By Cindy Troy
2L at University of Texas School of Law and Symposium Editor of the Texas Review of Entertainment and Sports Law
A judge for the United States District Court for the Eastern District of Washington has granted partial summary judgment in favor of Gonzaga University in a claim against Pendleton Enterprises, LLC, Pendleton Broadcasting Inc., and Jamie Pendleton, alleging violations of Section 43(a) of the Lanham Act.
Plaintiff Gonzaga moved for partial summary judgment on its §43(a) Lanham Act claim, asserting a commercial interest in preventing unauthorized use of Gonzaga trademarks, because such use would most likely create consumer confusion concerning Plaintiff’s endorsement of Defendant’s bar, radio station, and related activities, products, or services.
Plaintiff Gonzaga has a national prominence, as well as a strong loyalty in the Spokane area and throughout Washington State, with regards, in particular, to their basketball team. In promoting the sport through the NCAA, Gonzaga has widely publicized the names, Gonzaga University, Gonzaga University Bulldogs, and the ZAGs, as well as a team symbol, Spike, a bulldog who wears a Gonzaga jersey. Thousands of fans observe the Gonzaga Identifiers and Marks through the team’s jerseys, programs, and bulldog mascot, in addition to televised games and sports coverage in print and radio media.
Gonzaga claims that Defendants have used Spike and other Gonzaga Identifiers and Marks in promoting their radio station services and bar services “intending the consuming public to recognize the Gonzaga Identifiers as symbols of Gonzaga.” Gonzaga asserts that the use of Spike wearing Gonzaga-identifying marks, as well as social media presence, were intended to identify Gonzaga in connection with the promotion and advertising of the Spokane Downtown Daiquiri Factory, one of the Defendants’ businesses, and will likely cause confusion as to the affiliation, connection or association of Plaintiff’s sponsorship or approval of Defendants’ businesses and activities.
Gonzaga reports that there have been several instances where members of the Spokane community have expressed confusion as to whether an “affiliation, connection or association” or a “sponsorship, or approval” existed between Defendants and Gonzaga, particularly in regards to the Downtown Spokane Daiquiri Factory and the crude titles of their drinks. While actual evidence was found, “evidence of actual confusion is not required to find a likelihood of confusion.” Plaintiff requested that Defendant cease further use of the Gonzaga Marks and Identifiers; however, the Defendants’ use did not stop and Gonzaga concludes that Defendants are using Gonzaga’s trademarks without authorization to create an illusion of affiliation, when there is none.
Defendants opposed the motion, arguing that likelihood of confusion is a material fact that should preclude summary judgment in trademark action. Defendants argue that the doctrine of “fair use” should be held applicable to this trademark infringement action and that the Court should sanction their use of a replica of these Identifiers. The Court did not find that either classic or normative fair use was applicable under the facts of the case.
Gonzaga’s arguments cover claims of false designation of origin, federal/common law trademark infringement, and unfair competition claims. §43(a) of the Lanham Act provides two bases for liability: “(1) false representations concerning the origin, association or endorsement of goods or services through the wrongful use of another’s distinctive mark…(‘false association’), and (2) false representation in advertising concerning the qualities of goods or services (‘false advertising’).” Waits v. Frito-Lay, Inc., 978 F.2d 1093, 1108 (9th Cir. 1992) (citations omitted). The ultimate test is whether the public is likely to be deceived or confused by the similarity of the marks. New West Corp. v. NYM Co. of California, Inc., 595 F.2d 1194, 1201. Gonzaga must be able to establish secondary meaning in their use of the Gonzaga Identifiers, and Defendants’ activities must be shown to have created a likelihood of confusion. To prevail on an infringement claim, Gonzaga must prove that the alleged infringer used the mark at issue in commerce and in connection with the sale, distribution, or advertising of goods or services in such a way that the use “is likely to cause confusion, or to cause mistake, or to deceive.” 15 U.S.C. §1114.
In its analysis, the Court found that Defendants made commercial use of a mark that is similar enough to cause confusion in the minds of consumers about the origin of the goods or services in question, and that they used the Marks to benefit from any connection the public might draw between the Defendants’ businesses and the well-known sports team. There is no dispute that Defendants are using marks identical to those of Gonzaga, except the bulldog mascot wearing the Gonzaga identifying jersey.
Trademark laws are designed not only to prevent consumer confusion but also to protect “the synonymous right of a trademark owner to control his product’s reputation.” James Burrough Ltd. V. Sign of the Beefeater, Inc., 540 F.2d 266, 274 (7th Cir. 1976). The Defendants’ depiction of the bulldog in a Gonzaga jersey using a urinal on social media advertising, in addition to association with crude drink titles, violates §43(a) and the Plaintiff’s right to control its reputation. The Court found that likelihood of confusion existed and a violation of Section 43(a) had occurred, and accordingly, granted Plaintiff Gonzaga’s Motion for [Partial] Summary Judgment.
Corp. of Gonzaga Univ. v. Pendleton Enters., LLC,2014 U.S. Dist. LEXIS 136087(E.D. Wash.Sept. 25, 2014)
