Savannah College of Art and Design, Inc. v. Sportswear, Inc., 100317 FED11, 15-13830

Docket Nº:15-13830
Opinion Judge:JORDAN, Circuit Judge
Party Name:SAVANNAH COLLEGE OF ART AND DESIGN, INC., Plaintiff - Appellant, v. SPORTSWEAR, INC., d.b.a. Prep Sportswear, Defendant-Appellee.
Judge Panel:Before MARTIN and JORDAN, Circuit Judges, and COOGLER, District Judge.
Case Date:October 03, 2017
Court:United States Courts of Appeals, Court of Appeals for the Eleventh Circuit



SPORTSWEAR, INC., d.b.a. Prep Sportswear, Defendant-Appellee.

No. 15-13830

United States Court of Appeals, Eleventh Circuit

October 3, 2017

         Appeal from the United States District Court for the Northern District of Georgia D.C. Docket No. 1:14-cv-02288-TWT

          Before MARTIN and JORDAN, Circuit Judges, and COOGLER, [*] District Judge.

          JORDAN, Circuit Judge

         "Imitation may be the sincerest form of flattery, " Charles C. Colton, Lacon, Vol. 1, No. 183 (1820-22), in Bartlett's Familiar Quotations 393:5 (16th ed. 1992), but when the imitation consists of commercial reproduction for profit, all bets are off. So when Sportswear, Inc. began using the federally-registered service marks of the Savannah College of Art and Design without a license to sell apparel and other goods on its website, SCAD did not take kindly to the copying and sued for equitable and monetary relief. SCAD asserted a number of claims against Sportswear, including service mark infringement under 15 U.S.C. § 1114; unfair competition and false designation of origin under 15 U.S.C. § 1125; and unfair competition under O.C.G.A. § 10-1-372.

         This is SCAD's appeal from the district court's grant of summary judgment in favor of Sportswear. The district court, relying on Crystal Entertainment & Filmworks, Inc. v. Jurado, 643 F.3d 1313, 1315-16 (11th Cir. 2011)-a case involving a dispute over common-law trademark rights to a band name- concluded that SCAD had failed to establish that it had enforceable rights in its marks that extended to apparel. SCAD, which validly registered its marks only in connection with the provision of "education services, " did not show that it had used its marks on apparel earlier than Sportswear in order to claim common-law ownership (and priority) over its marks for "goods." See Savannah Coll. of Art & Design, Inc. v. Sportswear, Inc., 2015 WL 4626911, at *2 (N.D.Ga. 2015).

         We reverse. This case, unlike Jurado, does not involve the alleged infringement of a common-law trademark, and as a result the date of SCAD's first use of its marks on goods is not determinative. One of our older trademark cases, Boston Prof'l Hockey Ass'n, Inc. v. Dallas Cap & Emblem Mfg., Inc., 510 F.2d 1004 (5th Cir. 1975), controls, as it extends protection for federally-registered service marks to goods. Although Boston Hockey does not explain how or why this is so, it constitutes binding precedent that we are bound to follow.


         Founded in 1978, SCAD is a private, non-profit college based in Georgia, and provides educational services to over 11, 000 students from across the United States and more than 100 countries. SCAD is primarily known for specialized programs related to the arts, such as painting, sculpture, architecture, fashion, photography, film, and design. In addition to providing educational programs, SCAD fields athletic teams in a variety of sports.

         To distinguish itself in the market and promote its programs and services, SCAD holds four federally-registered marks:

(Image Omitted)

         The federal registrations for these marks were issued for "education services, " i.e., the provision of "instruction and training at the undergraduate, graduate, and post-graduate levels." See, e.g., D.E. 1-1, 1-2. And the parties agree that SCAD has continuously used its marks for the promotion of its "education services."2

         SCAD has used the two word marks at issue here-"SCAD" (registered in 2003) and "SAVANNAH COLLEGE OF ART AND DESIGN" (registered in 2005)-since 1979, and they have now achieved incontestable status. In general, this means that SCAD has filed the requisite affidavit of use and incontestability under 15 U.S.C. § 1065(3), and that the U.S. Patent and Trademark Office has acknowledged that these two marks have been validly registered and in continuous use for at least five years. See D.E. 49-3 at 5, 10, 15, 24.

         Sportswear operates entirely online and uses an interactive website to market and sell "fan" clothing and items like t-shirts, sweatshirts, baseball caps, and duffel bags. Sportswear began selling apparel for K-12 schools in 2003, and it now 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 with-and without-licensing agreements. To purchase an item from Sportswear, a customer is generally required to select its preferred organization's "online store, " choose an item like a t-shirt or hat, and select that organization's emblem, mascot, or name. Sportswear's website then generates a sample of the selection, prompts the customer to checkout online, and ships the final product to the customer's home in a package indicating that it was delivered from a Sportswear facility.

         In February of 2014, a parent of a student-athlete forwarded Sportswear's website to one of SCAD's coaches. As a result, SCAD learned that Sportswear had been using its word marks on products without authorization (and without a licensing agreement) since August of 2009. Seeking to protect its marks from further unauthorized use, SCAD sued Sportswear in July of 2014. At that point, Sportswear stopped selling products with SCAD's word marks.

         During discovery, SCAD provided several examples of Sportswear's products featuring its word marks and a printout of Sportswear's website-generated "SCAD" store. SCAD also submitted images of current merchandise sold on its own website and side-by-side comparisons of Sportswear's products. Sportswear conceded that it was selling products online with virtually indistinguishable reproductions of the "SCAD" and "SAVANNAH COLLEGE OF ART AND DESIGN" word marks, but asserted that its website contained a prominent disclaimer showing that the products were in no way affiliated with the school.

         Since 2011, SCAD has licensed Follett Education Group to operate its online stores and Georgia-based on-campus bookstores, which sell clothing and other goods displaying SCAD's word marks. Sportswear agreed that Follett markets and sells SCAD's merchandise, but contested the degree of SCAD's involvement in approving and designing those items. SCAD admitted that it did not submit evidence showing when it first used its word marks on apparel or related goods.

         At the close of discovery, the district court reviewed the parties' cross-motions for summary judgment and ruled in favor of Sportswear. Relying on Jurado, the district court held that SCAD failed to establish that its service mark rights extended to apparel because it could not show priority in use as to goods.


         We exercise plenary review of the district court's grant of summary judgment in favor of Sportswear, viewing the record and drawing all factual inferences in the light most favorable to SCAD. See Tana v. Dantanna's, 611 F.3d 767, 772 (11th Cir. 2010). Summary judgment is appropriate when "there is no genuine dispute as to any material fact" and the moving party is entitled to judgment as a matter of law. See Fed. R. Civ. P. 56(a); Celotex Corp. v. Catrett, 477 U.S. 317, 322 (1986).


         Trademark law, as codified by the Lanham Act, see 15 U.S.C. § 1051 et seq., largely serves two significant but often conflicting interests. It "secure[s] to the owner of the mark the goodwill of his business[;]" and it "protect[s] the ability of consumers to distinguish among competing producers." Park 'N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U.S. 189, 198 (1985).

         The Lanham Act prohibits the infringement of trademarks that are used to identify "goods, " and of service marks that are used to identify "services." See 15 U.S.C. § 1127. Trademarks and service marks are used "to indicate the source of the [goods and services], even if that source is unknown." Id. Generally, "a trademark serves to identify and distinguish the source and quality of a tangible product, " while "a service mark functions to identify and distinguish the source and quality of an intangible service." 3 McCarthy on Trademarks § 19:81.

         In most respects, the "analysis is the same under both [types of marks] and courts thus treat the two terms as interchangeable in adjudicating infringement claims." Frehling Enterprises, Inc. v. Int'l Select Grp., Inc., 192 F.3d 1330, 1334 n.1 (11th Cir. 1999) (citations omitted). For both trademarks and service marks, therefore, the "the touchstone of liability . . . is not simply whether there is unauthorized use of a protected mark, but whether such use is likely to cause consumer confusion." Custom Mfg. ...

To continue reading