Bi-Rite Enterprises, Inc. v. Button Master

Citation555 F. Supp. 1188
Decision Date14 January 1983
Docket NumberNo. 81-Civ.-5642(ADS).,81-Civ.-5642(ADS).
PartiesBI-RITE ENTERPRISES, INC.; Pat Benatar; Neil Young; Rob Halford, K.K. Downing, Ian Hill, Glen Tipton and Dave Holland, Individually and as Members of the Musical Group Judas Priest; Bruce Crump, Banner Thomas, Duane Foland, Dave Hlubeck, Steve Holland and Jimmy Farrer, Individually and as Members of the Musical Group Molly Hatchet; Robert Casale, Gerald V. Casale, Merk Baugh, Robert Baugh and Alan Myers, Individually and as Members of the Musical Group Devo; Tommy Shaw, John Panozzo, James Young, Dennis De Young and Chuck Panozzo, Individually and as Members of the Musical Group Styx; Paul Di'anno, Steve Harris, Clive Burr, Dave Murray and Adrian Smith, Individually and as Members of the Musical Group, Iron Maiden; and all Other Persons Similarly Situated, Plaintiffs, v. BUTTON MASTER; Button-Up; Kraft Werk Co.; S.S.H. Enterprises, Ltd.; Little Island Marketing Ltd.; Harold Kaplan; Doug Blunden; Frank Mack; Luney Tunes Records and Tapes, Inc.; Phil Ceccola; Luney Tunes, Inc. and Barry Clark, Defendants.
CourtU.S. District Court — Southern District of New York

COPYRIGHT MATERIAL OMITTED

COPYRIGHT MATERIAL OMITTED

Jules D. Zalon by Jules D. Zalon and David O'Driscoll, New York City, for plaintiffs.

Basile, Weintraub & Hanlon by Arnold Weintraub and Thomas E. Anderson, Troy, Mich., for defendants Button-Up Co. and Doug Blunden.

Leslie C. Schefman by Morris S. Friedman, Detroit, Mich., for defendants Kraft Werk and Harold Kaplan.

OPINION AND ORDER

SOFAER, District Judge:

The plaintiffs in this case raise an array of claims aimed at protecting the commercial value of well-known trademarks on buttons. In recent years a major market has developed for the sale of novelty items bearing the likenesses, logos, trademarks, service marks and names (hereinafter the "marks") of popular recording artists. See generally McCarthy, Important Trends in Trademark & Unfair Competition Law During the Decade of the 70's, 71 Trademark Rptr. 93, 135 (1981). These novelty items are sold outside concert halls, on the streets, and in shops. Some who sell these items are licensed to do so by the persons or groups whose marks the items bear. Many sellers are not licensed, however, and the recent increased commercial significance of this novelty market has led owners and licensees of well-known marks to seek to control their exploitation.

Plaintiff Bi-Rite Enterprises ("Bi-Rite") is a manufacturer and distributor of posters, buttons, patches, bumper stickers and other novelty items bearing the marks of popular rock music groups. It sues both as the authorized licensee of various rock artists, some of whom are also joined as plaintiffs, and as a direct competitor seeking to prevent defendants from engaging in illegal and unfair competition. The plaintiffs also include several rock groups—Judas Priest, Molly Hatchett, Devo, Styx, and Iron Maiden—their individual members, and two solo performers, Neil Young and Pat Benatar (hereinafter collectively "the Performers"). These Performers have sued as trademark owners. Defendants are all manufacturers and/or distributors of buttons and other novelty items bearing among other things the marks of the plaintiff Performers and other rock groups.

Plaintiffs claim that defendants' unlicensed sales of buttons bearing logos and likenesses the plaintiffs own or control constitute trademark infringement and unfair competition under the common law, the New York General Business Law § 368-d (McKinney 1968), and § 43(a) of the Lanham Act, 15 U.S.C. § 1125(a) (1976). The Performers and Bi-Rite all assert that defendants are using marks which only the performers and/or Bi-Rite are authorized to use. In addition, however, Bi-Rite seeks to enjoin defendants from distributing any buttons bearing marks for which defendants have no license or authorization, even though Bi-Rite has no license to use or police the marks at issue. Bi-Rite argues that in the button industry retail success depends upon the number of different, desirable buttons offered to the consumer. Unethical distributors who offer the most inclusive line of buttons therefore gain a competitive advantage in the market over dealers such as Bi-Rite, which are penalized and damaged by their own ethical practice of distributing buttons only of those groups for which they have licenses. Plaintiffs also claim defendants have violated their statutory right to privacy under New York Civil Rights Law § 51 (McKinney Supp. 1981), and their common law right of publicity. They argue that the undisputed facts establish all their common-law and statutory rights and therefore move for summary judgment on all claims.

Defendants admit that they are selling buttons bearing marks for which they have no license. They claim to be willing to stop selling buttons with marks that any legally empowered plaintiff instructs them not to use. Any other mark, they contend, is within their de facto power to use, because under industry custom a mark can be used on buttons until its owner proscribes its use. They claim that many rock groups and performers in fact welcome the unauthorized use of their marks on buttons as a source of free publicity, and consider the profits to be gained from licensing the use of their marks on buttons insignificant compared to the profits made on tee-shirts and other, more substantial items. They oppose summary judgment on plaintiffs' claims because they contend that Bi-Rite has failed to establish that it has the right to enforce any of the marks it claims, that Bi-Rite has no legal basis for enforcing marks which it is not licensed to enforce, and that Bi-Rite's attorney in this case has not proved that he is authorized to represent the other named plaintiffs.

I. Authority to Sue

Defendants' effort to raise issues of fact concerning Bi-Rite's attorney's authority to represent the other named plaintiffs is insufficient. The attorney has filed notices of appearance for all the plaintiffs involved, and has made the plaintiffs' alleged agents available for depositions. Some of these agents have testified as to their authority to ask the attorney to represent the plaintiffs in this suit. Defendants have also been given every opportunity to write to, or to subpoena, the named plaintiffs to determine whether their names have properly been included in this law suit. Defendants have done nothing, however, to attempt to prove their claims. Such conduct cannot be permitted to create issues of fact, where the opposing side has offered substantial evidence to support its position. Adickes v. S.H. Kress Co., 398 U.S. 144, 160-61, 90 S.Ct. 1598, 1609-10, 26 L.Ed.2d 142 (1970); Applegate v. Top Associates, Inc., 425 F.2d 92, 96 (2d Cir.1970).

II. Unfair Competition

Plaintiffs claim violations of their federal and state-law rights relating to unfair competition, trademark infringement, dilution, privacy, and publicity. All of plaintiffs' trademark and unfair competition claims, other than their state dilution claim, are resolved by the application of a single set of principles. "`The law of trademark infringement is but a part of the law of unfair competition' and the same test is applied in determining each claim." American Footwear Corp. v. General Footwear Co., 609 F.2d 655, 664 (2d Cir.1979), cert. denied, 445 U.S. 951, 100 S.Ct. 1601, 63 L.Ed.2d 787 (1980) (quoting from Hanover Star Milling Co. v. Metcalf, 240 U.S. 403, 36 S.Ct. 357, 60 L.Ed. 713 (1916)); see also New West Corp. v. NYM Co. of California, Inc., 595 F.2d 1194, 1201 (9th Cir.1979) ("Whether we call the violation infringement, unfair competition or false designation of origin, the test is identical"); Damn I'm Good, Inc. v. Sakowitz, Inc., 514 F.Supp. 1357, 1360 (S.D.N.Y.1981). In addition, the essential elements of state unfair competition and trademark infringement claims are but a restatement of unfair competition under the Lanham Act (the "Act"), 15 U.S.C. §§ 1063 et seq. (1976). See International Society for Krishna Consciousness, Inc. v. Stadium Authority, 479 F.Supp. 792, 798 (W.D.Pa.1979); National Lampoon, Inc. v. American Broadcasting Co., 376 F.Supp. 733, 747 (S.D.N.Y.1974); Allied Maintenance Corp. v. Allied Mechanical Trades, Inc., 42 N.Y.2d 538, 542, 369 N.E.2d 1162, 1164, 399 N.Y.S.2d 628, 630 (1977). Therefore, an analysis of plaintiffs' § 43(a) claim will subsume all other related claims.

Congress enacted the Act "to regulate commerce within its control by making actionable the deceptive and misleading use of marks in such commerce" and "to protect persons engaged in such commerce against unfair competition...." 15 U.S.C. § 1127 (1976); see Colligan v. Activities Club of New York, Ltd., 442 F.2d 686 (2d Cir.1971). Section 43(a) of the Act provides:

Any person who shall affix, apply or annex, or use in connection with any goods or services, ... a false designation of origin, or any false description or representation, including words or other symbols tending falsely to describe or represent the same, and shall cause such goods or services to enter into commerce ... shall be liable to a civil action by ... any person who believes that he is or is likely to be damaged by the use of any such false description or representation.

Section 43(a), and unfair competition law in general, function primarily to protect consumers from confusion as to the source of goods in the market. See, e.g., Warner Bros., Inc. v. Gay Toys, Inc., 658 F.2d 76, 79 (2d Cir.1981); International Order of Job's Daughters v. Lindeburg & Co., 633 F.2d 912, 917 (9th Cir.1980); American Footwear Corp. v. General Footwear Co., 609 F.2d 655, 662 (2d Cir.1979); Dallas Cowboys Cheerleaders, Inc. v. Pussycat Cinema, Ltd., 604 F.2d 200, 204 (2d Cir.1979); Silverstar Enterprises, Inc. v. Aday, 537 F.Supp. 236, 241 (S.D.N.Y.1982); Warner Bros., Inc. v. American Broadcasting Co., 530 F.Supp. 1187, 1197 (S.D.N.Y.1982) ("`the touchstone of both trademark...

To continue reading

Request your trial
38 cases
  • Upper Deck Co. v. Panini Am., Inc., Case No.: 20cv185-GPC(KSC)
    • United States
    • U.S. District Court — Southern District of California
    • June 29, 2020
    ...1997) (it is unlikely that a non-exclusive licensee could assert a claim for right of publicity) (citing Bi–Rite Enters., Inc. v. Button Master , 555 F. Supp. 1188, 1200 (S.D.N.Y. 1983) ) ("A nonexclusive licensee acquires no proprietary interest in the publicity rights of the licensor and ......
  • Plasticolor Molded Products v. Ford Motor Co.
    • United States
    • U.S. District Court — Central District of California
    • April 28, 1989
    ...Champion Prods., Inc., 566 F.Supp. 711 (W.D.Pa.1983) (name of university is functional element of shirts); Bi-Rite Enters., Inc. v. Button Master, 555 F.Supp. 1188 (S.D.N.Y.1983) (names of recording artists are functional elements of These cases have presented no difficulty for the traditio......
  • Crump v. Beckley Newspapers, Inc.
    • United States
    • West Virginia Supreme Court
    • November 10, 1983
    ...F.2d 634 (9th Cir.1982); Groucho Marx Productions, Inc. v. Day and Night Co., 689 F.2d 317 (2nd Cir.1982); Bi-Rite Enterprises, Inc. v. Button Master, 555 F.Supp. 1188 (S.D.N.Y.1983); Kamakazi Music Corp. v. Robbins Music Corp., 534 F.Supp. 69 (S.D.N.Y.1982). The right of privacy protects i......
  • SC Johnson & Son v. Carter-Wallace, Inc.
    • United States
    • U.S. District Court — Southern District of New York
    • March 15, 1985
    ...S.Ct. 1601, 63 L.Ed.2d 787 (1980); RJR Foods, Inc. v. White Rock Corp., 603 F.2d 1058, 1059 (2d Cir.1979); Bi-Rite Enterprises v. Button Master, 555 F.Supp. 1188, 1195 (S.D.N.Y.1983); (2) That consumer confusion as to source is not merely possible, but likely. Mushroom Makers, Inc., 580 F.2......
  • Request a trial to view additional results
2 books & journal articles
  • Stacey L. Dogan & Mark A. Lemley, the Merchandising Right: Fragile Theory or Fait Accompli?
    • United States
    • Emory University School of Law Emory Law Journal No. 54-1, 2005
    • Invalid date
    ...as "an extraordinary extension of the protection heretofore afforded trademark owners"); Bi-Rite Enters., Inc. v. Button Master, 555 F. Supp. 1188, 1193-94 (S.D.N.Y. 1983); see also RALPH S. BROWN & ROBERT C. DENICOLA, CASES ON COPYRIGHT: UNFAIR COMPETITION AND RELATED TOPICS BEARING ON THE......
  • Publicity rights, false endorsement, and the effective protection of private property.
    • United States
    • Harvard Journal of Law & Public Policy Vol. 33 No. 2, March - March 2010
    • March 22, 2010
    ...present, but also for a future conceptual sphere. (32.) Zacchini, 433 U.S. at 576. (33.) See Bi-Rite Enters., Inc. v. Button Master, 555 F. Supp. 1188, 1199 (S.D.N.Y. 1983) (right of publicity could protect celebrities against their depiction on unlicensed novelty (34.) See CARFAGNA, supra ......

VLEX uses login cookies to provide you with a better browsing experience. If you click on 'Accept' or continue browsing this site we consider that you accept our cookie policy. ACCEPT