Savannah Coll. of Art & Design, Inc. v. Sportswear, Inc., No. 19-11258

• Decision Date: 22 December 2020
• Docket Number: No. 19-11258
• Citation: 983 F.3d 1273
• Parties: SAVANNAH COLLEGE OF ART AND DESIGN, INC., Plaintiff - Appellee, v. SPORTSWEAR, INC., d.b.a. PrepSportswear, Defendant - Appellant.
• Court: U.S. Court of Appeals — Eleventh Circuit

983 F.3d 1273

SAVANNAH COLLEGE OF ART AND DESIGN, INC., Plaintiff - Appellee,

v.SPORTSWEAR, INC., d.b.a. PrepSportswear, Defendant - Appellant.

No. 19-11258

United States Court of Appeals, Eleventh Circuit.

December 22, 2020

Lisa Fortune Moore, W. Andrew Pequignot, The Moore Firm, LLC, Atlanta, GA, for Plaintiff-Appellee.

Leslie C. Vander Griend, Bradford Joseph Axel, Stokes Lawrence, PS, Seattle, WA, Defendant-Appellant.

Before WILLIAM PRYOR, Chief Judge, ROSENBAUM, Circuit Judge, and MOORE^* , District Judge.

ROSENBAUM, Circuit Judge:

As a student struggling in 1971 to afford art classes at Portland State University, Carolyn Davidson did not say "no" when a businessman offered to pay her to come up with a logo design for his company. She drew a few different designs on tissue paper, and the businessman selected one. From these humble origins, Davidson's design became the globally recognized Nike Swoosh.¹

Successful logos and design marks are lucrative—their recognition can instantly ignite an emotional connection with the associated brand.² And this is especially true for colleges, where sentimentality and pride create great demand for products emblazoned with schools’ word and design marks—so much so that an entire industry has grown up around producing logo products for schools, colleges, and universities.

Plaintiff-Appellee Savannah College of Art and Design, Inc. ("SCAD"), and Defendant-Appellant Sportswear, Inc. ("Sportswear"), are now before us a second time on the merits in a dispute over Sportswear's use of the college's word marks "SCAD" and "SAVANNAH COLLEGE OF ART AND DESIGN" and the college's design mark that includes its mascot, Art the Bee.

SCAD did not authorize Sportswear to use its marks to sell products inscribed with SCAD's name and mascot. Upon discovery of Sportswear's offerings, SCAD sued Sportswear for trademark infringement, unfair competition, false designation of origin, and counterfeiting under the Lanham Act, and for unfair competition and trademark infringement under Georgia common law.

On the first trip to this Court, SCAD appealed, and we considered the district court's grant of summary judgment to Sportswear on all counts. We reversed, holding that our precedent required us to conclude that SCAD enjoyed enforceable trademark rights in the marks Sportswear used.³ We remanded to the district court to determine, in the first instance, whether Sportswear's uses of the marks were likely to cause consumer confusion. Savannah College of Art & Design, Inc. v. Sportswear, Inc. , 872 F.3d 1256, 1264, 1265 (11th Cir. 2017) (" SCAD I ").

On remand, the district court concluded they were. Having previously dismissed SCAD's counterfeit claim, the district court granted summary judgment to SCAD on its remaining three counts—two claims under the Lanham Act and one claim under Georgia law—and permanently enjoined Sportswear from selling products bearing the SCAD marks at issue. Now, on this case's second merits trip to this Court, Sportswear appeals the district court's decision. After careful consideration, we affirm.

I. Factual Background

We begin with a summary of the underlying facts of this case.⁴ SCAD, based in Georgia, is a private, non-profit college founded in 1978. It provides educational services to more than 11,000 students from more than 100 countries, including the United States. SCAD is principally known for specialized art programs in areas like painting, sculpture, architecture, fashion, photography, film, and design. Beyond SCAD's educational programs, SCAD's athletic teams compete in a variety of intercollegiate sports.

This case concerns two word marks and one design mark that SCAD has used to market and promote its educational programs and services, as well as its athletic teams:

SCAD has used the two word marks—"SCAD" and "SAVANNAH COLLEGE OF ART AND DESIGN"—since 1979. As for the design mark containing SCAD's mascot, "Art the Bee," SCAD began using that in 2001, after having used variations of the bee portion since 1996.⁵

Sportswear operates an online business that markets and sells "fan" apparel and other items, such as t-shirts, sweatshirts, baseball caps, and duffel bags. Although Sportswear began selling apparel for kindergartens, grade schools, and high schools in 2003, it currently offers made-to-order apparel and related goods for other entities, including colleges, Greek and military organizations, golf courses, professional sports teams, and even fantasy sports teams. Sportswear sells some of its goods with licensing agreements and others—such as the goods bearing SCAD's marks—without.

In August 2009, Sportswear sold its first merchandise bearing SCAD's marks. But SCAD remained unaware of Sportswear's unauthorized use of its marks on products until February 2014, when a parent of a student-athlete forwarded Sportswear's website to one of SCAD's coaches. SCAD filed this case in July 2014, and Sportswear then stopped selling the unlicensed merchandise with SCAD's marks in its online "Savannah College of Art and Design Bees" store.

Before then, though, Sportswear undeniably marketed and sold products with both of SCAD's word marks, "SCAD" and "Savannah College of Art and Design." And while it did not use the Bee Design Mark in its full depiction, Sportswear's online store did offer apparel imprinted with SCAD's "Art the Bee" mascot, a prominent feature in the Bee Design Mark.

Sportswear's website contained several disclaimers that the clothing was not sponsored, endorsed by, or affiliated with SCAD and that all products were exclusively produced and fulfilled by Sportswear. Similarly, Sportswear's website, advertising material, and packaging material did not indicate that any of the merchandise constituted official SCAD products or were endorsed by SCAD. Finally, we note that several other third-party online retailers besides Sportswear printed SCAD's word marks on apparel.

II. Procedural Background

Based on these facts, SCAD sued Sportswear under the Lanham Act for claims of trademark infringement, unfair competition and false designation of origin, and counterfeiting, and under Georgia common law for unfair competition and trademark infringement. Sportswear moved for summary judgment, and the district court granted its motion. SCAD appealed.

That brings us to SCAD I , Savannah College of Art & Design, Inc. v. Sportswear, Inc. , 872 F.3d 1256 (11th Cir. 2017). In SCAD I , we reversed the district court's grant of summary judgment in favor of Sportswear. We explained that SCAD's claims for trademark infringement under § 32(a) of the Act, codified at 15 U.S.C. § 1114(1)(a), and for unfair competition and false designation of origin under § 43(a), codified at 15 U.S.C. § 1125(a), required SCAD to establish two things. First, SCAD needed to show enforceable trademark rights in its marks used by Sportswear. Id. at 1261. And second, it had to prove that Sportswear's unauthorized use of its marks was likely to confuse consumers. Id.

With respect to the first requirement, we concluded that the district court had applied an erroneous standard in limiting the reach of SCAD's service-mark rights from extending to goods. Id. at 1260, 1262. Under our binding precedent, we said, SCAD's enforceable service-mark rights for educational "services" could also cover "goods" in the form of the apparel Sportswear sold. Id. at 1262–64 (relying on Boston Prof'l Hockey Ass'n, Inc. v. Dallas Cap & Emblem Mfg., Inc. , 510 F.2d 1004 (5th Cir. 1975) ).⁶

Then we turned to the second inquiry: likelihood of confusion. Because the district court had not previously had the opportunity to assess the likelihood of confusion, we remanded the matter and directed the district court to assess in the first instance whether Sportswear's use of SCAD's service marks in Sportswear's apparel was likely to cause confusion. Id. at 1264. To evaluate this, we instructed the district court to consider the following seven factors: the strength of SCAD's marks; the similarity between SCAD's and Sportswear's marks, between Sportswear's goods and SCAD's services represented by the marks, between the parties’ trade channels and customers, and between the advertising media used by the parties; Sportswear's intent; and the existence of any actual consumer confusion. Id. (citing Fla. Int'l Univ. Bd. of Trustees v. Fla. Nat'l Univ., Inc. , 830 F.3d 1242, 1255 (11th Cir. 2016) ).⁷

Following remand, the parties filed letter briefs with the district court and responses thereto, addressing the likelihood-of-confusion issue and asserting that the record was complete and that no disputes of fact remained for trial. The court then once again took under advisement the parties’ previously filed cross-motions for summary judgment, this time applying our guidance in SCAD I .

After consideration, the district court entered an order granting in part Sportswear's motion for summary judgment⁸ and granting SCAD's motion for summary judgment on the trademark-infringement, unfair-competition, and false-designation-of-origin claims. Based on this ruling, the district court ultimately entered permanent injunctive relief for SCAD against Sportswear. In particular, the court enjoined Sportswear from using in any way the three SCAD marks at issue in this case. It further ordered Sportswear to delete all references to the three SCAD marks from its websites and databases. Finally, the court directed that any sales or shipments in the continental United States by Sportswear of products bearing the SCAD marks, without SCAD's prior written consent "shall be deemed a presumptive violation" of the injunction.

Sportswear appeals.

III. Standard of Review

We review de novo the district court's grant of summary judgment. Code Revision Comm'n for Gen. Assembly of Ga. v. Public.Resource.Org, Inc. , 906 F.3d 1229, 1235 (11th Cir. 2018). In so doing, we apply the same standards that bound the district court. Id. We view the record and draw all factual inferences in the...