retail sales “of OSU merchandise

reflecting use of the scarlet and gray color scheme” exceed

$50,000 ,000.00.

58a

and pass off his product as the plaintiffs. In that

situation, the defendant’s belief that plaintiffs trade

dress has acquired secondary meaning — so that his

copying will indeed facilitate his passing off — is some

evidence that the trade dress actually has acquired

secondary meaning.”).

Applying the Fifth Circuit’s test for secondary

meaning, the court concludes that there are no

genuine issues of disputed material fact, and plaintiffs’

color schemes, logos and designs have achieved

secondary meaning.

2. Likelihood of confusion.

To determine whether there is infringement under

both the Lanham Act and the common law tort of

unfair competition, if a color scheme, logo, or design

has acquired secondary meaning, the next step is to

determine likelihood of confusion. See Society of

Financial Examiners v. National Ass’n of Certified

Fraud Examiners, Inc., 41 F.3d 223, 225 (5th Cir.)

(“The gravamen for any action of trademark

infringemvat or common law unfair competition is

whether the challenged mark is likely to cause

confusion.”), cert. denied, 515 U.S. 1103, 115 S.Ct.

2247, 1382 L.Ed.2d 255 (1995). Plaintiffs must

demonstrate that the use of its mark by defendant “is

likely to cause confusion among consumers as to the

source, affiliation, or sponsorship” of defendants’

“products or services. A ‘likelihood of confusion’ means

that confusion is not just possible, but probable.” Scott

Fetzer Co. v. House of Vacuums, Inc., 381 F.3d 477, 483

(5th Cir. 2004); see also Kentucky Fried Chicken v.

Diversified Packaging Corp., 549 F.2d 368, 382 (5th

Cir. 1977) (holding that the “determinative question”

59a

in applying common law tort of unfair competition is

“whether the tortfeasor’s practices are likely to

mislead customers into believing that the product

emanates from or has been endorsed by the claimant”).

The digits of confusion test applies to this issue:

In assessing whether use of a mark creates a

likelihood of confusion as to affiliation or

endorsement, we consider the “digits of

confusion,” a list of factors that tend to prove or

to disprove that consumer confusion is likely.

Those factors are: (1) the type of mark allegedly

infringed; (2) the similarity between the two

marks; (3) the similarity of the products or

services; (4) the identity of retail outlets and

purchasers; (5) the identity of the advertising

media used; (6) the defendant’s intent; and (7)

any evidence of actual confusion.

The digits are a flexible and nonexhaustive

list. They do not apply mechanically to every

case and can serve only as guides, not as an

exact calculus.

Scott Fetzer, 381 F.3d at 484-85. Additionally, in

Sunbeam Products, Inc. v. West Bend Co. , 123 F.3d 246

(5th Cir.), cert. denied, 523 U.S. 1118, 118 S.Ct. 1795,

140 L.Ed.2d 936 (1997), the court added an eighth

digit: the degree of care employed by consumers. /d. at

257. “No one factor is dispositive, and a finding of a

likelihood of confusion does not even require a positive

finding on a majority of these ‘digits of confusion.”

Elvis Presley Enters. v. Capece, 141 F.3d 188, 194 (5th

Cir. 1998). The issue of whether a likelihood of

confusion exists is a question of fact. Society of

Financial Examiners, 41 F.3d at 225.

60a

The first digit of confusion, the type of the mark,

“refers to the strength of the mark.” Elvis Presley

Enters., 141 F.3d at 201. “The stronger the mark, the

greater the protection it receives because the greater

the likelihood that consumers will confuse the junior

user’s use with that to the senior user.” Jd. In

assessing this digit, “the trier of fact looks at all third

party use, not just use in the same industry, to

determine whether a mark is a ‘weak’ or a ‘strong’

mark.” Union Nat'l Bank of Texas, Laredo, Texas uv.

Union Nat'l Bank of Texas, Austin, Texas, 909 F.2d

839, 848 n. 24 (5th Cir. 1990). As detailed above, the

universities’ color schemes, logos, and designs are

extremely strong marks that have been used for

decades and have acquired secondary meaning in the

context of reference to the plaintiffs’ universities or

their accomplishments, which are directed to their

fans and other interested consumers. Although there

are many uses of the universities’ color schemes, logos,

and designs by third parties, there is no indication

that any third party used the marks in that context.

See University of Georgia Athletic Ass’n v. Laite, 756

F.2D 1535, 1545 (11th Cir.1985).

The second digit of confusion, similarity of the

marks, is determined by comparing the marks:

The similarity of the marks in question is

determined by comparing the marks’

appearance, sound, and meaning. “Even if

prospective purchasers recognize that the two

designations are distinct, confusion may result

if purchasers are lkely to assume that the

similarities in the designations indicate a

connection between the two users. The relevant

inquiry is whether, under the circumstances of

bla

the use,” the marks are sufficiently similar that

prospective purchasers are likely to believe that

the two users are somehow associated.

Elvis Presley Enters., 141 F.3d at 201. The marks at

issue are virtually identical: Smack’s shirts bear the

same color schemes and similar logos and designs as

those of the plaintiffs, and their shirts each bear logos

and designs leaving no doubt that they refer to the

plaintiff universities. There are instances where

consumers have connected Smack’s shirts to the

universities, believing there to be some affiliation or

sponsorship.

Under the third digit of confusion, similarity of

products or services, “the greater the similarity

between products and services, the greater the

likelihood of confusion.” Jd. at 202. Even if products

are not directly competing, a likelihood of confusion

may exist because consumers may be confused as to

>the sponsorship, affiliation, or connection between the

parties’ products. /d. at 202. It is undisputed that both

Smack and the universities market shirts bearing the

same color schemes, logos, and designs. Smack argues

that its products differ from those authorized by the

universities because, in addition to the respective

colors, they include irreverent phrases or slang

comments. This argument runs afoul of the principle

that a trademark provides protection for one’s

investment in good will. “The creation of value in a

trademark requires ‘the expenditure of great effort,

skill and ability’ and a competitor should not be

permitted to take a ‘free ride’ on the trademark

owner’s good will and reputation.” 1 McCarthy on

Trademarks, § 2:30, at 2-54 (quoting Smith v. Chanel,

Inc., 402 F.2d 562, 568 (9th Cir. 1968)). Clearly,

62a

“(those who invest time, money and energy in the

development of good will and a favorable reputation

[should] be allowed to reap the advantages of their

investment.” Truck Equipment Serv. Co. v. Fruehauf

Corp., 536 F.2d 1210, 1215 (8th Cir. 1976). Smack’s

use of irreverent phrases or slang comments misuses

the plaintiffs’ reputation and good will, which is

embodied in their trademarks. Smack may not trade

upon or exploit the universities’ reputation and

goodwill.

The fourth digit of confusion requires analyzing the

identity of retail outlets and _ purchasers.

“Dissimilarities between the retail outlets ‘lessen the

possibil

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