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January 6, 2004.


The opinion of the court was delivered by: JOHN GRADY, Senior District Judge


Before the court is defendants' motion to dismiss pursuant to Federal Rules of Civil Procedure 12(b)(1) and 12(b)(2) and the Declaratory Judgment Act. For the reasons stated below, the motion is granted.


  This declaratory judgment action arises out of a trademark dispute over the use of the term "JACK" in association with a new golf ball introduced by plaintiff Wilson Sporting Goods Company ("Wilson").

  In October 2002, Robert P. Kelly, CEO of defendant Nicklaus Golf Equipment Company, L.L.C. ("Nicklaus Golf"), sent a letter to Jim Baugh, president of Wilson, indicating that Nicklaus Golf and defendants Golden Bear International, Inc. and Jack Nicklaus believed that Wilson's use of the term "JACK" in relation to a golf Page 2 ball was causing confusion in the marketplace because customers were incorrectly associating the ball with Jack Nicklaus and his related companies. (Wilson was also using the phrase "You don't know Jack" in its marketing.) Mr. Kelly stated that Nicklaus Golf had previously used the mark "JACK" in relation to golf clubs. The conclusion of the letter expressed defendants' hope to "amicably resolve" the matter and invited a proposal from Wilson. (Memorandum in Support of Motion to Dismiss, Ex. A, Letter from Robert P. Kelly to Jim Baugh, October 24, 2002.)

  Discussions ensued. In December 2002, general counsel for Wilson sent Mr. Kelly a letter stating that "[i]t has surprised Wilson that [defendants], in effect, claim[] exclusive rights to use the ` . . . you don't know Jack' colloquialism in the field of golf," but also stating a hope to resolve the dispute "short of litigation." (Memorandum in Support of Motion to Dismiss, Ex. B, Letter from Ray Berens to Robert P. Kelly, December 17, 2002.)

  In February 2003, defendants' outside counsel, Scott A. McCollister, responded to Mr. Berens's letter. This letter was considerably more detailed than defendants' first letter to Wilson, and clarified that defendants were not so much concerned with Wilson's use of the phrase "You don't know Jack," but with Wilson's use of the simple mark "JACK." The letter also stated in part:

  Wilson's use of the mark JACK is targeted to the same customers courted by the Nicklaus organization. Thus, the Wilson JACK golf ball is likely to cause confusion, deception or mistake as to the source of Page 3 products. In addition, the Wilson use of the JACK trademark dilutes the relative value of that mark to Nicklaus. This constitutes, at a minimum, federal trademark infringement, deceptive trade practices, and unfair competition in violation of 15 U.S.C. ยง 1051 et seq. and various state laws.

  . . .

We believe that the newly introduced Wilson JACK ball is [also] a violation of Jack Nicklaus' rights under common law and various statutes governing the right of publicity.
. . .
While injunctive relief is available, Wilson's violation of the Right of Publicity statute may also render Wilson liable for the greater of actual damages and/or profits derived from the unauthorized use of Jack's identity. In addition, an entity who violates another's right of publicity may be liable for punitive damages.
In short, the Nicklaus business organization and Jack Nicklaus personally must insist that Wilson immediately cease and desist and end all use of the trademark JACK as indicia on any golf products. Accordingly, any further communications from Wilson on this matter need to address the trademark and right of publicity issues associated with the mark JACK, not the slogan ". . . you don't know Jack."
In summary, while we believe that the use of the phrase ". . . you don't know Jack" in association with golf products, may constitute copyright infringement and infringement of Mr. Nicklaus' right of publicity, in the spirit of compromise, we will not presently insist that Wilson abandon its use. However, we must insist that Wilson cease the use of the singular name JACK as it appears on packaging, advertisements or products associated with golf equipment, including golf balls.
  Quite frankly, in response to Mr. Kelly's letter, we hoped that Wilson would acknowledge its error in adopting the JACK trademark and work to develop an exit strategy from using the mark. However, Nicklaus representatives at the 2003 PGA Show found what appears to be an escalating focus on JACK branded golf balls making the matter more important to the Nicklaus organizations and to Mr. Nicklaus personally. In fact, Wilson seems intent on attempting to embarrass Mr. Nicklaus. Its decision to place JACK branded advertisements over urinals with the phrase "nice package" is nothing short of offensive. Page 4 Please provide us with your intended course of action to alleviate our concerns by the end of February, 2003.

 (Memorandum in Support of Motion, Ex. C, Letter from Scott A. McCollister to Raymond M. Berens ("McCollister Letter"), February 11, 2003.)

  Wilson's outside counsel, Jeffery A. Key, responded in part as follows in a letter dated February 26, 2003:
As an initial matter, I would like to reiterate that Wilson would like to resolve this matter without resort to litigation. To that end, perhaps we can discuss a means for mediating or arbitrating the trademark issues you have raised.
It would be helpful . . . if you could supply us with documentation [of trademark registrations and uses.]
. . .
Accordingly, please contact the undersigned to discuss a means for resolving this dispute that would be expeditious and save our clients the great expense of protracted litigation.
(Memorandum in Support of Motion, Ex. D, Letter from Jeffery A. Key to Scott A. McCollister, February 26, 2003.)

ย  Two days later, on February 28, 2003, Wilson filed the complaint in the instant action, seeking a declaratory judgment that Wilson has not infringed defendants' trademarks or violated other laws and that any trademark for the term "JACK" on golf balls is invalid. About a month and half later, on April 14, 2003, defendants ...

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