Summary
staing that federal unfair competition claim requires that plaintiff establish a likelihood of consumer confusion
Summary of this case from Kaplan v. the Stock Market Photo Agency, Inc.Opinion
99-CIV-3635(KMW)
February 20, 2001
Plaintiff moves for partial summary judgment, pursuant to Fed.R.Civ.P. 56, on its federal and state trademark infringement claims. Defendants cross-move for partial summary judgment on the trademark infringement claims. Defendants also move for partial summary judgment on the unfair competition and trademark dilution claims. For the reasons stated below, the Court denies both parties' motions.
I. Background
The National Baseball Hall of Fame and Museum, Inc. ("plaintiff") commenced this action for trademark infringement, trademark dilution, false designation of origin, false advertising, unfair competition, deceptive acts and practices, and equitable accounting and imposition of a constructive trust against All Sports Promotions Group, Inc. ("All Sports") and Cooperstown Dreams Park, Inc. ("CDP") (collectively "defendants").
Plaintiff is the owner and operator of the National Baseball Hall of Fame ("NBHOF") in Cooperstown, New York. The mission of the NBHOF is to be "an educational institution dedicated to fostering an appreciation of the historical development of baseball and its impact on our culture by collecting, preserving, exhibiting and interpreting its collection for a global audience, as well as honoring those who have made outstanding contributions to our national pastime." See Defendants' Statement of Additional Factual Allegations Material to Plaintiff's Motion ["Defs.' Addit. Stmnt"], dated May 25, 2000, at ¶ 25; Plaintiff's Response to Defendants' Statement of Additional Factual Allegations Material to Plaintiff's Motion ["Pl.'s Addit. Resp."], dated June 30, 2000, at ¶ 25. Plaintiff has federally registered trademarks for, inter alia, the "Hall of Fame" mark, the "Baseball Hall of Fame" mark, the "National Baseball Hall of Fame" mark, and the "National Baseball Hall of Fame and Museum" mark. See Plaintiff's Statement of Undisputed Facts Pursuant to Local Civil Rule 56.1 in Support of Plaintiff's Motion for Partial Summary Judgment on its Trademark Infringement Claims ["Pl.'s Stmnt"], dated Apr. 27, 2000, at ¶¶ 80, 82, 84, 87, 90, 93, 95, 96, 98; Defendants' Response to Plaintiff's Statement of Undisputed Facts Pursuant to Local Civil Rule 56.1 ["Defs.' Resp."], dated May 25, 2000, at ¶¶ 80, 82, 84, 87, 90, 93, 95, 96, 98. The "Hall of Fame," "Baseball Hall of Fame," "National Baseball Hall of Fame," and "National Baseball Hall of Fame and Museum" marks have been accepted and entered by the U.S. Patent and Trademark Office ("PTO") as incontestible. See Pl.'s Stmnt at ¶¶ 81, 83, 85, 88, 91; Defs.' Resp. at ¶¶ 81, 83, 85, 88, 91.
In 1996, CDP, along with All Sports, began running a baseball facility that hosts youth tournaments. See Pl.'s Stmnt at ¶ 79; Defs.' Resp. at ¶ 79; Defendants' Statement of Undisputed Facts in Support of Cross-Motion for Partial Summary Judgment ["Defs.' Stmnt"], dated May 25, 2000, at ¶ 1; Plaintiff's Response to Defendants' Statements of Undisputed Facts in Support of Cross-Motion for Partial Summary Judgment ["Pl.'s Resp."], dated June 30, 2000, at ¶ 1. CDP advertises that its facilities are "set over 100 acres in Cooperstown, NY, home of the National Baseball Hall of Fame." Pl.'s Stmnt at ¶ 23; Defs.' Resp. at ¶ 23. Since 1996, CDP has hosted more than 22,000 players, coaches, and umpires. See Defs.' Addit. Stmnt at ¶ 7; Pl.'s Addit. Resp. at ¶ 7.
In connection with these tournaments, CDP uses the term "American Youth Baseball Hall of Fame." Pl.'s Stmnt at ¶ 13; Defs.' Resp. at ¶ 13. The coaches and players who participate in CDP tournaments are inducted into the "American Youth Baseball Hall of Fame" and receive an "American Youth Baseball Hall of Fame" ring. See Pl.'s Stmnt at ¶¶ 17, 30; Defs.' Resp. at ¶¶ 17, 30; Defs.' Addit. Stmnt at ¶¶ 13, 15; Pl.'s Addit. Resp. at ¶¶ 13, 15. CDP also collects and stores memorabilia from the participants in the tournaments, such as baseball gloves, homerun balls, and photographs, for future display in a physical facility to be located at CDP. See Pl.'s 56.1 Stmnt at ¶¶ 27-29; Defs.' Resp. at ¶¶ 27-29; Defs.' Addit. Stmnt at ¶ 16; Pl.'s Addit. Resp. at ¶ 16. In addition, defendants manufacture and sell merchandise bearing the designation "American Youth Baseball Hall of Fame." See Pl.'s Stmnt at ¶¶ 15-16, 38, 41, 44, 47, 50; Defs.' Resp. at ¶¶ 15-16, 38, 41, 44, 47, 50.
On or about May 21, 1996, All Sports filed an application with the PTO seeking registration of the designation "American Youth Baseball Hall of Fame" for "educational and entertainment services, namely services rendered in connection with the operation of a national youth baseball hall of fame recognizing the accomplishments of youth baseball teams and individual players in the United States." See Affidavit of Steven T. Shelton ["Shelton Aff."], dated June 30, 2000, at Ex. 1. The PTO denied the application but allowed All Sports to register the designation on the Supplemental Register. See id. Exs. 2, 3.
Defendants rely, in part, on the NBHOF to advertise and market their product. Coaches and players who participate in CDP tournaments are given tickets to the NBHOF as a part of their registration packets. See Pl.'s Stmnt at ¶ 34; Defs.' Resp. at ¶ 34; Defs.' Stmnt ¶¶ 12-13; Pl.'s Resp. ¶¶ 12-13. In addition, the metatags for CDP's website have contained the words "Baseball Hall of Fame" and "National Ball Hall of Fame." See Pl.'s Stmnt at ¶¶ 21-22; Defs.' Resp. at ¶¶ 21-22.
It is undisputed that there has been some confusion among members of the public regarding the relationship between the NBHOF and CDP. Members of the public have telephoned and emailed both entities with inquiries about the other. See Pl.'s Stmnt at ¶¶ 53-55, 58-60; Defs.' Stmnt at ¶¶ 53-55, 58-60. In addition, visitors to the NBHOF have both provided memorabilia from CDP tournaments for display and asked to see the displays of memorabilia from CDP. See Pl.'s Stmnt at ¶¶ 56-57; Defs.' Stmnt at ¶¶ 56-57. The parties dispute whether the confusion is caused by defendants' use of the term "American Youth Baseball Hall of Fame."
On May 18, 1999, plaintiff commenced this action against defendants based on its belief that the term "American Youth Baseball Hall of Fame" as used by defendants "incorporates as its dominant portion the Marks of Plaintiff in whole or in part." Second Amended Complaint ["Complaint"] at ¶ 20. Plaintiff argues that defendants are not authorized to use the designation "American Youth Baseball Hall of Fame" in connection with any business or service. See Complaint at ¶ 31.
II. Legal Analysis
A. Standard for Summary Judgment
On a motion for summary judgment, a court "cannot try issues of fact; it can only determine whether there are issues to be tried." Donahue v. Windsor Locks Bd. of Fire Comm'rs, 834 F.2d 54, 58 (2d. Cir. 1987) (citation and internal quotation marks omitted). To prevail on a motion for summary judgment, the moving party therefore must show that there are no such genuine issues of material fact to be tried, and that she or he is entitled to judgment as a matter of law. See Fed.R.Civ.P. 56; Celotex Corp. v. Catrett, 477 U.S. 317, 322 (1986); Citizens Bank v. Hunt, 927 F.2d 707, 710 (2d Cir. 1991). The party seeking summary judgment "bears the initial responsibility of informing the district court of the basis for its motion," which includes identifying the materials in the record that "it believes demonstrate the absence of a genuine issue of material fact." Celotex, 477 U.S. at 323.
Once a motion for summary judgment is made and supported, the burden then shifts to the non-moving party to set forth specific facts that show that there is a genuine issue to be tried. See id. Although the court considering a motion for summary judgment must view all of the evidence in the light most favorable to the non-moving party and must draw all reasonable inferences in that party's favor, Consarc Corp. v. Marine Midland Bank, N.A., 996 F.2d 568, 572 (2d Cir. 1993) (citation omitted), the non-moving party "must do more than simply show that there is some metaphysical doubt as to the material facts." Matsushita Elect. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 586 (1986) (citations omitted). If the party has set forth sufficient facts to substantiate the elements of the claim, summary judgment is inappropriate. See Celotex, 477 U.S. at 323.
B. Federal and State Trademark Infringement Claims
Plaintiff has moved for summary judgment on its federal and state trademark infringement claims. To succeed on these claims, plaintiff must prove that "it has a valid mark entitled to protection and that the defendant[s'] use of it is likely to cause confusion." Cadbury Beverages, Inc. v. Cott Corp., 73 F.3d 474, 477 (2d Cir. 1996) (internal quotation marks and citation omitted). Defendants cross-move for summary judgment on these claims, arguing that two of plaintiff's marks are generic and that none of the marks is likely to cause confusion.
1. Whether "Hall of Fame" and "Baseball Hall of Fame" are Generic
To succeed on its motion for summary judgment, plaintiff must prove that its marks are valid. On this point, plaintiff relies on the fact that it has federal trademark registrations for all of the marks at issue in this case. See Plaintiff's Memorandum of Law in Support of Its Motion for Partial Summary Judgment, dated Apr. 17, 2000, at pp. 7-8. Defendants concede that most of plaintiff's marks are valid based on the federal registrations. See Defendants' Memorandum of Law in Opposition to Plaintiff's Motion for Summary Judgment and In Support of Defendants' Cross-Motion for Summary Judgment ["Defs.' Mem. in Opp."], dated May 25, 2000, at pp. 4-5. However, on their cross-motion, defendants seek a limited ruling that two of plaintiff's registered marks, "Hall of Fame" and "Baseball Hall of Fame," are generic when used in conjunction with an honor roll of achievement and therefore can not give rise to a claim of trademark infringement based on defendants' use of the terms in conjunction with an honor roll of achievement. To succeed on their cross-motion, defendants must show that there is no genuine dispute of material fact as to whether plaintiff's registered trademarks are generic. The Court finds that defendants fail to meet this burden.
The Court does not consider the issue of whether the terms are generic in connection with products — such as t-shirts, baseball bats, and posters — and services — such as the operation of the NBHOF museum, the operation of the NBHOF library, and the organization of the NBHOF annual hall of fame baseball game. See Genesee Brewing Co., Inc. v. Stroh Brewing Co., 124 F.3d 137, 147 (2d Cir. 1997) ("A word may be generic of some things and not of others.") (internal quotations marks and citation omitted).
The parties agree that plaintiff owns federal trademark registrations for: "Hall of Fame" and "Baseball Hall of Fame." These federal trademark registrations are prima facie evidence of the validity of the trademarks. See Park `n Fly, Inc. v. Dollar Park and Fly, Inc., 469 U.S. 189, 194 (1985). In order to overcome this presumption of validity, defendants must prove that the trademarks have become generic. A trademark that becomes generic may be cancelled at any time, even if it is incontestible. See Park `n Fly, 469 U.S. at 195; Abercrombie Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 9
A generic term is "one that refers to the genus of which the particular product is a species." Id. at 194. In order to succeed on an argument that a mark is generic, a party must prove that the "primary significance of the term in the minds of the consumer public is not the product but the producer." Pilates, Inc. v. Current Concepts, Inc., 120 F. Supp.2d 286, 296 (S.D.N.Y. 2000) (citations omitted). To this end, defendants argue that "Hall of Fame" and "Baseball Hall of Fame" are generic when used in connection with an honor roll of achievement — that "Hall of Fame" is a generic term understood by the consumer public to mean either an honor roll of achievement in a particular activity or a building honoring that achievement and that "Baseball Hall of Fame" is understood by the consumer public to mean a hall of fame devoted to the sport of baseball. See Defendants' Reply Memorandum in Support of Cross-Motion for Partial Summary Judgment ["Defs.' Reply Memo"], dated July 21, 2000, pp. at 1-2. Defendants argue that the consumer public understands these terms to refer to a genus of product, as opposed to the specific product of any one producer.
In deciding whether a mark is generic, courts consider such evidence as dictionary definitions, competitors' use, plaintiffs' use, media usage, testimony by persons in the trade, and consumer surveys. See 2 McCarthy on Trademarks and Unfair Competition § 12:13 (4th ed. 1999); see also Pilates, 120 F. Supp.2d at 297-305. Defendants have provided evidence of dictionary definitions and third party use, both of which indicate that the terms are generic. Merriam-Webster's Collegiate Dictionary, for instance, defines hall of fame as: "1: a structure housing memorials to famous or illustrious individuals usu. chosen by a group of electors 2: a group of individuals in a particular category (as a sport) who have been selected as particularly illustrious." See Defs.' Mem. in Opp. at p. 8. Defendants also point out that hundreds of halls of fame exist throughout the country, dozens of which are devoted to baseball. See Defendants' Catalog of Third Party Baseball Halls of Fame.
In response, plaintiff sets forth evidence that defendants' use of the terms indicates that the terms are not generic. In advertisements and registration forms for CDP, defendants indicated that coaches and players were entitled to tickets to the National Baseball Hall of Fame as part of their registration at CDP, by stating that the participants at CDP received "Tickets to the Baseball Hall of Fame" and "Tickets to the Hall of Fame." See Affidavit of Todd Friedman in Support of Plaintiff's Motion for Partial Summary Judgment ["Friedman Aff."], dated Apr. 17, 2000, Ex. 4 at p. 725; Affidavit of Steven T. Shelton ["Shelton Aff."], dated June 30, 2000, at Exs. 4, 5. This use indicates that defendants believed that the terms "Baseball Hall of Fame" and "Hall of Fame" identify the producer, as opposed to the genus, of the product. The Court finds that this evidence of defendants' own use of the terms "Hall of Fame" and "Baseball Hall of Fame" is sufficient to raise a genuine dispute of material fact over whether the marks are generic when used in connection with an honor roll of baseball achievement.
Plaintiff also argues that defendants are estopped from claiming that the "Hall of Fame" and "Baseball Hall of Fame" marks are generic because defendants previously attempted to register these trademarks. See Plaintiff's Reply Memorandum of Law in Opposition to Defendants' Cross-Motion and in Further Support of Plaintiff's Motion for Partial Summary Judgment, dated June 30, 2000, at p. 5. The Court rejects this argument on the basis that defendants did not seek to register either "Hall of Fame" or "Baseball Hall of Fame" but rather sought to register the term "American Youth Baseball Hall of Fame." Therefore, the case law cited by plaintiff on the issue of estoppel in an infringement action against a second comer who previously tried to register a mark is inapposite.
2. Likelihood of Confusion on All Marks
In its motion for summary judgment, plaintiff argues, as a matter of law, that "numerous ordinary prudent purchasers are likely to be misled or confused as to the source of the product in question because of the entrance in the marketplace of defendant[s'] mark." Cadbury Beverages, 73 F.3d at 477-78 (citation omitted). In their cross-motion, defendants argue that they can prove, as a matter of law, that no likelihood of confusion exists.
The Court determines likelihood of confusion by considering eight factors: (1) the strength of plaintiff's mark; (2) the degree of similarity between the two marks; (3) the proximity of the products; (4) the likelihood that plaintiff will bridge the gap; (5) the evidence of actual confusion; (6) defendants' good faith in adopting their mark; (7) the quality of defendants' product; and (8) the sophistication of consumers. See Polaroid Corp. v. Polaroid Electronics Corp., 287 F.2d 492, 495 (2d Cir. 1961). None of these factors is dispositive; rather, the Court evaluates each in the context of the ultimate question of likelihood of confusion. See Banff, Ltd. v. Federated Dept. Stores, Inc., 841 F.2d 486, 490 (2d Cir. 1988) (citation omitted). In order to succeed on a motion for summary judgment, either party must prove that the "undisputed evidence would lead only to one conclusion as to whether confusion is likely." Cadbury Beverages, 73 F.3d at 478 (citations omitted). "If a factual inference must be drawn . . . and if a reasonable trier of fact could reach a different conclusion, the district court may not properly resolve that issue on summary judgment." Id. The Court considers each of these factors in turn, against this standard.
Strength of Plaintiff's Mark
The strength of the mark is a measure of "the distinctiveness of the mark, or more precisely, its tendency to identify the goods sold under the mark as emanating from a particular, although possibly anonymous source." W.W.W. Pharm. Co., Inc. v. Gillette Co., 984 F.2d 567, 572 (2d Cir. 1993) (citation omitted). The mark's strength is assessed according to two factors: (1) the degree to which it is inherently distinctive, and (2) the degree to which it is distinctive in the marketplace. See id. (citation omitted).
To determine whether a mark is inherently distinctive, the Court considers whether the mark is: generic, descriptive, suggestive, or fanciful. See Abercrombie Fitch, 537 F.2d at 9. Generic marks are not entitled to protection, while arbitrary marks are almost always entitled to protection. See Cadbury Beverages, 73 F.3d at 479 (citations omitted). To determine the degree to which the mark is distinctive in the marketplace, the Court considers such factors as the commercial success of the brand and third party use. See W.W.W. Pharm., 984 F.2d at 573.
Plaintiff has brought this action for trademark infringement of various marks: "Hall of Fame," "Baseball Hall of Fame," "National Baseball Hall of Fame," and "National Baseball Hall of Fame and Museum." To support its motion for summary judgment, plaintiff relies primarily on the argument that its incontestible, registered trademarks are entitled to a conclusive presumption of distinctiveness. See Park `n Fly, 469 U.S. at 194.
As for the "Hall of Fame" and "Baseball Hall of Fame" marks, defendants argue that these marks are generic and therefore not entitled to the protections presumptively available to federally registered marks. For the reasons set forth above, the Court is not able to decide, on summary judgment, whether these marks are generic. For the same reasons, the Court concludes that the issue of the strength of the these marks is similarly inappropriate for summary judgment.
As for the "National Baseball Hall of Fame" and "National Baseball Hall of Fame and Museum" marks, the Court finds that these marks are strong. Defendants have offered no evidence to rebut the presumptive validity of these federally registered marks. In addition, plaintiff offers undisputed evidence that these marks have had widespread exposure to the public and have achieved commercial success. For instance, the NBHOF has the highest attendance of any sports museum in the country and its activities and events receive prominent media coverage. See Affidavit of Frank Simio, dated Apr. 17, 2000, at ¶¶ 2, 5.
Similarities of the Mark
"In assessing similarity, courts look to the overall impression created by the logos and the context in which they are found and consider the totality of factors that could cause confusion among prospective purchasers." Gruner + Jager USA Pub. v. Meredith Corp., 991 F.2d 1072, 1078 (2d Cir. 1993) (citations omitted). For this factor, the Court considers: (1) whether the similarity between the two marks is likely to cause confusion, and (2) what effect the similarity has upon prospective purchasers. See Sports Auth., Inc. v. Prime Hospitality Corp., 89 F.3d 955, 962 (2d Cir. 1996) (citation omitted).
Plaintiff argues that the term "American Youth Baseball Hall of Fame" bears great similarity to all of its marks. The Court declines to rule on the issue of the similarity between defendants' term "American Youth Baseball Hall of Fame" and plaintiff's "Hall of Fame" and "Baseball Hall of Fame" marks. As explained above, genuine disputes of material fact exist over whether plaintiff's terms are generic. Therefore, the Court can not determine the issue of the similarity of the marks at this stage in the proceedings.
The Court does, however, reach the issue of the similarity between defendants' term "American Youth Baseball Hall of Fame" and plaintiff's "National Baseball Hall of Fame" and "National Baseball Hall of Fame and Museum" marks and finds that defendants' term is not likely to cause consumer confusion. Defendants' term and plaintiff's marks contain different descriptors — "American Youth" and "National," respectively. These descriptors are precise and serve to inform the ordinary prudent consumer as to the type of service offered. See Lang v. Retirement Living Pub. Co., Inc., 949 F.2d 576, 581-82 (2d Cir. 1991) (holding that "New Choices for the Best Years" magazine was distinct from "New Choices" Press); W.W.W. Pharm., 984 F.2d at 573 (holding that "Sportstick" and "Right Guard Sport Stick" are distinct). Therefore, the Court concludes that the potential for confusion, based on similarity, is not high.
Proximity of the Products
To determine proximity, the Court considers "the extent [to which the trade names] serve the same purpose, fall within the same general class, or are used together. . . ." Lang, 949 F.2d at 582 (internal quotation marks and citation omitted). The Court examines "the nature of the products themselves and the structure of the relevant market." Cadbury Beverages, 73 F.3d at 480 (internal quotation marks and citation omitted).
Plaintiff argues that the parties are in the identical business — that they have the same customers and that both sponsor baseball tournaments, display memorabilia, and sell merchandise. Regarding the sponsorship of baseball tournaments, the Court finds that the products do not compete in the same market. CDP's business is dedicated to youth baseball players, while plaintiff admits that it does not operate or sponsor youth baseball tournaments and has no plans to do so. See Defs.' Addit. Stmnt at ¶ 26; Pl.'s Addit. Resp. at ¶ 26. Regarding the display of memorabilia and the sale of merchandise, the Court finds that there exist triable issues of fact as to whether the products compete in the same market. For instance, defendants argue that they provide discount tickets to the National Baseball Hall of Fame as part of their registration packet, an action that they argue suggests an absence of competition between CDP and the NBHOF. Plaintiff, on the other hand, relies on the fact that the NBHOF contains displays dedicated to amateur baseball and that both parties sell similar merchandise as evidence that the two parties are competitors. This dispute precludes the determination of the proximity of the products on summary judgment.
Bridging the Gap
To determine the issue of bridging the gap, the Court must consider whether the senior user is likely to enter the junior user's market. This factor is designed to protect the senior user's "interest in being able to enter a related field at some future time. . . ." Scarves by Vera, Inc. v. Todo Imports Ltd., 544 F.2d 1167, 1172 (2d Cir. 1976).
Plaintiff argues that there is no gap to bridge because the parties offer identical goods and services under the marks at issue. The Court disagrees because it finds that a gap does exist. Based on the evidence presented, it appears that plaintiff is not likely to bridge the gap. As set forth by defendants, plaintiff has stated that it has no intention to run youth tournaments or summer camps. See Defs.' Addit. Stmnt at ¶ 26; Pl.'s Addit. Resp. at ¶ 26. However, because the Court has not determined, as a matter of law, the proximity of the products, it is not able to decide the issue of bridging the gap on summary judgment.
Actual Confusion
Not all consumer confusion can be protected against under the Lanham Act, which "protects only against mistaken purchasing decisions and not against confusion generally." Lang, 949 F.2d at 583 (citation omitted). In order to find actionable confusion, the Court must find that there is evidence linking consumer confusion to potential or actual effects on consumer purchasing decisions. See id.
Plaintiff presents evidence that shows a fair amount of confusion over whether the NBHOF and CDP are affiliated. Newspaper and Internet articles conflate the two entities. See, e.g., Friedman Aff. Ex. 26 (article stating that "Cooperstown Dreams Park is one of the newest editions [sic] to the Hall of Fame"). Individuals at the Cooperstown Chamber of Commerce testified that they received telephone calls from individuals who mistakenly believed that CDP is the National Baseball Hall of Fame's children's tournament. See, e.g., Friedman Aff. Ex. 14, at pp. 13, 68-69. NBHOF employees testified that they had received dozens of such telephone calls and emails. See, e.g., Affidavit of Rebecca Ashe, dated Apr., 13, 2000, at ¶¶ 3, 8-17; Affidavit of Richard Dolhun, dated June 27, 2000 at ¶¶ 3-4. Similarly, individuals at CDP have received phone calls from individuals who were confused about the relationship between the two entities. See Pl.'s Stmnt at ¶ 60; Defs.' Resp. at ¶ 60. Plaintiff also points to the websites of youth baseball teams that state that the teams will be playing at the "National Hall of Fame" tournament. See Shelton Aff. Exs. ¶¶ 17-18. In addition, NBHOF employees testified that they have been asked, on a number of occasions, about displays of children's memorabilia from CDP tournaments. See, e.g., Affidavit of Catherine Walker, dated June 26, 2000, at ¶¶ 4-5.
Defendants argue that the articles relied on by plaintiff are inadmissible hearsay. For the purposes of this motion, the Court relies on the newspaper articles only to the extent that they relay statements made by individuals to the reporter regarding the individuals' states of mind. See Fed.R.Evid. 803(3).
In response, defendants argue that there is no evidence that actual confusion exists as a result of their use of the term "American Youth Baseball Hall of Fame." Defendants assert that few of the individuals who made inquires made actual reference to the "American Youth Baseball Hall of Fame," and that the few who did, did not explain why or in what context.
Defendants ask, "Are these Museum Shop visitors, like the callers and e-mail correspondents, asking what they are asking because they are confused by Dreams Park's `American Youth Baseball Hall of Fame,' or are the inquiries prompted by other factors, chiefly that NBHOF is the most prominent baseball business in Cooperstown and a likely source to contact on all matters baseball?" Defendants' Memorandum of Law in Opposition to Plaintiff's Motion for Summary Judgment and in Support of Defendants' Cross-Motion for Summary Judgment ["Defs.' Mem. in Opp."], dated May 25, 2000, at p. 25.
The Court finds that although there is no direct evidence that individuals made the association between the NBHOF and CDP because of defendants' use of the designation the "American Youth Baseball Hall of Fame," the evidence set forth by plaintiff does establish that actual confusion has occurred. The numerous examples of individuals who were told that memorabilia would be displayed at the American Youth Baseball Hall of Fame and who then later inquired at the National Baseball Hall of Fame about the display of this memorabilia is strong evidence of actual confusion. Such evidence of misdirected phone calls and correspondence can be relied upon as evidence of actual confusion. See, e.g., Sports Auth., 89 F.3d at 964.
Good Faith
The Court next considers "whether the defendant[s] adopted [their] mark with the intention of capitalizing on plaintiff's reputation and goodwill and any confusion between [their] and the senior user's product." Lang, 949 F.2d at 583.
In support of its position, plaintiff points to evidence that indicates that defendants: (a) ubiquitously use the phrase "Home of the American Youth Baseball Hall of Fame," (b) derive their inspiration from the NBHOF, (c) set up CDP without consulting trademark counsel, (d) utilize plaintiff's marks in their website as metatags, (e) named their residential cabins after National Baseball Hall of Fame players, (f) refer to the "American Youth Baseball Hall of Fame" by the shorthand term "Hall of Fame," and (g) falsely market the American Youth Baseball Hall of Fame as a physical institution. In response, defendants argue that they intended neither to profit from plaintiff's goodwill nor to create consumer confusion. For example, in response to the argument that defendants utilize the term "Hall of Fame," defendants respond that they use this shorthand term in close proximity to the full designation "American Youth Baseball Hall of Fame" and to the CDP mark and design. See Declaration of Louis A. Presutti, III ["Presutti Decl."], dated May 25, 2000, at Exs. A, B.
Taken as a whole, the evidence does not point conclusively to either good faith or bad faith. The Court finds that certain of the evidence offered by plaintiff — ubiquitous use of the contested mark, knowledge of a prior use, failure to consult a trademark lawyer, use of another's trademarks in website metatags, and use of National Baseball Hall of Fame players to name CDP's residential cabins — standing alone is insufficient to establish bad faith. With regard to the other evidence — use of the shorthand terms "Hall of Fame" and "Baseball Hall of Fame" and marketing the American Youth Baseball Hall of Fame as a physical institution — the Court finds that there is a sufficient dispute over material facts to preclude summary judgment on the issue of bad faith. "[L]ike many intent issues, [the determination of bad faith] is best left in the hands of the trier of fact." Sports Auth., 89 F.3d at 964 (citation omitted).
Quality of Product
Here, the Court considers "whether defendant[s'] products or services are inferior to plaintiff's, thereby tarnishing plaintiff's reputation if consumers confuse the two." Morningside Group Ltd. v. Morningside Capital Group, LLC, 182 F.3d 133, 142 (2d Cir. 1999). Negative publicity, alone, is not enough to implicate this factor; rather, the publicity must establish that the quality of the product provided was inferior. See Trustees of Columbia Univ. v. Columbia/HCA Healthcare Corp., 964 F. Supp. 733, 748 (S.D.N.Y. 1997).
Plaintiff points to three incidents of negative publicity that it argues reflect poorly on defendants and tarnish plaintiff's reputation by virtue of confusion between the two entities. First, plaintiff points to an incident involving Timecards, an organization that defrauded youth of money earmarked for CDP registration fees, that was reported in newspapers around the country. See Friedman Aff. Exs. 13 (pp. 285-300), 22, 24, 39, 41. Second, plaintiff refers to a lawsuit between CDP's owners that was reported in at least two newspapers, and that caused at least one sponsor to withdraw its sponsorship. See id. Exs. 43, 44, 45. Third, plaintiff refers to an incident in which Cooperstown Umpires International, which was working to match umpires with the CDP tournaments, was alleged to have defrauded umpires by charging them for their matching services, allegations of which were published on the Internet. See id. Ex. 46.
For at least one of these incidents, the Timecards incident, plaintiff provides evidence that the incident did reflect badly, to some extent, on plaintiff. One newspaper article stated that a youth team that had registered for CDP "would not be able to participate in the tournament at the home of the Baseball Hall of Fame. . . ." Id. Ex. 41. In addition, individuals from the Cooperstown Chamber of Commerce testified that people called to complain about plaintiff's alleged involvement with Timecards. See Deposition of Suzanne Renckens ["Renckens Dep."], Jan. 6, 2000, at p. 16.
Defendants concede the existence of this negative publicity but argue that it does not reflect consumer beliefs that their products are inferior. To the contrary, defendants offer as evidence of their success the fact that CDP was well attended each year that it has been in existence. See Presutti Decl. at ¶ 3. In addition, associates of the Cooperstown Chamber of Commerce testified to CDP's good reputation. See Renckens Dep. at p. 10; Deposition of Mona M. Buckley, Jan. 6, 2000, at pp. 13-14. In addition, defendants have submitted testimonials from satisfied customers. See Presutti Decl. Ex. I.
Considering this evidence, the Court concludes that summary judgment is inappropriate on this point. The Court cannot make a determination on summary judgment as to whether the quality of defendants' services is such that it might tarnish plaintiff's reputation if consumers confuse the two entities.
Sophistication of Consumers
Here, the Court must consider "[t]he general impression of the ordinary purchaser, buying under the normally prevalent conditions of the market and giving the attention such purchasers usually give in buying that class of goods." Sports Auth., 89 F.3d at 965 (internal quotations marks and citation omitted). The parties dispute whether the relevant consumers are the children, the parents, or the coaches. Defendants offer evidence that the coaches are the consumers, arguing that they are the individuals who coordinate the teams to play in the tournaments. See Presutti Decl. at ¶ 6. Plaintiff offers evidence that the children are the consumers. See Friedman Aff. Exs. 4-5. In light of this factual dispute, the Court finds that this issue is inappropriate for summary judgment.
Combination of Factors
To determine whether either party has satisfied its burden of proof to allow summary judgment on the issue of likelihood of confusion, the Court considers all of the above- discussed Polaroid factors. "The bottom line on a motion for summary judgment is not how many factors favor each side but whether a reasonable trier of fact might differ as to likelihood of confusion." Physicians Formula Cosmetics, Inc. v. West Cabot Cosmetics, Inc., 857 F.2d 80, 85 (2d Cir. 1988). With this standard in mind, the Court concludes that summary judgment is inappropriate on the issue of likelihood of confusion.
3. Acquiescence
Defendants also argue that the equitable defense of acquiescence bars plaintiff's trademark infringement claims and cross-move for summary judgment on this ground. The Court denies defendants' motion for summary judgment on this defense.
Under the defense of acquiescence, a trademark owner may not assert a claim of infringement if the owner gives either implicit or explicit assurances that he or she does not object to that infringer's actions, and the infringer detrimentally relies on the assurance. See generally 5 McCarthy § 31:41; see also Dwinell-Wright Co. v. White House Milk Co., Inc., 132 F.2d 822, 825 (2d Cir. 1943) (citations omitted). As with other equitable defenses, its existence "depends upon a consideration of the circumstances of each particular case and a balancing of the interests and equities of the parties." Carl Zeiss Stiftung v. V.E.B. Carl Zeiss, Jena, 293 F. Supp. 892, 917 (S.D.N.Y. 1968).
Defendants offer evidence of assurances by plaintiff of its acquiescence in defendants' use of the term "American Youth Baseball Hall of Fame" and defendants' detrimental reliance on these assurances. For example, plaintiff wrote to defendants stating that it had no objection to defendants' use of the term "American Youth Baseball Hall of Fame" so long as defendants did not use the term "Hall of Fame" as a shorthand for the term "American Youth Baseball Hall of Fame." See Presutti Decl. Ex. E. Defendants also offer evidence that they used their hall of fame as a marketing strategy to promote their youth baseball camp. See Conopco, Inc. v. Campbell Soup Co., 95 F.3d 187, 192-93 (2d Cir. 1996) (finding that detrimental reliance exists where a party institutes a particular marketing strategy).
In response, plaintiff argues that defendants may not rely on the defense of acquiescence because defendants have unclean hands. Under the doctrine of unclean hands, a court "may decline to exercise its equitable powers in favor of a party whose unconscionable act . . . has immediate and necessary relation to the matter that he seeks in respect of the matter in litigation." See Aris-Isotoner Gloves, Inc. v. Berkshire Fashions, Inc., 792 F. Supp. 969 (S.D.N.Y. 1992) (internal quotation marks and citation omitted). To support its argument that the doctrine of unclean hands applies, plaintiff offers evidence that it allowed defendants to use the term "American Youth Baseball Hall of Fame" on the condition that defendants would use the term in its full form and not abbreviate it to "Hall of Fame" or "Baseball Hall of Fame." Yet, contrary to this understanding, defendants continued to use the term "Hall of Fame" as shorthand for "American Youth Baseball Hall of Fame." See, e.g., Friedman Aff. Ex. 7, at p. 1677 (1997 souvenir yearbook stating that players will receive a "Hall of Fame" ring); id. Ex. 5, at p. 56 (1998 registration brochure stating that teams will be enshrined in the "Hall of Fame"). The Court finds that this evidence regarding unclean hands is sufficient to defeat defendants' motion for summary judgment on the defense of acquiescence.
Plaintiff also argues that the defense of acquiescence is barred as a matter of law by the doctrine of inevitable confusion. As explained above, the Court is not able to conclude as a matter of law that defendants' use of the term "American Youth Baseball Hall of Fame" created a strong likelihood of actual confusion. Therefore, a fortiori, the Court cannot conclude as a matter of law that the use of the term created inevitable confusion.
C. Unfair Competition Claims
Defendants have moved for summary judgment on plaintiff's state and federal unfair competition claims. The Court denies defendants' motion on these claims.
Under New York law, "the essence of unfair competition . . . is the bad faith misappropriation of the labors and expenditures of another, likely to cause confusion or to deceive purchasers as to the origin of the goods." Jeffrey Milstein Inc. v. Greger, Lawlow, Roth, Inc., 58 F.3d 27, 34 (2d Cir. 1995) (citation omitted). Because, as explained above, the Court refuses to decide the issue of bad faith on summary judgment, the Court denies defendants' motion for summary judgment on the state unfair competition claim.
Under federal law, in order to prevail on an unfair competition claim, plaintiff must establish: (1) "an association of origin by the consumer between the mark and the first user," and (2) "a likelihood of consumer confusion when the mark is applied to the second user's goods or services." Genesee Brewing, 124 F.3d at 150 (citation omitted). As explained above, the Court is not able to conclude as a matter of law that defendants' use of the contested term created a likelihood of confusion. Therefore, the Court denies defendants' motion for summary judgment on the federal unfair competition claim.
D. Federal Trademark Dilution Claim
Defendants have also moved for summary judgment on plaintiff's federal trademark dilution claim. The Court denies defendants' motion on this claim.
In order to succeed on its dilution claim, plaintiff must prove: (1) ownership of a distinctive mark, and (2) likelihood of dilution. See Hormel Foods Corp. v. Jim Henson Prods., Inc., 73 F.3d 497, 506 (2d Cir. 1996) (citation omitted). "Dilution" is defined as "the lessening of the capacity of a famous mark to identify and distinguish goods or services, regardless of the presence or absence of (1) competition between the owner of the famous mark and other parties, or (2) likelihood of confusion, mistake, or deception." 15 U.S.C. § 1127.
The Court denies defendants' motion for summary judgment on the dilution claim regarding the "Hall of Fame" and "Baseball Hall of Fame" marks because, as explained, the Court is unable to decide, as a matter of law, whether these terms are distinctive.
For the other marks — "National Baseball Hall of Fame" and "National Baseball Hall of Fame and Museum" — the Court has held that these marks are strong and, therefore, considers whether, as a matter of law, there is a likelihood of dilution. A likelihood of dilution is established by a showing of either blurring or tarnishing. See Hormel, 73 F.3d at 506. Dilution by blurring occurs if defendants' mark causes plaintiff's mark to lose its power of identification. See id. In this case, there is no evidence that defendants' use of the mark "American Baseball Hall of Fame" has weakened the association between the "National Baseball Hall of Fame" and the "National Baseball Hall of Fame and Museum" marks and the underlying Cooperstown institution. Dilution by tarnishing occurs if plaintiff's mark suffers negative associations because of defendants' use. See id. at 507-508. A trademark may be tarnished when it is "linked to products of shoddy quality, or is portrayed in an unwholesome or unsavory context. . . ." See id. at 507 (citation omitted). As explained above, plaintiff has raised a genuine dispute of material fact as to whether its marks will suffer negative associations as a result of defendants' use. Therefore, the Court denies defendants' motion for summary judgment on the dilution claim.
III. Conclusion
The Court denies both parties' motions for summary judgment on all issues. The parties shall submit a joint pre- trial order by March 20, 2001. The case will be deemed trial- ready on March 21, 2001.
SO ORDERED