Savannah College of Art and Design, Inc. v. Sportswear, Inc.

983 F.3d 1273

Opinion

USCA11 Case: 19-11258 Date Filed: 12/22/2020 Page: 1 of 29

[PUBLISH]

IN THE UNITED STATES COURT OF APPEALS

FOR THE ELEVENTH CIRCUIT ________________________

No. 19-11258 ________________________

D.C. Docket No. 1:14-cv-02288-TWT

SAVANNAH COLLEGE OF ART AND DESIGN, INC.,

Plaintiff - Appellee,

versus

SPORTSWEAR, INC., d.b.a. PrepSportswear,

Defendant - Appellant.

________________________

Appeal from the United States District Court for the Northern District of Georgia ________________________

(December 22, 2020)

Before WILLIAM PRYOR, Chief Judge, ROSENBAUM, Circuit Judge, and MOORE *, District Judge.

* Honorable K. Michael Moore, Chief United States District Judge for the Southern District of Florida, sitting by designation. USCA11 Case: 19-11258 Date Filed: 12/22/2020 Page: 2 of 29

ROSENBAUM, Circuit Judge:

As a student struggling in 1971 to afford art classes at Portland State

University, Carolyn Davidson did not say “no” when a businessman offered to pay

her to come up with a logo design for his company. She drew a few different designs

on tissue paper, and the businessman selected one. From these humble origins,

Davidson’s design became the globally recognized Nike Swoosh. 1

Successful logos and design marks are lucrative—their recognition can

instantly ignite an emotional connection with the associated brand. 2 And this is

especially true for colleges, where sentimentality and pride create great demand for

products emblazoned with schools’ word and design marks—so much so that an

entire industry has grown up around producing logo products for schools, colleges,

and universities.

Plaintiff-Appellee Savannah College of Art and Design, Inc. (“SCAD”), and

Defendant-Appellant Sportswear, Inc. (“Sportswear”), are now before us a second

1 Carolyn Davidson, How a College Student Created One of Sport’s Most Iconic Images, ABC News, (June 17, 2016, 4:57 PM), https://abcnews.go.com/Sports/college-student-created- sports-iconic-images/story?id=39945185 (last visited Dec. 21, 2020). Davidson charged only $35 for her first deal with the shoe company now valued in the billions. Twelve years later, in 1983, Nike also gave her a gold ring in the shape of the Swoosh with a diamond in it and shares of Nike stock (not to mention chocolate dessert Swooshes). Id. 2 When Tropicana briefly dropped its iconic green-and-gold-lettering and orange-with-a-

protruding-straw design marks for plain font appearing next to a glass of orange juice, the Tropicana Pure Premium line experienced a 20% drop in sales in less than two months. Sarah Shearman, Five Brand Logo Redesigns that Misfired and How to Deal with the Backlash, The Guardian, (Aug. 1, 2014), https://www.theguardian.com/media-network/media-network- blog/2014/aug/01/brand-logo-redesign-airbnb-foursquare. That was apparently enough to convince Tropicana to return to its former design marks. See id. 2 USCA11 Case: 19-11258 Date Filed: 12/22/2020 Page: 3 of 29

time on the merits in a dispute over Sportswear’s use of the college’s word marks

“SCAD” and “SAVANNAH COLLEGE OF ART AND DESIGN” and the college’s

design mark that includes its mascot, Art the Bee.

SCAD did not authorize Sportswear to use its marks to sell products inscribed

with SCAD’s name and mascot. Upon discovery of Sportswear’s offerings, SCAD

sued Sportswear for trademark infringement, unfair competition, false designation

of origin, and counterfeiting under the Lanham Act, and for unfair competition and

trademark infringement under Georgia common law.

On the first trip to this Court, SCAD appealed, and we considered the district

court’s grant of summary judgment to Sportswear on all counts. We reversed,

holding that our precedent required us to conclude that SCAD enjoyed enforceable

trademark rights in the marks Sportswear used. 3 We remanded to the district court

to determine, in the first instance, whether Sportswear’s uses of the marks were

likely to cause consumer confusion. Savannah College of Art & Design, Inc. v.

Sportswear, Inc., 872 F.3d 1256, 1264, 1265 (11th Cir. 2017) (“SCAD I”).

On remand, the district court concluded they were. Having previously

dismissed SCAD’s counterfeit claim, the district court granted summary judgment

3 An infringement claim requires demonstration “(1) that the plaintiff had enforceable trademark rights in the mark or name, and (2) that the defendant made unauthorized use of the mark or name such that consumers were likely to confuse the two.” See Custom Mfg. & Eng'g, Inc. v. Midway Servs., Inc., 508 F.3d 641, 647 (11th Cir. 2007) (citation and internal quotation marks omitted). 3 USCA11 Case: 19-11258 Date Filed: 12/22/2020 Page: 4 of 29

to SCAD on its remaining three counts—two claims under the Lanham Act and one

claim under Georgia law—and permanently enjoined Sportswear from selling

products bearing the SCAD marks at issue. Now, on this case’s second merits trip

to this Court, Sportswear appeals the district court’s decision. After careful

consideration, we affirm.

I. Factual Background

We begin with a summary of the underlying facts of this case. 4 SCAD, based

in Georgia, is a private, non-profit college founded in 1978. It provides educational

services to more than 11,000 students from more than 100 countries, including the

United States. SCAD is principally known for specialized art programs in areas like

painting, sculpture, architecture, fashion, photography, film, and design. Beyond

SCAD’s educational programs, SCAD’s athletic teams compete in a variety of

intercollegiate sports.

This case concerns two word marks and one design mark that SCAD has used

to market and promote its educational programs and services, as well as its athletic

teams:

4 The facts are outlined in more detail in SCAD I, 872 F.3d at 1259–60, including specific circumstances surrounding the marks’ registrations and incontestable status. For reasons we discuss below in Section IV, we do not reach the legal arguments regarding the significance of the marks’ incontestable status, so we need not recount those details here. 4 USCA11 Case: 19-11258 Date Filed: 12/22/2020 Page: 5 of 29

SCAD has used the two word marks—“SCAD” and “SAVANNAH COLLEGE

OF ART AND DESIGN”—since 1979. As for the design mark containing

SCAD’s mascot, “Art the Bee,” SCAD began using that in 2001, after having

used variations of the bee portion since 1996. 5

Sportswear operates an online business that markets and sells “fan” apparel

and other items, such as t-shirts, sweatshirts, baseball caps, and duffel bags.

Although Sportswear began selling apparel for kindergartens, grade schools, and

high schools in 2003, it currently offers made-to-order apparel and related goods

for other entities, including colleges, Greek and military organizations, golf

courses, professional sports teams, and even fantasy sports teams. Sportswear

sells some of its goods with licensing agreements and others—such as the goods

bearing SCAD’s marks—without.

In August 2009, Sportswear sold its first merchandise bearing SCAD’s

marks. But SCAD remained unaware of Sportswear’s unauthorized use of its

marks on products until February 2014, when a parent of a student-athlete

5 The design mark, as shown above, consists of an image of SCAD’s mascot, “Art the Bee,” in the middle of a circle containing the words “SAVANNAH COLLEGE OF ART AND DESIGN” and “BEES.” In this opinion, we refer to this design mark as the “Bee Design Mark.” 5 USCA11 Case: 19-11258 Date Filed: 12/22/2020 Page: 6 of 29

forwarded Sportswear’s website to one of SCAD’s coaches. SCAD filed this

case in July 2014, and Sportswear then stopped selling the unlicensed

merchandise with SCAD’s marks in its online “Savannah College of Art and

Design Bees” store.

Before then, though, Sportswear undeniably marketed and sold products

with both of SCAD’s word marks, “SCAD” and “Savannah College of Art and

Design.” And while it did not use the Bee Design Mark in its full depiction,

Sportswear’s online store did offer apparel imprinted with SCAD’s “Art the Bee”

mascot, a prominent feature in the Bee Design Mark.

Sportswear’s website contained several disclaimers that the clothing was not

sponsored, endorsed by, or affiliated with SCAD and that all products were

exclusively produced and fulfilled by Sportswear. Similarly, Sportswear’s website,

advertising material, and packaging material did not indicate that any of the

merchandise constituted official SCAD products or were endorsed by SCAD.

Finally, we note that several other third-party online retailers besides Sportswear

printed SCAD’s word marks on apparel.

II. Procedural Background

Based on these facts, SCAD sued Sportswear under the Lanham Act for

claims of trademark infringement, unfair competition and false designation of origin,

and counterfeiting, and under Georgia common law for unfair competition and

6 USCA11 Case: 19-11258 Date Filed: 12/22/2020 Page: 7 of 29

trademark infringement. Sportswear moved for summary judgment, and the district

court granted its motion. SCAD appealed.

That brings us to SCAD I, Savannah College of Art & Design, Inc. v.

Sportswear, Inc., 872 F.3d 1256 (11th Cir. 2017). In SCAD I, we reversed the district

court’s grant of summary judgment in favor of Sportswear. We explained that

SCAD’s claims for trademark infringement under § 32(a) of the Act, codified at 15

U.S.C. § 1114(1)(a), and for unfair competition and false designation of origin under

§ 43(a), codified at 15 U.S.C. §1125(a), required SCAD to establish two things.

First, SCAD needed to show enforceable trademark rights in its marks used by

Sportswear. Id. at 1261. And second, it had to prove that Sportswear’s unauthorized

use of its marks was likely to confuse consumers. Id.

With respect to the first requirement, we concluded that the district court had

applied an erroneous standard in limiting the reach of SCAD’s service-mark rights

from extending to goods. Id. at 1260, 1262. Under our binding precedent, we said,

SCAD’s enforceable service-mark rights for educational “services” could also cover

“goods” in the form of the apparel Sportswear sold. Id. at 1262–64 (relying on

Boston Prof’l Hockey Ass’n, Inc. v. Dallas Cap & Emblem Mfg., Inc., 510 F.2d 1004

(5th Cir. 1975)). 6

6 See Bonner v. City of Prichard, 661 F.2d 1206, 1207 (11th Cir. 1981) (en banc) (holding that all decisions of the “old Fifth” Circuit handed down prior to the close of business on September 30, 1981, are binding precedent in the Eleventh Circuit). 7 USCA11 Case: 19-11258 Date Filed: 12/22/2020 Page: 8 of 29

Then we turned to the second inquiry: likelihood of confusion. Because the

district court had not previously had the opportunity to assess the likelihood of

confusion, we remanded the matter and directed the district court to assess in the

first instance whether Sportswear’s use of SCAD’s service marks in Sportswear’s

apparel was likely to cause confusion. Id. at 1264. To evaluate this, we instructed

the district court to consider the following seven factors: the strength of SCAD’s

marks; the similarity between SCAD’s and Sportswear’s marks, between

Sportswear’s goods and SCAD’s services represented by the marks, between the

parties’ trade channels and customers, and between the advertising media used by

the parties; Sportswear’s intent; and the existence of any actual consumer confusion.

Id. (citing Fla. Int’l Univ. Bd. of Trustees v. Fla. Nat’l Univ., Inc., 830 F.3d 1242,

1255 (11th Cir. 2016)). 7

Following remand, the parties filed letter briefs with the district court and

responses thereto, addressing the likelihood-of-confusion issue and asserting that the

record was complete and that no disputes of fact remained for trial. The court then

once again took under advisement the parties’ previously filed cross-motions for

summary judgment, this time applying our guidance in SCAD I.

After consideration, the district court entered an order granting in part

7 Before the case returned to the district court, Sportswear unsuccessfully sought a writ of certiorari to the United States Supreme Court. Sportswear, Inc. v. Savannah Coll. of Art & Design, Inc., 139 S. Ct. 57 (2018). 8 USCA11 Case: 19-11258 Date Filed: 12/22/2020 Page: 9 of 29

Sportswear’s motion for summary judgment 8 and granting SCAD’s motion for

summary judgment on the trademark-infringement, unfair-competition, and false-

designation-of-origin claims. Based on this ruling, the district court ultimately

entered permanent injunctive relief for SCAD against Sportswear. In particular, the

court enjoined Sportswear from using in any way the three SCAD marks at issue in

this case. It further ordered Sportswear to delete all references to the three SCAD

marks from its websites and databases. Finally, the court directed that any sales or

shipments in the continental United States by Sportswear of products bearing the

SCAD marks, without SCAD’s prior written consent “shall be deemed a

presumptive violation” of the injunction.

Sportswear appeals.

III. Standard of Review

We review de novo the district court’s grant of summary judgment. Code

Revision Comm’n for Gen. Assembly of Ga. v. Public.Resource.Org, Inc., 906 F.3d

1229, 1235 (11th Cir. 2018). In so doing, we apply the same standards that bound

the district court. Id. We view the record and draw all factual inferences in the light

most favorable to the non-movant—here, Sportswear. SCAD I, 872 F.3d at 1260.

8 The district court ruled on two issues that are not subject to this appeal. It granted Sportswear’s motion for summary judgment on SCAD’s claims for infringement of the “shield design mark” because SCAD offered no proof that Sportswear has ever used the image. And to the extent that SCAD sought to hold Sportswear liable for its use of the words in the shield design, the district court noted that SCAD’s other counts already covered that. The district court also denied Sportswear’s motion for summary judgment on the defense of functionality. 9 USCA11 Case: 19-11258 Date Filed: 12/22/2020 Page: 10 of 29

Summary judgment is proper if the movant demonstrates that no genuine dispute of

any material fact exists and the movant is entitled to judgment as a matter of law.

Fed. R. Civ. P. 56(a).

We may affirm a district-court judgment on any ground supported in the

record, even if the district court did not specifically address it. Wetherbee v. S. Co.,

754 F.3d 901, 905 (11th Cir. 2014).

IV. Discussion

We conclude that our trademark precedents of Boston Hockey, Laite, 9 and

SCAD I require affirmance of the district court’s judgment. 10 Our mandate in SCAD

I directed the district court to “assess the strength of SCAD’s word marks” and to

“consider whether SCAD has demonstrated that Sportswear’s use of its word marks

is likely to create consumer confusion as to origin, source, approval, affiliation,

association, or sponsorship.” 872 F.3d at 1264. The district court complied, and we

see no error in its determination.

9 Univ. of Ga. Ath. Ass’n v. Laite, 756 F.2d 1535 (11th Cir. 1985). 10 We do not consider the so-called Dieter presumption in our analysis. In Dieter v. B & H Industries of Southwest Florida, Inc., we held that a mark’s incontestable status is a factor to be taken into consideration in the likelihood-of-confusion analysis, concluding that the incontestable status required a presumption that the mark was “at least descriptive with secondary meaning, and therefore a relatively strong mark.” 880 F.2d 322, 329 (11th Cir. 1989). We have recognized that Dieter is an outlier and opined that it is “almost certainly incorrect.” Sovereign Military Hospitaller Order of Saint John of Jerusalem of Rhodes & of Malta v. Florida Priory of the Knights Hospitallers of the Sovereign Order of Saint John of Jerusalem, Knights of Malta, The Ecumenical Order, 809 F.3d 1171, 1183 (11th Cir. 2015). Nevertheless, until Dieter has been overturned by this Court en banc, it remains the law of this Circuit. Id. at 1184. But here, the record supports the entry of summary judgment in favor of SCAD even without the Dieter presumption, so we do not address Sportswear’s arguments concerning the district court’s application of Dieter. 10 USCA11 Case: 19-11258 Date Filed: 12/22/2020 Page: 11 of 29

1. Likelihood-of-Confusion Framework

In this Circuit, we consider seven factors when we analyze whether a

likelihood of confusion exists between two marks:

(1) strength of the mark alleged to have been infringed; (2) similarity of the infringed and infringing marks; (3) similarity between the goods and services offered under the two marks; (4) similarity of the actual sales methods used by the holders of the marks, such as their sales outlets and customer base; (5) similarity of advertising methods; (6) intent of the alleged infringer to misappropriate the proprietor’s good will; and (7) the existence and extent of actual confusion in the consuming public.

Sovereign Military Hospitaller Order of Saint John of Jerusalem of Rhodes & of

Malta v. Florida Priory of the Knights Hospitallers of the Sovereign Order of Saint

John of Jerusalem, Knights of Malta, The Ecumenical Order, 809 F.3d 1171, 1181

(11th Cir. 2015) (quoting Tana v. Dantanna’s, 611 F.3d 767, 774–75 (11th Cir.

2010)). The district court need not consider all factors in every case. Id. But we

have said that “the type of mark and the evidence of actual confusion are the most

important” of all the factors. Fla. Int’l Univ. Bd. of Trustees v. Fla. Nat’l Univ., Inc.,

830 F.3d 1242, 1255 (11th Cir. 2016).

On the other hand, in cases where the concern for confusion does not arise

from the defendant’s unfair competition with the plaintiff’s products, but rather from

“the defendant’s misuse of the plaintiff’s reputation and good will as embodied in

the plaintiff’s mark,” we discount certain likelihood-of-confusion factors. Laite, 756

F.2d at 1547. In particular, we have held that the three factors of similarity of

11 USCA11 Case: 19-11258 Date Filed: 12/22/2020 Page: 12 of 29

product, identity of retail outlets and purchasers, and identity of advertising media

utilized are less relevant in these types of cases. Id. So their absence “does not

undermine the district court’s finding of a ‘likelihood of confusion.’” Id.

In line with the reasoning we expressed in Laite, our instructions in SCAD I

to address the likelihood-of-confusion analysis focused on confusion over “origin,

source, approval, affiliation, association, or sponsorship.” 872 F.3d at 1264. These

considerations directly relate to the misuse of SCAD’s “reputation and good will as

embodied in [its] mark[s].” Laite, 756 F.2d at 1547.

On review of a district court’s grant of summary judgment on a likelihood-of-

confusion analysis, “[t]he real question is whether the court’s ultimate determination

about the ‘likelihood of confusion’ was correct.” Sovereign Military, 809 F.3d at

1181 (11th Cir. 2015) (citation and internal quotation marks omitted). And while

generally likelihood of confusion raises a question of fact, when appropriate, it may

be determined as a matter of law. Alliance Metals, Inc., of Atlanta v. Hinely Indus.,

Inc., 222 F.3d 895, 907 (11th Cir. 2000).

We decide each case on its own merits, determining whether the plaintiff has

satisfied the threshold for evidence of confusion based on the circumstances of the

particular case. See Lone Star Steakhouse & Saloon, Inc. v. Longhorn Steaks, Inc.,

122 F.3d 1379, 1382 (11th Cir. 1997). When we analyze the likelihood of confusion,

we are mindful that “sophisticated consumers” of complex goods or services “are

12 USCA11 Case: 19-11258 Date Filed: 12/22/2020 Page: 13 of 29

less likely to be confused than casual purchasers of small items.” Fla. Int’l Univ.,

830 F.3d at 1256 (citation and internal quotation marks omitted). We accord weight

to the individual likelihood-of-confusion factors based on what the situation calls for

and do not simply calculate the number of factors favoring such a conclusion and

the number of factors militating against it. See Jellibeans, Inc. v. Skating Clubs of

Ga., Inc., 716 F.2d 833, 840 n.17 (11th Cir. 1983).

In reviewing the likelihood-of-confusion factors here, we begin with SCAD’s

word marks and then move on to its Bee Design Mark.

2. SCAD’s Word Marks

a. Strength of the Marks

On the issue of the strength of SCAD’s word marks (“SCAD” and “Savannah

College of Art and Design”), it is undisputed that both service marks hold

incontestable status. But as we have noted above, see supra at n.10, on this record

we do not rely on the Dieter presumption to conclude that SCAD’s word marks are

strong under these facts.

Instead, we consider the strength of the mark under our traditional analysis.

Our Circuit recognizes four categories of a mark’s distinctiveness, listed in

ascending order of strength:

(1) generic—marks that suggest the basic nature of the product or service; (2) descriptive—marks that identify the characteristic or quality of a product or service; (3) suggestive—marks that suggest characteristics of the product or service and require an effort of the 13 USCA11 Case: 19-11258 Date Filed: 12/22/2020 Page: 14 of 29

imagination by the consumer in order to be understood as descriptive; and (4) arbitrary or fanciful—marks that bear no relationship to the product or service, and the strongest category of trademarks.

Gift of Learning Found., Inc. v. TGC, Inc., 329 F.3d 792, 797–98 (11th Cir. 2003).

We have explained that we view the last two categories of marks—suggestive and

arbitrary or fanciful—as “inherently distinctive.” Tana, 611 F.3d at 774 (citation

and internal quotation marks omitted). These are marks whose “intrinsic nature

serves to identify a particular source of a product.” Id. (citation and internal

quotation marks omitted). At the other end of the spectrum, generic marks, which

cannot be registered as trademarks under the Lanham Act, generally cannot receive

trademark protection. Id.

Descriptive marks fall between these two extremes. Although they are not

inherently distinctive like suggestive and arbitrary or fanciful marks, descriptive

marks nonetheless may become distinctive enough to enjoy trademark protection if

they acquire “secondary meaning.” Id.; 15 U.S.C. § 1052(f). Secondary meaning

develops when the consuming public primarily associates a name with the producer,

as opposed to the product. Tana, 611 F.3d at 774. Ultimately, the strength or

distinctiveness of the trademark or service mark corresponds directly with the scope

of protection it receives. Welding Servs., Inc. v. Forman, 509 F.3d 1351, 1361 (11th

Cir. 2007).

SCAD’s word marks have acquired significant strength through the more than

14 USCA11 Case: 19-11258 Date Filed: 12/22/2020 Page: 15 of 29

four decades of their use and through SCAD’s investment in goodwill. At the time

the parties filed their cross-motions for summary judgment, SCAD enrolled over

11,000 students, and now its enrollment numbers thousands more than that. It is

among the leading institutions for creative professionals, with several programs

honored as the best in the nation. Not only that, but SCAD also has nationally ranked

athletic teams. As a consequence of that growth in goodwill and reputation since

1978, SCAD enjoys a worldwide reach of students and alumni, as well as other

supporters, who recognize its marks. And beyond academics and athletics, SCAD

coordinates other events throughout the year that draw tens of thousands of

attendees.

These unrebutted facts support the conclusion that SCAD’s word marks have

acquired strength through the promotional efforts of SCAD and its network of

connections. See John H. Harland Co. v. Clarke Checks, Inc., 711 F.2d 966, 974

n.13 (11th Cir. 1983). Even words that could be considered weak, such as

geographical terms, can acquire secondary meaning and be afforded protection for

that secondary meaning. See also Cont’l Motors Corp. v. Cont’l Aviation Corp., 375

F.2d 857, 861 (5th Cir. 1967) (“Protection is warranted on what it has come to

signify regardless of any original weakness, actual or supposed.”).

Sportswear attempts to rebut any strength of SCAD’s word marks by pointing

to three other third-party apparel manufacturers who have used the marks.

15 USCA11 Case: 19-11258 Date Filed: 12/22/2020 Page: 16 of 29

Sportswear is correct that, as a general matter, third-party use has the potential to

weaken a finding of a mark’s strength. See Fla. Int’l Univ., 830 F.3d at 1257 (“Thus,

the number of third-party users is important, but there is no hard-and-fast rule

establishing a single number that suffices to weaken a mark.” (citation and internal

quotation marks omitted)). Indeed, when extensive third-party use has occurred, that

diminishes a mark’s strength. Id. at 1257–58 (finding twelve third-party uses

sufficient to diminish); AmBrit, Inc. v. Kraft, Inc., 812 F.2d 1531, 1539 (11th Cir.

1986) (affording lesser protection where eight third-party users employed similar

trade dress); El Chico, Inc. v. El Chico Cafe, 214 F.2d 721, 725 (5th Cir. 1954)

(concluding “El Chico” trademark was “weak” in light of registrations of the name

and similar names by twenty-seven third parties).

But here, Sportswear has identified only three third-party usages of SCAD’s

marks—significantly fewer than we have previously relied on in finding a mark’s

strength to be materially diluted. “[C]ommercial strength measures the

marketplace’s recognition value of the mark.” Fla. Int’l Univ., 830 F.3d at 1258.

And as we have explained, SCAD’s word marks here developed substantial strength

over SCAD’s forty years of existence, because of the size and reach of its student

body, its alumni network, and its programs. Under these circumstances, even

viewing the facts in the light most favorable to Sportswear, we cannot conclude that

Sportswear has shown that the three third-party uses diminished the strength of

16 USCA11 Case: 19-11258 Date Filed: 12/22/2020 Page: 17 of 29

SCAD’s word marks by more than any negligible amount.

Nor can Sportswear contend persuasively that the SCAD marks are weak. On

the contrary, it strains credulity for Sportswear to argue against the strength of

SCAD’s marks when Sportswear offered and sold merchandise with those identical

word marks to obtain a profit from its consumers. If the marks had no strength,

consumers would not purchase attire imprinted with them in the first place, and

Sportswear would have no reason to offer for sale products bearing the marks. We

have recognized this concept in our precedent that proof of intentional copying is

probative on the secondary-meaning analysis. See Brooks Shoe Mfg. Co. v. Suave

Shoe Corp., 716 F.2d 854, 860 (11th Cir. 1983).

In sum, the strength factor favors SCAD, as the district court correctly

concluded, even without reliance on the Dieter presumption.

b. Similarity Between the Infringed and Infringing Marks

We evaluate similarity by accounting for “the overall impression created by

the marks.” Jellibeans, 716 F.2d at 842. Here, Sportswear undoubtedly used similar

marks to SCAD’s word marks. In fact, they were not just similar, but identical, as

the record shows that Sportswear used SCAD’s two word marks on its apparel, as

well as the Art the Bee design with other SCAD marks. So this factor weighs in

SCAD’s favor as well, as the district court correctly concluded.

17 USCA11 Case: 19-11258 Date Filed: 12/22/2020 Page: 18 of 29

c. Similarity of Goods or Services

The similarity-of-goods factor assesses “whether the goods are so related in

the minds of consumers that they get the sense that a single producer is likely to put

out both goods.” Frehling Enters., Inc. v. Int’l Select Grp., Inc., 192 F.3d 1330,

1338 (11th Cir. 1999); see also PlayNation Play Sys., Inc. v. Velex Corp., 924 F.3d

1159, 1168 (11th Cir. 2019).

In Laite, as we have highlighted, we noted that this factor is less important in

cases—like this one—that concern the use of the plaintiff’s service marks on the

defendant’s goods for the very reason that the plaintiff’s marks embody the

plaintiff’s goodwill and reputation. See Laite, 756 F.2d at 1547. So the district court

did not err in giving the factor little significance.

d. Similarity of Actual Sales Methods

The similarity-of-actual-sales-methods factor contemplates the similarity of

the parties’ customer bases. See Sovereign Military, 809 F.3d at 1181. Here, the

parties’ customer bases overlap, as the target customers for Sportswear’s apparel

goods bearing SCAD’s word marks are the same as those of SCAD’s educational

services—namely, its current students and their parents, its alumni and faculty, and

fans of its athletic teams. This factor therefore weighs in favor of SCAD.

Nevertheless, since Laite instructs that this factor bears less (if any) weight in cases

like this one (where the defendant seeks to trade off the plaintiff’s goodwill and

18 USCA11 Case: 19-11258 Date Filed: 12/22/2020 Page: 19 of 29

reputation, as opposed to its products), its weight is not much. See Laite, 756 F.2d

at 1547.

e. Similarity of Advertising Methods

The similarity of advertising methods is the third factor that Laite holds is less

important to the likelihood-of-confusion analysis in a case like this one. See Laite,

756 F.2d at 1547. We conclude that the district court did not err in finding this factor

neutral. As the district court noted, although both parties advertise over the internet,

“[t]hat the goods or services of the parties are both found on the Internet proves little,

if anything, about the likelihood that consumers will confuse similar marks used on

such goods or services.” 4 McCarthy on Trademarks and Unfair Competition §

24:53.50 (5th ed.).

f. Sportswear’s Intent to Misappropriate SCAD’s Goodwill

Next up, we consider Sportswear’s intent to misappropriate SCAD’s

goodwill. Sportswear relies on its use of website disclaimers to negate any finding

of intent to confuse consumers. Intent may be proven by circumstantial evidence.

Jellibeans, 716 F.2d at 843. The district court, relying on Babbit Electronics, Inc. v.

Dynascan Corp., 38 F.3d 1161, 1179 (11th Cir. 1994), reasoned that intent to copy

in itself can create a rebuttable presumption of the likelihood of confusion. But the

district court ended its analysis there, noting that SCAD had not argued for such a

presumption, yet concluding that the factor favored SCAD.

19 USCA11 Case: 19-11258 Date Filed: 12/22/2020 Page: 20 of 29

Babbit certainly supports the notion that, as a matter of law, courts may find

a likelihood of confusion “if the defendant intended to derive benefit from the

plaintiff’s trademark.” 38 F.3d at 1179. And where a party copies a mark “with the

intent that the public recognize and purchase the emblems as the symbol of the”

mark holder, intent likewise can be found. Boston Hockey, 510 F.2d at 1012.

This is equally true when the defendant intends to derive a benefit from the

good will of the mark holder. See John H. Harland Co., 711 F.2d at 977 (“In this

case, there is some evidence from which the jury might have inferred that Clarke

adopted the Entry Stub mark in order to appropriate some of the good will associated

with Harland’s Memory Stub mark. Clarke was well aware of the success of

Harland’s Memory Stub product.”); AmBrit, 812 F.2d at 1542 (“[A] finding that

Kraft adopted the trade dress with the intent of deriving benefit from the reputation

of Isaly’s Klondike may alone be enough to justify the inference that there is

confusing similarity.”); see also AmBrit, 812 F.2d at 1543 (“Although Kraft was free

to copy the Klondike product and the functional packaging features of that product,

the finder of fact may infer from evidence of such actions an intent to derive benefit

from Isaly’s goodwill.”).

Nevertheless, we have observed that mere evidence of intentional copying—

in the absence of any other evidence—does not conclusively establish a likelihood

of confusion. Yellowfin Yachts, Inc. v. Barker Boatworks, LLC, 898 F.3d 1279, 1293

20 USCA11 Case: 19-11258 Date Filed: 12/22/2020 Page: 21 of 29

(11th Cir. 2018). Rather, the plaintiff must also present some evidence indicating

that the defendant copied the marks with the intent to confuse customers. Id. at 1294

(finding the district court properly concluded plaintiff put forth no evidence showing

intent to copy “in order to deceive consumers as to the source of [the] boats” and

“cause consumer confusion”); see id. at 1293 (“There is a difference between

intentional copying and intentional copying with the intent to cause confusion.”

(emphasis in original)); see also Jellibeans, 716 F.2d at 843 (circumstantial

evidence, including testimony, supported finding of intent to confuse roller-skaters).

The very nature of school memorabilia relies upon the goodwill, reputation,

and affiliation people associate with that school. So it is not surprising that

Sportswear even admits on appeal that customers visit its website to “create apparel

bearing the name of the school, team, or organization with which they desire to

express affiliation.” Cognizant of the intuitive link between school merchandise and

sponsorship, Sportswear cannot reasonably argue against a finding of intent here.

Nor can Sportswear rely on its website disclaimers to completely negate any

finding of intent. To be sure, Sportswear’s website bears these prominent

disclaimers: “This store is not sponsored or endorsed by Savannah College of Art

and Design” and “This store is not affiliated with, sponsored or endorsed by

Savannah College of Art and Design. All products in this store are produced and

fulfilled by Prep Sportswear.” And Sportswear urges the Court to distinguish our

21 USCA11 Case: 19-11258 Date Filed: 12/22/2020 Page: 22 of 29

holdings on the insufficiency of product disclaimers in Boston Hockey and Laite and

instead rely on the finding of successful website disclaimers in the District of

Maryland and the Northern District of Georgia. But while Sportswear correctly

notes that the disclaimers in Boston Hockey and Laite did not involve websites, but

rather disclaimers on physical products, we are nonetheless guided by those holdings

here.

In Boston Hockey, we considered the unauthorized manufacturing and sale of

National Hockey League embroidered cloth emblems, which “were substantial

duplications of the marks,” and which the defendant reproduced with the intention

that consumers recognize the hockey-team symbols and purchase them for that

reason. 510 F.2d at 1009. After we addressed the Lanham Act claims, we

considered and rejected the idea that the common-law unfair competition claim

could be rendered fair with a disclaimer. We said, “The exact duplication of the

symbol and the sale as the team’s emblem satisfying the confusion requirement of

the law, words which indicate it was not authorized by the trademark owner are

insufficient to remedy the illegal confusion. Only a prohibition of the unauthorized

use will sufficiently remedy the wrong.” Id. at 1013.

Similarly, in Laite, the defendant, a wholesaler of novelty beers, began

marketing “Battlin’ Bulldog Beer,” which the district court found caused a

likelihood of confusion with the University of Georgia Bulldog. 756 F.2d at 1537.

22 USCA11 Case: 19-11258 Date Filed: 12/22/2020 Page: 23 of 29

The beer wholesaler argued, among other things, on appeal that no confusion from

the sale of “Battlin’ Bulldog Beer” could occur because each can contained a

disclaimer that the beer was “[n]ot associated with the University of Georgia.” Id.

at 1547. We soundly rejected that argument and held that the disclaimer was

insufficient to negate confusion—both because the disclaimer was inconspicuous on

the individual cans and because Boston Hockey required us to conclude that

disclaimers noting that a product is not authorized by a trademark owner are

insufficient to remedy the consumer’s confusion. Id. (citing Boston Hockey, 510

F.2d at 1013).

So as in SCAD I, Boston Hockey and its progeny control our analysis here—

this time on the disclaimer issue—and they require us to find that the intent factor

does not favor Sportswear. Perhaps the website disclaimers here may be viewed as

negating some of Sportswear’s intent. But even if they are, like the disclaimers in

Boston Hockey and Laite, they are insufficient under our binding precedent to totally

negate the confusion. See Boston Hockey, 510 F.2d at 1013.

The record and the nature of this case demonstrate that companies like

Sportswear copy the word marks of schools like SCAD for application on apparel

for the very reason that SCAD’s goodwill and educational reputation fundamentally

drive the sales. Like the intended customers in Boston Hockey and Laite, the

customers who purchased Sportswear’s SCAD-branded merchandise, whether

23 USCA11 Case: 19-11258 Date Filed: 12/22/2020 Page: 24 of 29

current students and faculty, alumni, or sports fans, did so because of the

merchandise’s affiliation with the marks and because what the marks represent are

meaningful to buyers. Indeed, that’s the same reason the Boston Hockey defendant

sold patches bearing the teams’ trademarks: it hoped to benefit from the patches’

association with what they represented. See Boston Hockey, 510 F.2d at 1012. Thus,

we conclude that the district court did not err in finding that this factor favors SCAD.

g. Actual Confusion in the Consuming Public

While this final actual-confusion factor weighs heavily in the balance, we

have noted that its absence does not necessarily spell doom for a final finding of a

“likelihood” of confusion under the seven-factor analysis. E. Remy Martin & Co.,

S.A. v. Shaw-Ross Int’l Imports, Inc., 756 F.2d 1525, 1529 (11th Cir. 1985). “Actual

confusion” and “likelihood of confusion” are demonstrably different concepts. That

is especially the case in smaller markets with cheaper items and minimal sales.

AmBrit, 812 F.2d at 1544. Survey evidence is similarly unnecessary for a likelihood-

of-confusion finding. See PlayNation, 924 F.3d at 1169 (“Lack of survey evidence

does not weigh against the plaintiff when determining likelihood of confusion.”).

Here, SCAD offers only one piece of evidence to show actual confusion: a

parent of a student sent a link to Sportswear’s website to one of SCAD’s employees,

and the employees were unsure whether Sportswear’s use was authorized. This is

hardly strong evidence of actual confusion. As the district court correctly concluded,

24 USCA11 Case: 19-11258 Date Filed: 12/22/2020 Page: 25 of 29

this factor weighs in favor of Sportswear, but it is not determinative of the issue of

likelihood of confusion under the multifactor analysis. In fact, for the entirety of the

nearly five-year period from August 31, 2009, to July 27, 2014, when Sportswear

sold products bearing SCAD’s marks, the record of total sales for those products was

$23,703.14, with net profits of $1,896.25. The vast majority of individual sales were

under $100, with a small number reaching into the $200–$300 range. In other words,

this is precisely the type of case, with a smaller market and inexpensive goods, in

which we have cautioned that weak evidence of actual consumer confusion is not

dispositive. See AmBrit, 812 F.2d at 1544.

h. Balancing the Seven Factors

Now that we have individually reviewed each of the seven likelihood-of-

confusion factors, we evaluate the weight of the facts, considering the unique

circumstances of the case. See Lone Star Steakhouse, 122 F.3d at 1382; Jellibeans,

716 F.2d at 840 n.17. In doing so, we must keep in mind that the strength and type

of the mark and the evidence of actual confusion are the most important factors. Fla.

Int’l Univ., 830 F.3d at 1255.

Of the seven factors, four favor SCAD: the strength of the mark, the similarity

of the infringed and infringing marks, the similarity of Sportswear’s and SCAD’s

customer base, and the intent of Sportswear to misappropriate SCAD’s goodwill.

One factor—undoubtedly one of the two most important ones—favors

25 USCA11 Case: 19-11258 Date Filed: 12/22/2020 Page: 26 of 29

Sportswear, since the record contains little evidence of any actual consumer

confusion. But as we just discussed, the relatively low sales volume, over the five-

year period, of items bearing SCAD’s marks and the relatively inexpensive nature

of the goods further lessen the import of the actual-confusion factor. See AmBrit,

812 F.2d at 1544. As we have explained, the likelihood-of-confusion analysis must

be mindful that “casual purchasers of small items” are more likely to be confused

than more sophisticated consumers of complex goods. See Fla. Int’l Univ., 830 F.3d

at 1256 (citation and internal quotation marks omitted).

Finally, as we have also described, the remaining factors are of little relevance

here because the concern for confusion does not arise from Sportswear’s unfair

competition with SCAD’s products, but rather from Sportswear’s “misuse of the

plaintiff’s reputation and good will as embodied in the plaintiff’s mark.” See Laite,

756 F.2d at 1547. Given the balance of facts in this matter, we conclude that the

district court correctly found a likelihood of confusion as to Sportswear’s use of

SCAD’s word marks.

3. The Bee Design Mark

Now we briefly address the parties’ arguments concerning Art the Bee. First,

Sportswear argues that it cannot be held liable for use of Art the Bee because SCAD

ostensibly abandoned the design mark in 2011. But since we are reviewing the

denial of Sportswear’s motion for summary judgment on that issue, we must take

26 USCA11 Case: 19-11258 Date Filed: 12/22/2020 Page: 27 of 29

the facts in the light most favorable to SCAD. While Sportswear points to the 2011

memo regarding non-use of the Art the Bee mark in future athletic merchandise,

SCAD responds with evidence of Art the Bee’s continued use on athletic apparel.

So we cannot say that Sportswear has shown entitlement as a matter of law under

the stringent, heavy burden for demonstrating abandonment. See Cumulus Media,

Inc. v. Clear Channel Commc’ns, Inc., 304 F.3d 1167, 1175 (11th Cir. 2002).

Next, Sportswear argues that any claims regarding its use of Art the Bee are

moot, relying on the cancellation of the design mark in September 2016. A case

becomes moot if “the issues presented are no longer ‘live’ or the parties lack a legally

cognizable interest in the outcome.” De La Teja v. United States, 321 F.3d 1357,

1362 (11th Cir. 2003) (citation and internal quotation marks omitted). A court may

not decide a case that has become moot because it no longer constitutes a “Case” or

“Controversy” as Article III of the Constitution requires, so the court lacks

jurisdiction. BankWest, Inc. v. Baker, 446 F.3d 1358, 1363 (11th Cir. 2006). Rather,

Article III’s case-or-controversy requirement demands a live controversy throughout

all stages of the litigation. Id.

Here, the case is not moot. Though Sportswear points to SCAD’s cancellation

of the Art the Bee design mark in 2016, all Sportswear’s uses occurred before that

happened—between 2009 and 2014. So to the extent that Sportswear violated the

27 USCA11 Case: 19-11258 Date Filed: 12/22/2020 Page: 28 of 29

Bee Design Mark during that period, SCAD may be entitled to damages, regardless

of its later cancellation of the mark. As a result, the design-mark claim is not moot.

Sportswear next asserts that it should prevail on the design-mark issue because

the record is devoid of any evidence that it ever printed products with the Bee Design

Mark. But violating the Bee Design Mark does not require a verbatim copying of

the Bee Design Mark. Jellibeans, 716 F.2d at 842. Rather, a violation can occur

based on the overall impression of the copy. Id.

Likewise, any argument by Sportswear that it cannot infringe SCAD’s Bee

Design Mark because it did not use the identical version of the design

misunderstands the likelihood-of-confusion test, which does not require the marks

to be identical. Rather, the question is similarity of the marks. And the graphic

Sportswear used for apparel on its website is materially indistinguishable from the

“angry bee” SCAD used as Art the Bee:

For these reasons, the district court correctly determined that “uncontroverted

evidence” established that Sportswear had used “the bee portion of the logo in

28 USCA11 Case: 19-11258 Date Filed: 12/22/2020 Page: 29 of 29

conjunction with [SCAD’s] text marks.” And the same analysis we conducted with

respect to SCAD’s word marks applies equally to the Bee Design Mark here. As a

result, the likelihood-of-confusion factors support the district court’s finding that

Sportswear’s uses of the Bee Design Mark were an infringement.

V. Conclusion

For the reasons we have explained, the district court properly entered

summary judgment and the corresponding permanent injunction in favor of SCAD.

We therefore affirm the judgment of the district court.

AFFIRMED.