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.
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.
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 ...