Katheryn Hayes Tucker
[email protected]

The U.S. Court of Appeals for the Eleventh Circuit has revived Savannah College of Art and Design's patent infringement lawsuit against a sportswear company.
“Imitation may be the sincerest form of flattery,” Judge Adalberto Jordan wrote in his opening, citing Charles Colton from “Bartlett's Familiar Quotations.” “But when the imitation consists of commercial reproduction for profit, all bets are off. So when Sportswear, Inc. began using the federally-registered service marks of the Savannah College of Art and Design without a license to sell apparel and other goods on its website, SCAD did not take kindly to the copying and sued for equitable and monetary relief.”
SCAD asserted a number of claims against Sportswear, including service mark infringement, unfair competition and false designation, Jordan said.
But Chief U.S District Judge Thomas Thrash Jr. of the Northern District of Georgia dismissed the lawsuit, granting Sportwear's motion for summary judgment.
“The district court, relying on Crystal Entertainment & Filmworks, Inc. v. Jurado, 643 F.3d 1313, 1315–16 (11th Cir. 2011)—a case involving a dispute over common-law trademark rights to a band name—concluded that SCAD had failed to establish that it had enforceable rights in its marks that extended to apparel,” Jordan said. “SCAD had validly registered its marks only in connection with the provision of 'education services,' and did not show that it had used its marks on apparel earlier than Sportswear in order to claim common-law ownership.”
“We reverse,” Jordan said, writing for a panel that included Judge Beverly Martin and Judge Scott Coogler from the Northern District of Alabama.
“This case, unlike Jurado, does not involve the alleged infringement of a common-law trademark, and as a result the date of SCAD's first use of its marks on goods is not determinative,” Jordan said. He cited “one of our older trademark cases”—Boston Prof'l Hockey Ass'n, Inc. v. Dallas Cap & Emblem Mfg., Inc., 510 F.2d 1004 (5th Cir. 1975). Jordan said the Boston Hockey case controls.
“Although Boston Hockey does not explain how or why this is so, it constitutes binding precedent that we are bound to follow,” Jordan wrote.
Jordan said later in the opinion that allowing a party to “take a free ride on another's registered trademark … simply feels wrong.”
The Savannah based art school was founded in 1978 and has grown to serve 11,000 students from across the United States and more than 100 countries with courses in painting, sculpture, architecture, fashion, photography, film and design, Jordan said. He noted the school also fields sports teams—the seed of the litigation.
“In February of 2014, a parent of a student-athlete forwarded Sportswear's website to one of SCAD's coaches. As a result, SCAD learned that Sportswear had been using its word marks on products without authorization (and without a licensing agreement) since August of 2009. Seeking to protect its marks from further unauthorized use, SCAD sued Sportswear in July of 2014,” Jordan wrote. He added, “At that point, Sportswear stopped selling products with SCAD's word marks.”
William Creasman of Taylor English Duma successfully represented SCAD at oral arguments. He could not be reached immediately for comment.
Leslie Ruiter of Stokes Lawrence in Seattle argued for Sportswear.

“I've done a lot of appeals, and this is one of the most interesting opinions I've come across,” said Sportswear's local counsel, Arthur Gardner of Gardner Groff Greenwald & Villanueva in Atlanta.

Gardner said he doesn't know what his client will do, but the Boston Hockey case cite “looks like an invitation for an en banc review.”
The attorneys could not be reached immediately.
The case is Savannah College of Art and Design v. Sportswear Inc.,
No. 15-13830.