Bobosky . v. Adidas Ag

• Decision Date: 29 December 2011
• Docket Number: No. CV 10–630–PK.,CV 10–630–PK.
• Citation: 843 F.Supp.2d 1134
• Parties: W. Brand BOBOSKY, and We Not Me, Ltd., Plaintiff, v. ADIDAS AG d/b/a The Adidas Group, Adidas America, Inc., 180LA, LLC, NBA Properties, Inc., NBA Media Ventures, LLC, Banner Seventeen LLC d/b/a The Boston Celtics, and Kevin Garnett, Defendants.
• Court: U.S. District Court — District of Oregon

843 F.Supp.2d 1134

W. Brand BOBOSKY, and We Not Me, Ltd., Plaintiff,

v.ADIDAS AG d/b/a The Adidas Group, Adidas America, Inc., 180LA, LLC, NBA Properties, Inc., NBA Media Ventures, LLC, Banner Seventeen LLC d/b/a The Boston Celtics, and Kevin Garnett, Defendants.

No. CV 10–630–PK.

United States District Court,

D. Oregon.

Dec. 29, 2011.

Stephen W. Drinnon, The Drinnon Law Firm, P.L.L.C., Dallas, TX, Kenneth R. Davis, II, Parna A. Mehrbani, Lane Powell P.C., Portland, OR, for Plaintiff.

David K. Friedland, Jaime S. Rich, Friedland Vining, P.A., South Miami, FL, Stephen M. Feldman, Perkins Coie, L.L.P., Portland, OR, for Defendants.

OPINION AND ORDER

PAPAK, United States Magistrate Judge:

Plaintiffs W. Brand Bobosky and We Not Me, Ltd. (collectively “Bobosky” or “plaintiffs”) bring this action against defendants adidas America, Inc., adidas AG, 180LA, LLC, NBA Properties, Inc., NBA Media Ventures, LLC, and Kevin Garnett (collectively “adidas” or “defendants”) arising out of defendants' use of the phrase “WE NOT ME” during a 2007 “Basketball is a Brotherhood” marketing campaign. Bobosky alleges claims for trademark infringementand unfair competition, based on his two federal trademark registrations of “WE NOT ME.” (Third Amend. Compl., # 101.) Now before the court is adidas' motion for partial summary judgment (# 138) on the issue of trademark validity. For the reasons discussed below, the motion is granted in part and denied in part.

BACKGROUND ¹

I. Genesis and Promotion of WE NOT ME

W. Brand Bobosky is an attorney in private practice in Naperville, Illinois. (Bobosky Decl., # 168–1, ¶ 2.) In 2000, Bobosky came up with the idea of “WE NOT ME” and in June of that year placed the phrase and a corresponding symbol on 200 lapel pins, which he distributed at his induction as the Naperville Rotarian President. Id. at ¶ 6. Over the next 11 years, promoting “WE NOT ME” became Bobosky's “life passion.” Id. at ¶ 5. Bobosky initially engaged in various attempts to bring the phrase to public attention by distributing items displaying the phrase and encouraging celebrities to publicize it. He continued these efforts for years.² In February 2004, he also began advertising WE NOT ME in a local monthly publication with a circulation of 35,000 called “Positively Naperville,” and continues his monthly advertisements there to date. Id. at ¶ 11. In March 2004, Bobosky hired a law firm to apply for federal copyright and state and federal trademarks for the phrase, making his first trademark application in August 2004. Id. at ¶ 12. In November 2004, Bobosky incorporated We Not Me, Ltd. in Illinois, a business with the goal of advertising “WE NOT ME” for sale or licensing. Id. at ¶ 13. He created a website soon after— www. wenotme. us—which has remained online since then, and which currently sells WE NOT ME merchandise. Id. at ¶¶ 15, 32.

II. Trademark Registrations

adidas' motion focuses on Bobosky's two federally registered trademarks for “WE NOT ME”—U.S. Trademark Registration No. 3,118,177 (the “'177 Registration”) and U.S. Trademark Registration No. 3,742,940 (the “'940 Registration”).

A. '177 Registration

On August 31, 2004, Bobosky submitted his first application to register the phrase “WE NOT ME” under the intent-to-use provisions of § 1(b) of the Lanham Act, 15 U.S.C. § 1051(b).³ (Feldman Decl., # 141, Ex. F.) Bobosky's application asserted a bona fide intention to use the mark in commerce on or in connection with the following list of goods in International Class 25:

men's, women's and children's clothing, namely, sweatshirts, sweatpants, shirts, tank tops, jeans, jackets, coats, slacks, suits, hats, headbands, visors, caps, dresses, shoes, sneakers, boots, wristbands, socks, t-shirts, belts, belt buckles, undergarments, neckties, dress shirts, collared shirts, rubgy [sic] shirts, ties, knit shirts, shorts and sandals.

(Feldman Decl., # 141, Ex. F, at 4.) Additionally, the application appointed attorney John Ambrogi—Bobosky's intellectual property counsel—to submit the application on his behalf. Id. Ambrogi prepared the list of goods included in the application and signed the application on behalf of Bobosky. Id. at 5; (Feldman Decl., # 141, Ex. B, at 2,3). In fact, Bobosky never specifically asked for a registration as to “each and every one” of the goods; he assumed that “it just comes with the territory” and that the patent and trademark office had “thow[n] them in the class.” (Feldman Decl., # 141, Ex. B, at 4,5.)

On April 3, 2006, Bobosky's attorney filed a Statement of Use, as required by § 1(d), asserting that mark WE NO ME had been first used in commerce “at least as early as” October 2004 and was currently in use in commerce. (Feldman Deck, # 141, Ex. I, at 3.) He also submitted a specimen showing the mark as it was used: a picture of a hat with the phrase “WE NOT ME” embroidered on the back. Id. at 5. Finally, he attested that Bobosky was using the mark in commerce on or in connection with “all goods and/or services” listed in his application.

In depositions for this case, Bobosky admitted that, in fact, he was not using the mark in commerce in connection with all the goods listed in his application when the Statement of Use was submitted in April 2006. (Feldman Deck, # 141, Ex. B at 9.) Moreover, Bobosky admitted that he first used WE NOT ME on hats in May 2005, not October 2004 as suggested by the Statement of Use, although the mark was in use on pins and key chains by 2004. (Feldman Deck, # 141, Ex. A at 4, Ex. B at 15.) Bobosky noted, however, that Mr. Ambrogi filed the Statement of Use on his behalf and that Ambrogi made the false statement concerning the extent of use without his knowledge. Id. Bobosky was also unclear about whether Ambrogi knew the Statement of Use contained false assertions when he submitted it, Id. In July 2006, the USPTO issued the '177 Registration.

In November and December 2007, a different attorney representing Bobosky, John Sopuch, contacted adidas claiming that adidas' use of the phrase “We Not Me” in a basketball marketing campaign violated both a copyright Bobosky possessed for the poem entitled “We Not Me” and Bobosky's trademark of that phrase. (Backman Decl., # 140, ¶¶ 4,5.) adidas' in-house intellectual property counsel researched Bobosky' '177 Registration and could not find any use of the mark by Bobosky or his company on any of the goods listed in the Statement of Use, except on baseball caps. Id. at f7. Consequently, adidas' counsel told Bobosky's attorney that her investigation showed Bobosky' statement of use contained false assertions and threatened to challenge the validity of the We Not Me mark if Bobosky did not drop his allegations of trademark infringement, Id. at ¶ 8. After that conversation, Bobosky discussed amending his trademark registration with his attorney and ultimately submitted a Post–Registration amendment in March 2008, removing all items except hats from the recitation of goods. (Feldman Decl., # 141, Ex. B at 11, 12, Ex. J.) Bobosky confirmed that he amended his registration only after adidas accused him of perpetrating a fraud on the trademark office. (Id.; Ex. B at 13–14.)

B. '940 Registration

In March 2008, Bobosky's attorney filed for a second trademark application, also under the intent-to-use provision, asserting a bona fide intent to use “WE NOT ME” in connection with “hats, clothing, namely, shirts, and footwear” in International Class 25. Bobosky filed this second application to “protect [himself] in other areas ... clothing and footwear” because he predicted adidas or another company would try to use WE NOT ME in those areas. (Feldman Decl., # 141, Ex. B at 16.) As of his March 2008 application, Bobosky testified that he generally planned to “apply the trademark to all levels of clothing, from top to bottom, hats, to clothes on the body, to their feet that they walk in,” yet Bobosky had no specific plans to create We Not Me footwear or clothing products. Id. at 17–18.

In November 2009, Bobosky's attorney filed a Statement of Use connected to the March 2008 application declaring that WE NOT ME had been in use since October 2004 with hats and since October 7, 2009 with shirts and footwear. (Feldman Decl., # 141, Ex. J at 4.) Also included were copies of pages from a website selling WE NOT ME apparel, including hats, t-shirts, and flip-flop sandals. Id. at 6–13. On the basis of the Statement of Use, the PTO granted Bobosky's application for the '940 Registration in January 2010.

LEGAL STANDARDS

Summary judgment is appropriate “if the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to a judgment as a matter of law.” Fed.R.Civ.P. 56(c). Summary judgment is not proper if material factual issues exist for trial. See, e.g., Celotex Corp. v. Catrett, 477 U.S. 317, 322, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986); Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986); Warren v. City of Carlsbad, 58 F.3d 439, 441 (9th Cir.1995), cert. denied,516 U.S. 1171, 116 S.Ct. 1261, 134 L.Ed.2d 209 (1996). In evaluating a motion for summary judgment, the district courts of the United States must draw all reasonable inferences in favor of the nonmoving party, and may neither make credibility determinations nor perform any weighing of the evidence. See, e.g., Lytle v. Household Mfg., Inc., 494 U.S. 545, 554–55, 110 S.Ct. 1331, 108 L.Ed.2d 504 (1990); Reeves v. Sanderson Plumbing Products, Inc., 530 U.S. 133, 150, 120 S.Ct. 2097, 147 L.Ed.2d 105 (2000).

DISCUSSION

adidas moves for summary judgment on Bobosky's claims for trademark infringement and unfair competition under the Lanham Act arguing that because Bobosky's federal trademark registrations are both void ab initio and invalid by virtue of being procured through fraud on the PTO, Bobosky lacks a valid and...