Illinois High School Ass'n v. GTE Vantage Inc.

• Decision Date: 03 December 1996
• Docket Number: No. 96-1981,96-1981
• Parties: , 113 Ed. Law Rep. 1103, 40 U.S.P.Q.2d 1633 ILLINOIS HIGH SCHOOL ASSOCIATION, Plaintiff-Appellant, v. GTE VANTAGE INC., Defendant-Appellee.
• Court: U.S. Court of Appeals — Seventh Circuit

Page 244

99 F.3d 244

65 USLW 2333, 113 Ed. Law Rep. 1103,

40 U.S.P.Q.2d 1633

ILLINOIS HIGH SCHOOL ASSOCIATION, Plaintiff-Appellant, v. GTE VANTAGE INC., Defendant-Appellee.

No. 96-1981.

United States Court of Appeals, Seventh Circuit.

Argued Sept. 24, 1996.

Decided Oct. 30, 1996.

As Amended Dec. 3, 1996.

Nicole M. Smith, Michael J. Hayes, Richard W. Young (argued), Darren S. Cahr, Gardner, Carton & Douglas, Chicago, IL, Stephen A. Kouri, John A. Slevin, Vonachen, Lawless, Trager & Slevin, Peoria, IL, for Plaintiff-Appellant.

Stephen D. Gay, Jeffrey A. Ryva, Husch & Eppenberger, Peoria, IL, Michael Elbein, Gerald M. Kraai (argued), Litman, McMahon & Brown L.L.C., Kansas City, MO, for Defendant-Appellee.

Before POSNER, Chief Judge, and WOOD, Jr., and ESCHBACH, Circuit Judges.

POSNER, Chief Judge.

This is an appeal from the denial of a preliminary injunction sought by the Illinois High School Association to protect its trademark "March Madness" against infringement by GTE Vantage Inc. Vantage holds a license for the mark from the National Collegiate Athletic Association. The appeal presents a novel issue of trademark law.

Since the early 1940s, the Illinois High School Association, sponsor of the Illinois high school basketball tournament--the premier high school basketball tournament in the United States, we are told--has used the trademark "March Madness" to designate the tournament, held every year in March and sometimes broadcast nationally. IHSA has licensed the use of the trademark on merchandise associated with the tournament. Another basketball tournament--NCAA's "Final Four" championship--is also played in March, spilling over into the early part of April. In 1982, when CBS began televising the "Final Four" championship games, broadcaster Brent Musburger used the term "March Madness" to designate them. The term caught on and is now widely used by the media and the public to denote this basketball tournament as well as IHSA's.

In 1993 or 1994, NCAA began licensing the use of the term "March Madness" to producers of goods and services related to its tournament. Earlier this year one of the licensees, Vantage, began using "March Madness" to promote a CD-ROM game that it calls "NCAA Championship Basketball." The term "March Madness" appears in a circle on the box in which the game is to be sold and in some of the game's computer graphics. Vantage's use of the term precipitated this suit, which seeks injunctive relief for unfair competition under section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a). Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768, 112 S.Ct. 2753, 2757, 120 L.Ed.2d 615 (1992).

IHSA argues that the use by NCAA licensees of the term "March Madness" is likely to confuse consumers. A few will think that Vantage's game is sponsored by IHSA or otherwise connected with the Illinois high school basketball tournament, but more will think that the IHSA tournament is sponsored by NCAA or that the trademark "March Madness" affixed to merchandise licensed by IHSA actually refers to the NCAA tournament. The latter effect--what the cases call "reverse confusion," where a powerful junior user of the trademark (NCAA dwarfs IHSA) swamps the senior's use of it with advertising and other publicity that extinguishes consumer demand for the senior user's product, Sands, Taylor & Wood Co. v. Quaker Oats Co., 978 F.2d 947, 957-58 (7th Cir.1992); Sterling Drug, Inc. v. Bayer AG, 14 F.3d 733, 740-41 (2d Cir.1994); 3 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 23.01 (3d ed. 1995)--is likely to impair IHSA's ability to make money by licensing its trademark on merchandise and other incidentals.

The issue of likelihood of confusion does not arise, however, until it is determined that the plaintiff has a trademark that the law will protect; and the district judge thought that IHSA does not, so far as the use of the term "March Madness" in connection with the NCAA tournament is concerned. It has been many years since the media first appropriated the term to describe the NCAA tournament (if "appropriation" is the right word--it may be a case of independent discovery). Most people know what they know about college basketball from the media. If the media call the NCAA tournament "March Madness," that is what the public will call it, or know it as.

IHSA argues that it is unfair to make its rights depend on the whims of the media. Because a court could not, without violating the free-speech clause of the First Amendment, have enjoined (or used other legal remedies to prevent or deter) the media from calling the NCAA tournament "March Madness," IHSA was helpless to prevent its trademark from being transformed into the name of another product. Its property right should not, it argues, depend on events over which it has no control.

It is true that IHSA could not have sued Musburger or CBS for referring to "March Madness" in a news program (including a program of sports news), see L.L. Bean, Inc. v. Drake Publishers, Inc., 811 F.2d 26 (1st Cir.1987), or even in advertising if the term were used merely for identification. New Kids on the Block v. News America Publishing, Inc., 971 F.2d 302, 308 (9th Cir.1992). But it could have sued them (with what success we need not speculate--a suit at this late date would surely be barred by laches) for using its trademark to promote CBS's broadcast of the NCAA championship. And it could have supplicated them not to spoil its trademark by using it to name something else. A serious trademark holder is assiduous in endeavoring to convince dictionary editors, magazine and newspaper editors, journalists and columnists, judges, and other lexicographically influential persons to avoid using his trademark to denote anything other than the trademarked good or service. These efforts sometimes succeed. IHSA was not assiduous. But that is a detail--is in fact irrelevant, for no defense of laches has been pleaded by Vantage or, so far as the record suggests, would succeed.

What matters is that a trademark is not nearly so secure an entitlement as a property right. See Prestonettes, Inc. v. Coty, 264 U.S. 359, 368, 44 S.Ct. 350, 351, 68 L.Ed. 731 (1924) (Holmes, J.); Door Systems, Inc. v. Pro-Line Door Systems, Inc., 83 F.3d 169, 173 (7th Cir.1996); WCVB-TV v. Boston Athletic Ass'n, 926 F.2d 42, 45 (1st Cir.1991). It is mainly just a designation of source, 15 U.S.C. §§ 1114(1), 1125(a), and dies when it ceases to designate, for whatever reason other than the culpable conduct of the defendant. See, e.g., Sands, Taylor & Wood Co. v. Quaker Oats Co., supra, 978 F.2d at 960. Were NCAA responsible for blotting out the exclusive association of "March Madness" with the Illinois high school basketball tournament, IHSA might have a remedy on a theory of reverse confusion, though probably not an injunctive remedy since that would promote confusion among consumers, most of whom now identify the term with the NCAA tournament. But IHSA blames CBS, which is not a defendant, rather than NCAA, much less Vantage, for the blotting out.

Even antidilution statutes--and there is now an antidilution provision in federal trademark law for "famous" marks, 15 U.S.C. § 1125(c), which however "March Madness" is not claimed to be--do not elevate a trademark all the way to property. They do protect the trademark owner from the erosion of the distinctiveness and prestige of a trademark caused by the sale of other goods or services under the same name (for example, the use of "Tiffany & Co." as the name of a...