Board of Supervisors of La State v. Smack Apparel

• Citation: 438 F.Supp.2d 653
• Decision Date: 18 July 2006
• Docket Number: No. CIV.A.04-1593.,CIV.A.04-1593.
• Parties: BOARD OF SUPERVISORS OF THE LOUISIANA STATE UNIVERSITY and Agricultural and Mechanical College, et al. v. SMACK APPAREL COMPANY, et al.
• Court: U.S. District Court — Eastern District of Louisiana

438 F.Supp.2d 653

BOARD OF SUPERVISORS OF THE LOUISIANA STATE UNIVERSITY and Agricultural and Mechanical College, et al. v. SMACK APPAREL COMPANY, et al.

No. CIV.A.04-1593.

United States District Court, E.D. Louisiana.

July 18, 2006.

COPYRIGHT MATERIAL OMITTED

Jerre B. Swann, Christopher J. Kellner, and R. Charles Henn Jr. of Kilpatrick Stockton LLP, Atlanta, GA, and Stephen Doody of Garvey, Smith, Nehrbass & Doody, Baton Rouge, LA, for Plaintiffs.

James W. Tilly of Tilly & Fitzgerald, Tulsa, OK, and David Henry of Allen, Dyer, Doppelt, Milbrath & Gilchrist, PA, Orlando, FL, for Defendants.

ORDER AND REASONS

LEMMON, District Judge.

IT IS HEREBY ORDERED that plaintiffs' motions for summary judgment are GRANTED (Record Document Nos. 86 and 143). IT IS FURTHER ORDERED that Defendants' motion for summary judgment is DENIED (Record Document Nos. 45 and 48).

I. BACKGROUND

Plaintiffs Louisiana State University (LSU), the University of Oklahoma (OU), Ohio State University (OSU), and the University of Southern California (USC), along with their licensing agent, Collegiate Licensing Company (CLC), have sued defendant Smack Apparel Company and its principal, Wayne Curtiss, under the Lanham Act and related state statutes.

The universities each own trademark registrations for both their names and their commonly used initials. Additionally, over a century ago each university adopted a particular color combination as its school colors (purple and gold for LSU, crimson and creme for OU, scarlet and gray for OSU, and cardinal and gold for USC). The universities have spent millions of dollars over the years in marketing and promoting items bearing their initials and school colors. Plaintiffs generally allege that defendants have engaged in unfair competition by selling shirts bearing the distinctive two colors used by the universities, along with other symbols which identify the universities. Among the allegedly offending designs promulgated by defendants, are the following:

• OU (2 shirt designs): (1) "Bourbon Street or Bust" (with the "ou" in "Bourbon" in a different typestyle) (front), "Show us your beads!" (with the "ou" in "your" in a different typestyle) and "Sweet as Sugar!" (back) (2) "Beat Socal" (front), "And Let's Make it Eight!"(back). These shirts refer to 2004 Sugar Bowl contest in New Orleans between the OU and LSU football teams. A victory in the Sugar Bowl could have given OU a claim to an eighth national football championship. One of OU's principal rivals to this claim was USC.

• OSU (2 shirt designs): (1) "Beat Oklahoma" (front), "And Bring it Back to the Bayou!" and "2003 College Football National Championship" (back) (2) "2003 College Football National Champions" (front), colored circular depiction of game scores, with "2003 College Football National Champions" and "Sweet as Sugar" (back). These shirts refer to the 2004 Sugar Bowl contest in New Orleans between OU and LSU, which was played to determine the Bowl Championship Series national football champion.

• OSU: "Got Seven?" (front), "We do! 7 Time National Champs," with depiction of the state of Ohio and a marker noting "Columbus Ohio" (back). This shirt refers to the seven college football national titles claimed by OSU.

• USC: "Got eight?" (front), "We Do! Home of the 8 Time National Champions!" and depiction of the state of California with a star marked "SoCal" (back). This design refers to USC's claim to eight college national football championships.

Certain of the shirts also include additional graphics or type, including championship trophies and the scores of football games in which the universities have competed. The relatively small logo "Smack" appears in an oval on each shirt.

Plaintiffs assert the following claims against defendants: trademark infringement under the Lanham Act, unfair competition under the Lanham Act, unfair trade practices under the Louisiana Unfair Trade Practices Act (as to LSU), federal trademark dilution, state trademark dilution, common law trademark infringement, and common law unfair competition. Plaintiffs have moved for summary judgment on (1) LSU's, OU's, OSU's, and USC's claims for federal unfair competition and common law unfair competition; (2) OU's claim for trademark infringement of its federally registered "OU" mark; (3) plaintiffs' claim for a violation of the Louisiana Unfair Trade Practices Act (LUTPA); and (4) CLC's claims of federal unfair competition, common law unfair competition, and violation of the LUTPA. Defendants also have moved for summary judgment on each of these claims.

II. ANALYSIS

A. LSU's, OSU's, OU's, and USC's claims of unfair competition under 15 U.S.C. 1125(a) and claims of common law unfair competition.

Section 43(a) of the Lanham Act, codified at 15 U.S.C. § 1125(a), prohibits the use in commerce of "any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact" which is "likely to cause confusion, or cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities." Although the parties have variously referred to plaintiffs' color schemes, logos, and designs on university shirts as being trademarks or trade dress, the unfair competition provision of the Lanham Act protects both trademarks and trade dress. Sugar Busters, L.L.C. v. Brennan, 177 F.3d 258, 267 (5th Cir.1999); see also Pebble Beach Co. v. Tour 18 I Ltd., 155 F.3d 526, 541 (5th Cir.1998) ("The same tests apply to both trademarks and trade dress to determine whether they are protectible and whether they have been infringed, regardless of whether they are registered or unregistered."). Additionally, "[a]s a general rule, the same facts which would support an action for trademark infringement would also support an action for unfair competition." Marathon Mfg. Co. v. Enerlite Prods. Corp., 767 F.2d 214, 217 (5th Cir.1985).

1. Secondary meaning.

Section 43(a) of the Lanham Act "protects qualifying unregistered trademarks," and "the general principles qualifying a mark for registration under § 2 of the Lanham Act are for the most part applicable in determining whether an unregistered mark is entitled to protection under § 43(a)." Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768, 112 S.Ct. 2753, 120 L.Ed.2d 615 (1992).

Under the Lanham Act, a trademark may be registered if it is "capable of distinguishing the applicant's goods from those of others." Id. at 768, 112 S.Ct. 2753. A mark's distinctiveness is "often classified in categories of generally increasing distinctiveness;" following the classic Two Pesos, Inc. formulation, they may be "(1) generic; (2) descriptive; (3) suggestive; (4) arbitrary; or (5) fanciful." Id. Generic marks are not entitled to trademark protection, and suggestive, arbitrary, and fanciful marks are inherently distinctive. A mark that is descriptive may acquire distinctiveness if it "has become distinctive of the applicant's goods in commerce," which is generally called "secondary meaning." Id.

Plaintiffs describe their marks as "color schemes in the context of merchandise that makes reference to the Plaintiff Universities or their accomplishments and is directed to their fans and other interested consumers."¹ There is no question that a color scheme may be protectible as a trademark if it "identifies and distinguishes a particular brand (and thus indicates its "source")." Qualitex Co. v. Jacobson Prods. Co., Inc., 514 U.S. 159, 163-64, 115 S.Ct. 1300, 131 L.Ed.2d 248 (1995). In Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 120 S.Ct. 1339, 146 L.Ed.2d 182 (2000), the Supreme Court made clear that under Qualitex, color is not protectible without proof of secondary meaning. Id. at 211-12, 120 S.Ct. 1339.

Accordingly, plaintiffs must demonstrate that their color schemes, logos, and designs on shirts referring to them or their accomplishments have attained "secondary meaning," which is a shorthand for denoting that "in the minds of the public, the primary significance of a [mark] is to identify the source of the product and not the product itself." Id. at 211, 120 S.Ct. 1339.²

To acquire a secondary meaning in the minds of the buying public, a labeled product, when shown to a prospective customer, must prompt the reaction, "That is the product I want because I know that all products with that label come from a single source and have the same level of quality." In other words, the article must proclaim its identity of source and quality, and not serve simply to stimulate further enquiry about it.

As one court stated, "The buyer to be deceived, must be looking for something." That is, the buyer, to be deceived, must be looking for some symbol which he thinks identifies a single, albeit anonymous, source. Without that identification, called "secondary meaning" for non-inherently distinctive terms, there can be no confusion.

J. Thomas McCarthy, 2 McCarthy on Trademarks and Unfair Competition § 15:11, at 15-22 (4th ed.2005); see also Bretford Mfg., Inc. v. Smith System Mfg. Corp., 419 F.3d 576, 579 (7th Cir.2005) ("[W]hen trade dress implies the product's origin it is protected as a trademark (unless it is also functional); but when consumers value the feature for its own sake rather than as a badge of origin, it may be copied freely.").

The Fifth Circuit has adopted a seven factor test for establishing secondary meaning:

That a particular mark or trade dress has acquired secondary meaning can be proven by a consideration of the following evidence: (1) length and manner of the use of the mark or trade dress, (2) volume of sales, (3) amount and manner of advertising, (4) nature of use of the mark or trade dress in newspapers and magazines, (5) consumer-survey evidence, (6) direct...