Board of Supervisors for La State v. Smack Apparel

• Decision Date: 25 November 2008
• Docket Number: No. 07-30580.,No. 07-30887.,07-30580.,07-30887.
• Citation: 550 F.3d 465
• Parties: BOARD OF SUPERVISORS FOR LOUISIANA STATE UNIVERSITY AGRICULTURAL AND MECHANICAL COLLEGE; Board of Regents of the University of Oklahoma; Ohio State University; University of Southern California, Plaintiffs-Appellees, v. SMACK APPAREL CO.; Wayne Curtiss, Defendants-Appellants. Board of Supervisors for Louisiana State University Agricultural and Mechanical College; Board of Regents of the University of Oklahoma; Ohio State University; University of Southern California; Collegiate Licensing Company, Plaintiffs-Appellants, v. Smack Apparel Co.; Wayne Curtiss, Defendants-Appellees.
• Court: U.S. Court of Appeals — Fifth Circuit

550 F.3d 465

BOARD OF SUPERVISORS FOR LOUISIANA STATE UNIVERSITY AGRICULTURAL AND MECHANICAL COLLEGE; Board of Regents of the University of Oklahoma; Ohio State University; University of Southern California, Plaintiffs-Appellees, v. SMACK APPAREL CO.; Wayne Curtiss, Defendants-Appellants.

Board of Supervisors for Louisiana State University Agricultural and Mechanical College; Board of Regents of the University of Oklahoma; Ohio State University; University of Southern California; Collegiate Licensing Company, Plaintiffs-Appellants, v. Smack Apparel Co.; Wayne Curtiss, Defendants-Appellees.

No. 07-30580.

No. 07-30887.

United States Court of Appeals, Fifth Circuit.

November 25, 2008.

Richard Charles Henn (argued), Jerre B. Swann, Alex S. Fonoroff, Kilpatrick Stockton, Atlanta, GA, Stephen R. Doody, Roy, Kiesel, Keegan & DeNicola, Baton Rouge, LA, Brett Allen North, Garvey, Smith, Nehrbass & North, Metairie, LA, for Plaintiffs-Appellees.

James William Tilly (argued), Tilly Law Firm, Tulsa, OK, for Defendants-Appellants.

Bruce P. Keller, Steven Zev Parnass, Debevoise & Plimpton, New York City, for Major League Baseball Properties, Inc., NBA Properties, Inc., NFL Properties, LLC, NHL Enterprises, LP, Amici Curiae.

Louis T. Pirkey, PirkeyBarber, Austin, TX, for Bd. of Trustess of University of AL, Bd. of Trustees of University of AR, Auburn University, Baylor University, Boise State University and others, Amici Curiae.

Appeals from the United States District Court for the Eastern District of Louisiana.

Before REAVLEY, STEWART and OWEN, Circuit Judges.

REAVLEY, Circuit Judge:

These consolidated appeals concern a trademark dispute between four universities and an apparel company and its principal. The Universities alleged in the district court that the defendants violated the Lanham Act and infringed their trademarks by selling t-shirts with the schools' color schemes and other identifying indicia referencing the games of the schools' football teams. The district court granted summary judgment to the Universities for trademark infringement and conducted a jury trial as to damages, with the jury returning a verdict favoring the plaintiffs. The defendants appeal the summary judgment order, and the Universities appeal the district court's denial of their post-verdict motion for attorneys' fees. We conclude that the colors, content, and context of the offending t-shirts are likely to cause confusion as to their source, sponsorship, or affiliation, and we AFFIRM.

I. Background

The plaintiffs are Louisiana State University (LSU), the University of Oklahoma (OU), Ohio State University (OSU), the University of Southern California (USC), and Collegiate Licensing Company (CLC) which is the official licensing agent for the schools.¹ The defendants are Smack Apparel Company and its principal, Wayne Curtiss (collectively Smack).

Each university has adopted a particular two-color scheme as its school colors (purple and gold for LSU, crimson and creme for OU, scarlet and gray for OSU, and cardinal and gold for USC). The Universities have used their respective color combinations for over one hundred years, and the color schemes are immediately recognizable to those who are familiar with the Universities. The schools use these color schemes in many areas associated with university life, including on campus signs and buildings, on printed brochures, journals, and magazines, and on materials sent to potential donors. The Universities also use the color schemes extensively in connection with their athletic programs, particularly on team uniforms, resulting in wide-spread recognition of the colors among college sports fans. Each university operates a successful collegiate football program, and the respective football teams have appeared on numerous occasions in nationally televised football games that have been viewed by millions of people.

The schools also grant licenses for retail sales of products, including t-shirts, that bear the university colors and trademarks. In recent years, the total annual sales volume of products bearing the school colors along with other identifying marks has exceeded $93 million for all the Universities combined. The Universities hold registered trademarks in their respective names and commonly used initials. They do not, however, possess registered trademarks in their color schemes.

Smack Apparel Company is located in Tampa, Florida. Since 1998 Smack has manufactured t-shirts targeted toward fans of college sports teams, and it uses school colors and printed messages associated with the Universities on its shirts. Smack sells some of the shirts over the Internet, but most are sold wholesale to retailers and t-shirt vendors. The shirts frequently appear alongside those that have been officially licensed by the Universities. The instant case involves six of Smack's t-shirt designs that concern the appearance of the OU and LSU football teams in the 2004 Sugar Bowl in New Orleans, Louisiana, and the number of national championships previously won by OSU and USC. The district court described these Smack shirt designs as follows:

• 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.

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

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

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

Bd. of Supervisors of LA State Univ. v. Smack Apparel Co.² In addition to the messages described above, each shirt included Smack's own logo in a space approximately 2.5 inches wide and the words "Talkin' the Talk."

The Universities sued Smack, alleging that the above six shirt designs infringed their trademark rights. The Universities alleged causes of action for federal trademark infringement and dilution, unfair competition, and deceptive trade practices under the Lanham Act, 15 U.S.C. §§ 1051-1141n; unfair trade practices under the Louisiana Unfair Trade Practices and Consumer Protection Act (LUTPA), LA.REV. STAT. § 51:1409; common law trademark infringement and unfair competition; and state trademark dilution. The plaintiffs alleged that each schools' color combination acts as a source-identifier for the respective schools, especially when used in connection with other indicia identifying or suggesting the schools. They alleged that Smack's shirts infringed their unregistered trademarks by "combining Plaintiffs' Marks with references to, inter alia, ... (a) well-known and highly-publicized athletic events in which a University participated; (b) a University's opponent in the referenced athletic event; (c) the geographic area in which the referenced event takes place; (d) titles and honors bestowed as a result of the referenced athletic event; (e) a University's earlier athletic successes and accomplishments; and (f) the geographic area in which the University is located or associated."

The Universities claimed that Smack's products are similar to and competed with goods sold or licensed by the Universities and are sold directly alongside merchandise authorized by the plaintiffs at or near events referenced in the shirts. In this way, according to the Universities, the sale of Smack's products is likely to deceive, confuse, and mislead consumers into believing that Smack's products are produced, authorized, or associated with the plaintiff Universities. The Universities sought injunctive relief, lost profits, damages, costs, and attorneys' fees.

The parties filed cross-motions for summary judgment on the issue of liability for trademark infringement. The district court granted summary judgment for the Universities, holding that the Universities' trademarks in their color schemes, logos, and designs on shirts referring to the schools or their accomplishments had acquired secondary meaning.³ The district court concluded that the marks were strong, having been used for decades as a reference to the Universities, and that Smack's infringing shirts were likely to cause confusion as to the source, affiliation, or sponsorship of the shirts.⁴ The district court found that the marks at issue were virtually identical. The court reasoned that Smack used the same color schemes and similar logos and designs as the plaintiffs; that Smack marketed and sold its shirts in a manner similar to the Universities' products and sometimes alongside those of the Universities; and that Smack used the color schemes, logos, and designs with the specific intent to rely upon their drawing power in enticing fans of the Universities to purchase its shirts.⁵ The court noted that Smack admitted using the school colors and other indicia with the intent of identifying the Universities as the subject of the message in the shirt...