Packman v. Chicago Tribune Co.
| Decision Date | 27 September 2001 |
| Docket Number | No. 01-1016,01-1016 |
| Citation | 267 F.3d 628 |
| Parties | (7th Cir. 2001) DIANA PACKMAN, Plaintiff-Appellant, v. CHICAGO TRIBUNE COMPANY, an Illinois Corporation, and FRONT PAGE NEWS, INCORPORATED, a California Corporation, Defendants-Appellees |
| Court | U.S. Court of Appeals — Seventh Circuit |
Appeal from the United States District Court for the Northern District of Illinois, Eastern Division. No. 99 C 7458--Charles P. Kocoras, Judge. [Copyrighted Material Omitted]
[Copyrighted Material Omitted]
[Copyrighted Material Omitted]
Before RIPPLE, MANION and KANNE, Circuit Judges.
On June 15, 1998, in recognition of the Chicago Bulls' sixth National Basketball Association ("NBA") championship, the headline of the front page of the Chicago Tribune read "The joy of six." As it has done on several other historic occasions, the Chicago Tribune Company reproduced its entire front page on t-shirts, posters, plaques and other memorabilia. The Tribune contracted with Front Page News, Inc., to print on t-shirts a collage comprised of the Tribune masthead and six headlines describing each of the Bulls' NBA victories, including "The joy of six" headline.
Diana Packman holds federal and Illinois trademarks for the phrase "the joy of six," for use in relation to football and basketball games. She brought this action against the Tribune and Front Page under the Lanham Act for trademark infringement and unfair competition and Illinois law. The district court granted the defendants' joint motion for summary judgment, holding that the "fair use" defense defeated Ms. Packman's claims, and, in the alternative, that there was no evidence that consumers were likely to be confused as to the source of the defendants' products. Ms. Packman appeals from the district court's summary judgment ruling, as well as from the court's denial of her motion to compel discovery. For the reasons set forth in the following opinion, we affirm the district court in both respects.
The phrase "the joy of six" is a play on the 1970s book series The Joy of Sex.1 It has been used to describe positive feelings associated with six of anything, e.g., the birth of sextuplets, a six-run inning in a baseball game, six characters on a television show, and, in this case, six championships in a sporting event.
Ms. Packman's husband, Richard Packman, began using the phrase "the joy of six" in the mid-1980s to describe a group with whom he exercised at a local health club at 6:00 a.m. In 1994, the Packmans began printing the phrase on flyers to advertise occasional gatherings of family and friends to watch football games. On July 1, 1997, Ms. Packman obtained a federal trademark for "the joy of six" for use in connection with "entertainment services in the nature of football games."2 Beginning in September 1996, the Packmans began using "the joy of six" to promote outings to watch or attend basketball games and on February 3, 1998, Ms. Packman obtained a federal trademark to use the phrase in connection with "entertainment services in the nature of basketball games."3 Ms. Packman also printed "the joy of six" on small quantities of hats and t-shirts to promote the gatherings, in connection with National Football League teams pursuing a possible sixth Super Bowl championship, in particular the San Francisco 49ers and the Dallas Cowboys and in relation to the Chicago Bulls' pursuit of a sixth NBA championship.
Ms. Packman did not produce evidence of the number of gatherings or outings, the number of attendees, or the profit, if any, they generated. The record does not contain any documentary evidence of the Packmans' sales of hats and t-shirts bearing "the joy of six" mark. Taking the Packmans' deposition testimony as true however, a small quantity of t-shirts and hats were given away, sold to friends and family, or sold at one Ohio retail outlet and generated little, if any, profit. In addition, Mr. Packman sold an unknown number of "The Joy of Six is Coming . . . Chicago Basketball" t-shirts at cost to a homeless street vendor, who presumably resold them. In addition, the Packmans attempted, without success, to negotiate contracts to license "the joy of six" for use in connection with National Football League and NBA teams. Just prior to the Bulls' sixth NBA championship, the Packmans began negotiating a deal for t- shirts bearing "the joy of six" mark to be produced by a Chicago retailer. The Packmans claim, however, that the retailer backed out of the deal after the Tribune introduced its t-shirts bearing the June 15, 1998 front page and "The joy of six" headline.
As early as 1996, sportswriters at the Tribune and the Chicago Sun-Times began using "the joy of six" to describe the Bulls' anticipated sixth NBA championship. The Packmans did not protest the use of the phrase they had trademarked, but instead sent a letter, hat and t-shirt to the writers, encouraging them to use the phrase:
Recently granted the registered trademark for "The Joy of Six" slogan, I encourage you to employ this catchy tag line in your writings and reports throughout the 1997-1998 NBA season as the Bulls shoot for their sixth straight year of stellar success.
R.15 at 2. Mr. Packman admitted that, based on this letter, he would not have objected to the writers' using the phrase in a column headline.
On June 15, 1998, the Tribune printed, on its front page directly beneath its masthead, a banner headline that read "The joy of six," describing the sixth NBA championship won by the Bulls the previous night. The headline included a graphic listing the six years in which the Bulls had won championships and the names of the defeated teams. The font and size of the phrase in the Tribune headline are visibly distinct from the font and size used by the Packmans on their flyers, hats and t-shirts. At least eight other newspapers in the United States used the phrase "the joy of six" in their headlines that day.
As it has done with other historic front pages, the Tribune reproduced its front page, including "The joy of six" headline, on t-shirts, posters, plaques, and other memorabilia, to promote the Tribune and memorialize its coverage of the Bulls' historic victory. The manager of the Chicago Tribune Store, Mary Tremont, decided, without input from the Tribune's editorial board, to reproduce the entire June 15 front page onto these promotional items. The items were sold at the Michigan Avenue Tribune Store, at a storefront of the Tribune's offices in Vernon Hills, and, for one month in 1999, at the Tribune's kiosk in Woodfield Mall. The Tribune also instructed one of its vendors, Front Page News, to create a t- shirt bearing the Tribune masthead amidst a collage of the actual headlines reporting all of the Bulls' championships: "Two for Two: Bulls Still Champs," "Three-mendous," "Ringmasters," "The Jackson Five," and "The joy of six." Anticipating the Bulls' winning the cham pionship and the Tribune's printing a catchy phrase to describe the victory, Ms. Tremont and Front Page designed this shirt before June 15, without knowledge of the exact wording of the headline. The collage t-shirt was sold in the Tribune store and, for four days in 1998, by Front Page to wholesalers.
Shortly after the Tribune's June 15 headline appeared, several of the Packmans' friends and family members con tacted them to congratulate them on their "deal" with the Tribune. These individuals had seen the Tribune's headline and knew of Ms. Packman's trademark on "the joy of six," but there is no evidence that they purchased or attempted to purchase either the Tribune's memorabilia or the Packmans' hats and t-shirts.
On November 16, 1999, nearly 18 months after "The joy of six" appeared on the Tribune's front page and on its championship memorabilia, Ms. Packman filed a complaint against the Tribune and Front Page, alleging trademark infringement, 15 U.S.C. sec. 1114, unfair competition, 15 U.S.C. sec. 1125(a), and trademark infringement under Illinois law, 765 ILCS 1036/60. Ms. Packman does not challenge the Tribune's printing "The joy of six" on its June 15 front page; she only objects to the reproduction of the Tribune's front page, including "The joy of six" headline, onto promotional memorabilia.
After filing the complaint, Ms. Packman served defendants with two document requests and a set of interrogatories; she also served the Tribune with a notice of deposition under Fed. R. Civ. P. 30(b)(6). On September 1, 2000, the Tribune produced Ms. Tremont, the manager of the Chicago Tribune Store, for deposition on topics 3 through 9 of Ms. Packman's notice.4 The Tribune refused to produce a witness on topics 1 and 2, which inquired about the Tribune's process and procedures for selecting headlines, in particular "The joy of six" headline for the June 15, 1998 front page. The Tribune maintained that topics 1 and 2 were not relevant because Ms. Packman had admitted that she objected not to the Tribune's use of "The joy of six" on its June 15, 1998 front page, but only to its reproduction of the headline on the championship memorabilia. The Tribune also objected to topics 1 and 2 on First Amendment grounds.
Discovery closed on September 5, 2000. On that date the parties appeared before the district court for a status conference. Ms. Packman's counsel informed the court that she had not received the discovery she requested because Ms. Tremont was not knowledgeable about three topics in the notice of deposition: (1) the Tribune's process and procedures for avoiding trademark infringement (topic 3); (2) the Tribune's process and procedures for avoiding infringement of "the joy of six" (topic 5); and (3) the Tribune's process and procedures for permitting reproduction of its headlines on...
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