Appeals court supports universities

• By ALLEN M. JOHNSON JR.
• Advocate New Orleans bureau
• Published: Dec 3, 2008 - UPDATED: 12:05 a.m.

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NEW ORLEANS — Generations of LSU sports fans know what it means to “bleed purple and gold.” Now, federal courts in New Orleans have given a Florida T-shirt manufacturer an expensive lesson in what it means to become “Tiger bait,” court records show.

In a ruling that recognizes both the power and profit potential of school colors, the 5th U.S. Circuit Court of Appeals has upheld a trial judge’s finding of trademark infringement against Smack Apparel Co. of Tampa Bay, Fla.

The firm and owner Wayne Curtiss must pay a federal jury award of $10.5 million in damages and $35,686 in “lost profits” to LSU and three football rivals for the 2004 national championship, the University of Oklahoma, Ohio State University and the University of Southern California, records show.

To win a trademark infringement case, plaintiffs must establish ownership of a legally protected “mark” and infringement that results in a “likelihood of confusion,” the ruling states.

“We conclude the colors, content and context of the offending T-shirts are likely to cause confusion as to their source, sponsorship, or affiliation and we affirm (the trial court decision),” a three-judge panel of the appellate court ruled in a 39-page decision.

Smack, which produced six unauthorized T-shirt designs during the pivotal 2004 Sugar Bowl game between LSU and Oklahoma, is also banned from “manufacturing, distributing, selling, or offering for sale” any apparel that infringe on the trademark rights of the four universities, the court ruled.

Ironically, LSU and the three other universities in the case were major rivals for college football’s national championship in 2003-2004.

However, all four schools became fellow plaintiffs in the suit after the firm produced T-shirts with the schools’ color schemes and markings for the pivotal 2004 Sugar Bowl football game in New Orleans.

Smack presented photographs of three businesses in Louisiana that used colors similar to those of LSU.

But the court said what was critical in an infringement case is whether third-party use of a “mark” (such as symbols or color schemes) “diminishes in the public’s mind the association of the mark with the (university) — surely lacking where colors are shown on a store wall.”

Citing trademark product cases involving Elvis Presley Enterprises Inc. among others, the appellate court’s ruling against Smack emphasized that the universities have strong historical and financial ties to their respective school colors.

“There is no dispute in this case that for a significant period of time the universities have been using their color schemes along with other indicia to identify and distinguish themselves from others,” the ruling states.

In 1878, Ohio State began using scarlet and gray. OSU realizes an annual sales volume of approximately $50 million in product sales, the court noted.