Dille Family Trust v. Nowlan Family Trust, CIVIL ACTION NO. 15–6231

• Citation: 276 F.Supp.3d 412
• Decision Date: 25 August 2017
• Docket Number: CIVIL ACTION NO. 15–6231
• Parties: The DILLE FAMILY TRUST, Plaintiff, v. The NOWLAN FAMILY TRUST, Defendant.
• Court: U.S. District Court — Eastern District of Pennsylvania

276 F.Supp.3d 412

The DILLE FAMILY TRUST, Plaintiff,

v.The NOWLAN FAMILY TRUST, Defendant.

CIVIL ACTION NO. 15–6231

United States District Court, E.D. Pennsylvania.

Signed August 25, 2017

Daniel I. Herman, Geer & Herman PC, New Castle, PA, Justin D. Kloss, Kloss Stenger & LoTempio, Buffalo, NY, Vincent G. LoTempio, Andrew J. Olek, Kloss Stenger & LoTempio, Clarence, NY, for Plaintiff.

John J. O'Malley, John P. Sullivan, Jonathan Lombardo, Max S. Morgan, Volpe & Koenig PC, Philadelphia, PA, for Defendant.

MEMORANDUM

WENDY BEETLESTONE, District Judge

Remaining in this chapter of the long-running contest between Plaintiff, the Dille Family Trust, and Defendant, the Nowlan Family Trust, over the intellectual property rights to Buck Rogers are Plaintiff's: 1) challenge to the decision of the U.S. Trademark Trial and Appeal Board ("TTAB") rejecting Plaintiff's opposition pursuant to Section 2(d) of the Lanham Act, 15 U.S.C. § 1052(d), and Section 43(c) of the Lanham Act, 15 U.S.C. § 1125(c), to the Defendant's intent-to-use application to register the BUCK ROGERS mark; 2) contract claim arising out of a purported Release and Assignment dating to 1942; and, 3) trademark dilution claim under Section 43(c) of the Lanham Act, 15 U.S.C. § 1125(c). Before the Court are Defendant's four motions to exclude the testimony of Plaintiff's proposed expert witnesses, Defendant's motion for summary judgment, and Plaintiff's partial motion for summary judgment.¹

I. BACKGROUND

Although this dispute dates back more than three quarters of a century, the present case is quite narrow in scope. Plaintiff opposes Defendant's application to register the BUCK ROGERS mark, asserting that it has senior rights. Plaintiff also alleges that in 2015, Defendant engaged in negotiations with NBC Universal and attempted to sell a BUCK ROGERS script. Defendant asserts that these actions created a likelihood of dilution of its mark, and also breached a 1942 agreement between John F. Dille, whose newspaper syndicated the original comic strip, and the estate of Philip F. Nowlan, the author of the novelettes that inspired the comic strip, and who for some time provided narrative content for the comic strip.

A. The Parties

John F. Dille and Philip F. Nowlan—both long deceased—are not parties to this case, and neither are their estates. Instead, this case involves a dispute by family trusts established by their respective descendants.

The Dille Family Trust was created on August 16, 1979 by Robert C. Dille—the son of John F. Dille—and his wife, Virginia N. Dille, who were its first trustees. JA 1034. Before 1979, the record contains what appear to be a series of federal trademark registrations, renewals, assignments and licenses between John F. Dille, Robert C. Dille, and various corporations that they controlled, as well as licensing agreements with entities that produced Buck Rogers merchandise and creative works. It is undisputed that from the late 1920's to the early 1980's, Buck Rogers appeared in comic strips, radio, film, and television—including the 1979–1981 film and television series by Universal Pictures. Plaintiff contends that by virtue of these assignments, it succeeds to the rights of John F. Dille in the BUCK ROGERS mark.

Virginia N. Dille continued to serve as Plaintiff's trustee until her passing in 2009.

After a series of interim trustees, Louise M. Geer was made successor trustee in 2011 by Nicholas Flint Dille and Lorraine Virginia Dille Williams, who are the children of Robert C. and Virginia N. Dille, and who are beneficiaries of the Dille Family Trust. For completeness's sake, it should be noted that Geer is the wife of Plaintiff's trial counsel, Daniel Herman. Geer, who is an attorney, and Herman are partners in the law firm of Geer and Herman, P.C. Geer and Herman also own and control Herman & Geer Communications, which does business as "Hermes Press." Plaintiff contends that Hermes Press was, for a period of time, licensed to use the BUCK ROGERS mark on books of reprints of the original Buck Rogers comic strips.

For its part, the Nowlan Family Trust dates to August 1, 2004, when it was created by its trustee Brian McDevitt, a grandchild of Philip F. Nowlan and Theresa M. Nowlan. JA 3075–95. The Nowlan Family Trust is a business trust organized under Pennsylvania law and registered with the Commonwealth. JA 3075–96. Brian McDevitt's sister, Diane H. McDevitt is an agent for the Nowlan Family Trust. JA 2977. The Nowlan Family Trust Agreement identifies as permissible beneficiaries the descendants of Philip Francis Nowlan, as determined when the net assets of the trust exceed $1 million. JA 3075.

B. TTAB Proceedings

Plaintiff proceeds in Count One of the Second Amended Complaint pursuant to 15 U.S.C. § 1071(b), challenging the TTAB's rejection of its opposition to the Defendant's intent-to-use application to register the BUCK ROGERS mark for use on a wide range of goods and services, including films, television shows, and related merchandise. The central issue is whether Plaintiff can establish prior trademark rights in BUCK ROGERS—the TTAB concluded on the record before it that Plaintiff could not, but Plaintiff is entitled to a de novo review of that conclusion before this Court under 15 U.S.C. § 1071(b). If Plaintiff can establish such rights, and provided that Defendant cannot establish that Plaintiff abandoned the mark, 15 U.S.C. § 1127 ("Abandonment (1)"), the question would then arise as to whether Defendant's intended use of the mark would be likely to cause confusion with, or dilution of, Plaintiff's mark, either of which would be grounds to reject Defendant's trademark application. 15 U.S.C. § 1052(d) (asserting seniority is permissible basis on which to oppose a registration); 15 U.S.C. § 1063(a) (identifying "dilution by blurring ... under section 1125(c) as a permissible grounds for opposition to a registration"); 15 U.S.C. § 1125(c)(2)(B) (defining dilution by blurring).

These questions arise out of a knotty procedural history that dates to the beginning of 2009. At that time, Plaintiff, held two federal registrations for the BUCK ROGERS mark: Registration Number 714,184 for newspaper comic strips, and Registration Number 1,555,871 for board games. JA 4–7. On January 15, 2009, Defendant filed its intent-to-use trademark application. JA 5061–65. Following an examination of Defendant's trademark application, the U.S. Patent and Trademark Office ("USPTO") refused publication pursuant to 15 U.S.C. § 1062(b), concluding that Defendant was not entitled to registration due to a likelihood of confusion with Plaintiff's mark. AJA 11434 (citing Registration Number 714,184 and Registration Number 1,555,871). On October 2, 2009, Defendant filed a petition to cancel Defendant's registrations (Numbers 714,184 and 1,555,871), asserting fraud in their maintenance and abandonment. JA 462–69. In January of 2011, Plaintiff filed a "notice of voluntary surrender" in the proceedings to cancel Registration Numbers 714,184and 1,555,871. JA 2–3. In light of that filing, on February 1, 2011, the TTAB granted Defendant's cancellation petition, and on April 5, 2011, the USPTO cancelled Registration Numbers 714,184 and 1,555,871. JA 9–10.

Once the cancellation proceedings were resolved, Defendant's trademark application was published in the Official Gazette on June 14, 2011. JA 12. On July 12, 2011, Plaintiff filed its opposition to Defendant's trademark application. JA 12–22. Plaintiff's asserted basis was that it had used and / or licensed the BUCK ROGERS mark for use on various products and services on an ongoing basis since 1928, including "comic books, action figures, feature films, picture frames, belt buckles, key chains, resin statues, artwork, t-shirts, board games, computer software, internet television show license, DVDs, Blu–Ray video discs, and radio programs," thereby rendering Defendant's registration of BUCK ROGERS likely to cause confusion with, or dilution of, the Plaintiff's mark. JA 20–21.

Following several years of litigation, on September 25, 2015, the TTAB dismissed Plaintiff's opposition to Defendant's trademark application. JA 1251–65. Noting that at the time Plaintiff filed its opposition, it did not hold any valid federal registrations, the question was whether Plaintiff could show that it had established trademark rights before January 15, 2009—the date from which Defendant may be able to claim constructive use of the mark, for the purpose of establishing priority, by virtue of its intent-to-use trademark application. JA 1255. The TTAB dismissed the Plaintiff's opposition primarily due to a lack of evidence connecting the trademark's pre–1942 chain of title to the Dille Family Trust, and a lack of evidence of prior use sufficient to establish trademark rights in the Dille Family Trust. JA 1255–65. Although the TTAB considered Plaintiff's contention that Hermes Press, as a licensee, had sold books of reprinted comic strips from approximately 2008 through 2014, the TTAB did not find sufficient evidence to credit Plaintiff's contention that the books were sold before January 15, 2009, and thus concluded that the use of the mark by Hermes Press was insufficient to establish trademark rights in Plaintiff.

C. 2010 Negotiations with Cartoon Network

Meanwhile, in early 2010 the Nowlan Family Trust, Flame Ventures, LLC, (whose principal is Tony Krantz), the Cartoon Network, and later, the Dille Family Trust, engaged in negotiations regarding the licensing of the rights for a Buck Rogers film and television series. JA 5066. Ultimately, these discussions yielded a draft letter agreement dated March 7, 2010, which contemplated the Dille Family Trust and the Nowlan Family Trust granting a license in whatever rights to Buck Rogers they held to Cartoon Network for a Buck Rogers film and / or television series to be produced in conjunction with Flame Ventures. JA 1316–19. The agreement was executed in part by the Nowlan Family Trust, but Brian...