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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

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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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Smack Apparel Company

Wayne Curtiss

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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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