# 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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## Record

- **Collection:** Supreme Court brief
- **Document type:** Opposition Brief
- **Published:** January 1, 2008

## Text

Supreme Court. Us.

or og FILED
Vay 1)... APR 27 2009

Tyee ee ete

IN THE

Supreme Court of the United States

SMACK APPAREL COMPANY AND WAYNE CuRTISS,
Petitioners,
v.
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

a
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.

12

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)

vi

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)

ix

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,”

2

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.

3

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)).

4

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)

5)

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.

6

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).

7

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

8

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).

9

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

10

(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,

11

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.)

12

(“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

13

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.”).

14

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.

15

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),

16

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.

17

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,

18

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.

19

“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.

20

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

21

[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,

22

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.

23

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
Copyright Act, not any issue presented in this case.

24

“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).

25

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

© Boston Hockey has been criticized for appearing to find
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.

26

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)

27

“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.

28

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

29

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).

30

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).

31

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)

32

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.

33

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.

34

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,

35

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).

36
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):

2a

Appendix A

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

ANY & Se

MAKE IT

EE ‘
a - ;

> = aoe
ener OS

3a

Appendix A

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

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

Hig oe ay

Sa
Appendix A

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

| rane n A

pouoheus
tr mi ay
_

6a
Appendix A
(6) “Got Eight?” (Sold to USC fans)

ES eee ae Roe

|
}
|

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Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40386017_0333%3A2. Public record. Not legal advice.