A federal judge from the Southern District of New York (SDNY) has ruled that the National Hockey League and NHL Enterprises, L.P. (collectively “the NHL”) can continue to pursue their trademark dispute in which they allege that a group of defendants have unlawfully marketed and sold a plastic beer stein that replicates the NHL’s Stanley Cup trophy.
The defendants in the case — The Hockey Cup LLC (Hockey Cup), ABC Stein LLC (ABC), A&R Collectibles, Inc. (A&R), and Roger S. Dewey (Dewey) — had moved to dismiss the complaint for lack of venue, or, in the alternative to transfer the matter to the Northern District of Illinois. They also moved to dismiss the NHL’s trade dress claims for failure to state a claim.
Early on in its opinion, the court noted that the Stanley Cup trophy is a trophy awarded to the winner of the NHL championship tournament, often referred to as the Stanley Cup Playoffs or Stanley Cup Final, at the end of each NHL season.
“The NHL and its member teams use certain names, terms, logos, symbols, and other trademarks, trade dress, and identifying indicia to identify and distinguish the NHL, its member teams, and their products and services (the NHL Marks),” the judge wrote. “The NHL licenses merchandise bearing the NHL Marks, including beverage containers and apparel, which generates significant sales revenue. Through continuous and extensive use and substantial advertising of the NHL Marks and because of the popularity of NHL hockey, the NHL Marks have become well-known and consumers have come to associate goods and services bearing or featuring NHL Marks as emanating from or being sponsored or approved by the NHL. The NHL regularly investigates and pursues, including through cease and desist letters and litigation, unauthorized uses of the NHL Marks in order to protect their rights in these NHL Marks.
“These NHL Marks include logos that use a visual depiction of the Stanley Cup trophy and products that bear the name or likeness of the Stanley Cup. The complaint includes a visual depiction of the Stanley Cup … . The NHL licenses a wide variety of products that bear the name, nicknames, images, likeness and/or shape of the Stanley Cup trophy, including beverageware, beer steins, collectible replicas, and Christmas tree ornaments. Some of these products refer to the Stanley Cup trophy as ‘the cup.’
“The NHL owns at least 11 trademark registrations for the words ‘Stanley Cup’ or for depictions or designs of the trophy. One of these trademark registrations, registration number 4,677,429, which is listed in the complaint alongside a depiction of the design, is described in the United States Patent and Trademark Office Registration as a three-dimensional configuration of a trophy with a ridged circular base, that narrows into an open bowl shape with curved lines radiating upward from the base of the bowl. The NHL also owns trademark and copyright registrations in other NHL Marks, including a logo depicting the NHL shield.”
The court also noted that “since at least May 2016, the Hockey Cup, ABC, and A&R have marketed and sold a clear plastic beer stein in the shape of the Stanley Cup trophy ((the Stein).
According to the NHL, the Stein is “poorly designed, cheaply made, and has received numerous consumer complaints and negative reviews by consumers on Amazon.com. The Stein is packaged and sold in a box that resembles the travel trunk in which the Stanley Cup trophy is transported, and which bears logos similar to those of the six original NHL teams.” The defendants have marketed the Stein using the words “the cup” and “Stanley” and using references to the Stanley Cup trophy tournament and to the NHL generally, including marketing timed to coincide with the Stanley Cup Playoffs.
The defendants have also marketed and sold hockey jerseys bearing the NHL word mark and NHL shield logo without authorization from the NHL or any authorized licensee. These jerseys lack the NHL hologram hangtag that accompanies all licensed NHL goods and, according to the NHL, bear indicia of low-quality production, including exposed stitching and printing mistakes on the tags. The defendants marketed and sold these jerseys on A&R’s website. According to the NHL, Dewey makes all pertinent manufacturing, marketing, sales, and distribution decisions for all three companies with regard to the allegedly infringing products.
In the complaint, the NHL alleges that the defendants have sold at least one Stein and one counterfeit NHL jersey in the SDNY. According to a declaration submitted by the defendants in support of their motions to dismiss for improper venue and lack of personal jurisdiction, the jersey that was sold in the SDNY was purchased by a paralegal for the law firm that was representing the NHL at the time in its dispute with the defendants.
In February 2017, the defendants filed intent-to-use trademark applications in the U.S. Patent and Trademark Office (USPTO). On Nov. 15, 2017, the NHL filed an opposition to these applications with the USPTO. On March 13, 2018, in response to a motion to dismiss filed by the NHL, the defendants filed an amended answer and counterclaims in the USPTO, in which they sought cancellation of the NHL’s Stanley Cup registrations.
The NHL filed a complaint on July 23, 2018, alleging trademark infringement, false association and false designation of origin, and trademark dilution under federal law and copyright infringement, trademark dilution, deceptive acts and practices, trademark infringement, and unfair competition in violation of New York law. The defendants moved to dismiss on Sept. 28, 2018.
In its analysis, the court first considered the defendants’ motion to dismiss the case under Rule 12(b)(3) for lack of proper venue. It promptly dispatched with that argument.
“Venue is proper in this district,” the judge wrote. “The NHL is headquartered in the district and any injuries resulting from the alleged violation of the NHL’s intellectual property rights thus would have occurred, at least in part, in this district. Moreover, the complaint alleges that the defendants engage in online marketing of their allegedly infringing products, and the Stein may be purchased through the defendants’ interactive websites and shipped to consumers in this district. The NHL also knows of at least one instance in which the Stein and a jersey were sold by this means and shipped to this district. The fact that these allegedly infringing items were purchased by an investigator employed by the NHL’s law firm does not make venue improper.”
As an alternative to dismissal for lack of venue, the defendants sought transfer to the Northern District of Illinois. The court began by observing that there is “a strong presumption in favor of the plaintiff’s choice of forum.”
Then it added that “although this lawsuit could have been brought in the Northern District of Illinois, the defendants have not established by clear and convincing evidence that transfer is warranted. The NHL’s choice of forum is entitled to significant deference. It is efficient for it to file suit in the district in which it is headquartered and there is no showing that its choice of this district was made for any wrongful tactical purpose.” See Pollux Holding Ltd. v. Chase Manhattan Bank, 329 F.3d 64, 71 (2d Cir. 2003) (deciding a forum non conveniens motion).
Finally, the court turned to the defendants’ contention that the NHL’s federal and state claims involving trade dress rights should be dismissed under Rule 12(b)(6) for failure to state a claim.
First, the court sought to determine whether the NHL brought a meritorious trade dress claim under Section 43 of the Lanham Act, which provides: “Any person who, on or in connection with any goods … uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin . . . which . . . is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person . . . shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such act.”
It concluded in the affirmative.
The NHL “lists its registration for its Stanley Cup trade dress in the complaint. The complaint also asserts that the NHL has long been the exclusive user of the trade dress and that the trade dress is widely advertised, publicized, and associated in the minds of the public with the NHL such that it has achieved secondary meaning. The complaint contains facts sufficient to show likelihood of confusion, including that the Defendants’ Stein is similar to its Stanley Cup mark, that the Defendants market the Stein to NHL fans and customers, and that the NHL’s Marks bearing the Stanley Cup design are highly distinctive.
Finally, while the NHL does not explicitly state in its complaint that its products bearing the Stanley Cup design are non-functional, it describes developing these products ‘[i]n order to satisfy the public’s enthusiasm and demand for products that celebrate or commemorate an NHL Club’s STANLEY CUP championship.’ Although the Defendants argue that the cup portion of the design could be used to drink out of and is therefore functional and thus unprotectable, the claimed trade dress is not so restricted. See Jeffrey Milstein, Inc. v. Greger, Lawlor, Roth, Inc., 58 F.3d 27, 32 (2d Cir. 1995). The complaint contains sufficient facts regarding the trade dress’s non-functional use to state a claim under the Lanham Act. For the same reasons, the NHL has also stated a claim for trade dress infringement under New York common law.”
As to the NHL’s federal and state trade dress dilution claims, the court also found for the league, noting that in addition to “adequately” alleging “non-functionality, the complaint also includes assertions that the Stanley Cup trophy, which forms the basis for the trade dress, ‘has become enormously famous’ and is ‘recognized as one of the greatest and most celebrated — if not the most celebrated — individual trophy in sports.’”
The court also sided with the NHL regarding its claims implicating New York state law.
NHL v. Hockey Cup LLC; SD.N.Y; 2019 U.S. Dist. LEXIS 3411 *; 2019 WL 130576; 1/8/19
Attorneys of Record: (for plaintiffs) Jordan Adam Feirman, Anthony Joseph Dreyer, Skadden, Arps, Slate, Meagher & Flom LLP (NYC), New York, NY. (for defendants) Konrad Sherinian, Depeng Bi, The Law Offices of Konrad Sherinian, LLC, Naperville, IL.