Savannah College of Art and Design, Inc. v. Sportswear, Inc.
Filing
53
OPINION AND ORDER granting 39 Motion for Summary Judgment, denying 40 Motion for Summary Judgment, granting in part and denying in part 50 Motion to Strike. Signed by Judge Thomas W. Thrash, Jr on 7/31/15. (dr)
IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF GEORGIA
ATLANTA DIVISION
SAVANNAH COLLEGE OF ART
AND DESIGN, INC.,
Plaintiff,
v.
CIVIL ACTION FILE
NO. 1:14-CV-2288-TWT
SPORTSWEAR, INC.
doing business as
PrepSportswear,
Defendant.
OPINION AND ORDER
This is a trademark infringement case. It is before the Court on the Defendant’s
Motion for Summary Judgment [Doc. 39], the Plaintiff’s Motion for Summary
Judgment [Doc. 40], and the Defendant’s Motion to Strike Improper Evidence [Doc.
50]. For the reasons stated below, the Defendant’s Motion for Summary Judgment is
GRANTED and the Plaintiff’s Motion for Summary Judgment is DENIED. The
Defendant’s Motion to Strike Improper Evidence is GRANTED in part and DENIED
as moot in part.
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I. Background
The Plaintiff, Savannah College of Art and Design, Inc., was founded in 1978
as a private, non-profit college.1 The Plaintiff now has campuses in Savannah, Atlanta,
Hong Kong, and Lacoste, France.2 The Plaintiff’s business is providing educational
services.3 The Plaintiff owns several service mark registrations: Registration No.
3,751,493 for a circular bee design,4 Registration No. 3,118,809 for a circular shield
design,5 Registration No. 2,686,644 for the text mark “SCAD,”6 and Registration No.
2,918,888 for the text mark “Savannah College of Art and Design.”7 All of the
registrations were issued in connection with the provision of educational services.8
None of the marks are registered for use in connection with the sale of clothing or
headwear.9 Additionally, the Plaintiff has no evidence of when any of the marks were
1
Def.’s Statement of Facts ¶ 1.
2
Id.
3
Id. ¶ 2.
4
Id. ¶ 4.
5
Id. ¶ 8.
6
Id. ¶ 14.
7
Id. ¶ 17.
8
Id. ¶¶ 5, 9, 15,18.
9
Id. ¶¶ 6, 10, 16, 19.
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first used in connection with the sale of apparel or related goods.10 The Plaintiff did
enter into a license agreement with Follett in June of 2011, which allowed Follett to
provide licensed apparel at the campus bookstores.11
The Defendant, Prep Sportswear, is an internet-based business incorporated
under Washington law in 2005.12 The Defendant sells customizable apparel and fan
clothing for a variety of organizations, including high school and college sports
teams.13 In August of 2009, the Defendant began selling goods bearing the words
“Savannah College of Art and Design” and “SCAD.”14 The Plaintiff alleges that the
Defendant infringed its trademarks under both the Lanham Act and Georgia law. Both
parties now move for summary judgment.
II. Legal Standard
Summary judgment is appropriate only when the pleadings, depositions, and
affidavits submitted by the parties show no genuine issue of material fact exists and
10
Id. ¶ 24.
11
Id. ¶¶ 27-30.
12
Id. ¶ 44.
13
Id. ¶ 45.
14
Id. ¶¶ 53-54.
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that the movant is entitled to judgment as a matter of law.15 The court should view the
evidence and any inferences that may be drawn in the light most favorable to the
nonmovant.16 The party seeking summary judgment must first identify grounds to
show the absence of a genuine issue of material fact.17 The burden then shifts to the
nonmovant, who must go beyond the pleadings and present affirmative evidence to
show that a genuine issue of material fact does exist.18 “A mere ‘scintilla’ of evidence
supporting the opposing party’s position will not suffice; there must be a sufficient
showing that the jury could reasonably find for that party.”19
III. Discussion
Both the Plaintiff and the Defendant move for summary judgment on the
Plaintiff’s claims under the Lanham Act and Georgia law. In the Eleventh Circuit, “the
use of another’s unregistered, i.e., common law, trademark can constitute a violation
of [section 43(a) of the Lanham Act].”20 To establish a violation, a plaintiff must show
15
FED. R. CIV. P. 56(a).
16
Adickes v. S.H. Kress & Co., 398 U.S. 144, 158-59 (1970).
17
Celotex Corp. v. Catrett, 477 U.S. 317, 323-24 (1986).
18
Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 257 (1986).
19
Walker v. Darby, 911 F.2d 1573, 1577 (11th Cir. 1990).
20
Crystal Entertainment & Filmworks, Inc. v. Jurado, 643 F.3d 1313, 1320
(11th Cir. 2011) (alteration in original).
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that it had enforceable rights in the mark and “that the defendant made unauthorized
use of it such that consumers were likely to confuse the two.”21 It is well established
in trademark law “that a mark can identify and distinguish only a single commercial
source.”22 “Common-law trademark rights are appropriated only through actual prior
use in commerce.”23 Additionally, registration of a mark is prima facie evidence “of
the registrant’s exclusive right to use the registered mark in commerce or in
connection with the goods or services specified in the registration.”24 That
presumption, however, only applies to the goods or services specified in the
registration, not to all goods and services.25
Here, the parties agree that the Plaintiff has valid registrations for the four
marks at issue. Those registrations are for use of the marks in connection with
educational services. The Plaintiff admits that it does not have registrations for the
marks related to apparel. Instead, the Plaintiff argues that it needs no such
registrations. That is not the case. Because the Plaintiff does not have registered marks
21
Id.
22
Id.
23
Id. at 1321.
24
15 U.S.C. § 1115(a).
25
Gameologist Grp., LLC v. Scientific Games Int’l, Inc., 838 F. Supp. 2d
141, 153 (S.D.N.Y. 2011).
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for apparel, it must show that it used the marks in commerce prior to the Defendant’s
use.26 The Plaintiff has not presented that evidence. In fact, the deposition of Hannah
Flowers demonstrated that there are no records of when the Plaintiff first used its
marks on apparel.27 The Plaintiff also initially admitted that it did not have any
evidence of when the marks were first used.28
In its reply in support of its motion for summary judgment, the Plaintiff
attempted to introduce a website indicating prior use of the marks on apparel. The
Defendant moved to strike that evidence, along with two other pieces of evidence
cited in the Plaintiff’s reply brief. The Court considers the motion to strike as a motion
to exclude, given that motions to strike are not the proper method for challenging the
admissibility of evidence on summary judgment.29 For two reasons, the motion to
exclude the website should be granted. First, the evidence and argument were raised
for the first time in a reply brief. Arguments raised for the first time in a reply brief
may not be considered by the Court.30 Second, even if this Court could consider an
26
Crystal Entertainment, 643 F.3d at 1321.
27
Flowers Dep. at 16.
28
Pl.’s Resp. to Def.’s Statement of Facts ¶ 24.
29
Fed. R. Civ. P. 56(c)(2); Id. advisory committee’s note of 2010.
30
United States v. Oakley, 744 F.2d 1553, 1556 (11th Cir. 1984).
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argument raised for the first time in a reply brief, it would not consider the evidence
here. Both in a 30(b)(6) deposition and in its response to the Defendant’s Statement
of Facts, the Plaintiff stated that it had no evidence of when the marks at issue were
first used on apparel. Under the principle of estoppel, therefore, this Court will not
permit the Plaintiff to introduce evidence to contradict its earlier admissions. The
Defendant’s motion to exclude the evidence on page 2, footnote 1, of the Plaintiff’s
Reply in Support of its Motion for Summary Judgment should therefore be granted.
The remainder of the motion to exclude addresses evidence the Court does not need
to consider in ruling on the motions for summary judgment and should be denied as
moot.
Because the Plaintiff fails to present admissible evidence showing that it has
enforceable rights in a mark related to apparel, the Defendant’s motion for summary
judgment on the Plaintiff’s Lanham Act claims should be granted and the Plaintiff’s
motion for summary judgment should be denied. The analysis under the Georgia
Uniform Deceptive Trade Practices Act (“GUDTPA”) is “co-extensive” with the
analysis under the Lanham Act.31 The Defendant’s motion for summary judgment on
31
Optimum Techs., Inc. v. Henkel Consumer Adhesives, Inc., 496 F.3d
1231, 1248 n.11 (11th Cir. 2007).
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the Plaintiff’s claim under the GUDTPA should also be granted. The Plaintiff’s
motion should be denied.
IV. Conclusion
For the reasons stated above, the Defendant’s Motion for Summary Judgment
[Doc. 39] is GRANTED. The Plaintiff’s Motion for Summary Judgment [Doc. 40] is
DENIED. The Defendant’s Motion to Strike Improper Evidence [Doc. 50] is
GRANTED in part and DENIED as moot in part.
SO ORDERED, this 31 day of July, 2015.
/s/Thomas W. Thrash
THOMAS W. THRASH, JR.
United States District Judge
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