Lee v. Anthony Lawrence Collection, L.L.C.

• Decision Date: 24 August 2022
• Docket Number: 20-30796
• Citation: 47 F.4th 262
• Parties: Paige LEE; Business Moves Consulting, Incorporated; Brandmixer, Incorporated; Curtis Bordenave, Plaintiffs—Appellants, v. ANTHONY LAWRENCE COLLECTION, L.L.C.; Defron Fobb; Thaddeus Reed, also known as Reed Enterprise; Collegiate Licensing Company, L.L.C., incorrectly sued as Learfield Communications, L.L.C., Defendants—Appellees.
• Court: U.S. Court of Appeals — Fifth Circuit

47 F.4th 262

Paige LEE; Business Moves Consulting, Incorporated; Brandmixer, Incorporated; Curtis Bordenave, Plaintiffs—Appellants,
v.
ANTHONY LAWRENCE COLLECTION, L.L.C.; Defron Fobb; Thaddeus Reed, also known as Reed Enterprise; Collegiate Licensing Company, L.L.C., incorrectly sued as Learfield Communications, L.L.C., Defendants—Appellees.

No. 20-30796

United States Court of Appeals, Fifth Circuit.

FILED August 24, 2022

Andrew Tillman Lilly, Lilly, P.L.L.C., New Orleans, LA, for Plaintiffs-Appellants.

Kenneth L. Tolar, Brad E. Harrigan, Esq., Tolar Harrigan & Morris, L.L.C., Patrick Dominic DeRouen, Esq., Attorney, DeRouen Law Firm, New Orleans, LA, for Defendants-Appellees Anthony Lawrence Collection, L.L.C., Defron Fobb.

David King Persons, Esq., Hailey, McNamara, Hall, Larmann & Papale, L.L.P., Metairie, LA, for Defendant-Appellee Thaddeus Reed, also known as Reed Enterprise.

Kent Andrew Lambert, Benjamin West Janke, Baker, Donelson, Bearman, Caldwell & Berkowitz, P.C., New Orleans, LA, for Defendant-Appellee Collegiate Licensing Company, L.L.C., incorrectly sued as Learfield Communications, L.L.C.

Before Jolly, Elrod, and Oldham, Circuit Judges.

Jennifer Walker Elrod, Circuit Judge:

47 F.4th 264

Curtis Bordenave and Paige Lee are in the business of owning trademarks. They petitioned the United States Patent and Trademark Office for federal registration of the mark "THEEILOVE" (and other similar marks). That phrase, "Thee I Love," comes from the alma mater of Jackson State University. They then sued the University's licensing agent (Collegiate Licensing Company) and a few of the licensees in charge of producing and selling the University's merchandise (Anthony Lawrence Collection, Defron Fobb, and Thaddeus Reed, together "the Licensees"). But they did not sue the University itself. Collegiate and the Licensees moved to dismiss under Federal Rule of Civil Procedure 12(b)(7). The district court granted the motion and dismissed the suit without prejudice. We AFFIRM.

I.

Curtis Bordenave, by his telling, licenses trademarks "from time to time." He owns Business Moves Consulting, a "branding business[ ]" which "protect[s] the identity of the products" it sells "by consistent, deliberate federal trademark registration." In 2017, Business Moves applied for the design mark "THEEILOVE," which the USPTO granted the next year. Business Moves then licensed use of the mark to Brandmixer (also a branding business) and Paige Lee, all of which claim to sell apparel with the registered design. In 2019, Business Moves and Brandmixer together applied for another "THEE I LOVE" mark, this time for several other uses, such as on license plates. (That application is still pending with the USPTO.)

This posed a problem for Jackson State University. Founded in 1877, the University is one of the largest historically black colleges or universities in the country. Its football team, led by Head Coach Deion Sanders (also known as "Prime Time" or "Neon Deion"), runs onto the field each game to the music of the University's marching band, the Sonic Boom of the South. And when the Tigers secured the Southwestern Athletic Conference championship last season, the Sonic Boom of the South played "Thee I Love," the University's alma mater, for the team and all its loyal fans. That phrase plays a significant role in the University's lore, as it has served as the University's alma mater for roughly eighty years. Students and alumni wear shirts bearing the phrase, and the State of Mississippi even issues vanity plates with "Thee I Love" and the school's logo to the University's most loyal fans. The University does not handle the licensing of its trademarks or make its own merchandise. It instead works with Collegiate Licensing Company to license out the University's "trademarks and other indicia" to manufacturers to make (and sometimes sell) its merchandise. The University and Collegiate have since authorized several licensees, including Anthony Lawrence Collection, LLC, Defron Fobb, and Thaddeus Reed, to produce and sell the University's merchandise.

Despite this history, the University never applied to have the phrase registered as a federal mark until after Business Moves had already done so. The University did register a mark under Mississippi law in 2015 for use on vanity plates, and in 2019 (after Business Moves had already secured the federal mark) for use on merchandise.

47 F.4th 265

It also claims to have common-law rights to the mark under the Lanham Act. The University applied in late 2019 for the same federal marks as it secured under state law, but the USPTO preliminarily refused the applications because Business Moves and Brandmixer beat it to the punch.

Business Moves (along with Brandmixer, Bordenave, and Lee) sued Collegiate and the Licensees for various claims centered on their licensing, manufacturing, and selling of "Thee I Love" merchandise. The primary claims were brought under the Lanham Act for trademark infringement and unfair competition. Along with damages, plaintiffs requested the court permanently enjoin the defendants from producing or selling any more "infringing" merchandise, and that the court declare that defendants were infringing on the plaintiffs' federally registered marks.

Collegiate and the Licensees moved to dismiss under Rule 12(b)(1) and (7). They argued that they were merely the University's agents, and that these claims are premised on a not-yet-fought battle over who "Thee I Love" rightfully (and lawfully) belongs to. Because defendants said they could not adequately fight that battle for the University, they contended that the University was a required party under Rule 19(a)(1)(A) and (B). But because the University enjoys sovereign immunity (and thus cannot be joined), defendants urged that the court should, "in equity and good conscience," dismiss the case. Plaintiffs responded that Collegiate and the Licensees were merely joint tortfeasors, and that plaintiffs were not required to include every joint tortfeasor. Plaintiffs went on to say that even if the University was...