Opposition Brief — 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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IN 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, THE OHIO

STaTE UNIVERSITY, UNIVERSITY OF SOUTHERN CALIFORNIA,

AND ‘l'HE COLLEGIATE LICENSING COMPANY,

Respondents.

ON PETITION FOR A WRIT OF CERTIORARI TO THE

UNITED StaTeEs Court oF APPEALS

FOR THE FIFTH CIRCUIT

BRIEF IN OPPOSITION

R. CHARLES HENN JR.

Counsel of Record

WILLIAM H. BREWSTER

KILPATRICK STOCKTON LLP

1100 Peachtree Street, Suite 2800

Atlanta, Georgia 30309-4530

(404) 815-6500

Counsel for Respondents

COUNSEL PRESS

(800) 274-3321 »* (800) 359-6859

QUESTIONS PRESENTED

1. Whether two-color combinations, used for

decades to identify famous Universities, are protectible

trademarks, when this Court already has held in

Qualitex Co. v. Jacobson Products, Co., 514 U.S. 159

(1995), that a color alone can be a protectible trademark.

2. Whether the Fifth Circuit Court of Appeals

misapplied its own precedent with respect to the

“likelihood of confusion” trademark-infringement

analysis.

3. Whether the doctrine of “aesthetic functionality,”

which has been consistently rejected by the courts of

appeals, can be used to justify the intentional use of

the Universities’ color trademarks to market t-shirts

to the Universities’ fans for the sole purpose of trading

on the goodwill associated with those trademarks.

4. Whether the district court in this case properly

followed Fifth Circuit precedent in applying the doctrine

of nominative fair use.

PARTIES TO THE PROCEEDING AND

RULE 29.6 STATEMENT

The parties to this proceeding are Smack Apparel

Company and Wayne Curtiss, and the Board of

Supervisors of the Louisiana State University and

Agricultural and Mechanical College, Board of Regents

of the University of Oklahoma, The Ohio State

University, University of Southern California, and the

Collegiate Licensing Company. Pursuant to this Court’s

Rule 29.6, Respondent The Collegiate Licensing

Company states that more than ten percent of its shares

are owned by IMG Worldwide, Inc.

iil

TABLE OF CONTENTS

QUESTIONS PRESENTED

PARTIES TO THE PROCEEDING AND

RULE 29.6 STATEMENT

TABLE OF CONTENTS

TABLE OF CITED AUTHORITIES

INTRODUCTION

A. District Court Ruling

B. Court of Appeals Ruling

REASONS FOR DENYING THE PETITION ...

A. The Court of Appeals’ Rulings on the

Protectibility of Respondents’ Color

Schemes and Likelihood of Confusion Do

Not Raise Important or Unsettled

Questions of Federal Law.

1. The Protectibility of Respondents’

Color Schemes Is Well Established.

Contents

The Fifth Circuit Properly Followed

Its Own Precedent in Conducting Its

Likelihood of Confusion Analysis. ...

B. The Court of Appeals’ Rulings on

Aesthetic Functionality and Nominative

Fair Use Are Consistent with Other

Courts of Appeals’ Decisions and this

COME FS 5 ei 5 eae ewe 26

1. The Doctrine of Aesthetic

Functionality Has Been Rejected,

and No Split in Authority Exists On

Se oe ea ie a ees ee 27

Petitioners’ Nominative Fair Use

Contention Does Not Support a Writ

gk | SAISRES erie ges aang Ban wri caay AAagE eRE 34

CONCLUSION

APPENDIX

TABLE OF CITEDAUTHORITIES

Page

Cases

A & H Sportswear, Inc. v. Victoria’s

Secret Stores, Inc.,

237 F:3d 198, 57 U.S.P.Q.2d 1097 (3d Cir. 2000)

A & H Sportswear Co. v. Victoria’s

Secret Stores, Inc.,

166 F.3d-197 (3d Cir. 1999)

AME Inc. v. Sleekcraft Boats,

599 F.2d 341 (9th Cir. 1979)

Au-tomotive Gold, Inc. v. Volkswagen

of America, Inc.,

457 F.3d 1062 (9th Cir. 2006) 1,32. 14, 27, 31

Board of Supervisors of the Louisiana State

University v. Smack Apparel Co.,

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

Board of Supervisors of the Louisiana State

University v. Smack Apparel Co.,

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

Board of Supervisors of the Louisiana State

University v. Smack Apparel Co.,

574 F. Supp. 2d 601 (E.D. La. 2008)

Cited Authorities

Boston Athletic Association v. Sullivan,

867 F.2d 22 (1st Cir. 1989)

Boston Professional Hockey Association, Ine. v.

Dallas Cap & Emblem Manufacturing, Inc.,

510 F2d 1004 (5th Cir.) passim

Brookfield Communications, Inc. v. West

Coast, Entertainment Corporation,

174 F3d 1036 (9th Cir. 1999)

Chicago Bears Footbali Club, Inc. v. 12th Man/

Tennessee, LLC,

2007 WL 683778, 83 U.S.PQ.2d 1073

(T.T.A.B. Feb. 28, 2007)

dlicks Billiards, Inc. v. Sixshooters, Inc.,

251 F.3d 1252 (9th Cir. 2001) 1, 14, 30, 31

Cosmos Jewelry Ltd. v. Hung’s Jewelry Inc.,

61 U.S.PQ.2d 1220 (D. Haw. 2001)

Dallas Cowboys Cheerleaders, Inc. v.

Pussycat Cinema, Ltd.,

604 F.2d 200 (2d Cir. 1979)

Dastar Corporation v. Twentieth Century

Fox Film Corporation,

539 U.S. 23 (2003)

vil

Cited Authorities

David Berg & Co. v. Gatto International

Trading Co.,

884 F.2d 306 (7th Cir. 1989)

Eco Manufacturing LLC v. Honeywell

International, Inc.,

357 F.3d 649 (7th Cir. 2003)

Elvis Presley Enterprises, Inc. v. Capece,

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

First Brands Corporation v. Fred Meyer, Inc.,

809 F.2d 1378 (9th Cir. 1987)

Frisch’s Restaurants v. Elby’s Big Boy

of Steubenville, Inc.,

670 F.2d 642 (6th Cir. 1982)

General Mills, Inc. v. Henry Regnery Co.,

421 F. Supp. 359 (N.D. Ill. 1976)

GoTo.com, Inc. v. Walt Disney Co.,

202 F.3d 1199 (9th Cir. 2000)

Home Builders Association of Greater St. Louis

v. L&L Exhibition Management, Inc.,

226 F'3d 944 (8th Cir. 2000)

Ideal Toy Corp. v. Plawner Toy

Manufacturing Corporation,

685 F:2d 78 (3d Cir. 1982)

Vili

Cited Authorities

Page

In re Owens-Corning Fiberglass Corporation,

774 F.2d 1116 (Fed. Cir. 1985)

International Order of Job’s Daughters v.

Lindeburg & Co.,

633 F.2d 912 (9th Cir. 1980) passim

Jellibeans, Inc. v. Skating Clubs of Georgia, Inc.,

715 F.2d 833 (11th Cir. 1983)

John H. Harland Co. v. Clarke Checks, Inc.,

711 F.2d 966 (11th Cir. 1983)

Knitwaves, Inc. v. Lollytogs Ltd.,

71 F.3d 996 (2d Cir. 1995)

Kentucky Fried Chicken Corporation v.

Diversified Packaging Corporation,

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

L.D. Kichler Co. v. Dawoil, Inc.,

192 F.3d 1349 (Fed. Cir. 1999)

Mishawaka Rubber & Woolen Manufacturing

Co. v. S.S. Kresge Co.,

316 U.S. 203 (1942)

Mosely v. V Secret Catalogue, Inc.,

537 U.S. 418 (2003)

Cited Authorities

National Football League Properties Ine. v.

Wichita Falls Sportswear, Inc.,

532 F. Supp. 651 (W.D. Wash. 1982)

New Kids on the Block v. News America

Publishing, Inc.,

971 F.2d 302 (9th Cir. 1992)

Panavision International, L.P v. Toeppen,

141 F.3d 1316 (9th Cir. 1998)

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

155 F.3d 526 (5th Cir. 1998)

Polaroid Corporation v. Polaroid

Electronics Corporation,

287 F.2d 492 (2d Cir.)

Prestonettes, Inc. v. Coty,

264 U.S. 359 (1924)

Professional Golfers Association of

America v. Bankers Life & Casualty Co.,

514 F.2d 665 (5th Cir. 1975)

Qualitex Co. v. Jacobson Products Co., Inc.,

514 U.S. 159 (1995)

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

732 F.2d 417 (5th Cir. 1984)

Cited Authorities

Sno-Wizard Manufacturing, Inc. v.

Eisemann Products Co.,

791 F.2d 423 (5th Cir. 1986)

Societe Des Produits Nestle, S.A. v.

Casa Helvetia, Inc.,

982 F.2d 638 (1st Cir. 1992)

SquirtCo v. Seven-Up Co.,

628 F.2d 1086 (8th Cir. 1980)

Sullivan v. CBS Corp.,

385 F.3d 772 (7th Cir. 2004)

Sun Banks of Florida, Inc. v. Sun Federal

Savings & Loan Association,

651 F.2d 311 (5th Cir. 1981)

Supreme Assembly, Order of Rainbow for

Girls v. J.H. Ray Jewelry Co.,

676 F.2d 1079 (5th Cir. 1982)

Taco Cabana International, Inc. v.

Two Pesos, Inc.,

932 F2d 1113 (5th Cir. 1991)

Team Tires Plus, Ltd. v. Tires Plus, Inc.,

394 F.3d 831 (10th Cir. 2005)

Cited Authorities

TrafFix Devices, Inc. v. Marketing

Displays, Inc.,

532 U.S. 23 (2001)

Transportation, Inc. v. Mayflower Servs., Inc.,

769 F.2d 952 (4th Cir. 1985)

Truck Equipment Service Co. v. Fruehauf

Corporation,

536 F.2d 1210 (8th Cir. 1976)

Two Pesos, Inc. v. Taco Cabana, Inc.,

505 U.S. 763 (1992)

United States v. Giles,

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

University of Georgia Athletic

Association v. Laite,

756 F.2d 1535 (11th Cir. 1985)

University of Pittsburgh v. Champion

Products, Inc.,

686 F.2d 1040 (3d Cir. 1982)

University of Pittsburgh v.

Champion Products, Inc.,

566 F. Supp. 711 (W.D. Pa. 1983)

Cited Authorities

Vuitton et Fils S.A. v. J. Young

Enterprises, Inc.,

644 F.2d 769 (9th Cir. 1981)

Wal-Mart Stores, Inc. v. Samara Brothers, Inc.,

529 U.S. 205 (2000) 9,11, 20, 21

Westchester Media v. PRL USA Holdings, Inc.,

214 F.3d 658 (5th Cir. 2000)

Yale Hlectric Corporation v. Robertson,

26 F.2d 972 (2d Cir. 1928)

Statutes

15 U.S.C. § 1051

15 U.S.C. § 1115

15 U.S.C. § 1125

La. Rev. Star. ANN. 51:1401

LA. Rev. Stat. ANN. 51:211

xili

Cited Authorities

Rules

Rules of the Supreme Court of the United

States, Rule 10

Rules of the Supreme Court of the United

States, Rule 29.6

Treatises

ANNE GILSON LALONDE, GILSON ON TRADEMARKS

(2007) ff

EUGENE GRESSMAN ET AL., SUPREME COURT

PRACTICE (9th ed. 2008)

J. THOMAS McCartTuy, MCCARTHY ON TRADEMARKS

AND UNFAIR COMPETITION (4th ed. 2009)

8. 19, 21, 27, 32

LegislatIve Materials

S. Rep. No. 1333, 19th Cong., 2d Sess. .

Other Authorities

RESTATEMENT (THIRD) OF UNFAIR COMPETITION

(1995)

]

INTRODUCTION

Out of narrow case-specific holdings, petitioners

strain to create sweeping doctrinal issues. The holdings

in this case neither raise substantial questions of

unsettled federal law nor conflict with any precedent of

other courts of appeals or of this Court. The petition

itself, largely devoted to the facts and procedural

disposition of this case, highlights the limited, case-

specific nature of the conclusions below. Two of

petitioners’ proposed questions aver disagreements by

different panels of the Fifth Circuit, an inappropriate

basis for seeking a writ of certiorari. And the petition’s

asserted conflicts among authorities stem not from

actual disagreements among courts of appeals but from

petitioners’ omissions of cases demonstrating

consistency across the federal courts. For example, the

divergence claimed by petitioners between the Fifth and

Ninth Circuits on the issue of aesthetic functionality has

been eliminated — to the extent that it ever existed at

all — by the more recent decisions in Clicks Billiards,

Inc. v. Sixshooters, Inc., 251 F.3d 1252 (9th Cir. 2001)

and Au-tomotive Gold, Inc. v. Volkswagen of America,

Inc., 457 F.3d 1062 (9th Cir. 2006), cert. denied, 549 U.S.

1282 (2007), which petitioners fail even to mention.

The exaggerated significance petitioners assign

to this case, which is about six t-shirts, derives from

petitioners’ misapprehension of fundamental trademark

principles, not from any actual magnitude of the issues

raised. For instance, at least since Judge Learned Hand

articulated the principle that “[{if] another uses [an

owner’s trademark], he borrows the owner’s reputation,

whose quality no longer lies within his own control,”

Yale Electric Corporation v. Robertson, 26 k.2d 972, 974

(2d Cir. 1928), trademark law has been settled with

respect to a trademark owner’s right to control the

quality and reputation of his mark. This case is hardly

the first addressing the scope of a trademark owner’s

rights or an owner’s ability to control the reputation

and quality associated with its mark. Pet. at 26-30.

Indeed, the absence of a substantial legal question in

this case may be best demonstrated by the petition itself,

which devotes nearly twenty-six of its thirty-eight pages

to the specific facts and decisions below, and which

frames the “significance” of the issues in terms of a single

industry — game-day sports apparel. Jd. at 30-31.

The Fifth Circuit’s decision in this case is closely

constrained to the facts and firmly rooted in

longstanding principles of trademark law. Accordingly,

this Court should deny the petition for a writ of

certiorari.

STATEMENT OF THE CASE

This case involves the intentional misappropriation

and use by a t-shirt vendor, Smack Apparel Company,

of the well known trademarks of four Universities —

LSU, Oklahoma, Ohio State, and USC. In the weeks

leading up to the college football Bowl Championship

Series in early 2004, without the respondents’

permission, petitioners incorporated the Universities’

famous trademarks (including their well-known color

schemes in combination with other University-

identifying indicia) in designs printed on unlicensed

t-shirts that petitioners then sold in the same stores

and at the same prices as licensed University t-shirts.

T.1.e Universities’ football programs are among the

most 1eputable in the country, and their color schemes

(e.g., the Purple and Gold of LSU), which have been used

and extensively promoted for over a century, are widely

recognized as identifying the Universities. See Bd. of

Supervisors v. Smack Apparel Co., 438 F. Supp. 2d 653,

658 (E.D. La. 2006); Pet. App. B at 50a. Indeed,

respondents’ color schemes have become such well-

known identifiers that third parties (such as newspapers

and magazines) often use them as short-hand references

for the Universities (e.g., “Scarlet and Gray” for OSU,

“Crimson and Cream” for OU, and “Cardinal and Gold”

for USC).'

In addition to these color schemes, respondents hold

both registered and unregistered trademark rights in

their names and commonly used initials. For example,

! Petitioners admit that the Universities’ color schemes

hold “secondary meaning” and operate as strong trademarks

by “conced[ing] that the Universities’ color schemes are well-

known and are used to identify the plaintiff Universities.”

Bd. of Supervisors v. Smack Apparel Co., 550 F.3d 465, 479 (5th

Cir. 2008); Pet. App. A at 19a. Contrary to the petition’s

suggestion that third-party uses of respondents’ color schemes

have weakened the Universities’ color schemes’ source-

identifying qualities, the record “evidence falls far below that

of extensive use, and the specific photographs of third-party

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

association between the [Universities] and color schemes and

other indicia that clearly reference the Universities.” /d.

(comparing petitioners’ meager 31 purported instances of

third-party use to cases involving several thousand instances

of third-party use, which were considered “extensive” enough

to weaken the mark at issue (citing Sun Banks of F'la., Inc. v.

Sun Fed. Sav. & Loan Ass’n, 651 F.2d 311, 316 (5th Cir. 1981)).

the University of Oklahoma owns federal trademark

registrations for its well-known OU trademark.” And

respondents routinely grant licenses to third parties to

manufacture and sell retail goods, including t-shirts,

bearing the Universities’ color schemes and other

trademarks.

With full knowledge of respondents’ color schemes,

trademark rights, and licensing programs — but without

obtaining a license from any of the respondents —

petitioners manufactured and sold the six t-shirt designs

at issue in this case.* Images of these designs appear in

2 Although the University of Oklahoma’s registrations for

the OU mark issued after petitioners first began selling the

“Show us Your Beads!” t-shirt, several facts undermine

petitioners’ claimed innocence regarding using this mark

(Pet. at 8-9), including: petitioners knew that Oklahoma held

registrations for the interlocking OU mark; petitioners knew

that Oklahoma had common law rights in the plain OU mark;

and petitioners did not stop selling the infringing t-shirts after

Oklahoma filed trademark applications for the OU mark.

See 438 F. Supp. 2d at 663; Pet. App. B at 68-69a.

* Petitioners devote seven pages of their petition to

describing the six t-shirt designs at issue. Pet. at 5-11.

Respondents object to these descriptions insofar as they contain

legal conclusions and misstatements of fact. In particular,

petitioners’ descriptions improperly contain legal conclusions,

such as “Smack uses words and images which are not

trademarks” (Pet. at 3) and “[tJhe ‘Got Seven?’ and ‘Got Eight?’

t-shirt designs are a parody... .” (id. at 10). Petitioners’

descriptions further contain factual misstatements. For

example, contrary to petitioners’ claim that “Smack has

manufactured virtually identical t-shirt designs for dozens of

other schools, including OU and LSU, without objection” (7d. at

(Cont’d)

the Appendix to this Brief. Resp’t App. A. Each of these

designs incorporates one of the Universities’ color

schemes combined with other source-identifying indicia,

including: (a) well known athletic events in which the

subject University has participated; (b) one of the

targeted University’s opponents in such an athletic

event; (c) specific geographic references to where the

University is located or the event occurred; (d) athletic

titles or honors bestowed on the University as a result

of the event; or (e) a University’s prior athletic successes

or accomplishments (collectively, “identifying indicia”).‘

Consistent with similar cases decided by the courts

of appeals and this Court, the courts below held that

petitioners intentionally designed t-shirts bearing the

Universities’ color schemes, in combination with other

identifying indicia, and specifically marketed them to

the Universities’ fans for the sole purpose of trading on

(Cont’d)

10-11), respondents have objected often and vociferously to

petitioners’ conduct. In fact, shortly after the district court

entered judgment in this case, respondents successfully

brought a contempt action against petitioners for

manufacturing and selling t-shirt designs “virtually identical”

to those at issue here. See Bd. of Supervisors v. Smack Apparel

Co., 574 F. Supp. 2d 601, 603-606 (E.D. La. 2008).

4 Respondents have not claimed that any shirt bearing the

Universities’ color schemes would be infringing. Rather,

respondents consistently have contended that petitioners’ sales

of the six designs at issue constitute trademark infringement

and unfair competition because the color schemes are used

in combination with other source-identifying indicia. See 550

F:3d at 475; Pet. App. A at 11-12a.

the goodwill associated with respondents’ trademarks.

Petitioners conceded repeatedly, in testimony and

throughout briefing, 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.” 438 F. Supp. 2d at 658, Pet. App. B at

57a (emphasis added); see also 550 F.3d at 477, Pet. App.

A at 15a. Petitioners also conceded that they marketed

these t-shirts alongside licensed t-shirts, at the same

price point, without any markings indicating the shirts

were unlicensed, knowing that consumers might be

confused and purchase petitioners’ unlicensed t-shirts

instead of licensed ones.® 550 F.3d at 482; Pet. App. A

at 26a.

In seeking a writ of certioran, and attempting to

soften previously made concessions, petitioners offer

several misstatements. For example, the petition states

that petitioners’ t-shirts are distinguishable because

“Smack is known for [its] humorous messages... which

are rarely found on licensed products.” Pet. at 3. To the

contrary, “[i]t is clear from the record . .. that use of

creative language is not unique to Smack and does not

make Smack’s shirts dissimilar to the Universities’ own

products.” 550 F.3d at 480; Pet. App. A at 23a. Nor is it

significant, as Smack suggests, that respondents do not

license shirts glorifying alcohol consumption, nudity, and

sexual promiscuity. Pet. at 18. See Dallas Cowboys

® Respondents disagree with petitioners’ misleading

statements that “Smack does nothing to suggest that its t-shirts

are licensed or approved by the schools” (Pet. at 4) and “Smack

. did nothing to suggest that its t-shirts were endorsed or

approved by the schools” (Pet. at 5).

Cheerleaders Inc. v. Pussycat Cinema, Ltd., 604 F.2d

200, 204 (2d Cir. 1979) (rejecting argument that

“no reasonable person would believe that [depraved]

film originated with plaintiff” because “to be confused,

a consumer need not believe that the owner of the mark

actually produced the item and placed it on the

market”). In fact, petitioners’ “use of irreverent phrases

or slang comments misuses [respondents’] reputation

and good will, which is embodied in their trademarks.”

438 F. Supp. 2d at 660; Pet. App. B at 62a (citing Truck

Equip. Serv. Co. v. Fruehauf Corp., 536 F.2d 1210, 1215

(8th Cir. 1976) (“[T]hose who invest time, money and

energy in the development of good will and a favorabie

reputation [should] be allowed to reap the advantages

of their investment.”)). Nor is it the case that petitioner’s

two-and-one-half inch logo distinguishes petitioners’

shirts or cures consumer confusion. Pet. at 3-4. In fact,

there is no “evidence that [petitioners’] logo is

recognizable by consumers” and, because respondents

“require all licensed products to contain the licensee’s

name, ....aconsumer could believe that Smack’s logo

merely indicated that it was a licensee.” 550 F'3d at 482-

83; Pet. App. A at 27-28a. Finally, it is not true that

“(t]here was no evidence of actual confusion.” Pet. at

14. Rather, the record contains actual-confusion

evidence. Petitioners conceded that consumers

specifically asked whether petitioners’ shirts were

licensed. 550 F'3d at 483 n.69; Pet. App. A at 29a n.69.

Consumer surveys concerning two of the t-shirt designs

showed significant likelihood of confusion. Jd. And at

the trial on damages, the jury found actual confusion.

More fundamentally, actual confusion is unnecessary to

demonstrate infringement, which hinges cn a likelihood

of confusion. Jd. at 483, 28a; see also Brookfield

Commce’ns., Inc. v. West Coast, Entm't Corp., 174 F.3d

1036, 1050 (9th Cir. 1999); 4 J. THomas McCartuy,

McCartTuy ON TRADEMARKS AND UNFAIR COMPETITION $

23:12 (4th ed. 2009) (hereinafter McCartuy) (collecting

cases).

A. District Court Ruling

Respondents brought this action in June 2004, in

the United States District Court for the Eastern District

of Louisiana, alieging, inter alia, that the sale of these

t-shirts by petitioners constitutes trademark

infringement and dilution, unfair competition, and

deceptive trade practices arising under the Lanham Act,

15 U.S.C. § 1051 et seqg.; the Louisiana Unfair Trade

Practices and Consumer Protection Law, La. Rev. Srarv.

ANN. 51:1401 et seqg.; the Louisiana Trademark Law, La.

Rev. Stat. ANN. 51:211 et seg.; the deceptive trade

practices statutes and trademark and antidilution laws

of the several states; and the common law. 438 F. Supp.

2d at 656; Pet. App. B at 52a.®

On cross-motions for summary judgment on liability,

and following summary-judgment hearings, the district

court granted summary judgment on liability in

respondents’ favor. The district court’s summary

judgment held: (1) the Universities’ color schemes not

® The Louisiana Unfair Trade Practices Act and the

common law of the various states in which petitioners sell their

t-shirts provide “independent and adequate state law grounds,”

which make imprudent a writ of certiorari. See generally

EUGENE GRESSMAN ET AL., SUPREME CourRT PRACTICE: F'or

PRACTICE IN THE SUPREME CourT OF THE UNITED StaTES 207-14

(9th ed. 2007).

only had “secondary meaning” and were protectible, but

were “extremely strong marks”; (2) petitioner infringed

these marks and committed unfair competition by

creating a “likelihood of confusion” among consumers;

and (3) petitioner’s proffered defenses of functionality,

nominative fair use, and laches failed as a matter of law.

438 F. Supp. 2d at 656-63; Pet. App. B at 53-68a.

The summary judgment applied trademark

principles well settled by this Court and the courts of

appeals. In particular, the district. court took great care

to apply this Court’s holdings that: “a color scheme may

be protectible as a trademark if it ‘identifies and

distinguishes a particular brand (and thus indicates its

‘source’),’” id. at 657, 54a (quoting Qualitex Co. v.

Jacobson Prods. Co., Inc., 514 U.S. 159, 163-64 (1995));

and, to receive trademark protection, a color scheme

must attain “secondary meaning” — 2.e., “‘in the minds

of the public, the primary significance of [the mark] is

to identify the source of the product and not the product

itself.” 7d. (quoting Wal-Mart Stores, Inc. v. Samara

Bros., Inc., 529 U.S. 205, 211-12 (2000)). It also carefully

tracked the Fifth Circuit’s “digits of confusion” — noting

their congruence with other courts of appeals’

“likelihood of confusion factors” — and thoroughly

considered and applied precedent from this Court and

the courts of appeals concerning functionality,

nominative fair use, and laches.

A two-day jury trial on damages followed. After the

district court denied petitioners’ motion for a judgment

as a matter of law, the jury found: (1) petitioners’

infringement caused actual confusion of the public;

(2) respondents were entitled to actual damages

(a reasonable royalty) in the amount of $7,226.80; and

(3) respondents were entitled to an award of petitioners’

profits in the amount of $35,686.00.

After hearing motions on injunctive relief,

enhancement of damages, and attorneys’ fees, the

district court permanently enjoined petitioners from

“manufacturing, distributing, advertising, selling, or

offering for sale any of the six designs found to be

infringing in the court’s July 18, 2006 summary

judgment order or any other designs that are similar to

the six infringing designs.” The district court declined

to award enhanced damages.

Judgment was entered on February 9, 2007, and

amended on April 16, 2007, to award prejudgment

interest to respondents in the amounts of $508.24 (LSU),

$227.10 (OU), $412.41 (OSU), and $39.56 (USC). The

district court taxed costs of $16,927.49 against

petitioners on April 24, 2007. Attorneys’ fees of

$94,311.81 were awarded to respondent LSU under the

Louisiana Unfair Trade Practices and Consumer

Protection Law.

B. Court of Appeals Ruling

The Fifth Circuit unanimously affirmed the district

court and denied petitioners’ request for rehearing en

banc. In a thorough opinion, Judge Reavley, writing for

the Fifth Circuit, preempted each of petitioners’ reasons

for seeking a writ of certiorari.

Like the district court, the court of appeals

meticulously followed this Court’s precedent, reasoning,

inter alia, that “[bJecause the [Supreme] 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.” 550

F:'3d at 476; Pet. App. A at 12a (citing Qualitex, 514 U.S.

at 163-64, and applying Samara Bros., 529 U.S. at 211,

requiring a showing of “secondary meaning”).

Concluding that respondents’ marks were protectible,

the appeals court reviewed the “likelihood of confusion”

“digits” de novo and held:

[GJiven the record in this case and the digits

of confusion analysis discussed above—

including the overwhelming similarity

between the [petitioners’] t-shirts and the

Universities’ licensed products, and the

[petitioners’] admitted intent to create an

association with the [respondents] and to

influence consumers in calling the

[Universities] 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.

Id. at 485, 33a (emphasis added). Emphasizing the case-

specific nature of its holding, the court of appeals tiius

unanimously rejected petitioners’ contentions.

The Fifth Circuit further foresaw petitioners’

present claim that two of its previous cases, Boston

Professional Hockey Association, Inc. v. Dallas Cap &

Emblem Manufacturing, Inc., 510 F.2d 1004 (5th Cir.)

(“Boston Hockey”), cert. denied, 423 U.S. 868 (1975),

and Supreme Assembly, Order of Rainbow for Girls v.

J.H. Ray Jewelry Co., 676 F.2d 1079 (5th Cir. 1982)

(“Rainbow for Girls”), were inconsistently decided.

Detailing each case’s holding, the court explained that,

while the fraternal organization’s jewelry designs in

Rainbow for Girls lacked secondary meaning among

consumers and had no history of licensing or trademark

enforcement, the professional hockey team emblems in

Boston Hockey exclusively were associated with the

hockey-team trademark owners in consumers’ minds

and, thus, warranted protection. /d. at 484-85, 31-34a.

Anticipating petitioners’ “aesthetic functionality”

reason for seeking certiora7z, the Fifth Circuit discussed

at length the history of the “aesthetic functionality”

doctrine, noting in particular the Ninth Circuit’s holding

in Au-tomotive Gold, 457 F.3d at 1074 (“the fact that a

trademark is desirable does not, and should not, render

it unprotectible”), which further solidified the unanimity

among courts of appeals in rejecting that doctrine.

550 F.3d at 488; Pet. App. A at 39a.

Finally, predicting petitioners’ “nominative fair use”

contention, the Fifth Circuit carefully detailed the

proper application of that doctrine. Specifically, the court

noted that “a court ordinarily should consider a

nominative fair use claim in conjunction with its

likelihood-of-confusion analysis. .. .” Jd. at 489, 42a. Even

assuming arguendo petitioners’ claim that the district

court considered nominative fair use after its likelihood-

of-confusion conclusion, the Fifth Circuit observed that

it has “declined to require any particular method for

the consideration in cases where the nominative use is

not a significant factor in the liability determination.”

Id.

Provided the Fifth Circuit’s extremely well reasoned

and unanimous opinion, which, at every turn,

emphasized its reliance on well established trademark

principles and detailed the case-specific nature of its

holdings, this Court should deny the petition.

REASONS FOR DENYING THE PETITION

Petitioners offer no compelling reason for this

Court’s review. The petition itself is devoted almost

entirely to discussing the facts, narrow reasoning, and

industry-specific (rather than broad jurisprudential)

implications of this case. And two of the four questions

it presents to this Court concern whether the Fifth

Circuit properly followed its own precedent, not a

proposed split in authority between courts of appeals

or a federal question of substantial importance. Beyond

that, the petition merely disagrees with longstanding

and well-established principles of trademark law, decided

by this Court and the courts of appeals.’

The protectibility of colors as trademarks is well-

established, Qualitex, 514 U.S. at 166; and respondents’

trademarks, consisting of color combinations, fall well

within this ambit of protection. The courts below neither

erred in reaching this case-specific conclusion nor in

’ See S. Cr. R. 10 (“A petition for a writ of certiorari is rarely

granted when the asserted error consists of erroneous factual

findings or the misapplication of a properly stated rule of law.”).

applying the Fifth Circuit’s own precedent regarding

the likelihood-of-confusion analysis or nominative-fair-

use defense. Moreover, whether a court of appeals

correctly applied its own precedent is not an issue

appropriate for certiorari. See GRESSMAN, supra n.6, at

253-54.

The Fifth Circuit’s decision in this case also does

not create a conflict among courts of appeals. Indeed,

from Boston Hockey, cert. denied, 423 U.S. 868 (1975),

to International Order of Job’s Daughters v. Lindeburg

& Co., 633 F.2d 912 (9th Cir. 1980), cert. denied, 452 U.S.

941 (1981) — the central cases petitioners cite as creating

a split in authority — through more recent cases such as

Au-tomotive Gold, 457 F.3d at 1072, cert. denied, 549

U.S. 1282 (2007), this Court consistently has denied

certiorari on this issue Moreover, the Fifth Circuit’s

decision in Rainbow for Girls, a case relied upon heavily

by petitioners, demonstrates the consistency between

the Fifth and Ninth Circuits; that case reached the same

conclusion of non-infringement as the Ninth Circuit in

Job’s Daughters—both cases concerning fraternal

organizations’ attempts to stop the use of their marks

on jewelry. Perhaps most fundamentally, petitioners’

reliance on the Ninth Circuit’s 1980 Job’s Daughters

decision is extremely misleading, as the Ninth Circuit

subsequently rejected the doctrine of aesthetic

functionality and favorably discussed Boston Hockey.

See Clicks Billiards, 251 F.3d at 1260; and Au-tomotive

Gold, 457 F:3d at 1072. Failing to mention either of these

Ninth Circuit decisions, petitioners attempt to engineer

a disagreement among circuits where none exists. For

these reasons and those discussed in greater detail

below, this Court should deny the petition.

A. The Court of Appeals’ Rulings on the

Protectibility of Respondents’ Color Schemes and

Likelihood of Confusion Do Not Raise Important

or Unsettled Questions of Federal Law.

The decision in this case rests on firmly established

trademark principles, including the ability of colors to

serve as trademarks, the source-identifying function of

all trademarks, and the Lanham Act’s dual interests in

protecting consumers and trademark owners. Contrary

to petitioners’ contentions, this case does not involve

“issues of first impression” or unsettled federal

questions of law of substantial importance. Pet. at 32-

33, 37-38.

“A trademark is a word, name, symbol, device, or

other designation, or a combination of such designations,

that is distinctive of a person’s goods or services and

that is used in a manner that identifies those goods or

services and distinguishes them from the goods or

services of others.” RESTATEMENT (THIRD) OF UNFAIR

ComMPETITION § 9 (1995). The subject matter of a

trademark is virtually unlimited. Jd. cmt. g.

A trademark can consist of almost any

conceivable subject matter, from a word,

personal name, trade name, symbol, device,

picture, design, numeral, escutcheon,

monogram, abbreviation, acronym, slogan,

phrase, newspaper or magazine column title,

fragrance, color (pink for insulation), a sound

combination (the NBC chimes of yesteryear),

label, container (the Coca-Cola bottle),

package, product shape (LifeSaver candy),

building shape, telephone number,

geographical name, grade designation, or any

combination of these.

1 ANNE GILSON LALONDE, GILSON ON TRADEMARKS §

1.02[1][a] (2008) (internal citations omitted). See also

Qualitex, 514 U.S. at 161 (holding that a single color

may be protected as a trademark).

All trademarks “function” to identify a product’s

source, sponsorship or affiliation, Mishawaka Rubber

& Woolen Manufacturing Co. v. S.S. Kresge Co., 316 U.S.

203, 205 (1942); and source, sponsorship, and affiliation

are co-equals under the Lanham Act. Taco Cabana Int'l,

Inc. v. Two Pesos, Inc., 932 F.2d 11138, 1122 (5th Cir. 1991),

aff'd, 505 U.S. 763 (1992); Pebble Beach Co. v. Tour 18 I

Ltd., 155 F:'8d 526, 548 (5th Cir. 1998) (“The touchstone

of infringement is whether the use creates a likelihood

of confusion as to the ‘source, affiliation, or sponsorship’

[of the goods or services at issue].”); Prof ’l Golfers Ass’n

of Am. v. Bankers Life & Cas. Co., 514 F.2d 665, 670 (5th

Cir. 1975) (The Lanham Act specifically prohibits “falsely

suggesting affiliation with the trademark owner in a

manner likely to cause confusion as to source or

sponsorship. . .”).

A color scheme is a trademark when consumers

associate it with a particular source, sponsorship, or

affiliation. F.g., Qualitexr Co., 514 U.S. at 166 (green-

gold press pads); GoTo.com, Inc. v. Walt Disney Co.,

202 F'3d 1199, 1206 (9th Cir. 2000) (white, green, and

yellow color scheme on website); Transp., Inc. v.

Mayflower Servs., Inc., 769 F.2d 952, 955 (4th Cir. 1985)

(red and black color scheme on taxicabs); deal Toy Corp.

v. Plawner Toy Mfg. Corp., 685 F.2d 78, 80 n.3, 81 (3d

Cir. 1982) (six primary colors on faces of Rubik’s Cube

puzzle protected against imitator). A trademark, thus,

is a merchant’s:

authentic seal; by it he vouches for the goods

which bear it... . If another uses it, he

borrows the owner’s reputation, whose

quality no longer lies within his own control.

This is an injury, even [if] the borrower does

not tarnish it, or divert any sales by its use;

for a reputation, like a face, is the symbol of

its possessor and creator, and another can use

it only as a mask.

Yale Elec. Corp., 26 F.2d at 974 (Learned Hand, J.).

Trademark law “encourage[s] the production of quality

products” and assures a trademark owner that “it (and

not an imitating competitor) will reap the financial,

reputation-related rewards associated with a desirable

product.” Qualitex Co., 514 U.S. at 164 (internal

quotation marks and citations omitted); see also David

Berg & Co. v. Gatto Int'l Trading Co., 884 F.2d 306, 310

(7th Cir. 1989) (when a mark is infringed, “[w]hat truly

is infringed is the public’s right to be secure from

confusion and the corresponding right of each

trademark’s owner to control its own product’s

reputation.”).

Two “amaranthine principles” animate trademark

law: “One aims at protecting consumers. The other

focuses on protecting [trademark owners] and their

assignees.” Soctete Des Produits Nestle, S.A. v. Casa

Helvetia, Inc., 982 F.2d 633, 636 (1st Cir. 1992). Restated,

trademark law’s dual purpose is to “secure to the owner

of [a] mark the goodwill of his business and to protect

the ability of consumers to distinguish among competing

producers.” Two Pesos, Inc. v. Taco Cabana, Inc., 505

U.S. 763, 774 (1992) (rejecting contention that

protecting trademark rights in a design has

anticompetitive effects on the market). Indeed, in

addition to remedying consumer confusion, Congress

had in mind in enacting the Lanham Act that “where

the owner of a trade-mark has spent energy, time, and

money in presenting to the public the product, he is

protected in his investment from its misappropriation

by pirates and cheats.” S. Rep. No. 79-1333, at 3 (1946),

reprinted in 1946 U.S.C.C.A.N. 1274 (quoted in

Two Pesos, 505 U.S. at 782). Thus, contrary to

petitioners’ contention that an owner’s control of its

trademark is anti-competitive, such control is essential

to incentivizing investment in a mark and the

maintenance of quality consumers associate with the

mark. Petitioners’ actions transgress the fundamental

trademark protections of owners and consumers by

intentionally trading on the Universities’ goodwill with

the knowledge that doing so deceptively entices

consumers to buy petitioners’ shirts rather than

properly licensed ones.

Concomitantly, trademark law protects equally a

direct source, such as a manufacturer, and a secondary

source, such as a licensor who has granted to another

permission to use his mark on a particular product.

E..g., RESTATEMENT (THIRD) OF UNFAIR COMPETITION § 9

emt. c (1995). When used to identify a secondary source,

a trademark “signiflies] that the goods or services are

sponsored or approved by a particular business.” /d.

“For example, the name or logo of a university on

clothing can signify that the university authorizes,

endorses and licenses the sale of such wearing apparel

by the manufacturer.” 1 McCartny § 3:4. See also Univ.

of Ga. Athletic Ass’n v. Laite, 756 F.2d 1535, 1547 n.28

(llth Cir. 1985) (“[M]Jembers of the public do assume

that products bearing the mark of a school or sports

team are sponsored or licensed by the school or team”);

Dallas Cowboys Cheerleaders, Inc. v. Pussycat Cinema,

Ltd., 604 F.2d 200, 204-05 (2d Cir. 1979) (upholding

trademark rights in colors and design of Dallas Cowboys

Cheerleaders’ uniforms); Nat’l Football League Props.

Inc. v. Wichita Falls Sportswear, Inc., 532 F. Supp. 651,

659 (W.D. Wash. 1982) (“Trademark law does not just

protect the producers of products. The creation of

confusion as to sponsorship of products is also

actionable.”).

In the context, for example, of a trademark

infringement action brought by the University of

Pittsburgh against the t-shirt manufacturer Champion,

the Third Circuit explained:

[A] consumer does not desire a ‘Champion’ T-

shirt, he (or she) desires a ‘Pitt’ T-shirt. The

entire impetus for the sale is the consumer’s

desire to identify with Pitt, or, perhaps more

realistically, with Pitt’s successful athletic

programs... . [T]he crucial element is

consumer desire to associate with the entity

whose imprint is reproduced. This desire is

based on success or notoriety which, in turn,

is a result of the efforts of that entity.

Univ. of Pittsburgh v. Champion Prods., Inc., 686 F.2d

1040, 1047, 1049 (8d Cir.), cert. denied, 459 U.S. 1087

(1982).

As both the district court and the Fifth Circuit in

this case correctly recognized, petitioners admitted that

consumers buy t-shirts featuring the Universities’ color

schemes in combination with other identifying indicia

to show their affiliation with the Universities. As a result,

petitioners conceded the key issues in this case.

1. The Protectibility of Respendents’ Color

Schemes Is Well Established.

Contrary to petitioners’ argument, the idea that

color schemes are protectible as trademarks is not a

novel proposition or an issue of “first impression.”

See Pet. at 14-15, 31-32. Rather, the protectibility of color

schemes was established even before this Court’s

decision in Qualitex, 514 U.S. at 166 (holding that “color

alone” can be protected as a trademark). See, e.g.,

Transp., Inc., 769 F.2d at 955 (red and black color

scheme on taxicabs held protectible); deal Toy Corp.,

685 F.2d at 81 (holding color scheme on Rubik’s Cube

puzzle protected as a trademark); Jn re Owens-Corning

Fiberglass Corp., 774 F.2d 1116, 1128 (Fed. Cir. 1985)

(color pink on fiberglass insulation held protectible). And

this Court unequivocally has held that color schemes

are protectible trademarks when they have acquired

“secondary meaning” and are non-functional. Samara

Bros., 529 U.S. at 211-12.

A color scheme achieves “secondary meaning” when,

“in the minds of the public, the primary significance of

[the mark] is to identify the source of the product rather

than the product itself.” Jd. (internal quotation marks

omitted). It is black-letter law that a color mark has

secondary meaning when it identifies a single source in

consumers’ minds. Qualitex, 514 U.S. at 164. Petitioners

thus concede secondary meaning by admitting that, for

over a century, the “Universities have been using their

color schemes along with other indicia to identify and

distinguish themselves from others” (550 F.3d at 476;

Pet. App. A at 14a), and that respondents’ colors

are well known among consumers “as a shorthand

nonverbal visual means of identifying the universities”

(7d. (internal quotation marks omitted)).

The courts below correctly rejected petitioners’

assertion that the Universities’ color schemes could not

constitute trademarks because respondents had

entered too many license agreements and, thus,

diminished the ability of the marks to signify a single

source. Pet. at 15-16. As noted, trademarks identify not

only direct sources, such as manufacturers, but also

secondary sources, such as licensors and sponsors.

E.g., Dallas Cowboys Cheerleaders, Inc., 604 F:2d at 204-

205 (“The public’s belief that the mark’s owner

sponsored or otherwise approved the use of the

trademark satisfies the confusion requirement.”);

McCartuy § 3:4; RESTATEMENT § 9 cmt. c. And to be

protectible, a mark is not required to signify only

“origin” or “source” to consumers, but alternatively may

signify sponsorship, endorsement, or affiliation.

See 15 U.S.C. § 1125(a)(1)(A) (2006) (proscribing

likelihood of confusion as to “affiliation, connection, or

association, ... or as to... origin, sponsorship, or

approval”); see also Team Tires Plus, Ltd. v. Tires Plus,

Inc., 394 F.3d 831, 835 (10th Cir. 2005) (“[T]he relevant

confusion under trademark law is not limited to

confusion of consumers as to the source of the goods,

but also includes confusion as to sponsorship or

affiliation ....”); A & H Sportswear, Inc. v. Victoria’s

Secret Stores, Inc., 237 F.3d 198, 216, 57 U.S.PQ.2d 1097,

1107 (3d Cir. 2000) (“Marks are ‘confusingly similar if

ordinary consumers would likely conclude that [the two

products] share a common source, affiliation, connection

or sponsorship.’”); Prof’l Golfers Ass’n, 514 F.2d at 670

(enjoining former licensee from misleading public into

believing affiliation continued after license expired).

The Universities’ licensing programs thus

demonstrate the strength, not weakness, of their marks.

And the fact that hundreds of other apparel

manufacturers, situated similarly to petitioners, have

acquired licenses from respondents to use the

Universities’ colors and other trademarks demonstrates

the strength of these trademarks. Ky. Fried Chicken

Corp. v. Diversified Packaging Corp., 549 F.2d 368, 387

(5th Cir. 1977) (control over licensees’ use of an owner’s

mark demonstrates strength in a mark).

In short, Petitioners’ “protectibility of color

schemes” and “secondary meaning” arguments do not

warrant a writ of certiorari.

2. The Fifth Circuit Properly Followed Its Own

Precedent in Conducting Its Likelihood of

Confusion Analysis.

Petitioners attempt to concoct a substantial

question of federal law by asserting that two previous

Fifth Circuit decisions are inconsistent with one another

and that, on this basis, the court misapplied the

likelihood-of-confusion analysis. Pet. at 20-22.

Petitioners are wrong on both counts. But even if

petitioners were correct, an intra-circuit disagreement

is not a proper basis for granting a writ of certiorari.

E’.g., GRESSMAN, supra n.6, at 253-54.

Likelihood of confusion is an extremely case-specific

determination. See, e.g., A & H Sportswear Co. v.

Victoria’s Secret Stores, Inc., 166 F.8d 197, 206-207

(3d Cir. 1999) (likelihood of confusion ultimately depends

on circumstances of particular case and “inference[s]

drawn from the totality of relevant facts”). To determine

infringement, the courts of appeals have developed

highly similar likelihood-of-confusion “factors” or

8 In its final pages, the petition also references two of this

Court’s decisions to assert that this case presents a substantial

question. Pet. at 33-34. Neither decision previously has been

cited in this case, and neither is relevant. Mosely v. V Secret

Catalogue, Inc., 537 U.S. 418 (2003) concerned trademark

dilution, not infringement or likelihood of confusion. And

Dastar Corperation v. Twentieth Century Fox Film

Corporation, 539 U.S. 23, 35-37 (2003), concerned the boundary

between copyright and tracilemark law and the definition of the

term “origin” in the Lanham Act in relation to “author” in the

“digits.” Both because every case involves unique

mark(s) and circumstances, and because courts agree

that “[nJo one factor is dispositive,” a likelihood-of-

confusion determination is extremely case-specific. Hlvis

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

Cir. 1998) (“a finding of a likelihood of confusion does

not even require a positive finding on a majority of the[ ]

‘digits of confusion’”).

Petitioners appear to suggest that the Fifth Circuit,

confused by its own holdings in Boston Hockey and

Rainbow for Girls, erred in finding likelihood of

confusion in this case. Pet. at 20-22. Specifically,

petitioners contend that Boston Hockey was wrongly

decided and that the present case is more like Rainbow

for Girls (which found no infringement). 7d. Both

contentions are wrong.

First, this Court denied certiorari in Boston Hockey,

423 U.S. 868, which held that the defendant, who

manufactured and sold unlicensed professional hockey

team emblems bearing plaintiffs’ trademarks, caused a

likelihood of confusion among consumers between the

® See, e.g., Sullivan v. CBS Corp., 385 F:3d 772, 776-77 (7th

Cir. 2004 (seven factor test); Westchester Media v. PRL USA

Holdings, Inc., 214 F.3d 658, 663-64 (5th Cir. 2000) (eight

“digits”); Jellibeans, Inc. v. Skating Clubs of Ga., Inc., 715 F.2d

833 (11th Cir. 1983) (seven factor test); F'risch’s Rests. v. Elby’s

Big Boy of Steubenville, Inc., 670 F.2d 642, 648 (6th Cir. 1982)

(eight factor test); SquirtCo v. Seven-Up Co., 628 F.2d 1086, 1091

(8th Cir. 1980) (six factor test); AMF Inc. v. Sleekcraft Boats,

599 F.2d 341 (9th Cir. 1979) (eight factor test); Polaroid Corp. v.

Polaroid Elecs. Corp., 287 F.2d 492, 495 (2d Cir.) (seven factor

test), cert denied, 368 U.S. 820 (1961).

unlicensed emblems and products licensed by plaintiffs.

510 F.2d at 1012. In particular, that case concluded

likelihood of confusion existed because defendant made

and sold emblems “knowing that the public would

identify them as being the [plaintiff] teams’ trademarks.”

Id.

In Rainbow for Girls, the Fifth Circuit found no

likelihood of confusion when the defendant sold jewelry

bearing a fraternal organization’s registered

trademarks. 676 F.2d at 1084. Likelihood of confusion

was lacking, znter alia, because the facts demonstrated

plaintiff’s failure to control the manufacturing of jewelry

bearing its trademark; it did not, for example, have a

history of requiring jewelry bearing its mark to be

licensed. Jd.

Consistent with the case-specific nature of likelihood-

of-confusion determinations, the holdings of these two

cases are not incongruent. In fact, as the Fifth Circuit

in this case noted, Rainbow for Girls discussed Boston

Hockey in recognizing that “[i]t is not unreasonable to

conclude, given the degree to which sports emblems are

infringement without expressly finding likelihood of confusion.

See Job’s Daughters, 633 F.2d at 918; Gen. Mills, Inc. v. Henry

Regnery Co., 421 F. Supp. 359, 362 (N.D. Ill. 1976); McCarrtuy §

24:10. The Fifth Circuit since repeatedly has clarified that a

likelihood of confusion is required for infringement. See, e.g.,

Rainbow for Girls., 676 F.2d at 1082 n.3; Ky. Fried Chicken Corp.,

549 F.2d at 388. In any event, in this case both the district court

and court of appeals painstakingly analyzed all of the “digits”

of confusion and found that a likelihood of confusion exists as a

matter of law.

used to advertise teams and endorse products, that a

consumer seeing the emblem... on or associated with a

good or service would assume some sort of sponsorship

or association between the product’s seller and the

team.” /d. at 1085. Restated, under the facts in Boston

Hockey, the defendant’s intent and the widely

acknowledged strength of the marks were the most

salient likelihood-of-confusion factors in finding

infringement; in Rainbow for Girls, the failure of the

plaintiff to police its mark or the quality of goods bearing

the mark, and the weakness of plaintiff’s mark, proved

most significant in finding no likelihood of confusion. See

550 F.3d 484-85; Pet. App. A at 32-33a.

Contrary to petitioners’ argument, these holdings

are not inconsistent and do not suggest that the Fifth

Circuit misapplied its own likelihood-of-confusion

analysis. Instead, the outcomes of Boston Hockey and

Rainbow for Girls merely demonstrate the extremely

case-specific nature of all likelihood-of-confusion

inquiries. As in Boston Hockey, the petition should be

denied.

B. The Court of Appeals’ Rulings on Aesthetic

Functionality and Nominative Fair Use Are

Consistent with Other Courts of Appeals’

Decisions and this Court’s Precedent.

Petitioners next contend that this Court should

review this case on the basis of two defenses petitioners

have asserted, namely “aesthetic functionality”'' and

" “Aesthetic functionality” refers to the idea that

“[cJonsumers sometimes buy products bearing marks such as

(Cont'd)

“nominative fair use.” Specifically, petitioners claim

that: (1) courts of appeals disagree over the viability of

the doctrine of aesthetic functionality; and (2) the district

court below misapplied the doctrine of nominative fair

use by considering that defense after the likelihood-of-

confusion analysis, rather than during it. Neither of

these contentions is correct, and neither supports

granting a writ of certiorari.

1. The Doctrine of Aesthetic Functionality Has

Been Rejected, and No Split in Authority

Exists On This Issue.

Petitioners contend “the Fifth Circuit’s position (in

Boston Hockey) is at odds with the position taken by

the Ninth Circuit (in Job’s Daughters).” Pet. at 33.

No such disagreement exists.

In Boston Hockey, the Fifth Circuit first rejected

the “aesthetic functionality” doctrine. 510 F.2d at 1013

(“(T]he embroidered symbols [at issue] are sold not

because of any such aesthetic characteristic but because

they are the trademarks of hockey teams”), cert. denied,

423 U.S. 868 (1975). It subsequently has re-affirmed this

(Cont’d)

the Nike swoosh, the Playboy bunny ears, the Mercedes tri-

point star, the Ferrari stallion, and countless sports franchise

logos, for the appeal of the mark itself, without regard to

whether it signifies the origin or sponsorship of the product.”

Au-tomotive Gold, 457 F.3d at 1067.

'2 Nominative fair use refers to the use of a “trademark in

a non-confusing way to identify the [trademark owner’s] goods

or services.” McCartny § 23:11.

ruling numerous times. See Pebble Beach, 155 F.3d. at

540 n.6 (“This circuit has rejected the doctrine of

aesthetic functionality.”); Sxno-Wizard Mfg., Inc. v.

EKisemann Prods. Co., 791 F.2d 423, 426 n.3.(5th Cir. 1986)

(“we thus reject ... the aesthetic standard of

functionality”); Sicilia Di R. Biebow & Co. v. Cox, 732

F.2d 417, 428 (5th Cir. 1984) (“We particularly reject the

suggestion that the doctrine of functionality insulates a

second comer from liability for copying the first comer’s

design whenever the second comer can merely cite

marketing reasons to justify the copying. .. .”).

Over the years, other courts of appeals have agreed

with the Fifth Circuit. See, e.g., Eco Mfg. LLC v.

Honeywell Int’l, Inc., 357 F.3d 649 (7th Cir. 2003)

(rejecting contention that consumers preferred “look”

of round thermostat); L.D. Kichler Co., 192 F.3d at 1353

(Federal Circuit reversing district court’s aesthetic

functionality determination for the color of lighting

fixtures; “Mere taste or preference cannot render a

color — unless it is ‘the best, or at least one, of a few

superior designs’ — de jure functional.”); Knitwaves, lnc.

v. Lollytogs Ltd., 71 F.3d 996, 1006 (2d Cir. 1995)

(decorative motif on sweater not aesthetically

functional); Boston Athletic Ass’n v. Sullivan, 867 F.2d

22, 34 (1st Cir. 1989) (adopting Boston Hockey; finding

infringement where consumers purchased defendant’s

t-shirts “precisely because of th{e] reference [to

plaintiff’s mark]”); John H. Harland Co. v. Clarke

Checks, Inc., 711 F.2d 966, 982 n.27 (11th Cir. 1983)

(rejecting defendant’s contention that district court

must give aesthetic functionality jury instruction);

Univ. of Pittsburgh, 686 F.2d at 1049 (demand for goods

bearing popular mark “due not to the efforts of

[defendant] but rather to the efforts of the school, team,

movie producer, musical group, [or entity] . . . whose

current popularity makes that imprint desirable”).

In Job’s Daughters, the Ninth Circuit took issue with

the plaintiff-appellee’s unduly broad reading of Boston

Hockey: “[Piaintiff] asserts that Boston Hockey supports

its contention that even purely functional use of a

trademark violates the Lanham Act. We reject the

reasoning of Boston Hockey.” 633 F.2d at 918.

Understanding likelihood of confusion to be the central

concern of trademark law, Job’s Daughters reasoned

that, “[iJnterpreted expansively, Boston Hockey holds

that a trademark’s owner has a complete monopoly over

its use, including its functional use, in commercial

merchandising.” /d. Thus, by reading Boston Hockey

beyond the four corners of its holding — indeed, beyond

the Fifth Circuit’s own interpretation of that case’ —

the Ninth Circuit, nearly thirty years ago in 1980,

suggested a possible circuit split on this issue.

Since then, however, the Ninth Circuit has retreated

from its position on aesthetic functionality, and the Fifth

Circuit repeatedly has reaffirmed that trademark nghts

'S See, e.g., Rainbow for Girls., 676 F.2d at 1082 n.3

(reaffirming that infringement requires showing of likelihood

of confusion); Ky. Fried Chicken Corp., 549 F.2d at 388 (same).

do not confer unbridled monopolization — thus obviating

any conceivable split among the circuits. Indeed,

Rainbow for Girls, a case heavily relied upon by

petitioners, demonstrates the harmony of the Fifth and

Ninth Circuits on this issue. 676 F.2d at 1082-85

(reaching same conclusion of non-infringement as the

Ninth Circuit in Job’s Daughters, both cases concerning

fraternal organizations’ attempt to control use of their

marks on jewelry).

Beginning in 1981, the Ninth Circuit rejected a

district court’s conclusion that “any feature of a product

which contributes to the consumer appeal and saleability

of the product is, as a matter of law, a functional element

of that product.” Vuitton et Fils S.A. v. J. Young

Enters., Inc., 644 F.2d 769, 773 (9th Cir. 1981) (internal

quotation marks omitted). Subsequently, the court

stated that, in the Ninth Circuit, “the ‘aesthetic’

functionality test has been limited, if not rejected, in

favor of the ‘utilitarian’ functionality test.” First Brands

Corp. v. Fred Meyer, Inc., 809 F.2d 1378, 1382 n.3 (9th

Cir. 1987) (internal citations omitted); see also

Panavision Int'l, L.PR v. Toeppen, 141 F.3d 1316, 1326

n.5 (9th Cir. 1998) (discussing favorably Boston Hockey).

By 2001, the Ninth Circuit plainly stated, “[nJor has this

circuit adopted the ‘aesthetic functionality’ theory, that

is, the notion that a purely aesthetic feature can be

functional,” Clicks Billiards, 251 F.3d at 1260,‘ causing

one commentator to remark: “That statement appears

'* See also Cosmos Jewelry Ltd. v. Hung’s Jewelry Inc., 61

U.S.PQ.2d 1220, 1223-24 (D. Haw. 2001) (vacating prior order

dismissing claim due to aesthetic functionality on the basis that

Clicks Billiards rejected the aesthetic functionality theory).

to mark the final end of the Ninth Circuit’s fifty year

flirtation with the aesthetic functionality theory.”

McCarthy § 7.80 (internal quotation marks omitted).

After Clicks Billiards, the Ninth Circuit further

mollified its past differences with other circuits when it

refused to allow a maker of key chains and auto license

plate holders to use the Volkswagen trademark on those

items. Au-Tomotive Gold, 457 F.3d at 1072, cert. denied,

549 U.S. 1282 (2007). Coming full circle to the Fifth

Circuit’s holding in Boston Hockey, the Ninth Circuit in

Au-tomotive Gold specifically rejected the argument

that Volkswagen owners’ aesthetic desire for automobile

accessories that match their cars permitted defendant

to use the Volkswagen trademark on such products. /d.

The Ninth Circuit recognized that this logic (the same

logic now urged by petitioners) “would be the death knell

for trademark protection.” Jd. at 1064.

In this manner, whatever conflict in authority might

have existed decades ago has been fully resolved by the

courts of appeals. Federal courts consistently reject the

doctrine of aesthetic functionality,’ and contemporary

‘6 Petitioners’ reference to United States v. Giles, 213 F.3d

1247, 1250-51 (10th Cir. 2000), does not evince a circuit split.

The Tenth Circuit distinguished that case from Boston Hockey

on several grounds, including: Giles was a criminal

counterfeiting case, not a civil suit; Boston Hockey decided only

the narrow issues of infringement and functionality; and the

issue in Giles was the definition of the term “goods” not

“aesthetic functionality.” Jd. Nor do the three district court

decisions listed in note 4 of the petition (Pet. at 28) suggest a

disagreement among courts of appeals. Those district court

(Cont'd)

commentators do not view this as an issue warranting

attention from this Court. #.g., McCarrtny § 7:81

(“Aesthetic functionality’ may be a theory in search of

a rationale.”). Petitioners’ claimed conflicts among

authorities derive not from real differences among

federal courts but from petitioners’ misleading

omissions of the cases that demonstrate homogeneity.

Finally, even if the aesthetic functionality doctrine

existed, this case would not involve it. The advantages

petitioners assert for using respondents’ trademarks

are directly related to the Universities’ reputations and

goodwill, not to any function of the marks. 438 F. Supp.

2d at 662; Pet. App. B at 66a (“As [petitioners] admit,

consumers purchase [petitioners’] shirts .. . to show

support for the particular university. ... [The

Universities’ color schemes and other identifying indicia]

have no demonstrated value other than their

significance to identify with the universities.”). “Mere

taste or preference cannot render a color — unless it is

the best, or at least one, of a few superior designs —

de jure functional.” L.D. Kichler Co. v. Davoil, Inc., 192

Fi3d 1349, 1353 (Fed. Cir. 1999) (internal quotation

(Cont'd)

cases are not aligned with courts of appeals’ decisions. For

example, although University of Pittsburgh v. Champion

Products, Inc., 566 F. Supp. 711 (W.D. Pa. 1983), questioned

Boston Hockey, the Third Circuit in that case favorably quoted

and discussed Boston Hockey, observing that, in the case at

hand, a “consumer does not desire a ‘Champion’ T-shirt, he (or

she) desires a ‘Pitt’ T-shirt. The entire impetus for the sale is

the consumer’s desire to identify with Pitt, or, perhaps more

realistically, with Pitt’s successful athletic programs.” 686 F.2d

at 1047.

marks omitted). The Trademark Trial and Appeal Board

of the U.S. Patent and Trademark Office recently

emphasized this requirement that a use must be non-

reputation related to give rise to functionality.

See Chicago Bears Football Club, Inc. v. 12th Man/

Tennessee LLC, 2007 WL 683778, 83 U.S.PQ.2d 1073,

1084 (T.T.A.B. Feb. 28, 2007) (“The mere fact that a

trademark owner’s mark is associated with a movie,

television show, university, or sports team does not

mean that it is functional and available for others to use

to promote their goods when the trademark owner is

actively licensing the mark for related items”) (emphasis

added).'® And this Court repeatedly has iterated the

same. E.g., TrafFix Devices, Inc. v. Mktg. Displays,

Inc., 582 U.S. 23, 33 (2001) (functionality requires

“significant non-reputation-related disadvantage”)

(internal quotation marks omitted); Qualitex, 514 U.S.

at 169 (functionality doctrine protects against

disadvantage “unrelated to recognition or reputation”).

6 Petitioners’ underlying argument is that the purpose of

its t-shirts is to express the views of the wearer rather than to

serve as an article of clothing. But the application of the

functionality doctrine is not the appropriate means for

analyzing expression. As the Fighth Circuit has explained: “The

functionality doctrine serves as a buffer between patent law

and trademark law by preventing a competitor from

monopolizing a useful product feature in the guise of identifying

itself as the source of the product.” Home Builders Ass’n of

Greater St. Louisv.L & L Exhibition Mgmt., Inc., 226 F.3d 944,

948 (8th Cir. 2000). Free speech rights are well-recognized in

trademark law through, for example, protections for

comparative advertising, news reporting, parody, and

noncommercial uses of marks. Petitioners’ uses of respondents’

marks fit none of these categories.

2. Petitioners’ Nominative Fair Use Contention

Does Not Support a Writ of Certiorari.

Petitioners’ argument that the district court in this

case misapplied the sequence of the “nominative fair use

doctrine” and the “likelihood of confusion” factors is a

garden variety claim of error, not a basis for granting

certiorari. E.g., GRESSMAN, supra n.6, at 276-77. Like

petitioners’ likelihood-of-confusion contention, supra at

20, even if petitioners were correct in their error claim

(which they are not), the Fifth Circuit’s review of its own

precedent is not a proper issue for a writ of certiorari.

See GRESSMAN, supra n.6, at 253-54.

Nominative fair use “is an alternative method for

analyzing if there is the kind of likelihood of confusion

that constitutes trademark infringement.” McCartuy §

23:11. It allows “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.” Pebble Beach, 155 F.3d at 545. See also

Prestonettes, Inc. v. Coty, 264 U.S. 359, 368 (1924)

(Holmes, J.) (“When the mark is used in a way that

does not deceive the public we see no such sanctity in

the word as to prevent its being used to tell the truth.”)

(emphasis added); New Kids on the Block v. News Am.

Publ’g., Inc., 971 F.2d 302, 308 (9th Cir. 1992) (nominative

fair use requires, inter alia, using only as much of the

mark “as is reasonably necessary to identify the product

or service” and “the user must do nothing that would,

in conjunction with the mark, suggest sponsorship or

endorsement by the trademark holder”).””

Because the essence of nominative fair use is that

“the mark is used only to describe the thing, rather than

to identify its source,” zd. at 306, any rationale for its

application is undermined by a clear intent to use

another’s mark for profit or to “free ride.” In this case,

petitioners’

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.

550 F'3d at 483-84; Pet. App. A at 30a (citing Boston

Athletic Ass’n, 867 F.2d at 33 (“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.”)). Because petitioners

used the Universities’ color schemes and indicia not

merely to describe or compare petitioners’ unlicensed

shirts with respondents’ licensed ones, but instead to

suggest an association or affiliation with the

Universities, the nominative fair use defense does not

apply. Jd. at 489, 42-43a.

17 Petitioners have asserted the nominative fair use doctrine

in this case, not the statutory fair use provided in the Lanham

Act, 15 U.S.C. § 1115 (2006).

CONCLUSION

This case neither raises substantial questions of

unsettled federal law nor conflicts with any precedent

of other courts of appeals or of this Court. Petitioners’

attempts to exaggerate the importance of the issues

raised in this case about six t-shirts are not persuasive.

And petitioners’ asserted conflicts among authorities

arise not from actual disagreements among courts of

appeals but from petitioners’ omissions of cases

demonstrating consistency across the federal courts.

The case-specific holdings reached by the courts

below were based on a detailed analysis of the particular

facts in the record, in keeping with the authority set

forth by this Court and by the various courts of appeals.

For all of these reasons, this Court should deny the

petition for a writ of certiorari.

Respectfully submitted,

R. CHARLES HENN JR.

Counsel of Record

WILLIAM H. BREWSTER

KILPATRICK STOCKTON LLP

1100 Peachtree Street, Suite 2800

Atlanta, Georgia 30309-4530

(404) 815-6500

Counsel for Respondents

APPENDIX

APPENDIX A

(1) ‘Bourbon Street or Bust” / “Show Us Your

Beads” (Sold to OU fans):

Appendix A

“Beat SoCal” (Sold to Ohio State fans):

ANY & Se

MAKE IT

EE ‘

a - ;

> = aoe

ener OS

Appendix A

(3) “Beat Oklahoma” (Sold to LSU fans):

Appendix A

(4) “Sweet as Sugar’/“Sundial” (Sold to LSU fans)

Hig oe ay

Appendix A

(5S) “Got Seven?” (Sold to Ohio State fans)

| rane n A

pouoheus

tr mi ay

Appendix A

(6) “Got Eight?” (Sold to USC fans)

ES eee ae Roe

}

This is a copy of a public record, reproduced as it was published. It is not legal advice, and it may not be the version a court would rely on. Check the official source before you cite it.