in the united states court of appeals for...
TRANSCRIPT
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No. 07-30580
IN THE UNITED STATES COURT OF APPEALS
FOR THE FIFTH CIRCUIT
BOARD OF SUPERVISORS OF THE LOUISIANA STATE UNIVERSITY
AND AGRICULTURAL AND MECHANICAL COLLEGE,
BOARD OF REGENTS OF THE UNIVERSITY OF OKLAHOMA,
OHIO STATE UNIVERSITY, UNIVERSITY OF SOUTHERN CALIFORNIA,
AND THE COLLEGIATE LICENSING COMPANY,
Plaintiffs -Appellees,
V.
SMACK APPAREL COMPANY and WAYNE CURTISS,
Defendants-Appellants.
Appeal from the United States District Court
for the Eastern District of Louisiana
BRIEF OF AMICI CURIAE
!? ÷
i_J_! 1 _ 2007
BOARD OF TRUSTEES OF THE UNIVERSITY OF ALABAMA
BOARD OF TRUSTEES OF THE UNIVERSITY OF ARKANSAS,
FOR THE UNIVERSITY OF ARKANSAS, FAYETTEVILLE
AUBURN UNIVERSITY
BAYLOR UNIVERSITY
BOISE STATE UNIVERSITY
UNIVERSITY OF CONNECTICUT
DUKE UNIVERSITY
FLORIDA BOARD 'OF REGENTS (FOR FLORIDA STATE UNIVERSITY)
THE UNIVERSITY OF FLORIDA BOARD OF TRUSTEES
UNIVERSITY OF GEORGIA ATHLETIC ASSOCIATION, INC.
BOARD OF TRUSTEES OF THE UNIVERSITY OF ILLINOIS,
ACTING FOR AND ON BEHALF OF THE UNIVERSITY OF ILLINOIS,
URBANA-CHAMPAIGN
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UNIVERSITY OF KENTUCKY
REGENTS OF THE UNIVERSITY OF MICHIGAN
REGENTS OF THE UNIVERSITY OF MINNESOTA
UNIVERSITY OF MISSISSIPPI
CURATORS OF THE UNIVERSITY OF MISSOURI, ON BEHALF OF
THE UNIVERSITY OF MISSOURI-COLUMBIA
BOARD OF GOVERNORS OF THE
UNIVERSITY OF NORTH CAROLINA
UNIVERSITY OF NORTH TEXAS
UNIVERSITY OF NOTRE DAME DU LAC
OKLAHOMA STATE UNIVERSITY
THE PENNSYLVANIA STATE UNIVERSITY
PURDUE UNIVERSITY
UNIVERSITY OF SOUTH CAROLINA
THE UNIVERSITY OF TEXAS AT AUSTIN
TEXAS A&M UNIVERSITY
TEXAS TECH UNIVERSITY
TULANE UNIVERSITY, AND
BOARD OF REGENTS OF THE UNIVERSITY OF WISCONSIN SYSTEM
IN SUPPORT OF' PLAINTIFFS-APPELLEES AND AFFIRMANCE
Louis T. PirkeyWilliam G. Barber
Stephen P. Meleen
Susan J. Hightower
PIRKEY BARBER LLP
600 Congress Avenue, Suite 2120
Austin, Texas 78701
(512) 322-5200
Counsel for Amici Curiae
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No. 07-30580
IN THE UNITED STATES COURT OF APPEALS
FOR THE FIFTH CIRCUIT
BOARD OF SUPERVISORS OF THE LOUISIANA STATE UNIVERSITY
AND AGRICULTURAL AND MECHANICAL COLLEGE,
BOARD OF REGENTS OF THE UNIVERSITY OF OKLAHOMA,
OHIO STATE UNIVE, RSITY, UNIVERSITY OF SOUTHERN CALIFORNIA,
AND Tt-_E COLLEGIATE LICENSING COMPANY,
Plaintiffs-Appellees,
V°
SMACK APPAREL COMPANY and WAYNE CURTISS,
Defendants-Appellants.
Appeal from the United States District Court:['or the Eastern District of Louisiana
Certificate of Interested Persons
The undersigned counsel of record certifies that the following listed persons
and entities as described in the fourth sentence of Rule 28.2.1 have an interest in
the outcome of this case. These representations are made in order that the judges
of this court may evaluate possible disqualification or recusal.
A. Defendants-Appellants
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2.
Smack Apparel Company
Wayne Curtiss
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B°
C.
D.
E.
Insurers for Defendants-Appellants
Assurance Company of AmericaP.O. Box 619507
Dallas, TX 75261-9507
Attorneys for DeJ_'endants-Appellants
1. The Tilly Law Firm
James W. "Filly1639 South Carson Avenue
Tulsa, Oklahoma 74199
2. Deutsch, Kerrigan & Stiles LLP
Robert Errmaett Kerrigan, Jr.Duris Lee Holmes
Charlotte Collins Meade
755 Magazine Street
New Orleans, Louisiana 70130
Plaintiffs-Appellees
1. Board of Supervisors of the Louisiana State University and
Agricultural and Mechanical College
2. Board of Regents of the University of Oklahoma
3. Ohio State University
4. University of Southern California
5. The Collegiate Licensing Company
6. IMG Worldwide, Inc. (parent company of CLC)
Attorneys for Plaintiffs-Appellees
1. Kilpatrick Stockton LLPR. Charles Henn Jr.
Jerre B. Swann
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F.
Alex S. Fonoroff
Suite 2800, 1100 Peachtree Street, NE
Atlanta, Ge,orgia 30309-4530
2. Roy, Kiesel, Keegan, and DeNicola
Stephen R. Doody2355 Drusilla Lane
P.O. Box 15928
Baton Rouge, Louisiana 70895-5928
Amici Curiae
1. Board of Trustees of the University of Alabama
2. Board of Trustees of the University of Arkansas, acting for and on
behalf of the University of Arkansas, Fayetteville
3. Auburn University
4. Baylor University
5. Boise State University
6. University of Connecticut
7. Duke University
8. Florida Board of Regents (for Florida State University)
9. The University of Florida Board of Trustees
10. University of Georgia Athletic Association, Inc.
11. Board of Trustees of the University of Illinois, acting for and on
behalf of the University of Illinois, Urbana-Champaign
12. Universil:y of Kentucky
13. Regents of the University of Michigan
14. Regents of the University of Minnesota
15. University of Mississippi
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16. Curators of the University of Missouri on behalf of the University ofMissouri-Columbia
17. Board of Governors of the University of North Carolina
18. University of North Texas
19. University of Notre Dame du Lac
20. Oklahoma State University
21. The Pennsylvania State University
22. Purdue University
23. University of South Carolina
24. The University of Texas at Austin
25. Texas A&M University
26. Texas Tech University
27. Tulane University
28. Board oflq:egents of the University of Wisconsin System
Attorneys for Amici Curiae
Pirkey Barber LLP
Louis T. PirkeyWilliam G. Barber
Stephen P. Meleen
Susan J. Hightower
600 Congress Avenue, Suite 2120Austin, Texas 78701
I / L°ui_tT" P,._.Attom'ey ifk;Ycord for Amic(Curiae
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Table of Contents
Table of Authorities ........................................................................................... vii
Identity of the Amici Curiae ............................................................................. xi
Source of Authority of Amici Curiae to File .......................................... .......... 1
Statement of Interest of the Amici Curiae ........................................................ 1
Summary of Argument ..................................................................................... 3
Argument .......................................................................................................... 4
I. Image Control Is Critical to the Amici ........................................................ 4
A. Fundamental Principle of Trademark Law: Control of
One's Image ..................................................................................... 4
B. Amici Control Their Images through Licensing .............................. 5
C. Smack's Actions Threaten Amici's Ability To Control .................. 6
II. The Appellees' Color Marks Are Not Functional ...................................... 6
A. The Color Marks Fail the EppendorfTests for Functionality ......... 7
B. Smack's Claims Sound in Aesthetic Functionality, a Doctrine
Not Recognized in This Circuit ....................................................... 10
C. This Court's Precedent Is Correct: The Doctrine of Aesthetic
Functionality Is Not Sound Public Policy ....................................... 11
D. Even If the Aesthetic Functionality Doctrine Were Viable in
This Circuit, the Marks Here Are Not "Aesthetically Functional" 13
1. Smack's Use of the Color Marks Is Not Functional ................ 14
a. The Only Advantage the Color Marks Provide Is
Reputation-Related ....................................................... 15
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b. Taste, Preference, or Sports Team Support CannotRender Color Functional .............................................. 15
2. Appellees' Use of Color Marks Is Not Functional ................. 18
E. The District Court's Ruling Will Not Cause Color
Monopolization Or Depletion .......................................................... 20
III. Smack Did Not Make Fair Use of the Plaintiffs' Marks ........................... 22
A. Likelihood of Confusion Dooms Smack's Argument that
Color Marks Are Used Merely to Identify Schools as "Subjects,"Not Sources ...................................................................................... 23
B. Third-Party Use in Unrelated Context Is Irrelevant to AnyTrademark I,;sue ............................................................................... 25
Conclusion ......................................................................................................... 28
Certificate of Service ........................................................................................ 30
Certificate of Compliance ................................................................................ 31
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Table of Authorities
Cases
Au-Tomotive Gold, Inc. v. Volkswagen of America, Inc.,
457 F.3d 1062 (9 th Ci:v. 2006), cert. denied, 127 S. Ct. 1839 (2007) ............ 11, 13
Bd. of Supervisors of the La. State Univ. v. Smaek Apparel Co.,
438 F. Supp. 2d 653 (E.D. La. 2006) ......................................................... xi, 3, 26
Boston Prof'l Hockey Ass 'n, Inc. v. Dallas Cap & Emblem Mfg., Ine.,
510 F.2d 1004 (5 th Cir.), cert. denied, 423 U.S. 868 (1975) ............................... 10
Brunswick Corp. v. British Seagull Ltd.,
35 F.3d 1527 (Fed. Cir. 1994) ............................................................................. 19
Chevron Chem. Co. v. Voluntary Purchasing Groups, Inc.,
659 F.2d 695 (5th Cir.1981), cert. denied, 457 U.S. 1126 (1982) ..................... 21
Chicago Bears Football Club, Inc. v. lY h Man�Tennessee LLC,
2007 WL 683778, 83 USPQ2d 1073 (TTAB 2007) ........................................... 17
Dallas Cowboys Cheerleaders, Inc. v. Pussycat Cinema, Ltd.,
604 F.2d 200 (2d Cir. 1979) ................................................................................ 19
Deere & Co. v. Farmhand, Inc.,
560 F. Supp. 85 (S.D. Iowa 1982), aft'd, 721 F.2d 253 (8 _ Cir. 1983) ............. 16
Downing v. Abercrombie & Fitch,
265 F.3d 994 (9 th Cir. 2001) ................................................................................ 23
Eppendorf-Netheler-Hiinz GMBH v. Ritter GMBH,
289 F.3d 351 (5 th Cir. 2002) ...................................................... : ................... 7, 8, 9
Home Builders Ass 'n of Greater St. Louis v. L&L Exhibfion Mgt., Inc.,
226 F.3d 944 (8 th Cir. 2000) ................................................................................ 18
Icee Distribs., Inc. v. J&J Snaek Foods Corp.,
445 F.3d 841 (5 th Cir. 2006) ............................................................................... 4-5
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In re Mogen David Wine Corp.,
328 F.2d 925 (C.C.P.A. 1964) ............................................................................ 11
Keds Corp. v. Renee Int'l Trading Corp.,
888 F.2d 215 (1 st Cir. 1989) .......................................................................... 18, 19
KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc.,
543 U.S. 111 (2004) ............................................................................................ 25
L.D. Kichler Co. v. Davoil, Inc.,
192 F.3d 1349 (Fed. Cir. 1999) ........................................................................... 16
National Ass 'n of Blue Shield Plans v. United Bankers Life Ins. Co.,
362 F.2d 374(5 th Cir. 1966) ................................................................................ 21
New Kids on the Block v. News American Publ 'g, Inc.,
971 F.2d 302 (9 th Cir. 1992) .......................................................................... 23, 24
Pagliero v. Wallace China Co.,
198 F.2d 339 (9 th Cir. 1952) .......................................................................... 11, 12
Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772,
396 F.3d 1369 (Fed. Cir. 2005) ........................................................................... 26
Pebble Beach Co. v. Tour 18 I Ltd.,
155 F.3d 526 (5 th Cir. 1998) .................................................................... 10, 23, 24
Playboy Enters., Inc. v. Welles,
279 F.3d 796 (9 th Cir. 2002) ................................................................................ 25
Qualitex Co. v. Jacobson Prods. Co.,
514 U.S. 159 (1995) .................................................................................... passim
Scott Fetzer Co. v. House of Vacuums, Inc.,
381 F.3d 477 (5 th Cir. 2004) .......................................................................... 24, 25
Shamloo v. Mississippi State Bd. of Trustees of Institutions of Higher Learning,
620 F.2d 516 (5 th Cir. 1980) ................................................................................ 22
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Sicilia Di R. Biebow & Co. v. Cox,
732 F,2d 417 (5 _ Cir. 1984) ........................................................................ passim
Sno-Wizard Mfg., Inc. v. Eisemann Prods. Co.,
791 F.2d 423 (5 th Cir. 1986) ............................................................................ 7, 10
Sport Supply Grou._ Inc. v. Columbia Cas. Co.,335 F.3d 453 (5 Cir. 2003) .................................................................................. 5
Sun Banks of Florida, h_e. v. Sun Fed. Say. & Loan Ass 'n,
651 F.2d 311 (5 _ Cir. 1981) ........................................................................... 26-27
Supreme Assembly, Order of Rainbow for Girls v. J.H. Ray Jewelry Co.,
676 F. 2d 1079 (5th C,ir. 1982) ........................................................................... 27
Texas Teeh Univ. v. Spiegelberg,
461 F. Supp. 2d 510 (N.D. Tex. 2006) ................................................................. 8
TrafFix Devices, Inc. v. Marketing Displays, Inc.,
532 U.S. 23 (2001) ................................................................................ 7, 8, 10, 11
Trail Chevrolet, Inc. v. General Motors Corp.,
381 F.2d 353 (5 th Cir. 1967) ........................................................................... 24-25
Transportation, Inc. v. .Mayflower Servs., Inc.,
769 F.2d 952 (4 _ Cir. 1985) ................................................................................ 22
University Book Store v. University of Wisconsin Board of Regents,
1994 WL 747886, 33, USPQ2d 1385 (TTAB 1994) ..................................... 16, 17
University of Georgia Athletic Ass 'n v. Laite,
756 F.2d 1535 (11 th Cir. 1985) ............................................................................ 27
Valu Eng 'g, Inc. v. Rexnord Corp.,
278 F.3d 1268 (Fed. Cir. 2002) ........................................................................... 16
Vision Sports, Inc. v. Melville Corp.,
888 F.2d 609 (9 th Cir. 1989) ................................................................................ 21
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Vuitton Et Fils S.A. v. J. Young Enters., Inc.,
644 F.2d 769 (9 th Cir. 1981) ...................................................................... 9, 12, 13
Statutes
Lanham Act Section 45, 15 U.S.C.A. § 1127 ......................................................... 14
Other Authorities
LOUIS ALTMAN & MALLA POLLACK,
CALLMANN ON UNFAIR COMPETITION, TRADEMARKS & MONOPOLIES
(4 th ed. 2007) ......................................................................................................... 7
J. THOMAS MCCARTHY,
MCCARTHY ON TRADEMARKS & UNFAIR COMPETITION
(4 th ed. 2007) ..................................................................................... 11, 14, 23, 25
Christopher C. Larkin, Qualitex Revisited, 94 TRADEMARK REP. 1017 (2004) ..... 11
The Licensing Letter ................................................................................................. 5
Jack Revoyr, Non-Definitive History of Collegiate Licensing,
88 TRADEMARK REP. 370 (1998) .......................................................................... 5
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Identity of the Amici Curiae
The following Amici Curiae (collectively, "Amici") submit this brief in
support of affirmance of Bd. of Supervisors of the La. State Univ. v. Smack Apparel
Co., 438 F. Supp. 2d 653 (E.D. La. 2006) ("District Court Opinion" or "Opinion"):
Board of Trustees of the University of Alabama
Board of Trustees of the University of Arkansas, acting for and on behalf of the
University of Arkansas, Fayetteville
Auburn University
Baylor University
Boise State University
University of Connecticut
Duke University
Florida Board of Regents (for Florida State University)
The University of Florida Board of Trustees
University of Georgia Athletic Association, Inc.
Board of Trustees of the University of Illinois, acting for and on behalf of the
University of Illinois, Urbana-Champaign
University of Kentucky
Regents of the University of Michigan
Regents of the University of Minnesota
University of Mississippi
Curators of the University of Missouri on behalf of
tile University of Missouri-Columbia
Board of Governors of the University of North Carolina
University of North Texas
University of Notre Dame du Lac
Oklahoma State University
The Pennsylvania State University
Purdue University
University of South Carolina
The University of Texas at Austin
Texas A&M University
Texas Teeh University
Tulane University
Board of Regents of the University of Wisconsin System
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Source of Authority of Amici Curiae to File
All parties have consented to the filing of this brief. FED. R. APP. P. 29(a).
Statement of Interest of the Amici Curiae
Amici are major universities or their governing bodies. Several of these
universities, namely Baylor, Mississippi, North Texas, Texas, Texas A&M, Texas
Tech, and Tulane, reside within this Circuit. The others of the Amici, namely
Alabama, Arkansas, Auburn, Boise State, Connecticut, Duke, Florida, Florida
State, Georgia, Illinois, Kentucky, Michigan, Minnesota, Missouri, North Carolina,
Notre Dame, Oklahom_t State, Penn State, Purdue, South Carolina, and Wisconsin,
are well-known within this Circuit as leading universities in the United States.
All of the Amici sponsor collegiate sporting events, including intercollegiate
football games, as members of the National Collegiate Athletic Association.
Among them, the Amici are members of the following athletic conferences: SEC,
Big East, Big Ten, Big 12, ACC, Conference USA, WAC, and Sun Belt. One
(Notre Dame) is a major independent. The games of these teams are played
throughout the United States.
Many thousands of persons attend the games of these universities, and
millions more watch them on national or regional television. Replays of the
games, or portions thereof, are broadcast in sports and news reports by television
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stations all over the country. Photographs of game action are reproduced in
hundreds of newspapers, magazines, and other publications.
Each of the Amici has its own particular combination of school colors.
These colors are prominently displayed on the team uniforms as well as on the
uniforms of student support groups such as bands and cheerleaders. The color
combinations are viewed by those watching the games live as well as those
watching on television or seeing replays or photographs. The color combinations,
particularly when taken with other symbols, serve to identify the team of one
university and distinguish that team from the team of its opponent (i.e., they are
source identifiers or marks).
To accommodate its legion of fans who desire to identify with the team,
each Amicus has a licensing program whereby it licenses use of its marks which
are typically used in the color combination of the particular university. Licensed
products such as T-shirts bearing the school colors of the university are often seen
around campus and in many other places. The licensing program at each
university allows the university to control the quality of the licensed products, so
that, for example, messages detrimental to good sportsmanship can be prohibited.
The licensing program also provides an important and increasing source of revenue
to the university at a time when other revenue sources are being curtailed. These
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revenues often support athletics programs, as well as scholarships for students and
academic and scientific research.
Like the Plaintiff-Appellee universities ("Appellees"), many of the Amici
also have experienced the use of their marks on unlicensed apparel, and
particularly on shirts made by Defendants-Appellants ("Smack").
The Amici therefore have interests similar to those of the Appellees, and
believe the Court should have the benefit of this brief on two subjects that are
extremely important to the Amici: (1) that the type of use made by Smack cannot
be excused as "aesthetically functional," and (2) that Smack is not making a
"nominative fair use" of the universities' source-identifiers.
Summary of Argument
In urging affirmance of the District Court Opinion, Amici first discuss the
implications to them of the trademark principles raised in this case. Amici then
focus specifically on two reasons of particular importance to them why the District
Court judgment is correct and should be affirmed: Appellees' color schemes
("Color Marks") are not functional, and Smack did not make nominative fair use of
those marks.
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Argument
I. Image Control Is Critical to the Amici
Amici are major universities largely dependent on philanthropy - the
generosity of multiple donors - to achieve their educational and related goals. The
reputation or "image" of the Amici is critical in maximizing this philanthropy.
Amici control their image, in part, by controlling those symbols that identify and
distinguish them to the public - viz., their trademarks and service marks, which are
typically presented in the unique school colors of each university, as well as those
colors themselves.
The "product" lhe universities provide under their marks is quality
education, enhanced by myriad extracurricular facets of the university experience:
centuries of tradition, unique quality of campus life, and activities carried out by
students and enjoyed by the wider community. Among the highest profile in the
latter category are collegiate sporting events, the target of Smack's infringement.
A. Fundamental Principle of Trademark Law: Control of One's
Image
A bedrock principle of trademark law is an owner's right to control the use
of its marks. This right equally furthers the twin functions of trademarks: serving
the public need to rely on a mark as a symbol of source or sponsorship and
providing mark owners the benefit of their economic investments. See, e.g., lcee
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Distribs., Inc. v. J&J Snack Foods Corp., 445 F.3d 841,846 (5 th Cir. 2006); Sport
Supply Group, Inc. v. Columbia Cas. Co., 335 F.3d 453,460 (5 thCir. 2003).
B. Amici Control Their Images through Licensing
Through licensing, i.e., permitting others to use the marks subject to the
university's standards of quality control, Amici are able to control the quality of
products beating their marks and prevent the projection of negative images of
Amici to the public. Licensing also provides valuable resources to Amici.
Driven by the boom in television broadcasting of college sports that began in
the 1970s, collegiate licensing is an important source of much-needed revenue to
support the educationa!t missions of the Amici, with annual retail sales of college-
licensed merchandise estimated at $3 billion in 2006. Jack Revoyr, Non-Definitive
History of Collegiate Licensing, 88 TRADEMARK REP. 370, 371 (1998); Hot
Markets Help Spur 4% Gain In Sports Licensing Sales, THE LICENSING LETTER,
May 7, 2007. From _ humble beginning - said to have been two dozen T-shirts
printed with the Uniw_rsity of California, Los Angeles brand in the early 1930s -
hundreds of U.S. colleges and universities, including Amici, today license the
commercial use of their name, mascot, and other marks, including color. See
Revoyr, 88 TRADEMAILKREP. at 370-71.
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C. Smack's Actions Threaten Amici's Ability To Control
Smack Apparel's actions are a threat to both of these key benefits Amici
derive from their right to control use of their marks. Without that right, Amici
could not stop infringers from uses that appear to be approved by Amici but are
antithetical to their mission of education in a positive environment that instills in
students a sense of good sportsmanship and fair play, and also reflects each
particular university's heritage and goals. The use of Amici's marks to promote
overindulgence in alcohol, as is the case in one of the Smack designs at issue, is of
particular concern in view of the problems alcohol causes on many college
campuses. In addition, Amici would lose crucial licensing revenues wrongfully
taken by infringers who benefit from consumer desire for products associated with
Amici.
Thus, the District Court's decision should be affirmed not only because it is
doctrinally correct, as explained below, but also because it represents sound public
policy.
II. The Appellees' Color Marks Are Not Functional
Smack asserted a functionality defense to its infringement of the Color
Marks. This defense fails as a matter of law, and the District Court correctly
granted summary judgment on the defense of functionality.
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A.- The Color Marks Fail the EppendorfTests for Functionality
The "functionality" defense to trademark infringement arose to prevent use
of the trademark laws to circumvent the patent laws, i.e., to obtain a perpetual
monopoly on useful articles that could otherwise be protected by a limited-term
patent. See Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 164 (1995). The
defense was most relewmt when protection was sought for product configurations
such as those at issue in cases like TrafFix Devices, Inc. v. Marketing Displays,
Inc., 532 U.S. 23 (2001), Sno-Wizard Mfg., Inc. v. Eisemann Prods. Co., 791 F.2d
423 (5 thCir. 1986), and Sieilia Di R. Biebow & Co. v. Cox, 732 F.2d 417 (5 _ Cir.
1984). The legitimate need for competitors to use a utilitarian feature that is less
expensive, of better quality, or more efficient to manufacture is the bedrock of the
doctrine. 1
As Smack acknc,wledges, this Court's most recent functionality opinion -
which also focused on the protectability of product configuration - recognized two
tests for functionality:
(1) Whether the feature is essential to the use or purpose of the
product or whether it affects the cost or quality of the product;and
i It was not until 1998 that the word "functional" appeared in the Lanham Act. See 4A LoulsALTMAN _ MALLA POLLACK, CALLMANN ON UNFAIR COMPETITION, TRADEMARKS &
MONOPOLIES § 26:6 n.16 (4th ed. 2007) (stating that prior to enactment of the Trademark Law
Treaty Implementation Act of 1998, Pub. L. No. 105-330 (effective Oct. 30, 1998), "functional
marks were held unregistrable by case law, though the Lanham Act was silent on the subject").
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(2)put competitors at
disadvantage.
Eppendorf-Netheler-Hinz GMBH v.
2002). The primary test
opinion in TrafFix.
Smack argues that
A functional feature is one the exclusive use of which would
a significant non-reputation-related
Ritter GMBH, 289 F.3d 351, 356 (5 th Cir.
was derived from the Supreme Court's then-recent
its use of the Color Marks 2 satisfies both of these
conditions. Brief for Appellant ("Smack's Brief'), at 37-39. In reality, however,
its use serves neither function, and this case presents no real issue of utilitarian
functionality. Cf Texas Teeh Univ. v. Spiegelberg, 461 F. Supp. 2d 510, 520 (N.D.
Tex. 2006) (rejecting the defendant's argument that Texas Tech University's
scarlet-and-black color scheme is functional and stating: "The fact that a knit cap
is scarlet and black or bears a 'Double T' does not affect the quality of the cap or
its ability to keep one's head warm.").
Smack attempts to conform its arguments to allege utilitarian functionality,
as follows:
First, the use of school colors is essential to the use or purpose of the
product, which iis to identify the loyalty of the person wearing the t-
shirt, and to provide context for the message expressed on the t-shirt.
By contributing to the use or purpose of the product, the use of colors
also affects the quality of the products. As Dr. O'Connor notes,
"Without the identifying colors on Smack's T-shirts, the identity of
the speaker is lost and meaning of the message is similarly lost."
2 Although Amici focus exclusively on the Color Marks in this portion of their argument, they
note that this case does not concern Smack's use of color marks alone; rather, the Color Marks
are used only in conjunction with Appellees' additional indicia.
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Smack's Brief, at 37 (citation omitted). But there is nothing "utilitarian" about
these alleged benefits -rather, they are all marketing benefits. 3 See Si¢ilia, 732
F.2d at 428 (rejecting "the suggestion that the doctrine of functionality insulates a
second comer from liability for copying the first corner's design whenever the
second comer can merely cite marketing reasons to justify the copying.").
Moreover, the alleged functions of school colors on Smack's products to
"identify loyalty" and "provide context for the message" relate directly to - indeed,
are completely dependent on - the recognition and reputation of the particular
school involved. This is precisely the type of function that the Supreme Court said
is not protected by the functionality doctrine. Qualitex, 514 U.S. at 169 ("The
functionality doctrine.., protects competitors against a disadvantage (unrelated to
recognition or reputation) that trademark protection might otherwise impose,
namely their inability reasonably to replicate important non-reputation-related
features.") (emphases added). The purposes for which Smack alleged it used the
Color Marks on its products do not satisfy the Eppendorftests.
Smack's true claim, therefore, is that its products are aesthetically
functional, a defense not addressed in Eppendorf and, more importantly, not
recognized by this Court.
3 Of course, presumably every article of manufacture has a "function." A T-shirt protects the
upper part of the body from the elements and prevents rude exposure. Likewise, trademarks
serve the function of identifying and distinguishing. Vuitton Et Fils S.A.v.J. Young Enters.,
Inc., 644 F.2d 769, 774 (9 th Cir. 1981). This type of function is called "de facto" functionality,
as distinguished from ff_e legally protected "de jure" functionality.
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B. Smack's Claims Sound in Aesthetic Functionality, a Doctrine Not
Recognized in This Circuit
This Court has repeatedly - and properly - rejected the doctrine of aesthetic
functionality. In Boston Prof'l Hockey Ass 'n, Inc. v. Dallas Cap & Emblem Mfg.,
Inc., 510 F.2d 1004 (5 th Cir.), cert. denied, 423 U.S. 868 (1975), 4 the Court
distinguished aesthetic functionality from the defense of functionality, writing:
"The principles involved in those cases are not applicable to a trademark symbol
case where the design or symbol has no demonstrated value other than its
significance as the trademark of a hockey team." Id. at 1013.
In both Sicilia, 732 F.2d at 428, and Sno-Wizard, 791 F.2d at 427 n.3, the
Court again considered the limits of the functionality doctrine and reaffirmed its
commitment to the utilitarian functionality standard, explicitly rejecting the
doctrine of aesthetic functionality. Sno-Wizard, 791 F.2d at 427 n.3 ("We
explicitly rejected this test of 'aesthetic functionality' . . . in Sicilia."). More
recently, in Pebble Beach Co. v. Tour 18 1 Ltd., 155 F.3d 526, 540 n.6 (5 th Cir.
1998), this Court did not accept an invitation by the parties to overturn its aesthetic
functionality precedent based on dicta in the Supreme Court's Qualitex opinion. 5
4 The Boston Hockey case is thoroughly discussed by the parties and Amici will not address it in
detail. Amici do, however, agree with Appellees that the opinion is the first in a line in which
the Court has consistently rejected the aesthetic functionality doctrine, as have a clear majority ofthe circuit courts.
5 Although the Supreme Court later mentioned "esthetic functionality" in TrafFix Devices, Inc.
v. Marketing Displays, Inc., 532 U.S. 23, 33 (2001), that reference again was in dicta not
necessary to the opinion mad certainly not binding on this Court. Furthermore, the suggestion in
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For all the reasons explored below, this case offers no reason for the Court to
reverse its precedent rejecting aesthetic
opinions spanning more: than thirty years.
C.
functionality established in multiple
This Court's Precedent Is Correct: The Doctrine of Aesthetic
Functionality Is Not Sound Public Policy
The "checkered history ''6 of the aesthetic functionality doctrine began in
earnest in 1952 with the decision of the Ninth Circuit Court of Appeals in Pagliero
v. Wallace China Co., 198 F.2d 339 (9 th Cir. 1952). The doctrine was based on the
perceived competitive need to copy an ornamental (as distinguished from
utilitarian) feature of the product.
The doctrine has been criticized by commentators _ and rejected by most
other courts. "[A]s a general matter courts have been loathe to declare unique,
identifying logos and names as functional." Au-Tomotive Gold, Inc. v. Volkswagen
of America, lnc., 457 F.3d 1062, 1068 (9 th Cir. 2006), cert. denied, 127 S. Ct. 1839
(2007).
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the TrafFix dicta that Qualitex concerned aesthetic functionality is widely considered incorrect
among trademark practitioners and commentators. See, e.g., Christopher C. Larkin, Qualitex
Revisited, 94 TRADEMARK REP. 1017, 1032 (2004).
6 Au-Tomotive Gold, hw. v. Volkswagen of America, lnc., 457 F.3d 1062, 1064 (9 th Cir. 2006),
cert. denied, 127 S. Ct. 1839 (2007).
7 See, e.g., Sicilia, 732 F.2d at 427; In re Mogen David Wine Corp., 328 F.2d 925, 933 (C.C.P.A.
1964) (Rich, J., concurring); 1 J. THOMAS MCCARTHY, MCCARTHY ON TRADEMARKS & UNFAIR
COMPETITION § 7.81 (4 th ed. 2007) ("The notion of 'aesthetic functionality' is an unwarranted
and illogical expansion of the functionality policy, carrying it far outside the utilitarian rationale
that created the policy .... 'Aesthetic functionality' is an oxymoron.").
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In Sicilia, this Court considered the policy reasons why the aesthetic
functionality doctrine would hinder, rather than promote, competition:
We think that too broad a view of functionality disserves the Lanham
Act's purpose of protecting product distinguishability. By restricting
the doctrine of functionality, we preserve the ability of producers
freely to select distinguishing designs and identifying marks. By
linking functionality to a finding of competitive effect, however, we
continue to promote free competition. A finding of functionality will,
by definition, encompass a finding that competition would be unduly
hindered unless close copying by a competitor is allowed. A finding
of nonfunctionality, by contrast, will mean that a wide array of
choices remain available to prospective competitors even though the
plaintiff producer acquires a property right in a particular design or
configuration.
Sicilia, 732 F.2d at 429--30 (citations omitted).
Even the Ninth Circuit, where the doctrine had the greatest viability,
retreated from its acceptance of the doctrine in Vuitton Et Fils S.A.v.J. Young
Enters., Inc., 644 F.2d 769, 774 (9 th Cir. 1981), in which the Ninth Circuit said:
The policy expressed in Pagliero and the cases decided under it is
aimed at avoiding the use of a trademark to monopolize a design
feature which, in itself and apart from its identification of source,
improves the usefulness or appeal of the object it adorns.
Reversing and remanding the District Court decision finding the design of a
handbag aesthetically functional, the court there stated:
We disagree with the district court insofar as it found that any feature
of a product which contributes to the consumer appeal and saleability
of the product is, as a matter of law, a functional element of that
product. Neithe, r Pagliero nor the cases since decided in accordance
with it impel such a conclusion.
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Id. at 773. In its most recent pronouncement on aesthetic functionality, the Ninth
Circuit Court of Appeals said the following:
Taken to its limits . . . this doctrine [aesthetic functionality] would
permit a competitor to trade on any mark simply because there issome "aesthetic" value to the mark that consumers desire. This
approach distort,; both basic principles of trademark law and the
doctrine of functionality in particular.
Au-Tomotive Gold, 457 F.3d at 1064.
The aesthetic functionality doctrine has not stood the test of time because it
is bad public policy - it promotes confusion of consumers and allows one who
would trade on the goodwill of another to be unjustly enriched - concepts that are
antithetical to the purposes of the trademark and unfair competition laws.
D. Even If the Aesthetic Functionality Doctrine Were Viable in This
Circuit, the Marks Here Are Not "Aesthetically Functional"
Part of the problem with the doctrine of aesthetic functionality is that its full
reach is often underestimated. The full reach of that doctrine might allow those
(such as Smack) who want to trade on the goodwill of a mark owner (such as
Louisiana State University ("LSU")) to claim that their use is "functional" when in
fact it is source-idenllifying. What football fan seeing Smack's purple-and-gold
shirt with the scores of all LSU games in 2003 and reference to the 2003 National
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Championship would not believe that the shirt identifies the LSU Tigers and
distinguishes LSU from its opponents? This is the definition of a trademark. 8
Even if the doctrine of aesthetic functionality has a valid application in some
cases, it does not here, where all benefits Smack derives from use of the Color
Marks are purely based on Appellees' reputations.
1. Smack's Use of the Color Marks Is Not Functional
Smack argues that both (1) Appellees' use of their marks is functional, and
(2) Smack's own use of Appellees' marks is functional. Amici will address the
second argument, that of"defensive aesthetic functionality," first.
Professor McCarthy writes that "the notion of a defensive type of aesthetic
functionality is bad law, poor policy and provides no coherent rules." 1 J. THOMAS
MCCARTHY, MCCARTITY ON TRADEMARKS & UNFAIR COMPETITION § 7.82 (4 th ed.
2007). He continues:
The theory of defensive aesthetic functionality is much too blunt a
weapon to serve as a device to solve problems that arise when a
trademark is used by defendant in an arguably "decorative" sense,
such as on T-shirts, baseball caps and other paraphernalia. In such
cases the question is the familiar but difficult one of whether there is a
likelihood of confusion as to source, sponsorship, affiliation or
connection. No notions of "defensive aesthetic functionality" are
proper to serve as an escape from facing head-on the question oflikelihood of confusion.
/d.
See Lanham Act Section 45, 15 U.S.C.A. § 1127 (defining "trademark" as a word, name,
symbol, or device used to "identify and distinguish" goods).
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a. The Only Advantage the Color Marks Provide Is
Reputation-Related
The Supreme Court's words in Qualitex bear repeating: "The functionality
doctrine.., protects competitors against a disadvantage (unrelated to recognition
or reputation) that trademark protection might otherwise impose, namely their
inability reasonably to replicate important non-reputation-related features." 514
U.S. at 169 (emphases added).
Smack argues that the purposes of its products are "to identify the loyalty of
the person wearing the t-shirt, and to provide context for the message expressed on
the t-shirt." Smack's Brief, at 37. Here, competitive advantage flows from
consumer association of the Color Marks with schools. This is the very essence of
a reputation-related feature. Whether the Color Marks serve any of the functions
asserted by Smack is irrelevant.
b. Taste, Preference, or Sports Team Support Cannot
Render Color Functional
Smack also argues that the Color Marks are functional because consumers
want to purchase and wear shirts in those colors to show their support for
universities and their football teams. Smack's Brief, at 36-37. However, "[m]ere
taste or preference cannot render a color - unless it is the best, or at least one, of a
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few superior designs - de jure functional." 9 L.D. Kichler Co. v. Davoil, Inc., 192
F.3d 1349, 1353 (Fed. C,ir. 1999) (internal quotation omitted), l°
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The Trademark Trial and Appeal Board ("TTAB" or "the Board"), the
administrative agency dedicated to deciding disputes over federal trademark
registration, rejected an aesthetic functionality argument similar to Smack's in
University Book Store v. University of Wisconsin Board of Regents, 1994 WL
747886, 33 USPQ2d 1385 (TTAB 1994). In that case, retail store operators
opposed the University of Wisconsin's application to register, among other marks,
the designs of its "Bucl,_ Badger" mascot depicted below for use on clothing:
i The TTAB concluded that the marks were not aesthetically functional
because a significant portion of the purchasing public associated the marks with
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the University of Wisconsin as a source for the goods, ld. at *22, 1406. "Taken to
its logical conclusion," the Board wrote, "opposers' argument would eliminate
9 The Federal Circuit has distinguished de facto functional features, which may have a function
yet still be entitled to trademark protection as a source indicator, from de jure functional features,
which are not. Valu Eng_g, Inc. v. Rexnord Corp., 278 F.3d 1268, 1374 (Fed. Cir. 2002).10 Deere & Co. v. Farm,hand, Inc., 560 F. Supp. 85, 98 (S.D. Iowa 1982), affd, 721 F.2d 253
(8 th Cir. 1983), referenced at p. 36 of Smack's Brief, specifically relied on aesthetic functionality
- disallowed in this Court - to permit competitors to copy plaintiff's green color of farm
machinery ("The Court concludes that the doctrine of aesthetic functionality should apply to the
dispute now before the Court.").
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trademark protection and registrability for any popular and commercially
successful design which is imprinted on clothing, irrespective of whether the
design additionally is source-indicative to at least some consumers." Id.
The TTAB reiterated its rejection of Smack's aesthetic functionality
argument this year in Chicago Bears Football Club, Inc. v. 12 th Man�Tennessee
LLC, 2007 WL 683778, 83 USPQ2d 1073 (TTAB 2007). In that case, the Chicago
Bears opposed an application to register the mark 12 th BEAR for T-shirts, among
other goods. The applicant's functionality argument "apparently would allow
others to register marks that are similar to registered marks in order to show
support or hostility to a sports team. American case law simply does not recognize
such a fight." ld. at "14, 1084. The Board continued:
The mere fact 'Lhat a trademark owner's mark is associated with a
movie, television show, university, or sports team does not mean that
it is functional and available for others to use to promote their goods
when the trademark owner is actively licensing the mark for related
items .... We cannot conclude that applicant has any right to register
its mark simply because it attempts to market its goods to a fan who
wants "to communicate his allegiance and support of his team." The
trademark owner has a right to market its promotional items to those
fans and to prevent others from marketing promotional items to the
same fans by using a confusingly similar mark.
Id. at * 14-* 15, 1084 (emphasis added) (internal citation and footnote omitted).
Smack's real ;argument is that the purpose of its infringing shirts is to
communicate - that is, to express the views of the wearer - rather than to serve as
an article of clothing. Application of the functionality doctrine is not the
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appropriate means of analyzing expression. As the Eighth Circuit has explained,
"The functionality doctrine serves as a buffer between patent law and trademark
law by preventing a competitor from monopolizing a useful product feature in the
guise of identifying itself as the source of the product." Home Builders Ass 'n of
Greater St. Louis v. L&L Exhibition Mgt., Inc., 226 F.3d 944, 948 (8 th Cir. 2000).
First Amendment free speech rights are well-recognized in trademark law
by, for example, protections for comparative advertising, news reporting, parody,
and noncommercial uses of marks. Smack's use of Appellees' marks fits none of
these categories.
2. Appellees' Use of Color Marks Is Not Functional
Smack also is wrong in arguing, at page 30 of its brief, that Appellees' own
use of their color marks in "activities and programs in connection with student life,
buildings, and Univer,;ity programs and events" is functional, non-trademark use.
Appellees, like Amici, make wide use of their school color schemes in association
with their goods and services related to higher education to identify themselves as
the source of those goods and services.
Functionality decisions relating to apparel from the Court's sister circuits
illustrate the flaw in Smack's argument. For example, in Keds Corp. v. Renee Int'l
Trading Corp., 888 F.2d 215 (1 st Cir. 1989), the First Circuit rejected the
defendant's argument that the blue rectangle, or "kicker," on the heel or instep of
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KEDS sneakers was functional and necessary for effective competition in the
sneaker industry. "But the argument proves too much. What [defendant] Renee
seems to be claiming is that it must be able to produce shoes that look like Keds
shoes in order to compete effectively." ld. at 221. The blue rectangle was held
non-functional._
Appellees' use of the Color Marks is easily contrasted with facts supporting
a finding that the mark owner's use of color was functional. In one of the leading
cases, Brunswick Corp. v. British Seagull Ltd., 35 F.3d 1527, 1532 (Fed. Cir.
1994), the Federal Circuit affirmed denial of registration of the color black as a
trademark for outboard engines because use of black (1) coordinated with a wide
variety of boat colors, and (2) decreased the apparent size of the motors. The
record showed these were non-trademark features important to consumers
purchasing outboard engines. Id. There is no similar showing here that the
university Color Marks serve any useful function, and the fact that schools used
their colors as source identifiers before they began licensing products in no way
supports Smack's poskion. The Color Marks are not functional.
_J Accord Dallas Cowboys Cheerleaders, lnc. v. Pussycat Cinema, Ltd., 604 F.2d 200 (2d Cir.
1979).
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E. The District Court's Ruling Will Not Cause Color Monopolization
Or Depletion
Without specifically raising the issue of color depletion, Smack obliquely
argues that protection of the Color Marks will allow Appellees to "monopolize the
use of their school colors on game day apparel." Smack's Brief, at 38. As the
Court has recognized, however, it is the doctrine of aesthetic functionality that
would actually hinder competition. Sieilia, 732 F.2d at 429-39.
Defendants accused of infringing a color mark often rely on the shibboleth
of color depletion. There are only so many colors, the theory goes, and allowing a
monopoly in use of a color will prevent defendants from competing effectively.
Because the color depletion theory applies only in single-color cases - if at all -
there should be no concern in this case that the District Court's ruling will give
Appellees a monopoly on their trademark color schemes. Furthermore, as the
Supreme Court explained in Qualitex, any concerns regarding color depletion can
be addressed under a traditional functionality analysis:
This argument is unpersuasive, however, largely because it relies on
an occasional problem to justify a blanket prohibition [against single-
color marks]. When a color serves as a mark, normally alternative
colors will likely be available for similar use by others. Moreover, if
that is not so - if a "color depletion" or "color scarcity" problem does
arise -the trademark doctrine of"functionality" normally would seem
available to prevent the anticompetitive consequences that
[defendant's] argument posits, thereby minimizing that argument's
practical force.
514 U.S. at 168-69 (internal citation omitted).
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Although single ,colors and color combinations are protectable as marks,
what Appellees seek to protect in this case is not color alone, but color
combinations plus words or other indicia that indicate association with a particular
source.
This Court recognized that source-identifying color schemes could function
as trademarks and merit protection as such long before the Supreme Court ruled in
Qualitex that a single color could serve as a mark. In Chevron Chem. Co. v.
Voluntary Purchasing Groups, Inc., 659 F.2d 695, 703 (5th Cir. 1981), cert. denied,
457 U.S. 1126 (1982), this Court held that, although a plaintiff could not preempt
the use of red and yellow on lawn chemical packaging, it could "protect the
combination of particular hues of these colors, arranged in certain geometric
designs, presented in conjunction with a particular style of printing, in such fashion
that, taken together, they create a distinctive visual impression." See also National
Ass 'n of Blue Shield Plans v. United Bankers Life Ins. Co., 362 F.2d 374 (5 m Cir.
1966) (concluding that BLUE SHIELD with a shield design was infringed by RED
SHIELD with a similar shield design for medical insurance).
Protection of source-identifying renderings of colors in specific
configurations, or with other indicia, does not threaten color monopolization. In
Vision Sports, Inc. v. Melville Corp., 888 F.2d 609, 614 (9 th Cir. 1989), the Ninth
Circuit explained why it rejected defendant's invocation of the color depletion
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rationale in support of its argument that the plaintiff's use of the colors red, white,
and black as a trademark on its clothing was functional: "As Vision points out,
Melville is not enjoined from using the colors red, black, or white on its clothing
labels or screen print. ]it is enjoined from using these colors in a particular graphic
display which may be confusingly similar to the VSW logo format employed by
Vision." The
Transportation,
(affirming judgment
combination for taxis).
Ninth Circuit affirmed a preliminary injunction. See also
Inc. v. Mayflower Servs., Inc., 769 F.2d 952 (4 th Cir. 1985)
enjoining competitor from using red-and-black color
Neither Appellees' nor Smack's use of the Color Marks is contemplated in
the Court's test for functionality. The District Court's ruling that the marks are not
functional should be affirmed.
III. Smack Did Not Make Fair Use of the Plaintiffs' Marks
The Court need not use this case to flesh out the contours of how the
doctrine of nominative fair use applies in the Fifth Circuit. See Shamloo v.
Mississippi State Bd. of Trustees of Institutions of Higher Learning, 620 F.2d 516,
524 (5 th Cir. 1980) ("This court has stated its concern that cases are to be decided
on the narrowest legal grounds available."). For the reasons explained below,
Smack's argument that its use was a nominative fair use fails as a matter of law.
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A. Likelihood of Confusion Dooms Smack's Argument that
Color Marks Are Used Merely to Identify Schools as "Subjects,"Not Sourc¢;s
Trademark infringement and the defense of nominative fair use employ
alternate formulations of the same test: likely confusion. Pebble Beach, 155 F.3d
at 546 ("This right to use a mark to identify the markholder's products - a
nominative use - however, is limited in that the use cannot be one that creates a
likelihood of confusion as to source, sponsorship, affiliation, or approval."); see
also 4 MCCARTHY § 23:11 ("'[N]ominative fair use' is an alternative method for
analyzing if there is the kind of likelihood of confusion that constitutes trademark
infringement."). Smack's use fails both tests, and Smack did not make nominative
fair use of the Color lVlarks.
Under the doctrine of nominative fair use, a defendant (1) may only use so
much of the mark as necessary to identify the product or service and (2) may not
do anything that suggests affiliation, sponsorship, or endorsement by the
markholder. Pebble Beach, 155 F.3d at 546 (citing New Kids on the Block v. News
Ameriean Publ'g, Inc., 971 F.2d 302, 308 (9 th Cir. 1992)). The test applies only
where the defendant uses a trademark to describe the plaintiff's product, rather
than its own. Id. Where a defendant uses the mark to sell its own products,
confusion as to sponsorship or endorsement may be likely. See Downing v.
Abercrombie & Fitch, 265 F.3d 994, 1009 (9 th Cir. 2001).
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Smack makes the novel argument that its use of the Color Marks identifies
Appellees as the subject of its T-shirts, rather than the source. Smack's Brief, at
39. The shortcoming in this argument is the nature of Smack's shirts as a
commercial product in competition with similar shirts licensed by Appellees to
bear their marks. Smack uses the Color Marks to sell its own shirts, not to describe
Appellees' goods and services. Competitive use of another's mark may only be
considered nominative if it does not imply sponsorship or endorsement. New Kids,
971 F.2d at 309. Yet under the circumstances and in the markets in which Smack
sold its shirts, suggestion of sponsorship or endorsement by Appellees was
inevitable. In fact, as the jury found, Smack's use of the Color Marks actually did
confuse or deceive the public.
Smack's actions stand in contrast with those of the defendant in Scott Fetzer
Co. v. House of Vacuums, Inc., 381 F.3d 477 (5 th Cir. 2004). There, the defendant
had the right to use the KIRBY mark to truthfully advertise that it repaired and
resold genuine KIRBY vacuum cleaners. "Independent dealers and repair shops
may use a mark to advertise truthfully that they sell or repair certain branded
products so long as the advertisement does not suggest affiliation with or
endorsement by the markholder," the Court wrote, ld. at 484.12 Accord Trail
J2 At 484 n.2, the Scott Fetzer Court distinguished the concept of "fair use," which "'allows a
party to use its own name or a descriptive term or device in the name or term's descriptive sense
to describe its own goods or services.'" (quoting Pebble Beach, 155 F.3d at 545 n.12). Such use
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Chevrolet, Inc. v. General Motors Corp., 381 F.2d 353 (5 tn Cir. 1967)
(CHEVROLET mark may be used to truthfully advertise sale and service of
CHEVROLET cars). Applied to the facts of this case, Smack would be protected
under Scott Fetzer if it lawfully acquired shirts bearing Appellees' marks and used
their marks to advertise those shirts, as long as it did nothing to suggest
sponsorship or endorsement by Appellees.
Similarly, in the well-known case Playboy Enters., lnc. v. Welles, 279 F.3d
796 (9 th Cir. 2002), the doctrine of nominative fair use allowed the defendant to
use the plaintiff's mark to truthfully advertise on her website that she had been
Playboy's Playmate of the Year in 1981. Smack's actions in this case, however,
were more akin to u,;ing the PLAYBOY mark or symbols to market a competing
magazine.
B. Third-Party Use in Unrelated Context Is Irrelevant to AnyTrademark Issue
Smack argues that third-party use of the Color Marks undermines the
strength of the marks. Smack's Brief, at 24-25. Once again, Smack alleges use of
the marks "in a non-trademark manner" by both Appellees and third parties.
The conclusion of the District Court with which Smack takes issue is this:
of a term in a descrip6ve sense also is commonly called "classic fair use" and indeed is a distinct
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concept from "nominative fair use," or use of another party's mark to describe the other party's
goods or services in a non-confusing manner, despite the unfortunately similar names. See
4 MCCARTHY § 23:11 ; see also KP Permanent Make-Up, Inc. v. Lasting Impression 1, Inc., 543
U.S. 111, 115 n.3 (2004) (deciding case involving question of descriptive fair use and declining
to address nominative fair use).
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[T]he universities' color schemes, logos, and designs are extremely
strong marks that have been used for decades and have acquired
secondary meaning in the context of reference to the plaintiffs'
universities or their accomplishments, which are directed to their fans
and other interested consumers. Although there are many uses of the
universities' color schemes, logos, and designs by third parties, there
is no indication that any third party used the marks in that context.
Opinion, at 659.
The District Court Opinion is correct. When relevant, evidence of third-
party use of similar marks can have a bearing on a mark's strength, but only when
they are used as marks. See, e.g., Palm Bay Imports, lnc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1373 (Fed. Cir. 2005) ("The
probative value of third-party trademarks depends entirely upon their usage.").
Smack cites Sun Banks of Florida, lnc. v. Sun Fed. Sav.& Loan Ass 'n, 651
F.2d 311, 316 (5 th Cir. 1981), to support the proposition that evidence of non-
trademark use of the Color Marks by third parties, as well as Appellees
themselves, is relev_at in assessing the strength of the marks. Sun Banks does not
support this proposition. What the Court considered in Sun Banks was third-party
use of similar terms as trademarks, stating:
In the case at bar we are confronted with an even more impressive
array of third-party single and multi-word uses of the "Sun" mark.
The evidence reflects that in 1976 over 4400 businesses registered
with the Florida Secretary of State used the word "Sun" in their
names. A significant number of these businesses fell within the
category designated financial institutions. In addition, the evidence
included a sampling of other businesses across the country having
federally registered trade and service marks using the word "Sun."
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Id. at 316 (footnote omittted). In the next paragraph, the Court cited several other
Fifth Circuit opinions on point, noting parenthetically that each involved evidence
of multiple third-party lrademark registrations or uses of trademarks. Id.
The District Court cited University of Georgia Athletic Ass 'n v. Laite, 756
F.2d 1535, 1545 (11 th Cir. 1985), in support of its conclusion. In Laite, the
Eleventh Circuit found that third-party uses of English bulldogs as school sports
team mascots did not diminish the strength of the University of Georgia Athletic
Association's mark. ld. Nor did third-party uses of the bulldog mark on products,
some of which may have been licensed. Id. Even unauthorized third-party uses of
a mark do not necessarily render it weak, the court noted, ld. at 1545 n.27. "The
proper inquiry is whether the unauthorized third-party uses significantly diminish
the public's perception that the mark identifies items connected with the owner of
the mark." Id. The Eleventh Circuit cited in contrast the opinion in Supreme
Assembly, Order of Rainbow for Girls v. J.H. Ray Jewelry Co., 676 F. 2d 1079,
1082-85 (5th Cir. 1982), in which the public had no reasonable basis to assume
that the mark could be used only with the approval or sponsorship of the mark
owner because of unauthorized third-party uses of the mark.
There is no question that the Color Marks at issue in this case, like those
used by Amici, have enormous strength as source designators for many thousands
of students, alumni, supporters, and even rivals. The jury found that Smack's use
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of the Color Marks actually confused or deceived the public. If the Color Marks
are used in manners other than as trademarks, such use would only enhance their
strength as source designators. Uses in unrelated contexts are irrelevant.
CONCLUSION
This Court has properly refused to recognize the much-criticized doctrine of
aesthetic functionality. In any event, this would not be a proper case for invocation
of the doctrine, even if recognized in this circuit, because the colors and indicia
used by Smack on the products at issue in this case serve to identify source, i.e.,
the football teams of Appellees.
Nor is Smack's use excused as nominative fair use. Nominative fair use
allows use of the name or mark of another to truthfully identify the trademark
owner, but that defense is not available where, as here, (1) there is a likelihood of
confusion, or (2) more of the mark than necessary has been used to identify the
markholder's product or service.
The judgment of the District Court was correct, and should be AFFIRMED.
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Dated: November (9, 2007
I_R_,SR pe lly submitted,/_'
[ /l_0uis_. Pirkey / /
Q._ William G. BarberStephen P. Meleen
Susan J. HightowerPIRKEY BARBER LLP
600 Congress Avenue, Suite 2120
Austin, Texas 78701
(512) 322-5200
(512) 322-5201 (facsimile)
Counsel for Amici Curiae
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CERTIFICATE OF SERVICE
I hereby certify that I filed the foregoing BRIEF OF AMICI CURIAE INSUPPORT OF PLAINTIFFS-APPELLEES AND AFFIRMANCE on
November 7, 2007 by mailing the original and seven (7) copies thereof and an
electronic version by overnight courier service, Federal Express, via Priority
Overnight service to:
Clerk, United States Court of Appealsfor the Fifth Circuit
600 S. Maestri Place
New Orleans, LA 70130-3408
(504) 310-7700
I further certify that I served the foregoing BRIEF OF AMICI CURIAEIN SUPPORT OF PLAINTIFFS-APPELLEES AND AFFIRMANCE on
November 7, 2007 by mailing a copy thereof and an electronic version by first-
class mail, postage prepaid, in a sealed envelope, to the address of each counsel, aslisted below:
James W. Tilley
Tilly Law Firm1639 South Carson Ave.
Tulsa, OK 74.119
Robert E. Kerrigan, Jr.Duris L. Holmes
Charlotte C. Meade
Deutsch, Kerrigan & Stiles LLP
775 Magazine Street
New Orleans, LA 70130
R. Charles Henn, Jr.Jerre B. Swarm
William H. Brewster
Alex S. Fonoroff
Kilpatrick Stockton LLP1100 Peachtree Street, Suite 2800
Atlanta, GA 30309-6500
Stephen R. Doody
Roy, Kiesel, Keegan & DeNicola2355 Drusilla Lane
P.O. Box 15928
Baton Rouge. LA 707895-5928
Susan J. Hightc_erPIRKEY BARBER LLP
600 Congress Avenue, Suite 2120
Austin, Texas 78701
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CERTIFICATE OF COMPLIANCE
Pursuant to Rule 32(a)(7)(C) of the Federal Rules of Appellate Procedure,
the undersigned certifies that:
1. This brief complies with the type-volume limitation of FED. R.'APP. P.
29(d) and 32(a)(7)(B) because this brief contains 6,839 words, excluding the parts
of the brief exempted by FED. R. APP. P. 32(a)(7)(B)(iii), as determined by the
word processing system used to generate the brief.
2. This brief complies with the typeface requirements of FED. R. APP. P.
32(a)(5) and the type style requirementsof FED. R. APP. P. 32(a)(6) because this
brief has been prepared in a proportionally spaced typeface using Microsof_ Office
Word 2003 in Times New Roman font, 14 point.
Dated: November_ 2007 ./.
e"r /7Stephen P. Meleen
Susan J. Hightower
PIRKEY BARBER LLP
600 Congress Avenue, Suite 2120
Austin, Texas 78701
(512) 322-5200
(512) 322-5201 (facsimile)
Counsel for A mici Curiae
31
07-30580B4C7
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