Central Mfg., Inc. v. Brett

• Decision Date: 09 July 2007
• Docket Number: No. 06-2083.,06-2083.
• Citation: 492 F.3d 876
• Parties: CENTRAL MANUFACTURING, INCORPORATED, a Delaware corporation, doing business as Central Manufacturing Company and Central Manufacturing Company of Illinois, and Stealth Industries, Incorporated, Plaintiffs-Appellants, v. George BRETT and Brett Brothers Sports International, Incorporated, Defendants-Appellees.
• Court: U.S. Court of Appeals — Seventh Circuit

492 F.3d 876

CENTRAL MANUFACTURING, INCORPORATED, a Delaware corporation, doing business as Central Manufacturing Company and Central Manufacturing Company of Illinois, and Stealth Industries, Incorporated, Plaintiffs-Appellants, v. George BRETT and Brett Brothers Sports International, Incorporated, Defendants-Appellees.

No. 06-2083.

United States Court of Appeals, Seventh Circuit.

Argued May 2, 2007.

Decided July 9, 2007.

Martin Tiersky (argued), Lincolnwood, IL, for Plaintiffs-Appellants.

James F. Best (argued), Best, Vanderlaan & Harrington, Wheaton, IL, for Defendants-Appellees.

Before EVANS, WILLIAMS, and SYKES, Circuit Judges.

EVANS, Circuit Judge.

The Pine Tar Incident

It's undisputed: George Brett was a great baseball player. The statistics from his 21 years in The Show, all with the Kansas City Royals, seal the deal: 3,154 hits, 317 home runs, and a career batting average of .305. Only three other players—Stan Musial, Hank Aaron, and Willie Mays—ended their careers with more than 3,000 hits and 300 home runs, while still maintaining a lifetime batting average over .300. Brett's selection to the Hall of Fame, on the first ballot in 1999, was richly deserved. Yet for all his accomplishments, many who love baseball will always think of the "Pine Tar Incident" as the capstone of his career. It is a joy to recall.

It was July 24, 1983, and the Royals, trailing 4-3 to the New York Yankees, had a man on first but were down to their final out in the top half of the ninth inning. Brett was at the plate. The Yankees' ace closer, "Goose" Gossage, was on the mound. And Brett crushed an 0-1 fastball over the 353-foot mark into the right field seats, giving Kansas City the lead, 5-4. Pandemonium broke out in the Royals' dugout. The Yankee Stadium crowd fell silent. But things were about to change.

While the Royals were celebrating, the Yankees' fiery manager, Billy Martin, walked calmly (unusual for him) to home plate where he engaged the umpire, Tim McClelland, in quiet conversation. Martin pointed to an obscure rule (and we sometimes think the Federal Rules of Appellate Procedure are obscure!), which provides that any substance (including pine tar) that a player might rub on his bat handle for a better grip cannot extend more than 18 inches. See Major League Baseball Official Rules § 1.10(b). Martin, pointing to a lot of pine tar on the bat Brett left behind as he circled the bases, asked McClelland to check it out. McClelland, using home plate as a ruler, determined that pine tar covered 24 inches of the bat handle. So the bat, McClelland ruled, was illegal.

With his ruling ready for delivery, McClelland took a few steps toward the jubilant Royals' dugout and gave the signal: for using an illegal bat, the home run was nullified, and Brett was out. Game over. Yankees win 4-3. And all hell broke loose. An infuriated George Brett charged out of the dugout and rushed McClelland as Martin, who looked like the cat who ate the canary, stood off to the side. It was one of the great all-time rhubarbs in baseball history. And that's how it ended, at least for July 24, 1983.

But baseball, like our legal system, has appellate review. The Royals protested the game and, as luck would have it, American League President Lee MacPhail (to use a phrase with which we are accustomed) "reversed and remanded for further proceedings." The game resumed three weeks later with Kansas City ahead, 5-4. It ended after 12 minutes when Royals' closer Dan Quisenberry shut the door on the Yankees in their half of the ninth to seal the win. The whole colorful episode is preserved, in all its glory, on YouTube, at http://www.youtube.com/watch?v = 4Cu1 WXylkto (last visited June 6, 2007). See also Retrosheet Boxscore, Kansas City Royals 5, New York Yankees 4, at http:// www.retrosheet.org/boxesetc/1983/B07240 NYA1983.htm (last visited June 6, 2007).

Our Case Today

And so, at last, we come to this case which presents another (albeit a less compelling) appeal of a dispute involving George Brett and a baseball bat. We begin with the facts.

In 2001, Brett joined Tridiamond Sports, Inc., a manufacturer of baseballs, baseball bats, gloves, and other related accessories, to form Brett Brothers Sports International, Inc. (Brett Brothers). Tridiamond was incorporated in 1997 by Joe Sample, a former airline executive who had served as vice-president and president of International Ambassador, a company specializing in the organization of travel programs. International Ambassador was purchased in 1996 by former Major League Baseball Commissioner Peter Ueberroth, and informal conversations with Ueberroth soon gave Sample an idea. Ueberroth mentioned the difficulty some players had in adjusting from the use of metal baseball bats at the high school and collegiate levels to the wood bats of professional baseball. Initially introduced in the early 1970s as a cost-saving alternative for leagues operating under a smaller budget due to the breakability of wood bats, metal bats were eventually believed to generally outperform wood ones, Joseph J. Crisco et al., Batting Performance of Wood and Metal Baseball Bats, 34 Med. & Sci. in Sports & Exercise 1675, 1675 (2002), a consensus more or less confirmed by scientific studies, see, e.g., id. at 1683; Fred O. Bryant et al., Dynamic and Performance Characteristics of Baseball Bats, 48 Research Quarterly 505 (1977).¹ Because the use of metal bats may inflate hitting statistics, a player's professional prospects may be misevaluated, and the shift to wood bats may reveal a great player to be merely a very good one—the difference, potentially, between a highly compensated major league career and a decade spent on buses shuttling from Appleton to the Quad Cities.

Sample realized that the uncertainty of the switch potentially created a market niche for a bat that combined the best of both worlds: the production and feel of the wood bat with the break-resistance of the metal bat. He thus formed Tridiamond and initiated research on the construction of a more durable wood bat. Eventually the company developed a specialized process of grading, lamination, and fiberglass reinforcement that enabled the product they were looking for. Tridiamond initially sold three bat models with names inspired by Sample's background in aviation: the Mirador, the Stealth, and the Bomber.

Brett Brothers now sells eight different models of wood bats used throughout all levels of amateur and professional baseball. Relevant for our purposes is the Stealth model, which the Brett Brothers' Web site describes as follows:

The stealth bats are constructed of laminates from hand selected and graded hardwoods. The patented "Boa" reinforcement on the handle significantly enhances durability. The choice of wood for the barrel has proven to greatly reduce the chipping and flaking characteristic in one-piece ash bats.

This model has NCAA approval for all levels of play and is also BESR Certified.

The Stealth bat is available in 31", 32", 33", and 34" lengths with weight drops up to -3 ounce.

Brett Bros. Sports International, Inc. — The Very Best in Baseball—Bats, at http:// shopsite,brettbats.com/shopbats.html (last visited June 6, 2007). The first recorded sale of the Stealth bat occurred on July 13, 1999, when twelve bats were sold to Tim Nolan of Pro-Cut in Rockford, Illinois. Brett Brothers has since sold more than 25,000 Stealth bats to all manner of customers worldwide, including through retail outlets in 48 states and via its Web site.

The plaintiffs in this action, Central Manufacturing, Inc. and Stealth Industries (collectively "Central"), are both controlled by Leo Stoller, who serves as president and sole shareholder. Stoller similarly operates a number of other companies, including Rentamark.com, S Industries, Inc., and Sentra Manufacturing. Stoller alleges that his companies have been using the "Stealth" trade name and mark for a wide range of products since at least 1982. Indeed, Stoller has registered the Stealth mark for things like boats, motorcycles, bicycles, microwave-absorbing automobile paint, billiard and dart equipment, auto locks, window locks, comic books, lawn sprinklers, metal alloys, pest elimination devices, and other products. S Industries, Inc. v. Ecolab, Inc., 1999 WL 162785, at *1 (N.D.Ill.). In 1984, Stoller, through Sentra Manufacturing, filed a trademark registration with the United States Patent and Trademark Office (PTO) claiming ownership of the Stealth mark for "[s]porting goods, specifically, tennis rackets, golf clubs, tennis balls, basketballs, baseballs, soccer balls, golf balls, cross bows, tennis racket strings and shuttle cocks." Sentra was awarded the mark in 1985; it was eventually transferred to Central in 1997.

In 2001, Central filed a mark application with the PTO for using the Stealth word mark on "baseball bats, softball bats and t-ball bats." Later that year, Central entered into a licensing agreement with Blackwrap, Inc. for the use of the Stealth word mark on its bats; a similar agreement was reached (for $800) with Easton Sports, Inc. in 2003. In 2004 (five years after the first Brett Brothers sale of Stealth-model bats), the U.S. PTO granted the mark for baseball bats. Central soon became aware of Brett Brothers' use of the Stealth word mark and filed suit in the Northern District of Illinois, alleging violations of the Lanham Act, 15 U.S.C. § 1051 et seq., and the Illinois Deceptive Trade Practices Act, 815 ILCS 510/1 et seq. Central believes that because they registered the "Stealth" mark for baseballs and other sporting goods in 1985, they have priority of use of the mark for baseball bats, and Brett Brothers is guilty of infringement and unfair competition. See 15 U.S.C. §§ 1114, 1125(a). (The inquiry under Illinois law mirrors the federal. See James Burrough Ltd. v. Sign of Beefeater, Inc., 540 F.2d 266, 274 (7th Cir.1976)).

Leo Stoller is no stranger to trademark...