Instrumentalist Co. v. Marine Corps League
| Citation | 694 F.2d 145 |
| Decision Date | 24 November 1982 |
| Docket Number | No. 81-2895,81-2895 |
| Parties | The INSTRUMENTALIST CO., Plaintiff-Appellee, v. MARINE CORPS LEAGUE and the United States Marine Youth Foundation, Inc., Defendants-Appellants. |
| Court | U.S. Court of Appeals — Seventh Circuit |
Richard G. Lione, Hume, Clement, Brinks, Willian & Olds, Ltd., Chicago, Ill., for defendants-appellants.
Before ESCHBACH and COFFEY, Circuit Judges, and DUMBAULD, Senior District Judge. *
This case is an appeal from an order of the District Court for the Northern District of Illinois, denying the defendants' motion to modify a certain band award certificate, the subject of earlier trademark litigation. In denying the motion the district court ruled that the defendants failed to set forth a valid reason for the proposed change, and further found that the certificate, as altered, would violate the terms of the Consent Decree. Affirmed.
The defendants-appellants, the Marine Corps League and the United States Marine Youth Foundation, Inc., 1 the two organizations jointly offering the "Semper Fidelis" Band Award, assert that the district court abused its discretion in denying their motion to modify the "Semper Fidelis" Band Award certificate. The defendants argue that the district court misapplied the "confusingly similar" test and expanded upon the substance of the Consent Decree when it ordered the defendants to justify the alteration of their award. The defendants argue that the Consent Decree required the district court to limit its analysis to a "side-by-side eyeball" comparison of the defendants' "Semper Fidelis" Award and the Instrumentalist Co.'s John Philip Sousa Band Award when determining if the two awards were "confusingly similar." Alternatively, the defendants request that this court treat their motion to alter the "Semper Fidelis" Award "as having been filed under Rule 60(b)(5) of the Federal Rules of Civil Procedure and direct relief from prospective operation of the Consent Decree." Rule 60(b)(5) provides:
It is the defendants' (the Marine Youth Foundation and the Marine Corps League) position that the district court's order underlying the Consent Decree "runs so contrary to any acceptable theory of trademark rights as to have heaped a gross inequity on [them] in the denial of their motion."
Since the facts giving rise to this litigation are more fully and completely set forth in Instrumentalist Co. v. Marine Corps League, 509 F.Supp. 323, 325-27 (N.D.Ill.1981), we will thus provide only a brief recitation of the pertinent facts which will aid in an understanding of the issues discussed herein.
The Instrumentalist Co., the plaintiff-appellee, is an Illinois corporation that publishes "The Instrumentalist," a national music magazine directed to high school music teachers, band and orchestra directors. In 1954, the Instrumentalist Co. received authorization from the family of the late John Philip Sousa to use Sousa's name and likeness on a band award, and beginning in 1955 and continuing to the present the Instrumentalist Co. has offered an award known as "The John Philip Sousa Band Award" for sale to high schools. In the 27 years since the Instrumentalist Co. first offered the Sousa Band Award for sale to high schools, the award has grown in prominence and importance in the musical community, and the annual distribution of the awards has now reached some 6,000 young musical scholars. Indeed, one band leader, Mr. Thomas Trimborn, testified that the John Philip Sousa Band Award was the most prestigious band award given and noted that his receipt of the award was "one of the outstanding highlights of my musical career."
Once a high school decides to participate in the presentation of a Sousa Band Award, the high school's band leader may elect to purchase any or all of the following: a certificate with the name and picture of John Philip Sousa prominently displayed, a lapel pin and a marble desk piece each featuring the vertical relief of Sousa, and a wall plaque bearing Sousa's name and likeness. Over the years, the Instrumentalist Co. has maintained strict control over the John Philip Sousa Band Award, and has refused to sell more than one award to any one high school in any one year since the award is intended to recognize only the outstanding graduating senior band member in a particular high school. 2
In 1966, Instrumentalist applied for a trademark registration of the depiction of John Philip Sousa, for any or all uses. The United States Patent Office denied the request for registration, ruling that Sousa's picture In 1973, Instrumentalist again applied for federal patent registration, seeking a trademark on the use of the Sousa name, image and/or likeness and identifying the goods as "awards in the nature of plaques." The Patent Office approved the registration and issued a registration number.
In 1967, some 12 years after Instrumentalist created their award, the Marine Corps League and the United States Marine Youth Foundation jointly began to issue a Distinguished Musician Award to outstanding high school band musicians throughout When General Churchill discovered that Instrumentalist objected to the newly named certificate on trademark grounds, he undertook to develop an award which would not conflict with Instrumentalist's registered trademark. After conferring with the United States Marine Corps Legal Counsel and the Navy Patent Council, General Churchill suggested altering the newly designed certificate by simply substituting "Semper Fidelis" for Sousa's name on the front of the certificate, 4 while retaining the multi-colored likeness of John Philip Sousa on the front of the certificate and further retaining the Sousa name and biography on the back. In June of 1980, the defendants issued and marketed this "Semper Fidelis" Award, described above, to graduating high school students.
the United States. 3 However, in January, 1980, at the suggestion of retired Marine Corps General Walter Churchill, a director of the Marine Corps League's youth activities and a founder of the Youth Foundation, the defendants (the Marine Corps League and the Marine Youth Foundation) changed the name of their band award to the "John Philip Sousa Award for Musical Excellence," thus creating a conflict with Instrumentalist's trademark. Instrumentalist's president, upon learning that the defendants had changed the design and name of their award, sent General Churchill a letter objecting to the redesigning and renaming of the award, and asserted that the defendants were violating their trademark rights
When Instrumentalist discovered that the defendants had prominently featured Sousa's likeness on the front of the "Semper Fidelis" Award, they again objected and filed an action in the District Court for the Northern District of Illinois against the Marine Corps League and the United States Marine Youth Foundation alleging infringement of Instrumentalist's registered "John Philip Sousa" trademark. Instrumentalist moved for a preliminary injunction to enjoin the defendants from using the Sousa name or any prominent representation of Sousa including a picture or facsimile of Sousa or any representation of the image or name of John Philip Sousa in connection with the "Semper Fidelis" (or any) Band Award. The district court held a two and one-half day evidentiary hearing on Instrumentalist's motion for a preliminary injunction to determine whether Instrumentalist could establish the prerequisites for a preliminary injunction (i.e. the likelihood of success on the merits, the lack of an adequate remedy at law, the prospect of irreparable harm, and a comparison of the relative hardships imposed on the parties). Shortly thereafter, on February 6, 1981, the district court issued a Memorandum Opinion and Order granting Instrumentalist's motion for a preliminary injunction. 5
The district court found that Instrumentalist had established a sufficient "likelihood of success on the merits," and noted that Instrumentalist's "John Philip Sousa" mark 6 was registered with the U.S. Patent Office, and that registration of that mark "shall be prima facie evidence of the validity of the registration ... and of the registrant's exclusive right to use the mark." 509 F.Supp. at 328, citing Miss Universe, Inc. v. Patricelli, 408 F.2d 506, 509 (2nd Cir.1969). Moreover, the court found that Instrumentalist's mark protected the use of Sousa's "image" (used by Instrumentalist on the wall plaque, desk piece, certificates and lapel pins) because "words and their However, the court was not satisfied that Instrumentalist's registration and use of Sousa's name and likeness alone demonstrated a likelihood of success on the trademark infringement claim as Instrumentalist could prevail on its claim for trademark infringement only if "it demonstrates that defendants' use of the Sousa mark creates a likelihood, and not a mere possibility, of confusion." 509 F.Supp. at 323. Referring to the Lanham Act, the district court ruled that Instrumentalist had failed to show a "likelihood of confusion" and thus could not meet the burden of establishing a probability of success on the merits on its claim for trademark infringement.
pictorial representations are treated the same in
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