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Blue Cross and Blue Shield Association v. American Express Co.

July 25, 2005


The opinion of the court was delivered by: Matthew F. Kennelly, District Judge


Blue Cross and Blue Shield Association owns trademarks on a family of "Blue" marks, including the term "Blue Card." In October 1999, Blue Cross filed suit against American Express for trademark infringement, dilution, and unfair competition and deceptive trade practices based on its use of "Blue" marks in connection with credit cards and related services. Blue Cross moved for a preliminary injunction against American Express' "Blue from American Express" credit card product, but the Court denied the motion. Blue Cross and Blue Shield Ass'n v. American Express Co., No. 99 C 6679, 1999 WL 1044825 (N.D. Ill. Nov. 16, 1999). Blue Cross appealed the denial of the preliminary injunction, but before the appeal was heard, the parties entered into a settlement agreement in May 2000 which resolved the case.

The settlement agreement imposes various restrictions on American Express' use of the term "Blue." Among these is a prohibition which reads: "American Express shall not use the word "Blue" on its credit cards." Pl. Ex. A ¶ 5. In March 2003, American Express introduced its "Blue Cash" credit card. The term "BLUE CASH" is printed on the lower right corner of the face of the credit card, and the word "blue" appears on the back of the card as part of a customer service telephone number: 1-888-blue-741.

In September 2004, Blue Cross filed a motion seeking to enforce the settlement agreement, alleging that American Express' adoption of the "Blue Cash" card violated the agreement, specifically the prohibition in paragraph five quoted above. Blue Cross seeks an order of specific performance barring American Express from using the card. American Express contends that the "Blue Cash" card does not violate the agreement; it argues that paragraph five prohibits it only from using the word "Blue" by itself, not in combination with other words or numbers. It also raises other defenses to Blue Cross's claim.

Both sides have moved for summary judgment. For the reasons stated below, the Court denies both motions.


In considering each party's motion for summary judgment, the Court views the facts in the light most favorable to the non-moving party and draws reasonable inferences in that party's favor. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 255 (1986). The Court may grant summary judgment only if there is no genuine issue of material fact and the moving party is entitled to judgment as a matter of law. Fed. R. Civ. P. 56(c).

1. Paragraph Five of the Settlement Agreement

Construction of a settlement agreement is governed by ordinary contract law principles. Carr v. Runyan, 89 F.3d 327, 331 (7th Cir. 1996); Haisma v. Edgar, 218 Ill. App. 3d 78, 87, 578 N.E.2d 163, 168 (1991). The touchstone of contract interpretation is to determine the contracting parties' intent. See, e.g., In re Doyle, 144 Ill. 2d 451, 468, 581 N.E.2d 669, 676 (1991). Their intent is determined from the plan and ordinary meaning of the language the parties used, unless the language is ambiguous. Id.; see also, e.g., In re Estate of Powlus, 315 Ill. App. 3d 859, 863, 734 N.E.2d 111, 115 (2002). Determination of whether a contract is facially ambiguous is a question of law. See Air Safety, Inc. v. Teachers Realty Corp., 185 Ill. 2d 457, 462, 706 N.E.2d 882, 884 (1999).

Blue Cross argues that the sentence "American Express shall not use the word 'Blue' on its credit cards" means exactly what it says, that is, it prohibits use of the word Blue in any way, shape, or form on American Express's credit cards. It would be that simple if the settlement agreement contained only this particular provision. But contractual terms are not construed in a vacuum. Words derive their meaning from context, and thus the context must be considered in determining what the words mean. See Utility Audit, Inc. v. Horace Mann Svc. Corp., 383 F.3d 683, 687 (7th Cir. 2004); Beanstalk Group, Inc. v. AM Gen'l Corp., 283 F.3d 856, 860 (7th Cir. 2002) ("Sentences are not isolated units of meaning, but take meaning from other sentences in the same document"). Thus, it is hornbook law that contracts are to be construed as a whole, see, e.g., Interim Health Care of Northern Illinois, Inc. v. Interim Health Care, Inc., 225 F.3d 876, 879 (7th Cir. 2000); they are to be read in a way that avoids rendering contractual terms mere surplusage, see, e.g., Premier Title Co. v. Donahue, 328 Ill. App. 3d 161, 166, 765 N.E.2d 513, 518 (2002); and the usage of different language to address parallel issues generally indicates that the parties intended different meanings. Taracorp, Inc. v. NL Indus., Inc., 73 F.3d 738, 744-45 (7th Cir. 1996).

We turn, therefore, to the settlement agreement's other related terms. The agreement contains, in addition to paragraph five, three other prohibitions regarding American Express's use of "Blue." Paragraphs three through six read, in pertinent part, as follows:

3. American Express shall not apply to register the terms "Blue" alone or "Blue Card," as a trade or service mark in the United States, Canada or Mexico.

4. In all advertising and promotion of American Express' "Blue" credit card services, American Express shall:

A. not use the expression 'Blue cardholder' (or 'Blue' followed immediately by another word beginning with 'card'), but may use expressions such as 'Blue credit cardholder' (where ...

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