Fifth Circuit applies trademark protection to universities’ colour schemes
In Board of Supervisors for Louisiana State University Agriculture and Mechanical College v Smack Apparel Co (Cases 07-30580 and 07-30887, November 25 2008), the US Court of Appeals for the Fifth Circuit has upheld a district court decision recognizing trademark rights in the colour schemes used by certain major universities.
In June 2004 four universities, along with their official licensing agent, filed a district court action against Smack Apparel Company alleging various trademark infringement and unfair competition claims. The universities claimed trademark rights in certain unregistered colour combinations. Smack, a Florida apparel company, manufactured a range of t-shirts that featured each of the universities’ familiar colour combinations, along with additional printed messages relating to the schools. The universities claimed that:
- the colour combinations, when used in conjunction with other school identifying indicia, were immediately recognizable as source indicators; and
- Smack’s shirts were likely to deceive, confuse and mislead consumers as to source or sponsorship.
- their longstanding use of the colour combinations;
- the significant sales volume of licensed products containing the colours;
- the well-known nature of the colours as shorthand for the schools themselves; and
- Smack’s own belief that consumers would associate the colours with the universities.
Finally, the court discussed the issue of damages, upholding the jury’s award of actual damages, despite a lack of evidence regarding actual confusion, and affirming the district court’s refusal to award attorneys’ fees. The court noted that the deliberate copying and proven bad faith did not per se require an award of attorneys’ fees, especially since the universities' infringement claims were based on somewhat novel legal issues.
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