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SB DESIGNS v. REEBOK INTERNATIONAL

September 29, 2004.

SB DESIGNS, GARY SIDNEY and MAURICE SIDNEY, Plaintiffs,
v.
REEBOK INTERNATIONAL, LTD., and CROSSOVA PRODUCTIONS, Defendants.



The opinion of the court was delivered by: ROBERT GETTLEMAN, District Judge

MEMORANDUM OPINION AND ORDER

In their second amended complaint, SB Designs and its co-owners, Gary Sidney and Maurice Sidney, assert violations of the Lanham Act, 15 U.S.C. §§ 1114 and 1125, against Reebok (Count I) and Crossova Productions*fn1 (Count III), and violations of the "Illinois Uniform Deceptive Trade Practices Act," 815 ILCS 510/1 et seq.,*fn2 against Reebok (Count II), arising from defendants' alleged infringement of plaintiffs' trademark. Defendant Reebok moved separately to dismiss the instant complaint, and the court converted the motion to a motion for summary judgment. Because plaintiffs' state law claim arises out of the same facts that form the basis for their claim under the Lanham Act, the court's discussion herein focuses on the merits of plaintiffs' claim under the Lanham Act. For the reasons discussed herein, the court grants Reebok's motion for summary judgment as to Counts I and II.

FACTS

  According to the second amended complaint, on December 19, 1994, Gary and Maurice Sidney applied for registration for the CROSSOVER KING trademark, which consists of the image of a basketball player in the action of a crossover dribble with a moving ball image and the trade name "CROSSOVER KING" underscoring the logo. On February 24, 1998, the CROSSOVER KING trademark was registered. On October 23, 2001, plaintiffs registered the CROSSOVER KING word mark, as well.

  SB Designs allegedly markets basketball apparel affixed with the CROSSOVER KING trademark through the internet, magazine advertising, street marketing, trade shows and sponsorship of sports-related events. According to plaintiffs, beginning in June 1997, Christian Sidney, on behalf of SB Designs, pitched the CROSSOVER KING concept to Reebok. SB Designs hoped that Reebok would use the CROSSOVER KING concept in conjunction with professional basketball player Allen Iverson ("Iverson"), who has an endorsement agreement with Reebok. In response to his first letters to Henry Que Gaskins, Reebok's brand manager of Allen Iverson apparel, and Paul Fireman, then-chief executive officer and president of Reebok, Christian Sidney received a letter from Reebok's Idea Submissions Coordinator, Kim Lessow, indicating that Reebok could not consider SB Design's idea unless SB Designs signed Reebok's Idea Submissions Guidelines Form. Although SB Designs did not sign the guidelines form, Maurice Sidney and/or Gary Sidney met with Reebok sale representative Alonzo Alexander on three occasions, and Diego Ross, Reebok's urban marketing manager, on one occasion. Further correspondence ensued, and on March 3, 1998, Christian Sidney, on behalf of SB Designs, allegedly sent CROSSOVER KING promotional art pieces to Gaskins, Fireman, and Peter Roby, Reebok's brand director of basketball. Roby declined interest and returned the art pieces, and Heather Snow, Reebok's legal manager of intellectual property, indicated that Reebok would not consider SB Designs' CROSSOVER KING concept, and returned the art pieces.

  Gaskins, however, allegedly called Christian Sidney on March 17, 1998, indicating that he wanted to explore discussions about using the CROSSOVER KING concept in Reebok's (Allen) Iverson 13 Apparel line, and that there was also great potential for a related CROSSOVER QUEEN concept. On September 22, 1998, Gaskins informed Christian Sidney that they could not move forward until Reebok's new chief executive officer gave direction. On December 17, 1998, Christian Sidney contacted Reebok's new chief executive officer directly to pitch the CROSSOVER KING and CROSSOVER QUEEN concepts. Reebok's idea submissions coordinator responded that the Idea Submissions Guideline Form had to be signed before Reebok would consider SB Design's idea. Again, SB Designs did not sign the document.

  In early 1999, Gaskins indicated that Reebok was planning to move forward with the Iverson 13 Apparel line concept (presumably without SB Designs), after which SB Designs broke off its contact with Reebok. Gaskins never returned the CROSSOVER KING and CROSSOVER QUEEN promotional art pieces that were sent by Christian Sidney. Plaintiffs allege that in 1997 Reebok aired a television commercial on the BET television network showing Iverson performing a crossover dribble, "then the commercial flashed to a crown with the number 3 enclosed, indicating that Iverson was the `Crossover King.'" Plaintiffs also allege that in 2002 they discovered two television commercials featuring Iverson and rapper Jada Kiss. According to plaintiffs, one of these commercials "indirectly insinuated that Allen Iverson was the Crossover King," and the other "insinuated that Allen Iverson was the Crossover King."

  In March 1999, SB Designs allegedly discovered various internet sites that promoted Iverson, Reebok and the 13 Apparel line using the CROSSOVER KING trademark. In September 2000, SB Designs discovered the website of Crossover Promotions, Iverson's promotional company.*fn3 Plaintiffs allege that the website is sponsored by Reebok, and that Crossover Promotions is actively attempting to position and promote Iverson as the so-called "Crossover King." Plaintiffs also allege that numerous other third-party websites have promoted Iverson and sold Reebok merchandise in conjunction with the use of the phrase "Crossover King." For example, plaintiffs claim that in 2000 and early 2001 a website called the "Allen Iverson Chamber" featured Iverson and Reebok merchandise and used the phrase "Crossover King." They also claim that other websites contained material that infringed the CROSSOVER KING marks. In addition, Plaintiffs allege that Iverson retained Reebok to coordinate the marketing and promotion of Iverson's name, including use of the crossover concept. Moreover, according to the second amended complaint, the Crossover Promotions name and image is confusingly similar to the CROSSOVER KING trademark. Based on these allegations, plaintiffs seek damages and injunctive relief under the Lanham Act, 15 U.S.C. §§ 1114 and 1125, against Reebok (Count I) and Crossova Productions (Count III), and under the Illinois Uniform Deceptive Trade Practices Act, 815 ILCS 510/1 et seq., against Reebok (Count II). Reebok originally filed the instant motion as a Rule 12(b)(6) motion to dismiss on April 23, 2004. The court converted it to a Rule 56 motion for summary judgment.

  SUMMARY JUDGMENT STANDARD

  A movant is entitled to summary judgment under Rule 56 when the moving papers and affidavits show there is no genuine issue of material fact and the movant is entitled to judgment as a matter of law. See Fed.R. Civ. P. 56(c); Celotex Corp. v. Catrett, 477 U.S. 317, 322 (1986); Unterreiner v. Volkswagen of America, Inc., 8 F.3d 1206, 1209 (7th Cir. 1993). Once a moving party has met its burden, the nonmoving party must go beyond the pleadings and set forth specific facts showing there is a genuine issue for trial. See Fed.R. Civ. P. 56(e); Becker v. Tenenbaum-Hill Assoc., Inc., 914 F.2d 107, 110 (7th Cir. 1990). The court considers the record as a whole and draws all reasonable inferences in the light most favorable to the party opposing the motion. See Fisher v. Transco Services-Milwaukee, Inc., 979 F.2d 1239, 1242 (7th Cir. 1992).

  A genuine issue of material fact exists when "the evidence is such that a reasonable jury could return a verdict for the nonmoving party." Anderson v. Liberty Lobby, Inc, 477 U.S. 242, 248 (1986); Stewart v. McGinnis, 5 F.3d 1031, 1033 (7th Cir. 1993). However, the nonmoving party "must do more than simply show that there is some metaphysical doubt as to the material facts." Matsushita Elec. Indus. Co., Ltd. v. Zenith Radio Corp., 475 U.S. 574, 586 (1986). "The mere existence of a scintilla of evidence in support of the [nonmoving party's] position will be insufficient; there must be evidence on which the jury could reasonably find for the [nonmoving party]." Anderson, 477 U.S. at 252.

  DISCUSSION

  Reebok advances two main arguments in support of its motion: (1) plaintiffs fail to allege that Reebok itself used plaintiffs' putative trademarks; and (2) plaintiffs fail to produce evidence that Reebok is secondarily liable for the allegedly ...


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