134 F.3d 749 (6th Cir. 1998), 96-3759, Rock and Roll Hall of Fame and Museum, Inc. v. Gentile Productions

Docket Nº:96-3759.
Citation:134 F.3d 749
Party Name:45 U.S.P.Q.2d 1412 The ROCK AND ROLL HALL OF FAME AND MUSEUM, INC.; The Rock and Roll Hall of Fame Foundation, Inc., Plaintiffs-Appellees, v. GENTILE PRODUCTIONS; Charles M. Gentile, Defendants-Appellants.
Case Date:January 20, 1998
Court:United States Courts of Appeals, Court of Appeals for the Sixth Circuit
 
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Page 749

134 F.3d 749 (6th Cir. 1998)

45 U.S.P.Q.2d 1412

The ROCK AND ROLL HALL OF FAME AND MUSEUM, INC.; The Rock

and Roll Hall of Fame Foundation, Inc., Plaintiffs-Appellees,

v.

GENTILE PRODUCTIONS; Charles M. Gentile, Defendants-Appellants.

No. 96-3759.

United States Court of Appeals, Sixth Circuit

January 20, 1998

Argued June 2, 1997.

Rehearing and Suggestion for Rehearing En Banc Denied March 5, 1998. *

Page 750

Regan J. Fay (argued and briefed), Paula B. Wilson, Jones, Day, Reavis & Pogue, Cleveland, OH, for Plaintiffs-Appellees.

Michael T. Cawley (briefed), Joseph W. Pappalardo (briefed), Gallagher, Sharp, Fulton & Norman, Cleveland, OH, J. Michael Murray (argued and briefed), Lorraine R. Baumgardner (briefed), Susan Marqulies (briefed), Berkman, Gordon, Murray & DeVan, Cleveland, OH, for Defendants-Appellants.

Stephen M. Trattner (briefed), Lewis & Trattner, Washington, DC, for Amicus Curiae Pebble Beach Co., Resorts of Pinehurst, Inc., Robert Trent Jones Golf Club, Inc.

Charles D. Ossola (briefed), Lowe, Price, Leblanc & Beckler, Alexandria, VA, for Amicus Curiae American Society of Media Photographers, Inc.

Before: MARTIN, Chief Judge; RYAN and BATCHELDER, Circuit Judges.

RYAN, J., delivered the opinion of the court, in which BATCHELDER, J., joined. MARTIN, C.J. (pp. 756-759), delivered a separate dissenting opinion.

RYAN, Circuit Judge.

OPINION

The Rock and Roll Hall of Fame and Museum, Inc., and The Rock and Roll Hall of Fame Foundation, Inc., filed suit against Charles Gentile and Gentile Productions, alleging various trademark and unfair-competition claims under state and federal law. The plaintiffs moved for and were granted a preliminary injunction, on the authority of Fed.R.Civ.P. 65. The defendants appeal, claiming, essentially, that the district court mistakenly concluded that the plaintiffs have shown a strong likelihood of succeeding on the merits. We agree and therefore vacate the entry of the preliminary injunction.

I.

In 1988, The Rock and Roll Hall of Fame Foundation registered the words, "THE ROCK AND ROLL HALL OF FAME," as its service mark, on the principal register at the United States Patent and Trademark Office. In 1991, the Foundation commissioned I.M. Pei, a world famous architect, to design a facility for The Rock and Roll Hall of Fame and Museum in Cleveland, Ohio. Pei's design was brought to life on the edge of Lake Erie, in the form of The Rock and Roll Hall of Fame and Museum which opened in September 1995.

In their briefs to this court, The Rock and Roll Hall of Fame and Museum and The Rock and Roll Hall of Fame Foundation have referred to themselves collectively as "the Museum." Throughout the remainder of this opinion, we will do the same.

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The Museum states that its building design is "a unique and inherently distinctive symbol of the freedom, youthful energy, rebellion and movement of rock and roll music." Whatever its symbolism, there can be no doubt that the Museum's design is unique and distinctive. The front of the Museum is dominated by a large, reclining, triangular facade of steel and glass, while the rear of the building, which extends out over Lake Erie, is a striking combination of interconnected and unusually shaped, white buildings. On May 3, 1996, the State of Ohio approved the registration of the Museum's building design for trademark and service-mark purposes. The Museum has similar applications pending with the United States Patent and Trademark Office.

Charles Gentile is a professional photographer whose work is marketed and distributed through Gentile Productions. In the spring of 1996, Gentile began to sell, for $40 to $50, a poster featuring a photograph of the Museum against a colorful sunset. The photograph is framed by a black border. In gold lettering in the border underneath the photograph, the words, "ROCK N' ROLL HALL OF FAME," appear above the smaller, but elongated word, "CLEVELAND." Gentile's signature appears in small blue print beneath the picture of the building. Along the right-hand side of the photograph, in very fine print, is the following explanation: "(C)1996 Gentile Productions ... Photographed by: Charles M. Gentile[;] Design: Division Street Design[;] Paper: Mead Signature Gloss Cover 80# [;] Printing: Custom Graphics Inc. [;] Finishing: Northern Ohio Finishing, Inc."

In reaction to Gentile's poster, the Museum filed a five-count complaint against Gentile in the district court. The Museum's complaint contends that the Museum has used both its registered service mark, "THE ROCK AND ROLL HALL OF FAME," and its building design as trademarks, and that Gentile's poster infringes upon, dilutes, and unfairly competes with these marks. The Museum's somewhat unusual claims regarding its building design, then, are quite unlike a claim to a service-mark right in a building design that might be asserted to prevent the construction of a confusingly similar building.

Specifically, count one of the Museum's complaint alleges trademark infringement, in violation of 15 U.S.C. § 1114(1). Count two alleges unfair competition, false or misleading representations, and false designation of origin, in violation of 15 U.S.C. § 1125(a). Count three alleges dilution of trademarks, in violation of 15 U.S.C. § 1125(c) and Ohio common law. Counts four and five allege unfair competition and trademark infringement under Ohio law.

The Museum sought a preliminary injunction and the district court held a hearing on the motion. It is clear from a review of the Museum's motion and the hearing transcript that, whatever the scope of the Museum's complaint, the Museum's request for a preliminary injunction was based on the theory: (1) that the Museum has used both its building design and its service mark, "THE ROCK AND ROLL HALL OF FAME," as trademarks; and (2) that both the photograph of the Museum and the words identifying the Museum in Gentile's poster are uses of the Museum's trademarks that should be enjoined because they are likely to lead consumers to believe that Gentile's poster is produced or sponsored by the Museum.

Thus, in its motion, the Museum argued that, because Gentile is "using the Museum's trademarks on posters in a manner which reflects a deliberate attempt to confuse, mislead and deceive the public into believing that the posters are affiliated with the Museum, ... [t]he Museum has an extremely strong probability of success on the merits of its claims for trademark infringement and unfair competition." Similarly, at the hearing, the Museum stated only that its motion was "about trademark infringement, [section] 43(a), violations of the Lanham Act in passing off," although its complaint was broader. Accordingly, the district court explained to Gentile that he needed to respond only to the Museum's arguments in support of its motion, not its entire complaint.

The Museum submitted several exhibits in support of its motion. Of particular concern in the present dispute is a poster the Museum sells for $20. Although the Museum's poster, like Gentile's, features a photograph of the Museum at sunset, the photographs of

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the building in the two posters are very different. Gentile's photograph is a ground-level, close-up view of the Museum taken at a time when the building appears to be closed. It is an artistically appealing photograph of the Museum and virtually nothing else. In contrast, the Museum's poster features a photograph of the Museum, taken from an elevated and considerably more distant vantage point, on the Museum's opening night, when red carpet stretched from the Museum's front doors, and interior lights highlighted its dramatic glass facade. There is a great deal of detail in the foreground of the Museum's photograph including the full esplanade in front of the building, and even a portion of the highway adjacent to the property. It, too, is an artistically pleasing photograph of the Museum and its surrounding environment, but it is a very different picture than Gentile's.

The Museum's poster is framed by a white border, in which the words, "The Rock and Roll Hall of Fame and Museum--Cleveland," appear beneath the photograph. To the left of these words is a small circular designation, which appears to be a trademark (the "composite mark"). In the center of this composite mark is a triangle formed by six lines fanning out from a single point. The triangle is intersected by three horizontal lines, contains two dots running vertically, and may be intended to be evocative of the Museum's building design. In a circle around this triangular design are the words, "ROCK A ND ROLL HALL OF FAME & MUSEUM."

In addition to the parties' posters, the record on appeal contains color copies of photographs of several items produced by the Museum; specifically, an advertisement for the Museum's opening, a paper weight, several postcards, and two T-shirts. One postcard features the same photograph which appears in the Museum's poster, one features a photograph of the rear of the Museum, and the third features six different close-up photographs of various parts of the Museum. One of the T-shirts bears a detailed drawing of the front of the Museum, a small drawing of the back of the Museum, the composite mark, and the words, "The house that rock built." The other T-shirt features a similar drawing of the front of the Museum, set in front of several other buildings, and the words "Cleveland: Home of the Rock and Roll Hall of Fame + Museum." The paperweight is a "snow dome" that contains a three-dimensional rendition of the Museum, and bears the words, "Rock and Roll Hall of Fame," on its base. The advertisement for the opening night concert features a man reaching skyward with one of the Museum's...

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