Kazmaier v. Wooten

• Citation: 761 F.2d 46
• Decision Date: 04 March 1985
• Docket Number: No. 84-1862,84-1862
• Parties: William KAZMAIER, Plaintiff, Appellant, v. John WOOTEN, et al., Defendants, Appellees. . Heard
• Court: United States Courts of Appeals. United States Court of Appeals (1st Circuit)

Page 46

761 F.2d 46

226 U.S.P.Q. 615

William KAZMAIER, Plaintiff, Appellant, v. John WOOTEN, et al., Defendants, Appellees.

No. 84-1862.

United States Court of Appeals, First Circuit.

Heard March 4, 1985.

Decided April 30, 1985.

Susan M. Marshall, Boston, Mass., with whom Marshall, Rosen & Marshall, Boston, Mass., and R. Arlen Johnson, were on brief for plaintiff, appellant.

Paul R. Cacchiotti, Everett, Mass., for John Wooten.

Marie Lefton, Boston, Mass., with whom Anthony M. Feeherry and Goodwin, Procter & Hoar, Boston, Mass., were on brief for Hill, Holliday, Connors, Cosmopulos, Inc., and New England Ford Dealers Association.

David H. Erichsen, Boston, Mass., with whom James D. St. Clair, P.C., Linda A. Ouellette and Hale & Dorr, Boston, Mass., were on brief for Ford Motor Company.

Before CAMPBELL, Chief Judge, COFFIN, Circuit Judge, and RE, ^* Judge.

LEVIN H. CAMPBELL, Chief Judge.

Plaintiff William Kazmaier appeals from a decision of the United States District Court for the District of Massachusetts granting defendants' motions for summary judgment. 593 F.Supp. 390. We affirm.

Kazmaier claims the exclusive right to call himself "the World's Strongest Man." He therefore objects to a commercial produced for defendant New England Ford Dealers' Association ("NEFDA") by NEFDA's advertising firm, Hill, Holliday, Connors and Cosmopulos, Inc. ("Hill, Holliday"), that refers to defendant John Wooten as "the World's Strongest Man." Kazmaier filed suit on May 18, 1984 alleging that by telecasting the commercial, defendants misappropriated or unfairly used his trade name, committed unfair or deceptive trade practices in contravention of Mass.Gen.Laws ch. 93A, Secs. 2, 11, maliciously interfered with his business expectations, and acted negligently. Kazmaier also claimed that defendant Ford Motor Company acted negligently in not preventing NEFDA from airing the commercial, was vicariously liable for NEFDA's acts, and violated Mass.Gen.Laws ch. 93A. Kazmaier sought injunctive relief ¹ and damages of $8 million, and requested a jury trial.

On May 23, 1984, Kazmaier moved for a temporary restraining order enjoining the continued use of the advertisement in question. After oral argument, the district court denied the motion. At the court's suggestion, defendants moved for summary judgment, which the district court then granted, dismissing all of Kazmaier's claims.

At the heart of the court's rejection of the claims was its conclusion that Kazmaier was not entitled to exclusive use of the phrase "the World's Strongest Man." It ruled that because Kazmaier had never registered "the World's Strongest Man" as a trade name, the question of its protectability was governed by Massachusetts common law. The court went on to hold that, even assuming Kazmaier had established secondary meaning in the descriptive title, his rights in the name did not prevent Wooten's also using it, since Wooten sufficiently distinguished himself from Kazmaier in the commercial and so avoided any likelihood of confusion.

I.

We affirm the granting of summary judgment. While infringement and unfair competition cases often present factual issues that render summary judgment inappropriate this is not invariably so. Pignons S.A. de Mecanique de Precision v. Polaroid Corp., 657 F.2d 482, 486 (1st Cir.1981). See also B & L Sales Associates v. H. Daroff & Sons, Inc., 421 F.2d 352 (2d Cir.), cert. denied, 398 U.S. 952, 90 S.Ct. 1873, 26 L.Ed.2d 292 (1970); Beef/Eater Restaurants, Inc. v. James Burrough Ltd., 398 F.2d 637 (5th Cir.1968); Westward Coach Manufacturing Co. v. Ford Motor Co., 388 F.2d 627 (7th Cir.), cert. denied, 392 U.S. 927, 88 S.Ct. 2286, 20 L.Ed.2d 1386 (1968).

"[I]t is the function of summary judgment, in the time hallowed phrase, 'to pierce formal allegations of facts in the pleadings ...,' and to determine whether further exploration of the facts is necessary." Hahn v. Sargent, 523 F.2d 461, 464 (1st Cir.1975), cert. denied, 425 U.S. 904, 96 S.Ct. 1495, 47 L.Ed.2d 754 (1976) (citation omitted). We conclude that summary judgment was warranted here because "the facts upon which appellant relied to support his allegation[s] were not susceptible of the interpretation which he sought to give them[. Thus,] appellees met their burden of showing the absence of any genuine issue of material fact." Manego v. Cape Cod Five Cents Savings Bank, 692 F.2d 174, 177 (1st Cir.1982) (footnote omitted).

We deal separately with each of Kazmaier's alleged causes of action beginning with the critical trade name infringement claim.

A. Trade Name Infringement

Under Massachusetts law, a purely descriptive phrase will be protected as a common law trade name if it has attained a secondary meaning. Professional Economics, Inc. v. Professional Economic Services, Inc., 12 Mass.App. 70, 421 N.E.2d 1221 (1981). See S.S. Kresge Co. v. United Factory Outlet, Inc., 598 F.2d 694 (1st Cir.1979), aff'd on rehearing, 634 F.2d 1 (1980). See also Union Oyster House v. Hi Ho Oyster House, 316 Mass. 543, 55 N.E.2d 942 (1944); J. McCarthy, Trademarks and Unfair Competition Sec. 11.5 (1973) (descriptive marks). But the protection afforded to such a descriptive mark falls short of giving the original user the exclusive right to use it. That user may not prevent others from using the same descriptive phrase so long as the others sufficiently distinguish their product or service so "that a reasonably intelligent and careful person would not be misled." Union Oyster House, 316 Mass. at 546, 55 N.E.2d at 944. See C.A. Briggs Co. v. National Wafer Co., 215 Mass. 100, 103, 102 N.E. 87, 88 (1913) ("[W]hile the use of ["Boston Wafers"] cannot be absolutely prohibited, it may be restrained unless accompanied with sufficient explanations or precautions to prevent confusion with the goods of the original manufacturer or vendor."); American Waltham Watch Co. v. United States Watch Co., 173 Mass. 85, 86, 53 N.E. 141, 142 (1899) (although "Waltham" on plaintiff's watches had secondary meaning, defendant was entitled to use the word "Waltham" in connection with its watches if there was "some accompanying statement which shall distinguish clearly its watches from those made by the plaintiff."). Cf. McCarthy, Trademarks and Unfair Competition Sec. 11.17.

Applying the above principles, we examine Kazmaier's contention that the following triable issues exist with respect to his common law ² trade name claims: whether "the World's Strongest Man" is a descriptive or a generic ³ name; whether it carries a secondary meaning; who enjoys the secondary meaning, if one exists; and whether Wooten sufficiently distinguished himself from Kazmaier to avoid public confusion.

All but one of the above issues were resolved by the district court in Kazmaier's favor for purposes of summary judgment. The court expressly assumed that "the World's Strongest Man" is a descriptive phrase, not a generic one, and that Kazmaier had established a prior secondary meaning. The only one of the above issues that the district court resolved against Kazmaier was whether Wooten sufficiently distinguished his identity in the commercial to avoid public confusion. Normally such an issue would be for the trier of fact, but we agree with the court below that its resolution in the instant situation is so clear as to warrant a ruling that, as a matter of law, an inference of possible confusion cannot reasonably be drawn from these facts.

It is uncontroverted that in the commercial forming the basis of Kazmaier's complaint, Wooten was introduced as "the World's Strongest Man, John Wooten" and appeared on-screen, readily recognizable, during most of the film. Where, as here, the persons subject to potential confusion have easily distinguishable names and likenesses, we find it hard to imagine a more effective way of distinguishing one from the other than to state his name and present his likeness, as was done in this situation.

Kazmaier suggests that use of this descriptive phrase by anyone except the original user is inappropriate as, by its very nature, it can be applied to only one individual and draws its value from the implicit singularity of its object, i.e., "the World's Strongest Man." Under this view, use by anyone except Kazmaier necessarily results in confusion, given the name's implication of uniqueness.

This argument, however, flies in the face of established Massachusetts law. See, e.g., Union Oyster House, 316 Mass. at 544-45, 55 N.E.2d at 943 ("no one can altogether appropriate to himself any part of the English language, and ... when, through accustomed use in association with a person or his product and by common understanding in the market, words forming part of the language have come to mean, if used alone, him or his product, a competitor may nevertheless use them, if he accompanies their use with something which will adequately show that the first person or his product is not meant").

The argument also makes little sense in this context. "The World's Strongest Man" is a boast rather than an objective representation. No one is likely to believe that either Kazmaier or Wooten has scoured the world over for competitors for the title, met all challenges, and won, in actual fact, the title "the World's Strongest Man." It is scarcely to be assumed that only one individual would venture to use the title and that anyone using the title is the sole source of goods and services pertaining to the title. Cf. J. McCarthy, Trademarks and Unfair Competition Secs. 11.19, 11.19(C). ⁴

In sum, the public would not be confused by Wooten's use of this label whatever its prior association with Kazmaier given Wooten's use of the title explicitly in conjunction with his own name and likeness, nor could the public be misled by the singularity of the title given its inherent implausibility. We therefore agree with the district court that there is no genuine issue of material fact as to trade name infringement, and that de...