Court Takes Aim at Precedent in Online Fan-Wear Dispute

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By Anandashankar Mazumdar

A Georgia art and design college can go ahead with its trademark infringement case against an online custom sports-fan clothing seller, a federal appeals court has ruled ( Savannah Coll. of Art & Design, Inc. v. Sportswear, Inc. , 2017 BL 353763, 11th Cir., No. 15-13830, 10/3/17 ).

The U.S. Court of Appeals for the Eleventh Circuit’s Oct. 3 ruling panned an earlier precedent, signaling that the appellate panel might think the precedent needs to be reexamined.

The Eleventh Circuit reversed a trial court ruling that kicked the claims out because the Savannah College of Art and Design’s registered service marks covered only educational services and not apparel. The college had sued Sportswear Inc., whose website allows users to choose a school or team and put its name, logo, or slogan on a variety of items, such as sweatshirts, caps, backpacks, and towels.

The U.S. District Court for the Northern District of Georgia said that without a registration covering T-shirts, caps, and other items, the college had to prove that it started selling branded clothing before Sportswear. The Eleventh Circuit said that was wrong under a 1975 precedent, Boston Prof’l Hockey Ass’n, Inc. v. Dallas Cap & Emblem Mfg., Inc., which said that service mark registrations can extend to goods.

The court suggested that without the Boston Hockey case, the district court might have been right, but that the panel didn’t have the authority to overrule the 1975 decision. The court also noted that other federal appeals courts have ruled differently on the issue.

The Eleventh Circuit panel criticized the Boston Hockey ruling, concluding that "there may be a sound doctrinal basis for what Boston Hockey did,” but “we have yet to hear of it.”

The panel decision was “certainly written to clearly convey the dissatisfaction that this panel has for the Boston Hockey precedent,” American University law professor Christine Haight Farley told Bloomberg BNA. “Who is the audience for this lament? Is it the other colleagues on the Eleventh Circuit who may be interested in a rehearing en banc? Is it the Supreme Court in the case of a cert petition?”

Sportswear’s lawyer, Leslie VanderGriend Ruiter of Stokes Lawrence PS, Seattle, told Bloomberg BNA in an email that “the court’s ruling shows that the panel believes the controlling precedent, i.e. Boston Hockey’s ‘monopolistic protection’, to be problematic, inconsistent with other circuits and ripe for review en banc.” She said that Sportswear is considering its options.

The college didn’t immediately respond to a Bloomberg BNA request for comment.

Online Custom Fan Gear

The college has federal registrations for “SCAD,” “Savannah College of Art and Design,” “Savannah College of Art and Design Bees,” and “Savannah College of Art and Design Founded 1978" as service marks for educational services. The Patent and Trademark Office grants service mark registrations under the same standards as trademark registrations, except for services instead of goods, such as clothing. The trial court focused on the fact that none of the college’s registrations covered the goods that Sportswear was selling.

Because of that, the trial court said that the college had to prove that it had been using the marks on clothing for longer than Sportswear had been selling its SCAD-related clothes. Prep Sportswear was selling SCAD items going back to 2009, but the college had no evidence of clothing sales further back than a 2011 licensing agreement with college bookstore operator Follett Corp. On that basis, Judge Thomas W. Thrash Jr. granted summary judgment in favor of Sportswear.

In Boston Hockey, the U.S. Court of Appeals for the Fifth Circuit said that NHL clubs’ service mark registrations for ice hockey entertainment services extended to patches of the NHL team logos. The precedent applies to the Eleventh Circuit because it was carved out of the Fifth Circuit several years after that ruling.

Judge Adalberto José Jordán issued the court’s ruling, which was joined by Judges Beverly B. Martin and L. Scott Coogler.

Taylor English Duma LLP represented the college. Stokes Lawrence PS and Gardner Groff Greenwald & Villaneuva PC represented Prep Sportswear.

To contact the reporter on this story: Anandashankar Mazumdar in Washington at AMazumdar@bna.com

To contact the editor responsible for this story: Mike Wilczek at mwilczek@bna.com

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