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
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
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. § 1051 et seq. and various state
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.
Please provide us with your intended course
of action to alleviate our concerns by the end of
(Memorandum in Support of Motion, Ex. C, Letter from Scott A.
McCollister to Raymond M. Berens ("McCollister Letter"), February 11,
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
. . .
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.)
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 ...