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N.f.l. Properties, Inc. v. Consumer Enterprises

FEBRUARY 25, 1975.

NATIONAL FOOTBALL LEAGUE PROPERTIES, INC., PLAINTIFF-APPELLEE,

v.

CONSUMER ENTERPRISES, INC., DEFENDANT-APPELLANT.



APPEAL from the Circuit Court of Cook County; the Hon. JAMES J. MEJDA, Judge, presiding.

MR. JUSTICE STAMOS DELIVERED THE OPINION OF THE COURT:

Defendant, Consumer Enterprises, Inc., appeals from an order of the circuit court granting plaintiff a preliminary injunction. The order enjoins defendant from: (1) manufacturing or selling emblems bearing the identifying marks used by the member clubs of the National Football League, "including the names by which such clubs are known to the public and the designs and symbols and team colors used to identify and refer to such clubs" or anything "confusingly similar thereto"; (2) representing that any articles sold by defendant are sponsored or authorized by plaintiff or the member clubs; and (3) any action likely to cause confusion as to the origin or sponsorship of such goods. The sole question for review is whether the trial court abused its discretion in granting plaintiff a preliminary injuncton. Roth v. Daley, 119 Ill. App.2d 462, 256 N.E.2d 166.

Upon consideration of the property rights at issue and of the effect of a disclaimer, we are of the opinion that plaintiff is entitled to total preliminary injunctive relief.

Each member club of the National Football League has a symbol which consists of a name, design and color. These symbols have been registered or are being registered on the Principal Register in the United States Patent Office for entertainment services in the form of professional football games. Plaintiff has been authorized by each member club to act as its exclusive licensing agent for its name and symbol. Plaintiff, in turn, has granted Lion Bros., Inc., the exclusive license to manufacture embroidered emblems depicting plaintiff's symbols. The emblems manufactured by Lion are then placed on merchandise of other licensees to indicate that the merchandise is authorized or sponsored by the member clubs. Plaintiff alleged, inter alia, that it maintains quality control supervision over all licensed merchandise, and that the symbols of the member clubs, when displayed on the merchandise, represent valuable good will of the clubs.

Defendant is in the business of manufacturing and selling at retail level embroidered cloth emblems. It has made and sold emblems which are duplications of plaintiff's marks, without authorization from plaintiff, the member clubs of the NFL or the League itself. Each emblem is packaged with defendant's trademark ("The Show Offs") displayed on the upper portion of the package. The package states that the emblems can be sewn on or attached to clothing.

The trial court granted plaintiff a total preliminary injunction based upon a six-count complaint: (1) trademark infringement *fn1 and unfair competition; (2) injury to business reputation and dilution of trademark; *fn2 (3) deceptive trade practices; *fn3 (4) misappropriation of a property right; (5) misappropriation of the right of publicity; and (6) injury to business relationship.

• 1 A reviewing court will reverse the order of a trial court granting a preliminary injunction only upon a clear showing that the trial court abused its discretion. (Capitol Records, Inc. v. Vee Jay Records, Inc., 47 Ill. App.2d 468, 197 N.E.2d 503.) In determining whether a sufficient showing was made to sustain the temporary order, it is necessary to consider whether plaintiff has shown (1) a reasonable probability of eventual success on the merits; (2) irreparable injury; and (3) a balance of equities in plaintiff's favor. Professional Business Management, Inc. v. Clark, 83 Ill. App.2d 236, 227 N.E.2d 371.

• 2, 3 Initially, we hold that plaintiff has a property right entitled to protection. Through the expenditure of large sums of money by the NFL and its clubs, the symbols have acquired a strong secondary meaning of identification of the member clubs. These symbols create and perpetuate the good will of the member clubs. These symbols, by identifying the member teams, perform the function of valid service marks. (Mr. Travel, Inc. v. V.I.P. Travel Service, Inc. (N.D. Ill. 1966), 268 F. Supp. 958, aff'd (7th Cir. 1967), 385 F.2d 420; Callman, Unfair Competition and Trademarks 2129 (2d ed.).) Moreover, when these marks are affixed to merchandise manufactured by plaintiff's licensees, they are entitled to trademark protection. Section 1 of "An Act to provide * * * for * * * protection of trademarks * * *" (Ill. Rev. Stat. 1971, ch. 140, par. 8) provides:

"(a) `Mark' includes any trade-mark or service mark whether registered or not. `Trade-mark' means anything adopted and used by a person to identify goods made, sold, produced or distributed by him or with his authorization and which distinguishes them from goods made, sold, produced or distributed by others. `Service-Mark' means anything adopted and used by a person to identify services rendered by him or with his authorization and which distinguishes them from services rendered by others.

(e) A mark shall be deemed to be `used' (1) in the case of a trade-mark, when it is placed in any manner on the goods, in or on any container for the goods, on the tags or labels affixed to the goods or containers, or is displayed in physical association with the goods in the sale or distribution thereof, or (2) in the case of a service mark, if it identifies a service, even though the service may be rendered in connection with the sale or distribution of goods of the owner of the mark. A mark shall be deemed to be `used in this State' (1) in the case of a trade-mark when it is used on goods which are sold or otherwise distributed in this State, or

(2) in the case of a service mark if the service identified by the mark is rendered or received in this State."

Under both Federal law and Illinois law, an unauthorized use of another's valid trademark, which use is likely to cause confusion as to the origin of the goods, may be completely enjoined. (15 U.S.C. § 1125(a) (1970); Ill. Rev. Stat. 1971, ch. 140, par. 22.) In the instant case, plaintiff has elected the State remedies for relief.

Defendant's contention has been that it is merely copying plaintiff's marks and selling them; that it is selling the emblem designs as merely decorative products and that the emblems are not performing the trademark function of source identification. Defendant maintains that under the Sears and Compco doctrine (Sears, Roebuck & Co. v. Stiffel Company, 376 U.S. 225, Compco Corporation v. Day-Brite Lighting, Inc., 376 U.S. 234), no State may prohibit the copying of unpatented and uncopyrighted products or trademarks, although a State may require the copier effectively to see to it that the public is not, in fact, deceived as to the source or origin or sponsorship of the products or trademarks or trademarked goods.

It is our opinion that defendant's interpretation of Sears and Compco is overbroad. In Compco the court did not deal with ...


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