The Merchandising Right Gone Awry: What “Moore” Can Be Said?
2015; Wiley; Volume: 52; Issue: 2 Linguagem: Inglês
10.1111/ablj.12047
ISSN1744-1714
AutoresSteve McKelvey, Ari J. Sliffman,
Tópico(s)Corporate Law and Human Rights
ResumoAmerican Business Law JournalVolume 52, Issue 2 p. 317-363 Original Article The Merchandising Right Gone Awry: What "Moore" Can Be Said? Steve McKelvey, Steve McKelveySearch for more papers by this authorAri J. Sliffman, Ari J. SliffmanSearch for more papers by this author Steve McKelvey, Steve McKelveySearch for more papers by this authorAri J. Sliffman, Ari J. SliffmanSearch for more papers by this author First published: 04 June 2015 https://doi.org/10.1111/ablj.12047Read the full textAboutPDF ToolsExport citationAdd to favoritesTrack citation ShareShare Give accessShare full text accessShare full-text accessPlease review our Terms and Conditions of Use and check box below to share full-text version of article.I have read and accept the Wiley Online Library Terms and Conditions of UseShareable LinkUse the link below to share a full-text version of this article with your friends and colleagues. Learn more.Copy URL Share a linkShare onEmailFacebookTwitterLinkedInRedditWechat Footnotes 1See Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989); see also N.Y. Racing Ass'n v. Perlmutter Publ'g, Inc., 959 F. Supp. 578 (N.D.N.Y. 1997). 2See, e.g., Univ. of Ga. Athletic Ass'n v. Laite, 756 F.2d 153 (11th Cir. 1985); Boston Prof'l Hockey Ass'n v. Dallas Cap & Emblem Mfg., Inc., 510 F.2d 1004 (5th Cir. 1975); Bd. of Supervisors of LSU v. Smack Apparel Co.. 438 F. Supp. 2d 653 (E.D. La. 2006), aff'd, 550 F.3d 465 (5th Cir. 2008). 3Univ. of Ala. Bd. of Trs. v. New Life Art, Inc. (NLA Dist. Ct.), 677 F. Supp. 2d 1238 (N.D. Ala. 2009); Univ. of Ala. Bd. of Trs. v. New Life Art, Inc. (NLA 11th Cir.), 683 F.3d 1266 (11th Cir. 2012); Univ. of Ala. Bd. of Trs. v. New Life Art, Inc., No. 7:05-cv-0585-AKK, 2013 U.S. Dist. LEXIS 139864 (N.D. Ala. Sept. 27, 2013). 4This scenario is based on New York Racing Association, 959 F. Supp. 578. See infra note 40 and accompanying text. 5See U.S. Const. amend. I; 15 U.S.C. § 1125(a)(1) (2013). Freedom of artistic expression entails the First Amendment principle that an artist (e.g., a painter, singing group, or sculptor) should not be restrained by the law in the creation of artwork. Typically, artistic freedom is threatened when the art is challenged not on the basis of its artistic merits or quality but because of its content, viewpoint, or message. See infra Part II. 6See N.Y. Racing Assn, 959 F. Supp. 578. 7The University of Alabama failed to require licensing agreements with Moore and his company, New Life Art, prior to 1991. The authors speculate two reasons for this. First, the University believed it was helping an alumnus to develop his career and business that brought added recognition to the University. Second, the collegiate licensing business was still in its relative infancy, and the University had yet to comprehend the monetary potential of licensing Moore's artwork. 8NLA 11th Cir., 683 F.3d 1266 (11th Cir. 2012) 9Id. The final disposition of the case enabled the artist to reproduce his artwork on "mundane" products (characterized by the district court as "ordinary" products). Id. at 1240. The decision was based on a narrow interpretation of the parties' license agreement and not on a legal holding that First Amendment artistic expression trumped trademark law in the context of sports-related merchandising. Id. at 1241. See infra Part I.D. 10The term "merchandising right," first coined by Professors Dolgan and Lemley, refers to the recent trend of courts to recognize a property interest in a trademark that marked a shift away from the consumer protection rationale of trademark law. See Stacey L. Dolgan & Mark A. Lemley, The Merchandising Right: Fragile Theory or Fait Accompli?, 54 Emory L.J. 461, 464 (2005). 1115 U.S.C. § 1125(a)(1). 12See Dolgan & Lemley, supra note 10, at 464. 13ETW Corp. v. Jireh Publ'g, Inc. 332 F.3d 915 (6th Cir. 2003) (finding that the original purpose of the Lanham Act is to protect consumers from confusion as to source and not as to sponsorship). 14 John D. McMillen et al., Control of University Sponsored Sporting Events—The Conflict Between Sport Artists' Freedom of Expression and University Owned Trademarks, 17 J. Legal Aspects Sport 141, 142 (2007). 15Goal Line Stand, The Downtown Gallery, http://www.thedowntowngallery.com/moore/goallinestand.html (last visited Jan. 23, 2015). 16NLA 11th Cir., 683 F.3d 1266, 1270 (11th Cir. 2012). 17NLA Dist Ct., 677 F. Supp. 2d 1238, 1244 (N.D. Ala. 2009). The University had never required Moore to enter into licensing agreements before 1991. See supra note 7. 18NLA Dist Ct., 677 F. Supp. 2d at 1244. 19Id. 20Id. Moore stated that he would enter into future license agreements only if he felt it would help increase his sales, or if he wanted this alma mater to financially benefit from the royalties. NLA 11th Cir., 683 F.3d at 1270. 21See McMillen et al., supra note 14, at 143. 22NLA 11th Cir., 683 F.3d at 1274. 23Plaintiff Complaint, NLA Dist. Ct., 677 F. Supp. 2d 1238 (N.D. Ala. 2005), (No. 05CV00585), 2005 WL 986824 [hereinafter Plaintiff Complaint]. The University of Alabama's efforts to secure trademark protection arose when other universities were pursuing similar strategies. See Bd. of Supervisors of La. St. Univ. v. Smack Apparel Co., 438 F. Supp. 2d 653 (E.D. La. 2006), aff'd, 550 F.3d 465 (5th Cir. 2008); Univ. of Kan. v. Sinks, 565 F. Supp. 2d 1216 (D. Kan. 2008); Tex. Tech Univ. v. Spiegelberg, 461 F. Supp. 2d 510 (N.D. Tex. 2006). See generally John Grady & Steve McKelvey, Trademark Protection of School Colors: Smack Apparel and Sinks Decisions Trigger Color-ful Legal Debate for the Collegiate Licensing Industry, 18 J. Legal Aspects of Sport 207 ( 2008). 24See generally Plaintiff Complaint, supra note 23. 25NLA 11th Cir., 683 F.3d at 1270. 26Id. at 1270–71. 27"If the uniforms are to be considered trade dress marks, there is no reasonable inference that it results from language in the license agreements." Id. at 1244–45. 28192 F.3d 1330, 1335 (11th Cir. 1999). The factors that the Frehling Court used in assessing whether consumer confusion exists are (1) type of mark; (2) similarity of mark; (3) similarity of the products the marks represent; (4) similarity of the parties' retail outlets (trade channels) and customers; (5) similarity of advertising media; (6) defendant's intent; and (7) actual confusion. Id. 29NLA Dist. Ct., 677 F. Supp. 2d 1238, 1249–50 (N.D. Ala. 2009). 30See supra note 5. Moore also raised a copyright defense, but this defense was quickly and quietly turned away by Judge Propst. Moore would go on to preserve his copyright defense in his appeal, which is discussed infra Part I.C. See NLA Dist. Ct., 677 F. Supp. 2d at 1242. 31875 F.2d 994, 1005 (2d Cir. 1989) (finding against actress/dancer Ginger Rogers in her Lanham Act lawsuit against the producer of a movie entitled "Ginger and Fred"). 32According to the court in Rogers, [T]he [Lanham] Act should be construed to apply to artistic works only where the public interest in avoiding consumer confusion outweighs the public interest in free expression. In the context of allegedly misleading titles using a celebrity's name, that balance will normally not support application of the Act unless the title has no artistic relevance to the underlying work whatsoever, or if it has some artistic relevance, unless the title explicitly misleads as to the source of the work. id. at 999. 33Id. 34He noted that Moore had successfully cured any potential consumer confusion by consistently signing his name on every painting, so purchasing consumers were aware that the source of every painting was Moore and not the University. See NLA Dist. Ct., 677 F. Supp. 2d at 1252. Judge Propst did not discuss exactly why the public's interest in free expression outweighed any potential likelihood in consumer confusion but merely that it did outweigh it. See id. at 1241, 1259. See infra notes 49–50 and accompanying text. 35Moore's affirmative fair use defense would arguably also have provided grounds for a favorable decision had this defense been preserved at the appellate court level. See generally KP Permanent Make-up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111 (2004),); see infra notes 157–59 and accompanying text. 36NLA Dist. Ct., 677 F. Supp. 2d at 1252 (quoting EMI Catalogue P'ship v. Hill, Holliday, Connors, & Cosmopulos, Inc., 228 F.3d 56, 64 (2d Cir. 2000)). Under the classic fair use doctrine defense raised by Moore, the defendant uses the plaintiff's mark to describe the defendant's mark. Nominative fair use, on the other hand, exists when the defendant uses the plaintiff's mark to describe the plaintiff's mark. New Kids on the Block v. New Am. Publ'g, Inc., 971 F.2d 302, 308 (9th Cir. 1992)). See generally Michael G. Frey, Is It Fair to Confuse? An Examination of Trademark Protection, the Fair Use Defense, and the First Amendment, 65 U. Cin. L. Rev. 1255 (1997). 37332 F.3d 915 (6th Cir. 2003). 38Id. at 937. See infra Part V, for further discussion of ETW. 39See NLA Dist. Ct., 677 F. Supp, 2d at 1253. 40959 F. Supp. 578 (N.D.N.Y. 1997). 41Id. at 8 n.13. See infra Part V for further discussion of the Perlmutter case. 42NLA Dist. Ct., 677 F. Supp. 2d at 1259. 43Id. 44Id. at 1250. 45Id. at 1259. 46N.Y. Racing Ass'n v. Perlmutter Publ'g, Inc., 959 F. Supp. 578 (N.D.N.Y. 1997). 47See NLA Dist. Ct., 677 F. Supp. 2d at 1246. 48Id. at 1250 n.22. This leaves open the question of whether, under NLA, Leonardo da Vinci would have the right to reproduce his Mona Lisa painting on a mug, assuming da Vinci did not have a licensing agreement with the Louvre. 49Id. at 1250. "Trademarks are not merely descriptive; they answer the question 'Who made it?' rather than 'What is it?'" Id. at 1216–17 (discussing Leigh v. Warner Brothers, Inc., 212 F.3d 1210 (11th Cir. 2000)). 50Id. at 1246. 51Anticipating misunderstandings that he may have created with its decision, Judge Propst invited both parties to make further suggestions after reviewing the memorandum opinion. In its Addendum to Memorandum Opinion, NLA Dist. Ct., 677 F. Supp. 2d 1238, the court, inter alia, sought to clarify its decision regarding ordinary (or "mundane") products, noting its new-found reliance on Texas Tech v. Spiegelberg, 461 F. Supp. 2d 510 (N.D. Tex. 2006), a case the court did not even cite in its memorandum opinion. In note 3, the court recommends a full reading of the Texas Tech case. The judge admits that Texas Tech does not discuss fine art, artistic expression, or the First Amendment, and that the marks at issue in Texas Tech were much stronger marks, arguably undermining the reasonableness of the court's reliance. Judge Propst's primary use of the Texas Tech case appears to be in its holding that "confusion is more likely if the products in question are impulse items or are inexpensive." NLA Dist. Ct., 677 F. Supp. 2d at 1240 n.3 (citing Texas Tech, 461 F. Supp. 2d at 520). 52Id. at 1240. This statement provides the first insight into how the district court is defining "ordinary." Shortly thereafter, the district court also uses, for the first time, the phrase "mundane" to refer to these types of products. Hereinafter, we will use the word "mundane," as the appellate court did, to refer to these products. Id. at 1241. 53Id. at 1239 n.1. 54Id. at 1246. The cases are Univ. of Ga. Athletic Ass'n v. Laite, 756 F. 2d 153 (11th Cir. 1985); Boston Prof'l Hockey Ass'n v. Dall. Cap & Emblem Mfg., Inc., 510 F.2d 1004 (5th Cir. 1975); and Bd. of Supervisors of LSU v. Smack Apparel Co. 438 F. Supp. 2d 653 (E.D. La. 2006), aff'd, 550 F.3d 465 (5th Cir. 2008). For a critical discussion on the district court's reliance on these three cases, see infra Part III.B. The court relied on these cases "only to the extent that [they] involve non-artistic products such as T-shirts, mugs, etc." NLA Dist. Ct., 677 F. Supp. 2d at 1246. in granting the University's summary judgment motion as to these items. The court also drew on Boston Professional Hockey, an outdated case that has since been overturned, to support what it viewed as a problematic distinction between fine art and product sales. Boston Prof'l Hockey Ass'n, 510 F.2d at 1011. 55550 F.3d 465 (5th Cir. 2008). 56See id. at 472–73. The district court also fails to acknowledge that the majority of T-shirts produced by Smack Apparel were found to not infringe on the University's color schemes based on two factors relevant to this case: (1) First Amendment freedom of expression (in this case, parody); and (2) the fact that there would be no consumer confusion as to the source of the product. Id. at 478, 485. 57Id. at 472–73. 58The plaintiffs, indeed, pointed this fact out in their complaint. "There is a significant market among University alumni and others for items that commemorate the University and the University's significant athletic successes, from t-shirts and baseball caps, to pennants, stickers, license plate holders, coffee cups, mugs, banner, video games, posters, and the like." See Plaintiff Complaint, supra note 23, at 3–4. 59NLA 11th Cir., 683 F.3d 1266, 1272 (11th Cir. 2012). 60Id. The Eleventh Circuit moved calendars into the first category of products entitled to First Amendment protection, unlike the district court, which had specifically excluded calendars from First Amendment protection. As its rationale, the court stated that even if it did not include calendars together with paintings and prints, "we would find as a matter of law that the University acquiesced with respect to calendars." Id. at 1272 n.11. This decision raises two questions. First, if the University is found to have acquiesced to calendars, how did they not acquiesce to all the other items produced between 1979 and 1990, when there were no license agreements in effect? And second, why weren't postcard sized miniprints also included with calendars? After all, calendars are no less a "non-artistic" product than miniprints. 61Id. at 1272. 62Id. at 1282 n.42. The court seems to be suggesting that it is the size of the reproduction of the artwork that is the deciding factor, which would suggest that the reproduction of the artwork on a T-shirt would be acceptable so long as the reproduction was the size of the artwork used in the calendar. Unfortunately for Moore, this was not the case. 63Id. One could make the same argument for calendars, the purpose of which is not to display and enjoy artwork but to identify the months and days of the year. Alternatively, although the purpose of a T-shirt is to cover one's body, one may purchase it to display, share, and enjoy the artwork. Or, one may choose to purchase a mug instead of an art print because one loves the artwork and has an affinity for the artist but can only afford the mug (the fact that one also drinks out of the mug strains legal logic here). 64Id. at 1279 ("Moore's paintings, prints, and calendars very clearly are embodiments of artistic expression, and are entitled to full First Amendment protection."). 65Id. at 1271, 1273–74. 66Id. at 1274. 67Id. at 1273. 68Id. 69Id. at 1279. 70Id. at 1278. See supra note 32 and accompanying text. 71NLA 11th Cir., 683 F.3d at 1276. The circuit court echoed the district court's conclusion that the plaintiff's faulty survey "lacks strength because of its manner of taking, the form of the questions, the nature of the surveyed customers, and the number of responders. It involved only one print. The questions are loaded with suggestions that there is a 'sponsor' other than the artist." Id. 72Id. at 1279 (quoting Rogers v. Grimaldi, 875 F.2d 994, 1001 (2d Cir. 1989). The Eleventh Circuit court found "no evidence that Moore ever marketed an unlicensed item as 'endorsed' or 'sponsored' by the University, or otherwise explicitly stated that such items were affiliated with the University." Id. at 1279. Arguably, this rationale should also apply to "mundane" products, as it applies to calendars. 73Id. at 1276. 74Id. at 1280 n.41. 75Although, ultimately, Moore would prevail in this matter, it would be based on the district court's interpretation (on remand from the Eleventh Circuit) of the parties' license agreement and not upon Moore's First Amendment and Fair Use arguments. 76Id. at 1280 (citing 1 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 6: 14 ( 4th ed. 2011)). 77Id. at 1280 n.41. (citations omitted). The court determined that Moore had waived his First Amendment and fair use challenge as to mugs and other "mundane" products based upon, among other technical factors, the headings used in Moore's appellate brief. Id. at 1280. Brief of Amici Curiae Intellectual Property Professors in Support of Appellant/Cross Appellee New Life Art, Inc. and Daniel A. Moore and Affirmance in Part, NLA 11th Cir., 683 F.3d at 1266 (Nos. 09-16412, 10-10092) [hereinafter Brief of Amici Curiae Intellectual Property Law Professors]. 78NLA 11th Cir., 683 F.3d at 1280 n.41. The court even admitted "some reluctance" in having to apply such a technical reading of Moore's appellate brief. Id. 79Id. at 1282–83. 80Univ. of Ala. Bd. of Trs. v. New Life Art, Inc., No. 7:05-cv-0585-AKK, 2013 U.S. Dist. LEXIS 139864 (N.D. Ala. Sept. 27, 2013). 81Id. at *3. 82Id. at *4. 83NLA 11th Cir., 683 F.3d at 1282. New Life Art and its attorneys trumpeted the decision as a final victory in their eight-year legal fight. The University's lawsuit, said New Life Art lead attorney Stephen Heninger, "went against public opinion" and stood for the proposition that artists can transfer their photographs and artistic renderings onto other mediums. See Kent Faulk, Judge Dismisses Trademark Lawsuit filed by University of Alabama Against Artist Daniel Moore, Al.com (Sept. 30, 2013), http://www.chatsports.com/alabama-crimson-tide/a/Judge-dismisses-trademark-lawsuit-filed-by-University-of-Alabama-against-artist-Daniel-A-Moore-0-8558986. 84On remand, the district court also denied the University's unjust enrichment claim, holding that (1) Moore's failure to differentiate between his licensed and unlicensed products in no way amounted to the fraud or misrepresentation that would result in creating confusion in the marketplace; and (2) the University's knowing consent in selling Moore's unlicensed calendars amounted to unclean hands. Univ. Univ. of Ala. Bd. of Trs. v. New Life Art, Inc., 2013 U.S. Dist. LEXIS 139864Sept (citing Mathews v. Mathews, 288 So. 2d 110 (Ala. 1973)). 85See Kaplan v. California, 413 U.S. 115, 119 1973). See also Jessica A. Villardi, ETW Corp. v. Jireh Publishing, Inc.: Why the First Amendment Should Trump the Right of Publicity When Art Imitates Life, 34 Conn. L. Rev. 293, 305 (2001) ("Painting and drawings are, not surprisingly, afforded First Amendment protection."). 86See David A. Strauss, Freedom of Speech and the Common-Law Constitution, in Eternally Vigilant: Free Speech in the Modern Era ( Lee C. Bollinger & Geoffrey R. Stone eds., 2002). 87See Cent. Hudson Gas & Elec. Corp. v. Pub. Serv. Comm'n of N.Y., 447 U.S. 557, 563 1980) ("The Constitution … accords a lesser protection to commercial speech than to other constitutionally guaranteed expression."). See also Bolger v. Youngs Drug Corp., 463 U.S. 60, 64 (1983) (involving how to classify certain advertising pamphlets, noted that the Court has "held that the Constitution accords less protection to commercial speech than other constitutionally safeguarded forms of expression" (citation omitted)). 88See Va. State Bd. of Pharm. v. Va. Citizens Consumer Council, 425 U.S. 748, 762 (1976) (quoting Pittsburgh Press Co. v. Pittsburgh Comm'n on Human Relations, 413 U.S. 376, 385 (1973)); see also Bigelow v. Va., 421 U.S. 809, 818, 822 (1975) (holding that even speech that appears in the form of paid advertisements "is not stripped of First Amendment protection merely because it appears in that form"). 89Smith v. Ca., 361 U.S. 147, 150 (1959). 90NLA 11th Cir., 683 F.3d 1266, 1276 (11th Cir. 2012). 91Id. In Bolger, the U.S. Supreme Court established three specific factors for determining whether speech should be classified as commercial or noncommercial: (1) whether the communication is an advertisement, (2) whether the communication makes reference to a specific product, and (3) whether the speaker has an economic motivation for the communication. Bolger, 463 U.S. at 66–67. 92Id. (quoting Smith, 361 U.S. 150). 93Id. For this proposition, the Court cited ETW Corp. v. Jireh Publishing Inc., 332 F.3d 915 (6th Cir. 2003). See generally Mark A. Lemley & Eugene Volokh, Freedom of Speech and Injunctions in Intellectual Property, 48 Duke L.J. 147 (1998). 9415 U.S.C. § 1125(a)(1) (2013). 95See generally Mark A. Lemley, The Modern Lanham Act and the Death of Common Sense, 108 Yale L.J. 1687 (1999). 96Id. See infra Part IV for a discussion of how courts have expanded this concept. 97See generally McMillen et al., supra note 14. Andy Warhol's painting of a Campbell's soup can is a well-known example. Christie's, http://www.christies.com/features/2010-october-andy-warhol-campbells-soup-can-tomato-1022-1.aspx (last visited Jan. 23, 2015). 98296 F.3d 894 (9th Cir. 2002), cert. denied, 537 U.S. 1171 (2003). In Mattel, the trademark owner of "Barbie" sued MCA Records, the recording company for the band Aqua, for, inter alia, trademark infringement based on the band's lyrics that arguably turned Barbie into a sex object (referring to the doll as "Blonde Bimbo"). The suit was dismissed in favor of MCA at both the trial and appellate levels. See Mattel Loses 'Barbie Girl" Lawsuit, Billboard.com (July 25, 2002), http://www.billboard.com/articles/news/74968/mattel-loses-barbie-girl-lawsuit. 99Mattel, 296 F.3d at 900–02. 100894 F.2d 579 (2d Cir. 1990). 101Id. at 584. The court reasoned that the use of the photographs was merely descriptive of the calendar's theme and no consumer could believe that Ruth's estate was somehow sponsoring or endorsing the calendar. Id. 102See supra note 32 and accompanying text. 103875 F.2d 994 (2d Cir. 1989). 104Id. at 997. 105Id. 106Id. at 999 (emphasis added). 107Id. at 1001–02. 108See, e.g., Cliff Notes, Inc. v. Bantam Doubleday Dell Publ'g Grp., 886 F.2d 490 (2d Cir. 1989) (holding the use of plaintiff's trademarked black and yellow colors in a parody of study books was protected by the First Amendment); E.S.S. Entm't 2000, Inc. v. Rock Star Videos, Inc., 547 F.3d 1095 (9th Cir. 2008) (finding the use of plaintiff's trademark for entertainment club shown in a scene in a video was protected by the First Amendment); ETW Corp. v. Jireh Publ'g, Inc., 332 F.3d 915 (6th Cir. 2003) (holding the use of Tiger Wood's images in a painting entitled "Masters of Augusta" was protected by the First Amendment). The Eleventh Circuit in NLA roundly rejected plaintiff arguments that sought to distinguish its legal position from Cliff Notes and E.S.S. Entertainment (which involved parodies), and ETW (which also included a right of publicity claim). NLA 11th Cir., 683 F.3d 1266, 1277–78 (11th Cir. 2012). Instead, the Eleventh Circuit held that the focus of these cases was simply on artistic expression in general. Id. at 1278. 109See Mattel, Inc. v. MCA Records, Inc., 296 F.3d 894, 902. (9th Cir. 2002). 110NLA 11th Cir., 683 F.3d at 1276. 111The district court in NLA insinuates that this rationale of consumer sophistication applies to paintings and prints, but, relying on Texas Tech, would not apply to "impulse purchases," such as calendars, mini-prints, mugs and other such products. NLA Dist. Ct., 677 F. Supp. 2d 1238, 1241 n.3 (N.D. Ala. 2009) (citing Texas Tech v. Spiegelberg, 461 F. Supp. 2d 510 (N.D. Tex. 2006)). Both the district court and the Eleventh Circuit give consumers far too little credit. For a discussion of the concept that the law should give consumers more credit, see infra notes 156–60 and accompanying text. 112These interests are clearly stipulated in Plaintiffs' Complaint, supra note 23. 113See supra note 10. 114Id. Founded in 1981, CLC is the oldest and largest collegiate trademark licensing agency in the United States. Approximately $10 million of the total $4.62 billion was generated by the NCAA March Madness men's basketball tournament. Id. 115Karl Greenburg, Big Growth in College Sports Merchandising, Mediapost (Apr. 8, 2013), http://www.mediapost.com/publications/article/197323/big-growth-in-college-sports-merchandising.html. 116Mintel Reports, Marketing to Sport Fans–US–March 2013 (2013).) available at http://reports.mintel.com/display/680546/. 117Id. 118Collegiate Licensing Company Names Top Selling Universities and Manufacturers for 2012-2013, Collegiate Licensing Co. (Aug. 12, 2013), http://www.clc.com/News/Archived-News/Rankings-Annual-2012-13.aspx. 119See Joseph Liu, Sports Merchandising, Publicity Rights and the Missing Role of the Fan, 52 B.C.L. Rev. 493 (2011); Dolgan & Lemley, supra note 10, at 481–88. For a competing view that argues in favor of providing an expanded form of legal protection for trademark merchandising, see Irene Calboli, The Case for a Limited Protection of Trademark Merchandising, 2011 U. Ill. L. Rev. 865 (2011). 120See, e.g., C.B.C. Distrib. & Mktg., Inc. v. Major League Baseball Advanced Media, 443 F. Supp. 2d 1077 (E.D. Mo. 2006). 121See, e.g., Bd. of Supervisors of LSU v. Smack Apparel Co., 550 F. 3d. 465 (5th Cir. 2008); Texas Tech Univ. v. Spiegelberg, 461 F. Supp. 2d 510 (N.D. Tex. 2006). 122See, e.g., Randall L. Newsom, Cease and Desist: Finding an Equitable Solution to Trademark Disputes Between High Schools and Colleges, 52 B.C. L. Rev. 1833 (2011). 123See Kenneth L. Port, Trademark Extortion: The End of Trademark Law, 65 Wash. & Lee L. Rev. 585 (2008). Port suggests, based on his exhaustive empirical survey of legal cases, that trademark holders increasingly use both cease-and-desist letters and lawsuits not just to pursue legitimately objectionable behavior, but to expand their own trademark rights and deter market entrants. Id. at 589–90. 124See Calboli, supra note 119, for a litany of cases both sport and nonsport that trace this evolution in detail. 125Boston Prof'l Hockey Ass'n v. Dall. Cap & Emblem Mfg., 510 F.2d 1004 (5th Cir.), cert. denied, 423 U.S. 868 (1975). As suggested by Calboli, this is the case that in which trademark merchandising was "born." See Calboli, supra note 119, at 880. 126Boston Prof'l Hockey Ass'n, 510 F.2d at 1012. 127327 N.E.2d 242 (Ill. App. Ct. 1975). 128See Calboli, supra note 119 (discussing the impact of these cases on the expansion of trademark licensing rights); see also Int'l Order of Job's Daughters v. Lindeburg & Co., 633 F.2d 912, 919 (9th Cir. 1980) (holding that logos could function both as ornament and product source if consumers "inferred from the insignia that the jewelry was produced, sponsored, or endorsed" by plaintiff); see also Supreme Assembly, Order of Rainbow for Girls v. J.H. Ray Jewelry Co., 676 F.2d 1079, 1085 (5th Cir. 1982) (holding that there is a distinction between fraternal emblems and sports logos, where "a consumer seeing the emblem or name of a team … would assume some sort of sponsorship"). 129756 F.2d 1535 (11th Cir. 1985). 130Id. at 1546 (citation omitted). Although the Eleventh Circuit did mention the need for consumer confusion to find a trademark infringement, it eventually equated confusion with simple mental association or recognition of the plaintiff's mark while also emphasizing the defendant's desire to free ride on the plaintiff's goodwill. As the court stated: "'Confusion' need not relate to the origin of the challenged product. Rather, 'confusion' may relate to the public's knowledge that the trademark, which is 'the triggering mechanism' for the sale of the product, originates with the plaintiff." Id. (citation omitted). 131867
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