United States District Court, N.D. New York
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[Copyrighted Material Omitted]
[Copyrighted Material Omitted]
For Legends Are Forever, Inc., Plaintiff: Timothy A. Benedict, LEAD ATTORNEY, City of Rome Corporation Counsel, Rome, NY.
For Nike, Inc., Defendant: Christian C. Casini, LEAD ATTORNEY, Osborn, Reed Law Firm, Rochester, NY; Jennifer B. Furey, Matthew P. Horvitz, LEAD ATTORNEYS, PRO HAC VICE, Goulston, Storrs Law Firm, Boston, MA.
MEMORANDUM-DECISION and ORDER
Lawrence E. Kahn, United States District Judge.
Plaintiff Legends are Forever, Inc. (" Plaintiff" or " LAF" ), commenced this trademark suit against Defendant Nike, Inc. (" Defendant" or " NIKE" ), on September 27, 2012. Dkt. No. 1 (" Complaint" ). Presently before the Court is Defendant's Motion for summary judgment. Dkt No.
30 (" Motion" ). For the following reasons, the Motion is granted.
A. Plaintiff's Business
Plaintiff is a baseball-themed souvenir shop located in Cooperstown, NY. Dkt. No. 32 (" Statement of Material Facts" or " SMF" ) ¶ 1. Cooperstown is the home of the National Baseball Hall of Fame, and is therefore a tourist destination. Id. ¶ 2. Plaintiff's storefront sign prominently advertises Major League Baseball apparel, souvenirs related to Cooperstown, and autographed baseball memorabilia. Id. ¶ 3.
LAF's owner and president is Jeffrey Foster (" Jeff Foster" ), who founded the store in 2001 after owning another baseball-related retail business in Cooperstown. Id. ¶ ¶ 4-6. Plaintiff's business is roughly 95% baseball-related products and autographed memorabilia. Id. ¶ 11. Plaintiff previously sold its products through a website, which it shut down in September 2012. Id. ¶ ¶ 12-13.
Jeff Foster came up with the phrase " Legends Are Forever" to evoke the feelings and emotions surrounding baseball history. Id. ¶ ¶ 19-21. In 2007, Plaintiff applied to register the mark " LEGENDS ARE FOREVER." Id. ¶ 24. This application was abandoned and revived twice--in December 2008 and June 2009--before registration number 3,731,889 was issued in December 2009 (the " Asserted Mark" ). Id. Plaintiff has not used a registered trademark symbol on any of its products bearing the Asserted Mark, and there is no set style used by Plaintiff for displaying the Asserted Mark. Id. ¶ ¶ 25-26.
Plaintiff's typical customer is a visitor to Cooperstown who wants a souvenir or memento of their trip. Id. ¶ 37. Most of these visitors also visit the Baseball Hall of Fame. Id. Plaintiff does not currently do any advertising. Id. ¶ 39. Plaintiff previously had former baseball players visit the store to sign autographs, but otherwise confined its marketing activities to local advertisements and Facebook postings. Id. ¶ ¶ 39-40. Plaintiff also paid " pay-per-click" fees with various internet search engines and shopping sites. Id. ¶ 41. Plaintiff would list its memorabilia and merchandise on various shopping websites and pay a fee each time a prospective customer clicked on a product listing. Id.
Plaintiff's business has been declining in recent years, and it recently downsized to a smaller space. Id. ¶ 48. As a result, Plaintiff may attempt to sell more apparel in place of autographed baseball memorabilia, but has not taken any active steps to do so. Id.
B. Defendant's Business
Defendant is the largest seller of athletic footwear and apparel in the world. Id. ¶ 51. Its principal business is the design, development, and worldwide marketing and sale of athletic footwear, equipment, accessories, and services. Id. Defendant's NIKE mark and NIKE swoosh logo have been recognized as " famous" under the Lanham Act, 15 U.S.C. § 1125(c). Id. ¶ 52 (citing NIKE, Inc. v. Top Brand Co., No. 00-CV-8179, 2004 WL 165859, at *9 (S.D.N.Y. July 13, 2005) and NIKE, Inc. v. Variety Wholesalers, Inc., 274 F.Supp.2d 1352, 1372 (S.D. Ga. 2003)). Defendant sells its products through its own retail stores and internet websites, and through a mix of independent distributors and licensees.
C. Kobe Bryant: Black Mamba
In January 2011, Defendant aired a six-minute film titled " The Black Mamba." SMF ¶ 54. The film starred professional basketball player Kobe Bryant (" Kobe" ), and was part of a promotional campaign surrounding Defendant's release of a Kobe-themed shoe. Id. ¶ ¶ 54, 56. The film concludes with Kobe questioning the film's director--Robert Rodriguez--" So how should it end?" Id. ¶ 58. Rodriguez responds, " Black Mamba doesn't end. Heroes come and go . . . ," and Kobe interrupts and completes the sentence, " but legends are forever." Id.
After seeing the film in November 2011, Jeff Foster approached Defendant on behalf of Plaintiff to see if Defendant was interested in paying for use of the phrase " legends are forever." Id. ¶ ¶ 59, 61. Matthew Foster (" Matt Foster" ), Jeff's brother and an employee of Plaintiff from 2009 until 2013, also contacted Defendant regarding the possible lease or sale of the Asserted Mark. Id. ¶ ¶ 7, 62. Defendant did not pursue these offers. Id. ¶ 63.
D. The Shirt
In April 2011, Defendant designed apparel for its Kobe Bryant summer product line. Id. ¶ 65. The phrase " legends are forever" was initially propsed for a t-shirt in the line, and preliminary designs, graphics, and ten " salesman samples" of a t-shirt with the phrase were created. Id. The ten salesman samples were not intended for sale and were never sold or offered for sale by Defendant. Id.
Defendant rejected the phrase " legends are forever" prior to production and sale of the t-shrts in the Kobe Bryant line, and instead selected the phrase " legends live forever" for t-shirt style No. 465630 (the " Black Mamba Shirt" ). Id. ¶ 66. Although the phrase " legends are forever" was never used on any product sold or offered for sale by Defendant, the proposed phrase was inadvertently retained in Defendant's internal database. Id. ¶ 68. The retention of this language may account for any use of the phrase " legends are forever" in internet descriptions of the " legends live forever" Black Mamba Shirt. Id.
According to Matt Foster, in June 2012, a customer walked into Plaintiff's store wearing a shirt that said either " legends are forever" or " legends live forever." Id. ¶ 70. Matt Foster asked the customer about the shirt, and the customer explained that it was a Black Mamba shirt and ...