A small Georgia company can proceed with its trademark infraction lawsuit against Wilson Sporting Goods Co. after a federal judge denied Wilson’s motion to dismiss the claim. Specifically, the court found that Unique Sports Products, Inc. had presented “sufficient evidence” to weather the motion filed by one of the largest sporting goods companies in the world.
The court described the events leading to the litigation as follows:
The plaintiff entered into a contract with Pistol Pete, Inc. in 2004 that provided for an exclusive license to use tennis legend Pete Sampras’ name or likeness on a variety of tennis accessories, such as tennis ball hoppers, from January 1, 2005 to December 31, 2007. Relevant to this action, the plaintiff began marketing the Sampras Ballport, a tennis ball hopper bearing Sampras’ photograph.
In March of 2005, the plaintiff discovered that a PGA Super Store in Atlanta was selling the “Wilson 70 Ball Pick-up,” a tennis ball hopper manufactured by defendant, in packaging that contained Sampras’ photograph. Although Wilson previously had a license to use Sampras’ image on certain tennis accessories, that license expired on December 31, 2002.
“Defendant’s use of Sampras’ image on the 70 Ball Pick-up in 2005 was thus unauthorized, and obviously conflicted with plaintiff’s exclusive license,” wrote the court.
Within weeks, the plaintiff asked Sampras’ agent, Kevin Callanan, “to explain why defendant was still using Sampras’ image on its product.” Callanan subsequently contacted Mike Wallace, defendant’s Global Director of Tours and Sports Marketing and informed him that the plaintiff had an exclusive relationship with plaintiff for certain products, including tennis ball hoppers, and asked Wallace to investigate his company’s continuing use of Sampras’ image on the 70 Ball Pick-up.
On May 31, 2005, the plaintiff sent Wilson a cease and desist letter, “formally notifying defendant of plaintiff’s exclusive license and requesting that the defendant immediately remove Sampras’ image from the 70 Ball Pick-up,” wrote the court. The defendant’s corporate counsel, Andre Pabarue, responded to the letter, “assuring plaintiff that defendant was investigating the issue and working with Sampras’ agent to resolve the matter.”
Informal settlement discussions followed. “However, in the midst of these discussions, and without responding to plaintiff’s most recent settlement demand or otherwise providing any notice to plaintiff, defendant filed a lawsuit against plaintiff in the Cook County, Illinois state court seeking a declaratory judgment that the packaging on the 70 Ball Pick-up did not infringe or dilute plaintiff’s rights in Sampras’ image.”
The plaintiff subsequently sued in federal court, asserting claims for violation of § 43(a) of the Lanham Act, 15 U.S.C. § 1125(a)(1)(A) and (B), and state law claims for unfair competition and deceptive trade practices. It also removed the Illinois state court action to the United States District Court for the Southern District of Illinois, and moved for dismissal of that action on the ground that “it was an improper race to the courthouse, and a wrongful attempt to coerce plaintiff into abandoning its claims.”
After discovery on the federal court claim, Wilson moved for summary judgment on the Lanham Act claim. “In support of its motion, defendant primarily argues that plaintiff cannot prevail on its Lanham Act claims because it has no trademark rights in Sampras’ image.”
The court zeroed in on the false endorsement component of the claim. “Relying on the plain language of § 43(a)(1)(A), courts have repeatedly held that the Lanham Act supports a cause of action for false endorsement. n5 See, e.g., Parks v. LaFace Records, 329 F.3d 437, 445-47 (6th Cir. 2003) (concluding that Rosa Parks could assert a claim under § 43(a)(1)(A) against a rap group that used her name in such a way as to cause confusion as to whether she sponsored or was affiliated with the group) and Waits v. Frito-Lay, Inc., 978 F.2d 1093, 1107 (9th Cir. 1992) (upholding Tom Waits’ Lanham Act claim against Frito-Lay as a result of an unauthorized commercial suggesting that Waits endorsed Frito-Lay’s products).
“There is sufficient evidence in the record to raise a question of fact on plaintiff’s false endorsement claim. Defendant concedes that it had no license, and that it therefore was not authorized, to use Sampras’ image on any of its products after December 31, 2002. Nevertheless, defendant continued to sell the 70 Ball Pick-up, prominently featuring Sampras’ picture on the packaging, through May of 2005. (Id. at PP 9, 21.) Common sense suggests that consumers were likely to be confused as to whether Sampras endorsed defendant’s product, as does an application of the relevant “confusion factors.” See Planetary Motion, 261 F.3d at 1201, n. 22 (considering several factors to assess the likelihood of confusion, including: 1) the type and similarity of the marks; 2) the similarity of the parties’ products, trade channels, and advertising media; 3) defendant’s intent; and 4) evidence of actual confusion) and Allen v. Nat’l Video, Inc., 610 F.Supp. 612, 627, n. 8 (D.C.N.Y. 1985)(‘When a public figure of Woody Allen’s stature appears in an advertisement, his mere presence is inescapably to be interpreted as an endorsement).’
“Moreover, plaintiff has standing to pursue a false endorsement claim against defendant. Plaintiff negotiated and purchased an exclusive license to use Sampras’ image on a variety of tennis accessories, including tennis ball hoppers. Defendant’s unauthorized use of Sampras’ image unilaterally rendered plaintiff’s license non-exclusive. Plaintiff is thus ‘likely to be damaged by [defendant’s] act[ions].’ 15 U.S.C. § 1125 (a)(1). Nothing more is required to assert a claim under § 43(a)(1)(A) of the Lanham Act. Id.
The court added that “contrary to defendant’s argument, plaintiff does not have to prove that it has a valid trademark in Sampras’ image to prevail on its false endorsement claim. As the Sixth Circuit explained in Parks, ‘even though Rosa Parks’ name might not be eligible for registration as a trademark . . . a viable cause of action also exists under § 43(a) if consumers falsely believed that Rosa Parks . . . sponsored or approved [defendant’s] song.’ Parks, 329 F.3d at 447. Plaintiff similarly has a viable cause of action under § 43(a) if consumers were likely to believe, falsely, that Pete Sampras sponsored or approved the 70 Ball Pick-up.
“Neither, as defendant suggests, does plaintiff have to show that the photograph on the Sampras Ballport was confusingly similar to the photograph on the 70 Ball Pickup. The relevant question in this case is not whether consumers were likely to confuse the two Sampras photographs, but whether consumers were likely to be confused as to whether Sampras endorsed defendant’s 70 Ball Pick-up. There is sufficient evidence in the record to raise a question of fact on this issue.”
Unique Sports Products, Inc. v. Wilson Sporting Goods Co.; N.D.Ga.; Civil Action No. 1:05-Cv-1816-Jec; 2007 U.S. Dist. LEXIS 21859; 3/8/07
Attorneys of Rceord: (for plaintiff) Gail Podolsky, James Jay Wolfson, Lead Attorneys, Greenberg Traurig-Atlanta, Atlanta, GA; Matthew James Pulliam, Lead Attorney, Greenberg Traurig LLP, Atlanta, GA. (for defendants) Allen William Groves, Erika C. Birg, Lead Attorneys, Seyfarth Shaw-Atlanta, Atlanta, GA; Louis S. Chronowski, Jr., Michael R. Levinson, Lead Attorneys, Seyfarth Shaw, LLP-Chicago, Chicago, IL; Mark Lawrence Seigel, Lead Attorney, Weatherly Kerven & Seigel, LLC, Atlanta, GA.
