Robert E. Kerrigan, Jr. and Duris L. Holmes of Deutsch Kerrigan favorably held damages to less than 10% of the award being sought by plaintiffs in an intellectual property trial, despite the underlying decision of liability--which was decided before the firm’s involvement in the case--being heralded as a landmark opinion.

Several universities have trumpeted the Eastern District of Louisiana’s July 2006 decision in Louisiana State University v. Smack Apparel Co. as a landmark opinion due to its grant of trademark protection for the unregistered color schemes used by LSU, Ohio State, the University of Oklahoma, and the University of Southern California. The plaintiff universities sued a t-shirt maker and its president under state and federal law for selling six unlicensed t-shirts that used the colors of the universities together with other indicia they claimed suggested some affiliation with the schools. 

Attorneys Robert E. Kerrigan, Jr. and Duris L. Holmes were brought into the case after cross motions were filed for summary judgment as to liability. The district court ruled for the plaintiffs as to liability finding that the color schemes were protected despite the fact that they were not registered trademarks. The case then proceeded to a damages trial in November 2006.

Duris Holmes tried the case with James A. Tilly of Oklahoma City. After a two day trial, despite onerous instructions to the jury that the defendants were liable for trademark infringement, the jury awarded plaintiffs only $46,000, including less than one-half of the profits which Smack derived from the sale of the t-shirts. In post-trial rulings, the district court rejected the plaintiff universities attempts to obtain broad injunctive relief and enhanced damages for willful infringement of three times the amount of actual damages. On August 28, 2007, the district court completed its consideration of the case when it refused to award the universities the almost $1 million in attorney’s fees and costs they sought as an exceptional case under the Lanham Act. Instead, the court awarded slightly more than $100,000 only to LSU on its state law claims, resulting in a total recovery by the plaintiffs of less than 10% of the monetary remedies they sought.

The defendants previously appealed the liability and damages awards to the United States Court of Appeals for the Fifth Circuit, and the parties are considering their options for appeal as to the district court’s post-trial rulings.
Board of Supervisors of the Louisiana State University and Agricultural and Mechanical College, et al. v. Smack Apparel Company, et al., 550 F.3d 465 (5th Cir. 2008).