Instrumentalist Co. v. Marine Corps League

• Decision Date: 31 March 1981
• Docket Number: No. 80 C 5195.,80 C 5195.
• Parties: The INSTRUMENTALIST CO., Plaintiff, v. MARINE CORPS LEAGUE et al., Defendants.
• Court: U.S. District Court — Northern District of Illinois

509 F. Supp. 323

The INSTRUMENTALIST CO., Plaintiff, v. MARINE CORPS LEAGUE et al., Defendants.

No. 80 C 5195.

United States District Court, N. D. Illinois, E. D.

February 6, 1981.

Motion to Amend Findings Denied March 31, 1981.

COPYRIGHT MATERIAL OMITTED

Gomer W. Walters, Haight, Hofeldt, Davis, Jambor, Chicago, Ill., for plaintiff.

Richard G. Lione, Hume, Clement, Brinks, Willian & Olds, Ltd., Jerome Gilson, Chicago, Ill., for defendants.

MEMORANDUM OPINION AND ORDER

SHADUR, District Judge.

Plaintiff The Instrumentalist Co. ("Instrumentalist") filed this action against defendants Marine Corps League ("League") and United States Marines Youth Foundation, Inc. ("Youth Foundation"), alleging that defendants have infringed Instrumentalist's registered mark "JOHN PHILIP SOUSA,"¹ violated Section 43 of the Lanham Act and committed acts of common law mark infringement and unfair competition in conjunction with their sponsoring of the "Semper Fidelis" award for high school band musicians. Instrumentalist has moved for a preliminary injunction to enjoin defendants from using (1) the Sousa name in a prominent fashion and (2) any representation of Sousa² in connection with the Semper Fidelis (or any) band award.

On January 14-16, 1981 this Court conducted a hearing on Instrumentalist's motion. For the reasons stated in this memorandum opinion and order, Instrumentalist's motion for a preliminary injunction is granted.

Facts³

Instrumentalist is an Illinois corporation that publishes "The Instrumentalist," a national music magazine devoted exclusively to school band and orchestra directors and to teachers of instrumental music. Since 1955 it has made available to high schools the "John Philip Sousa Band Award" (the "Sousa Award") for outstanding achievement in band music.

Over the years Instrumentalist has been careful to maintain strict "quality control" over the Sousa Award. Because the Award is intended to recognize the single outstanding graduating senior band member in each participating high school, Instrumentalist has refused to sell more than one Award to any one high school in any year, except in rare instances where a band director has certified that a tie has occurred and two Awards were appropriate that year. At each high school's election, the Sousa Award to the outstanding senior takes the form of one or more of a certificate with the name and picture of Sousa prominently displayed, a lapel pin and a marble desk piece (each of the latter two featuring a medallion relief of Sousa). As indicated in footnote 1, Instrumentalist also sells to each participating high school a wall plaque bearing Sousa's name and likeness.

Instrumentalist originally received authorization from Sousa's children in 1954 to initiate the Award. It has grown in importance and distribution over the past 25 years to an annual distribution to some 6000 high schools (aggregate Sousa Awards in the past eight years have come to 45-50,000, with perhaps twice that number having been awarded over the entire 25-year period).

No efforts were made to obtain federal registration of any mark until 1966, when the secretary to Instrumentalist's President (the same person, a non-lawyer, who handled run-of-the-mill copyright filings for Instrumentalist) applied for trademark registration of the depiction of Sousa. In response the Patent Office wrote (Pl. Ex. 10):

On the basis of the record, registration is refused on the ground that the picture of John Philip Sousa constitutes merely the subject matter of the goods. Thus considered, it is not believed the picture functions as a trademark as defined in Section 45 of the 1946 Trademark Act....

If desired, the services of a competent trademark attorney may be employed. In view of the subject matter presented, however, it is not believed that registration of the mark will ensue.

Instrumentalist did not pursue the matter further at that time.

In 1973, when James Rohner succeeded his father as Instrumentalist's President, he directed the same counsel who have represented Instrumentalist in this action to file for federal registration. That application related to the Sousa name and was originally characterized as a servicemark application. In response to Patent and Trademark Office Actions, the application was amended to seek a trademark and to reflect a statement of goods "awards in the nature of plaques," and Registration 1,045,937 was then issued.

League is a United States corporation and Youth Foundation a Virginia non-profit corporation, both of whom work closely with the United States Marine Corps. Retired Marine Corps Major General Walter Churchill, now Chairman of the Board of a supermarket chain in Toledo, is National Commandant of the League, an organization founded to preserve the traditions and promote the interests of the Marine Corps, to provide a link between present and former Marines and to promote better citizenship among its members. As director of the League's youth activities, General Churchill developed and promoted several of its programs, including the band award that ultimately gave rise to this litigation. In 1967 General Churchill initiated the Youth Foundation, funded by individual and corporate contributions, which also seeks to foster comparable purposes, focusing primarily on youth activities.

Since 1967 League and Youth Foundation have been issuing a Distinguished Musician Award in cooperation with the National Band Association ("NBA") to outstanding high school band musicians. In January 1980 defendants decided to follow a suggestion General Churchill had urged for several years by changing the name of their award to the "John Philip Sousa Award for Musical Excellence." They had no prior knowledge of Instrumentalist or its Sousa Award and thus no intention to infringe on anyone's claimed rights.

Instrumentalist learned of defendants' plans when one of the band directors who had participated in the Sousa Award for many years learned of the change in defendants' award and called to ask Instrumentalist whether it was giving up its Sousa Award. Instrumentalist immediately objected to the proposed renaming, asserting that it would constitute a violation of Instrumentalist's mark.

At that time defendants had already prepared a mock-up of its new award certificate, but as General Churchill testified he recognized that Instrumentalist "had every right to complain about a John Philip Sousa Award."⁴ Accordingly, after conferring with the Marine Corps and with the Navy Patent Counsel, the mock-up was changed by substituting "Semper Fidelis" for the Sousa name on the newly-designed certificate, retaining the large multi-color likeness of Sousa on the front and the Sousa name and biography on the back. "Semper Fidelis" was of course chosen as the new name both because it was the name of one of Sousa's most famous marches and because "Semper Fidelis" is the Marine Corps motto.

As so modified, what is now defendants' "Semper Fidelis Award" is a certificate on which a colored picture of Sousa, covering nearly one quarter of the certificate's surface, is prominently displayed — indeed dominates the award visually.⁵ Sousa's name appears in small type at the base of the picture. On the reverse side are "JOHN PHILIP SOUSA (1854-1932)" printed in large letters at the top and the biographical sketch focusing on Sousa's association with the Marine Band. Since the change in defendants' award the NBA no longer serves as co-sponsor with defendants.

Based on the original communications between the parties, Instrumentalist understood that defendants were changing their award not only by eliminating the Sousa name as the award designation but also by deleting the featured pictorial representation of Sousa. When Instrumentalist subsequently learned the latter was not the case, this suit and preliminary injunction hearing followed.

Preliminary Injunction Considerations

Instrumentalist maintains that the Semper Fidelis Award in its present form still infringes Instrumentalist's marks and also constitutes a violation of Section 43 of the Lanham Act and the common law of trademark infringement and unfair competition. In the latter respect, during the course of the preliminary injunction hearing Instrumentalist also invoked the provisions of the Illinois anti-dilution statute, Ill.Rev.Stat. ch. 140, § 22.

Our Court of Appeals has described the various factors to be considered by District Courts on motions for preliminary injunctive relief in Banks v. Trainor, 525 F.2d 837, 841 (7th Cir. 1975), cert. denied, 424 U.S. 978, 96 S.Ct. 1484, 47 L.Ed.2d 748 (1976):

The appropriateness of granting a preliminary injunction depends upon a balancing of several factors, including the likelihood of success on the merits, the lack of adequate remedy at law, the prospect of irreparable harm if the injunction is not issued and a comparison of the relative hardships imposed on the parties.... No one factor is determinative; the district court should be flexible and is given discretion to fashion suitable temporary relief.

This opinion will treat with each of those factors in the context of Instrumentalist's motion.

Likelihood of Success on the Merits

Both parties have submitted extensive authority on the merits in connection with Instrumentalist's motion and defendants' counter-motion for summary judgment.⁶ It is however not necessary for the Court to apply the "likelihood of success on the merits" test to each of Instrumentalist's theories, for satisfaction of that requirement as to any one theory is enough to support the injunction (provided the other requirements for injunctive relief are also satisfied). This opinion ultimately rests on the Illinois anti-dilution statute in that respect, but it is still useful to consider some aspects of Instrumentalist's other theories of defendants' possible liability.⁷ Accordingly this opinion will treat with such other matters before turning to the...